55 F.3d 610 (Fed. Cir. 1995), 93-1363, In re Napier

Docket Nº:93-1363.
Citation:55 F.3d 610
Party Name:34 U.S.P.Q.2d 1782 In re James C. NAPIER.
Case Date:May 22, 1995
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 610

55 F.3d 610 (Fed. Cir. 1995)

34 U.S.P.Q.2d 1782

In re James C. NAPIER.

No. 93-1363.

United States Court of Appeals, Federal Circuit

May 22, 1995

Page 611

Donald E. Stout, Antonelli, Terry, Stout & Kraus, Washington, DC, argued for appellant. With him on brief were William I. Solomon and Alan E. Schiavelli.

Fred E. McKelvey, Office of Sol., Arlington, VA, argued for appellee. With him on brief were Albin F. Drost, Deputy Sol., Richard E. Schafer, Associate Sol., Joseph G. Piccolo and Richard L. Torczon, Asst. Sol.

John T. Whelan, Fitzpatrick, Cella, Harper & Scinto, Chair, Bar Ass'n of District of Columbia, Patent, Trademark and Copyright Section, Washington, DC, was on brief for amicus curiae, Bar Ass'n of District of Columbia. Also on brief was Anthony W. Shaw, Burns, Doane, Swecker & Mathis, Alexandria, VA.

Before PLAGER, CLEVENGER, and SCHALL, Circuit Judges.

PLAGER, Circuit Judge.

James C. Napier (Napier) appeals from the March 16, 1994 decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board), Appeal No. 93-0040. The Board affirmed the examiner's final rejection of claims 1-3, 5, 7, 8, and 10 of application Serial No. 07/467,179 (the '179 application), entitled "Redirection of Turbine Exhaust Noise." 1 Claims 1-3 and 5 stand rejected under 35 U.S.C. Secs. 102(b) and 103 (1988), 2 and claims 7, 8, and 10 stand rejected under 35 U.S.C. Sec. 103. We agree that all the claims are unpatentable on the ground of obviousness under section 103, and therefore affirm. 3

BACKGROUND

Noise from both non-transportation and transportation-related sources, like aircraft, has long been recognized as a serious environmental problem, affecting human health and activity. 4 A major source of noise emitted by modern jet aircraft is the engines they employ, both for propulsion and for auxiliary power. Propulsion engines move the plane,

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and provide power, mechanical, hydraulic, or electrical, for the operation of the aircraft while aloft. Auxiliary power units (APUs) are generally used to provide such operational power when the plane is on the ground.

Unlike the noise created by turbine propulsion engines, largely a function of fast moving exhaust air passing across relatively still air, the noise from an APU is produced by combustion within the engine. APUs, in operation when the plane is on the ground, are typically located in the rear section of the fuselage of an airframe behind the cargo doors. Their noise can be a problem for ground crew members working in or around the aircraft. Exhaust silencers have been used to reduce the amount of noise from APUs, but these have the disadvantage of being heavy and bulky, thereby reducing the operational efficiency of the aircraft.

The '179 application is directed to an aircraft APU that redirects noise, produced by combustion, away from specific locations on the aircraft. The device works by directing a stream of relatively cold air in a separate cold air pipe through the exhaust path of the engine to create essentially parallel flowing streams. Since sound travels faster through denser mediums, and cold air is denser than warm air, once the exhaust gases and separately contained cold air exit from the exhaust pipe, the sound from the APU refracts toward the path of cold air instead of the path it otherwise would take. Therefore, placing the cold stream in the center of the exhaust pipe of an APU permits redirecting of the noise away from locations on the aircraft (such as the cargo doors where ground crew are working) forward of the point at which the APU is mounted on the fuselage, thereby reducing the noise level at those locations.

The '179 application was filed on January 19, 1990, with Napier as the sole named inventor. The claims of that application that are at issue in this appeal are claims 1-3, 5, 7, 8 and 10. 5 On September 17, 1991, the examiner issued a final office action rejecting claims 1-3 and 5 as anticipated by U.S.Patent No. 4,567,960 (Johnson); claims 1-3 and 5 as obvious over Johnson; and claims 7, 8 and 10 as obvious over Johnson in view of U.S. Patent No. 3,599,749 (Millman).

Johnson is directed to a nozzle for reducing propulsion engine noise from aircraft during takeoff. The nozzle consists of air inlets that are connected to a central tube in the exhaust pipe such that during takeoff outside air is drawn into the central tube via the air inlets exiting at the downstream end of the central tube where it then mixes with the exhaust gases. According to Johnson,

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the mixture of the outside air with the exhaust gases produces a significant noise reduction during takeoff. Millman is also directed to a nozzle for suppressing noise from a propulsion jet engine, but it additionally discloses the use of a compressor to supply the air that mixes with the exhaust gases.

The Board affirmed the examiner's final rejection in a decision dated March 16, 1993. Regarding claims 1-3 and 5, the Board determined, inter alia, that it would have been obvious to utilize the noise suppression teachings of Johnson on a non-propulsion power unit. As to claims 7, 8 and 10, the Board concluded that the combined teachings of Johnson and Millman would have rendered obvious the inventions defined in claims 7, 8 and 10. This appeal followed.

DISCUSSION

It is well established that the ultimate determination of obviousness is a question of law, which we review without deference to the Board's judgment. See In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). Therefore, it is our responsibility to make the final conclusion based on our reading of the record before us, giving appropriate deference to the Board's underlying factual determinations, such as what a reference teaches. See In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041 (Fed.Cir.1992).

"Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination." In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)). However, the "suggestion to modify the art to produce the claimed invention need not be expressly stated in one or all the references used to show obviousness." Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886 (Fed.Cir.1985). Rather, the test is...

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