Galen Lee Barefoot
9405 Lee Highway
Warrenton, VA 20186
Mobile: 540-270-5916
Evening Phone: 540-347-4719
Email: barefootchief@yahoo.com
Mr. Barefoot had been with the United States Patent and Trademark Office for 34 1/2
years from June, 1972 to February of 2007. His primary area of expertise is in the
aeronautics and aerospace art covered by USPTO classification as Class 244. During
this time he has examined approximately 5000 patent applications and issued over 3500
patents in this area. As a result of this experience he has developed a very detailed
knowledge of the majority of the patents in the field of aeronautics and aerospace.
During the examination of these patent applications Mr. Barefoot had to defend his
positions before the Board of Appeals on numerous occasions. In two of these appeals
they were appealed to the Court of Customs and Patent Appeals, In re Reuter et al, 210
USPQ 249; and In re Piasecki, 223 USPQ 785. Both of these cases dealt with issues of
patentability, but also dealt with issues of reissue/protest practice and specifically with
evidence, expert testimony and the consideration of affidavits as they apply to the issues
of obviousness. Both cases have been repeatedly cited in other cases in various courts
and In re Piasecki was also relied on in the U.S. Supreme Court case, KSR International
v. Teleflex Inc. and Technology Holdings Co., No. 04-1350.
Mr. Barefoot received his Full Signatory authority in 1977. Due to his superior
performance as an examiner in Class 244 he received a Bronze Medal in 1983. The
program citation stated:
“Mr. Barefoot has shown extremely competent performance in the examination of
patent applications in the art of Aircraft over an extended period of time. His
exceptional ability and dedication to duty has enabled him to make a major contribution
to the Patent and Trademark Office to reduce pendency of Office programs. His
outstanding production and superior quality of work coupled with an extremely high level
of competency on special assignments and extra duties has been recognized in an
unusually large number of awards. His overall performance serves as an outstanding
example to his co-workers.”
The American Intellectual Property Law Association in 1987, in their first annual award
ceremony for examiners in the USPTO, recognized the outstanding contribution of Mr.
Barefoot to the integrity of intellectual property law while in distinguished service at the
United States Patent and Trademark Office. Also at the USPTO’s first annual Honor
Awards Ceremony in 2000, Mr. Barefoot received a Distinguished Career Award.
During his time in the USPTO he has assisted in the training of numerous junior
examiners and has been approached by numerous other patent examiners and Patent
attorneys on questions of procedure and patentability. He was on detail to the Patent
Academy on two separate occasions as an academy instructor. During this detail he was
charged with teaching junior examiners in all aspects of patent examining and patent law
interpretation as it applied to the examining practice. He was also on detail to the
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Assistant Commissioner of Patents office where he worked on some fraud cases,
composing lengthy interrogatories, inquiring as to the actions of attorneys and applicants
during the prosecution of applications. A third detail was to Quality Review where he
reviewed the work of other examiners across all the mechanical disciplines.
As a Primary Examiner for nearly 30 years he has made informed decisions on
patentability based on independent research. He has been a team worker who has always
contributed to the goals and the set deadlines of the USPTO. As a result, he has merited
almost continuous Outstanding Performance Ratings and Superior Achievement Awards
over his 34 years in the USPTO.
Mr. Barefoot graduated from Pennsylvania State University (PSU) in 1970 with a
Bachelors of Science degree in Aerospace Engineering and in 1972 with a Masters of
Science degree in Aerospace Engineering. During Mr. Barefoot’s 6 years at PSU he took
16 undergraduate and 5 graduate Aerospace Engineering courses along with numerous
other mechanical engineering courses. These courses had direct application to his work
in class 244 at the USPTO and his continued area of expertise, as follows:
Aerospace Structures
Aero 5: Aerospace structures
Aero 7: Aerospace Structures
Aero 409: Advanced Aerospace Structures
Aero 402: Aerospace Design
Engineering Mechanics 14: Mechanical Properties Of Engineering Materials
These courses covered basic and advanced aspects of aerospace structures which
provided both a theoretical and practical background in the design, strength and fatigue
life of aerospace structures. This is particularly pertinent to the technology in Class 244
and specifically subclasses 45-49 and 117-133.
Viscous Fluids
Aero 3: Compressible Aerodynamics
Aero 407: V/STOL Aircraft
Aero 505: Aeroelasticity and Hydroelasticity
Aero 504: Aerodynamics of V/STOL Flight
Aero 508: Perfect Fluids
Aero 511: Aerodynamic Noise
Aero 412: Turbulent Flow
Aero 510: Compressible Flow
These courses provided a strong foundation in aerodynamic principles regarding lift,
Bernoulli’s principle, drag, flutter, boundary layer control, shock waves, aerodynamic
heating, rotary wing aerodynamics, aerodynamic noise, and numerous other related areas.
These courses were pertinent to the technology in Class 244, subclasses 1-23, 198-219,
and 34-39.
Flight Dynamics
Aero 405: Experimental Methods
Aero 413: Stability and Control
Aero 420: Flight Testing
Aero 425: Theory of Flight
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These courses covered basic and advanced aspects of the dynamics of flight. They
provided a good basis for an accurate determination of the operativeness of various
aerodynamic designs, the pertinence of various test results and what results would be
expected from various designs.
Propulsion
Aero 410: Aerospace Propulsion
Mechanical Engineering 22: Engineering Thermodynamics
These courses covered the technical and theoretical aspects of the various forms of
propulsion i.e., rockets, ram-jet, turbojet, fan-jet, etc.
All of this course work provided a good foundation from which to make informed
decisions as to the operability of various aerodynamic patent applications and to evaluate
affidavits of comparative test results and showings of unexpected results. Also Mr.
Barefoot’s Master’s Thesis was entitled: “Fluctuating Pressure Characteristics In The
Mixing Region Of A Perturbed and Unperturbed Round Free Jet”. This was a theoretical
and empirical study of the near field pressure fluctuation in around free jet and how this
could be equated to far field noise measurements.
Mr. Barefoot also has a private pilot’s license which provides a good common knowledge
of the flight characteristics of aircraft and the various control functions needed to perform
different flight maneuvers. He also has a good basic understanding of mechanics, in that
he has rebuilt engines, done numerous repairs to cars and home appliances.
In 1984, Mr. Barefoot was recognized by the USPTO’s Patent Examiner Evaluation
Board as an Expert in the Aeronautics and Aerospace area. This evaluation was based on
concurring affirmation by the Board of Appeals, the Classification Group, and various
Ranking Officials in the USPTO and others outside the USPTO. As part of the
justification process numerous people submitted letters of recognition of the expertise of
Mr. Barefoot. Here are a few excerpts:
Stephen Kunin, who was the Director of Group 320 and later became a deputy
assistant commissioner of the USPTO, stated:
“I consider Mr. Barefoot to be one of the more capable examiners in the
Patent and Trademark Office. This opinion of Mr. Barefoot has been formed by having
reviewed his work prior to his being granted signatory authority and by his assistance
rendered to me in mapping out fields of search in Class 244. I value his explanation on
issues under 35 USC 101 and 35 USC 112, first paragraph which help to clarify
applications of aeronautical theory in complicated disclosures. Questions of operability
and enablement of disclosure are not infrequent in Class 244 applications.
On numerous occasions while conducting searches I found it profitable to
consult with Mr. Barefoot. I discovered that I often saved time and effort by relying on
Mr. Barefoot’s expertise. Mr. Barefoot has an excellent comprehension of the subject
matter assigned to Class 244.”
Bobby Gray, who was the Director of Group 310 of the USPTO, stated:
“Throughout the period during which I have served as the Director of
Group 310, it has become more and more evident that Mr. Barefoot’s expertise and
superior knowledge in his art area have been utilized extensively in helping the Patent
and Trademark Office achieve its goals and mission. I have particularly noticed the
regularity and frequency with which he has been consulted on matters within his art area
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by members of the patent community, both from within and outside the Patent and
Trademark Office.”
E.R. Kazenski, who was the Supervisory Primary Examiner of Group 324 and
later became a deputy assistant commissioner of the USPTO, stated:
“I recognize Mr. Barefoot as speaking with authority on questions of
operativeness and technological equivalence arising within his art and I place reliance on
his conclusions as to the denotation of particular technical terminology.
I know Mr. Barefoot is a very capable person, fully knowledgeable in
patenting examining practice and in the technology of Class 244 and I consider Mr.
Barefoot, without question, the expert in Class 244.”
Paul Luckin, who was a trial attorney with the Civil Division, U.S. Dept. of
Justice, Washington, D.C., and was a Judge in Pittsburgh, PA, when he stated:
“I met Mr. Barefoot in connection with United States of America
v. Aerospace General Company and Gilbert W. Magill. That case, filed in the Western
District of Texas in 1979 requested cancellation of U.S. Patent 4,071,206 entitled
“Portable Helicopters: granted to Magill on January 4, 1978. The case was instituted
through the initiation and work of Mr. Barefoot. In 1978, after Mr. Barefoot had issued
the patent, he discovered a statutory bar reference in Science and Mechanics which had
been written for Mr. Magill and which substantially described the claimed invention of
the Magill patent. Mr. Barefoot brought the reference to the attention of Mr. McKelvey
of the Solicitor’s Office. Mr. McKelvey in turn contacted the Dept. of Justice.
Prior to initiating the action in Texas, I had discussions with Mr. Barefoot.
He was extremely knowledgeable in aeronautics as was seen not only in his explanation
of the primary reference but also of significant secondary and background material which
he provided me in the course of the discussions. In addition to his expertise, Mr.
Barefoot was very cooperative which made it a pleasure to deal with him.
After some discovery, the cancellation action on the Magill patent was set
down for trial in Texas and Mr. Barefoot was scheduled to testify. However, a few
weeks before the trial date, defendants hired counsel from an experienced Washington,
D.C. patent law firm. Soon thereafter Mr. Magill agreed to dedicate his paten ab inito
and a trial was averted. Mr. Barefoot is a dedicated public servant. I am very pleased to
be able to recommend him for an expert rating in the area to aeronautics. Mr. Barefoot is
well deserving of the rating and a credit to the Patent Office.”
Also during Mr. Barefoot’s time at the USPTO, he co-authored a formal paper that was
presented at a Lecture Series held by the Advisory Group for Aerospace R & D
(AGARD) in Germany and The Netherlands. The paper, “Technology Assessment – A
Tool for Exploiting Patents” was presented on behalf of the USPTO by Donald Kelly.
Mr. Kelly wrote in a letter of commendation to Mr. Barefoot’s group director:
“During the extensive and laborious preparation of the AGARD paper,
Galen Barefoot was commendably responsive to, and cooperative with, the staff of the
Office of Technology Assessment and Forecast (OTAF), and the written input and advice
which he provided was a key part of the project.”
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THE SCOPE OF THE TECHNOLOGIES COVERED BY MR. BAREFOOT’S AREA
OF EXPERTESE.
Class 244 gets more than its fair share of individuals who assume that they have
discovered a new form of propulsion, flight or space travel. In the prosecution of these
applications one must analyze the Physics involved and convince the applicant in a
diplomatic way that his new discovery violates basic laws of physics and will not work as
described.
During the prosecution of applications in Class 244 one must continuously
examine complex systems composed of a network of components having
numerous interrelationships requiring such detail that numerous pages of
drawings and specifications are required. Examples of these complex systems are found
in the control of VTOL (Vertical Take-Off and Landing) aircraft, various types of control
systems are involved which include: electro-hydraulic, electromechanical, hydraulic and
mechanical systems often associated with computer control programs to coordinately
control the control surfaces, angle of incidence of wings, pitch of the propellers and the
power of the engines. Class 244 includes various arrangements whereby the lift of a wing
is increased through well known aerodynamic concepts such as the Coanda effect
(244/207+), whereby lift is increased by accelerating the flow over the upper surface of
the wing by blowing high velocity air along the boundary layer. Other types of V/STOL
aircraft use directed jets in combination with wings, i.e. Harriers (244/12.1+). A further
example would he in helicopters where similar systems are used in the control of the
cyclic and collective pitch of the rotor system, folding and unfolding of the rotor blades
of convertible helicopters, the suppression of unwanted vibration and the transmission of
power to the rotors at various attitudes. Other complex and involved systems are also
found in aircraft arresting systems, pilot ejection systems where tractor rockets and
involved extraction systems and parachute deployment systems are used, and landing gear
arrangements.
Class 244 contains machines and structures adapted to be: completely or partially
sustained by the air (e.g., winged aircraft, helicopters, parachutes, kites, balloons, etc.)
adapted to be propelled and guided or stabilized through the air (e.g., projectiles with fins,
guided missiles, etc); and placed in an orbit or which substantially operate outside the
earth's atmosphere. Class 244 further contains sub-combinations of those machines and
structures which are directly related to their operation (e.g., controls, frames, landing
gear, wings, deicers, launching devices, loading and unloading features etc. One such
cargo handling feature includes external stores rack which through various arrangements
of release hooks and explosive ejectors stores are released from specific aircraft structural
points during operation of the aircraft, Further systems include the in-flight unloading of
cargo from aircraft through systems of parachutes. Class 244 further includes processes
and methods directly related to these machines, structures and sub-combinations.
Class 244 also includes airfoil design where basic and advanced aerodynamic
principles are applied to design airfoils that will give specific results in specific operating
ranges. An example of this is the super-critical airfoil (244/35R) where the airfoil is
designed for super-critical speeds (just below the speed of sound) where local air
velocities on the wing go supersonic causing a shock wave which degrades the
performance of the airfoil. By specially designing these portions of the super-critical
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airfoil the effects of these shocks can be diminished and the overall efficiency of the wing
increased.
There are also numerous control arrangements (244/51,52 75+ 165+ and 175+)
whereby the craft is controlled by fluid jets, hydraulic systems, pivoted power plants,
moveable weights and numerous manual systems with automatic feedback of control
surface motion. These control system include many numerous complex arrangements of
hydraulics, cable, linkage, gearing and electrical/computer systems and are incorporated
with the aerodynamic features of the craft.
Class 244 includes further arrangements of structures and the use of composite
materials, (244/117+). Class 244/53+ includes are all aspects of aircraft propulsion:
turbojets, ramjets, scram jets, rockets and propellers as they directly pertain to
aircraft and aerospace structures. This includes the arrangements of and the
mounting of power plants, various special drive arrangements, thrust reversers and various
special applications of engine exhaust and compressor air to boundary layer control and
deicing.
Class 244 includes all aspects of aerospace structures (244/158.1+) such as the
space shuttle and other reentry type vehicles, space stations, solar power stations and
satellite orbit and attitude control. Also over the years various unique situations and the
application of Patent law come up within Class 244, one of these was the patenting of
various forms of Space Orbits or networks of satellites used in the global
communications art which required an in-depth research into the appropriate Patent Law.
When such global coverage satellite networks were first being claimed Mr.
Barefoot developed the following rejection:
I. The claims are rejected under 35 USC 154 and 35 USC 100.
The claims recite a "network" of satellites in outer space with no specific claimed
structure or any form of communication to Earth. Consequently, the claims recite an
arrangement that is wholly outside the territorial limits for which 35 USC 154 prescribes
granting a patent which would have the effect of only excluding others from making or
using an invention solely outside of the United States (see 35 USC 154 and 35 USC 100
(c)).
As the Supreme Court has stated in Deepsouth Packing Co. Inc. v. Latran Corp.; 173
USPQ 769:
"Our Patent system makes no claim to extraterritorial effect" and affirms Brown
v. Suchesene;"
Similarly in John Mohn and Sons v. Vacudyne Corp.; 177 USPQ 307 the court has
held:
"It seems obvious that a method patent can only be infringed by practice of the
claimed method within the United States and that the; United States patent system makes
no claim to extraterritorial effects”.
It is further noted that in Decca Limited v. United States; the court stated:
"Combination radio navigation system all of whose signals were
established, continuously monitored, and synchronized from United States and whose
use occurs within United States infringes U.S. Patent for radio navigational system,
whose contribution was a system of signals having a particular relationship, received
from spaced sources, and utilized in a receiver to arrive at a position fix, even though
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one U.S. owned transmitting station is located on foreign soil.”
and further stated:
"In addition, one other consideration that should be
mentioned is that it is clear from both the specification of the patent
and the claim that the patentees' contribution was not in the manner
by which a transmitter generated and radiated the signals, but
rather it was in a system in which signals having a particular
relationship were received from spaced sources and utilized in
the receiver to arrive at a position fix. Had it been
otherwise, that is, had the invention dealt with the
generation of the signals themselves, it seems clear that
utilization of those signals in this country would only have
been incidental and that operation of the Norwegian station would
have been beyond the reach of the U.S. patent laws.”
It is noted that the instant claimed invention there is no control of the "network"
within the United States and there is no communication within the U.S., therefore, the
claimed invention would appear to be beyond the reach of the U.S. patent laws. Robert
F. Kemph wrote an article entitled; "Reduction to Practice of Space Inventions" for the
JPOS (Vol. XLX, no. 2). In the article it is noted:
"United Nations Resolution 1962 (XVIII), December 13, 1963
(para. 2) provides: outer space and celestial bodies are free for
exploration and use by all States on a basis of equality in
accordance with international law. Article I of the Treaty on
Principles Governing the Activities of States In The Exploration
And Use Of Outer Space (to which there are 82 signatories
including the United States) also recognizes the international
nature of space activities and assures freedom and equality in space
exploration. The U.N. Resolution (para. 3) provides: outer space
and celestial bodies are not subject to national appropriation by
means of use or occupation or by other means. Article II of the
Treaty on Outer Space contains essentially the same wording."
Kemph further states:
"The Treaty on Outer Space and the United Nations Resolution
1962 provides that ''States on whose registry an object launched
into space is carried shall retain jurisdiction and control over
such objects and any personnel thereon while in outer space.
A nation that constructs and orbits a spacecraft, manned or
unmanned, retains ownership and control over it no matter where it
is located. A spacecraft may come under American registry in the
same sense as the registry of an ocean going vessel. The
jurisdiction and control of the States under whose registry the
spacecraft is carried clearly includes the applicability to the
spacecraft and occurrences thereon the law of the State of registry
in the same manner in which occurrences onboard a ship are
governed by law of the flag. The analogy between space
law and the law of the high seas of many purposes is an
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obvious one,"
It appears clear from this discussion that any vessel in space would be governed by the
Patent laws of its country of registry. This concept was further codified in 35 USC 105
presented below:
35 U.S.C. 105 Invention in Outer Space.
(a)
Any invention made, used or sold in outer space on a
space object or component thereof under the jurisdiction or control
of the United States shall be considered to be made, used or sold
within the United States for the purposes of this title, except with
respect to any space object or component thereof that is specifically
identified and otherwise provided for by an international agreement
to which the United States is a party, or with respect to any space
object or component thereof that is carried on the registry of a
foreign state in accordance with the convention on Registration
of Objects Launched into Outer Space.
(b)
Any invention made, used or sold in outer space on a
space object or component thereof that is carried on the registry of a
foreign state in accordance with the Convention on Registration of
Objects Launched into Outer Space, shall be considered to be
made, used or sold within the United States for the purposes of this
title if specifically so agreed in an international agreement between
the United States and the state of registry.
(Added November 15, 1990, Public Law 101580 sec. 1, 104 Stat. 2863.)
Also, a process which is under direct control of people within the United States (as per
Mecca Limited v. United States, 188 USPQ 167 and also Rosen et al v. the National
Aeronautics and Space Administration, 153 USPQ 757) would be subject matter
governed by a grant under 35 USC 154. However, in the instant claimed invention
(specifically claims 9-15) the spacecraft itself, method of use, or its control are not the
subject of the claimed invention, but what is claimed, is merely the "network" of satellites
in particular orbits about the Earth.
Another decision by the PTO Board of Appeals, Ex parte McKay, 200 USPQ 324
stated:
"Patent grant under 35 USC 154 by United States for process to be
carried out on the moon by personnel subject to its jurisdiction is
not inimical and at variance with Section 154."
The instant claimed invention would appear to be distinguished from that of Ex
parte McKay since the claimed "network" is not a process having the direct control thereof
by any personnel but only sets forth an arrangement of satellites (Broadly a "satellite"
does not require a controlled vehicle, but is any body in orbit about another body in space,
e.g. space junk, asteroids, etc.).
The instant claimed invention further does not claim the structure of the satellite to
which the country of registry would have legal territorial rights. What is claimed is
a "network' that is neither a process nor an article of manufacture. It is clear that the fact
situations in the instant claimed invention are distinguished from that of Ex parte McKay.
In conclusion it appears clear that applicant's claimed "network" does not set forth
subject matter which is governed by a U.S. Patent grant under 35 USC 154 or further
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included by 35 USC 105.
All of these various areas of Mr. Barefoot’s area of expertise requires additional searches
that extend into Classes 14, 15, 16, 33, 49, 52, 62, 60, 74, 89, 91, 92, 102 , 114, 116, 123,
135, 137, 180, 182, 185, 188, 192, 193, 198, 200, 239, 248, 273, 280, 292, 296, 301, 318,
340 , 364, 403, 410, 415, 416 , 418 , 440, 441, 446, 455, 463, 472, and 701.
Mr. Barefoot’s recognition as an expert by the USPTO and his continuous work in the
aeronautical and aerospace art has provided him with the knowledge and expertise to be
an expert consultant/witness and able to provide comprehensive prior art or validity
searches.
From February 12, to October, 2007, Mr. Barefoot has worked for SI International in
Harrisonburg, Va. Mr. Barefoot assisted in the training and development of a special
contract for the USPTO to classify the Pre Grant Publication applications. During this
time as the Team Lead for the Senior Classifier group at SI, Mr. Barefoot had the
opportunity to have a broader overview of all the technologies covered by the USPTO
classification system.
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