Alberto Midali et al.

Patent Trials and Appeals Board

Mar 10, 2021

2020001949 (P.T.A.B. Mar. 10, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/157,125 06/06/2008 Alberto Midali 00138/007492-US0 5966
76808 7590 03/10/2021
Leason Ellis LLP
One Barker Avenue
Fifth Floor
White Plains, NY 10601-1526
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
03/10/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@leasonellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERTO MIDALI, MAURO ALIVERTI,
MAURO ROCCATI, and PIER GIORGIO FERRANTE
Appeal 2020-001949
Application 12/157,125
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 10, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ALENIA
AERMACCHI S.P.A. Appeal Brief (“Br.”) filed July 5, 2019, 2.
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CLAIMED SUBJECT MATTER
The invention relates to a process for manufacturing sound absorbing
panels for aircraft (Spec. 1),2 wherein an entirely assembled acoustic panel
including a facing or front sheet, an intermediate honeycomb structure, and a
backing sheet (id. at 5:14–18) is co-cured (id. at 4:16–17) and the front sheet
is acoustically perforated (id. at 6:13).
Claim 1, reproduced below from the Claims Appendix to the
Supplemental Appeal Brief filed August 2, 2019, is illustrative of the subject
matter on appeal:
1. Process for manufacturing a sound-absorbing acoustic
composite panel to be fixed on a structure of engine nacelle or
other aircraft structure which require acoustic panels;
said sound-absorbing acoustic composite panel being
designed to offer acoustic impedance that is as close as possible
to a calculated ideal value;
characterized in that the process comprises a sequence of
the following steps:
(a) lamination of a front sheet, made of composite
material comprising a resin material;
(b) assembly of an intermediate honeycomb sheet
on the front sheet;
(c) lamination of a back sheet on a side of said
intermediate honeycomb sheet formed in step (b) where
said back sheet is a side of the sound-absorbing acoustic
composite panel that is opposite a side having said front
sheet made out of composite material comprising a resin
material to form an uncured assembled sandwich panel;

2 This Decision also cites to the Specification (“Spec.”) filed June 6, 2008,
and the Examiner’s Answer (“Ans.”) dated October 1, 2019.
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(d) polymerization of said uncured assembled
sandwich panel, by co-curing the entire-uncured
assembled sandwich panel wherein said polymerization
is carried out as a single step in an autoclave;
(e) perforating the front sheet by a drilling tool
having a single or multiple head drilling spindle to form
perforations by limiting the operation depth of said single
or multiple head drilling spindle in such a way to ensure
acoustic and structural features of the sound-absorbing
acoustic composite panel;
(f) trimming of the sound-absorbing acoustic
composite panel, and
(g) fixing the sound-absorbing acoustic composite
panel on a structure of an engine nacelle or other aircraft
structure which requires at least one acoustic panel.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Ackerlind US 2,700,632 Jan. 25, 1955
Fuchs, Jr. (“Fuchs”) US 3,373,480 Mar. 19, 1968
Beggs et al. (“Beggs”) US 4,254,171 Mar. 3, 1981
Adee et al. (“Adee”) US 4,612,737 Sept. 23, 1986
Manico et al. (“Manico”) US 5,031,773 July 16, 1991
Zhou et al. (“Zhou”) US 2002/0079052 A1 June 27, 2002
Johnson et al.
(“Johnson”)
US 2004/0003885 A9 Jan. 8, 2004
Wang et al. (“Wang”) US 2006/0204714 A1 Sept. 14, 2006

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
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I. Claims 1, 3, 10, 14, and 15 as unpatentable over Zhou in
view of Adee, Beggs, and Ackerlind;
II. Claims 1, 3, 10, 14, and 15 as unpatentable over Fuchs in
view of Wang, Johnson, Zhou, Adee, Beggs, and Ackerlind;
and
III. Claims 4 and 5 as unpatentable over Fuchs in view of Wang,
Johnson, Zhou, Adee, Beggs, and Ackerlind, and further in
view of Manico.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the Examiner’s rejections. Therefore, we affirm the stated
rejections for substantially the fact findings, reasoning, and conclusions set
forth in the Examiner’s Answer, which we adopt as our own. We offer the
following for emphasis only.
For purposes of this appeal, to the extent that the rejected claims are
separately argued, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).

Rejection I: Obviousness over Zhou, Adee, Beggs, and Ackerlind

The Examiner rejects claims 1, 3, 10, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Zhou in view of Adee, Beggs, and Ackerlind.
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Ans. 3–8. Appellant’s presents the same arguments against independent
claims 1 and 10, and does not present separate arguments for the remaining
claims covered by this rejection. Br. 14. Therefore, we select claim 1 to
address Appellant’s arguments, and claims 3, 10, 14, and 15 will stand or
fall with claim 1.
Initially, we note, as did the Examiner (Ans. 14), that to the extent
Appellant argues the references individually, Appellant’s arguments fail to
persuade us of reversible error in the Examiner’s rejection. Pointing out that
each reference does not disclose an element of the claim is not helpful in
identifying reversible error by the Examiner when the Examiner is not
relying on the reference for teaching that claim element. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Thus, Appellant’s arguments that Zhou fails to disclose a sound
absorbing panel provided with holes in the skin panel (Br. 10–11) and Adee
fails to teach perforation of a face sheet before panel assembly and curing
(id. at 10, 12), fail to address the Examiner’s findings regarding the
combined teachings of these references where the Examiner's rejection does
not rely on any single reference to teach these steps and/or features. In this
regard, Appellant argues that in contrast to the claimed method which
assembles a laminated front sheet with a honeycomb sheet, and then
laminates a back sheet to the other side of the honeycomb sheet, Adee
laminates the front and back sheets to the honeycomb sheet at the same time.
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Id. at 12. However, the Examiner relies on Zhou, not Adee, for the process
of assembly of the laminated sheets to the honeycomb sheet or core. Ans. 3.
Appellant disputes the Examiner’s position (Ans. 4) that although
Zhou fails to teach the order of assembly of the front and back sheets to the
honeycomb sheet or core prior to curing, assembly of the front sheet to the
core prior to assembly of the back sheet to the core would have been prima
facie obvious since the selection of the order of assembly yields the same
expected result regardless of the order. Br. 12. Appellant asserts that the
present method produces closed panel, such as cylindrically shaped panels,
suitable for nacelles of aircraft. Id. In order to assemble such complex-
shaped panels, Appellant asserts that a first sheet must be laminated on a
mold, then the honeycomb sheet is superimposed on the laminated first
sheet, followed by assembly of the back sheet to the honeycomb sheet. Id.
Appellant contends that Adee merely produces a flat panel and fails to
envisage such complex-shaped panels. Id.
This argument is not persuasive of reversible error because Appellant
is arguing features not recited in the claims. See In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (rejecting appellant’s nonobviousness argument
as based on limitation not recited in claim); In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“Many of appellant’s arguments fail from the outset because,
as the solicitor has pointed out, they are not based on limitations appearing
in the claims.”). The claims fail to recite any limitation with respect to the
panel shape or that the laminating and assembly steps take place in a mold.
Also, the claims fail to recite any limitation excluding the production of a
flat composite panel. As such, Appellant fails to establish that the order of
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assembly of the front and back sheets to the honeycomb core is critical or
otherwise unobvious.
Notably, it has been held that a specific order of steps in
manufacturing a product may be prima facie obvious when “[t]here is
nothing in the instant record which indicates that the particular order of steps
produces results differing in any way from those which would be brought
about if another order of steps were followed.” In re Hampel, 162 F.2d 483,
485 (CCPA 1947); see also, In re Burhans, 154 F.2d 690, 692 (CCPA 1946)
(Selection of any order of performing process steps is prima facie obvious in
the absence of new or unexpected results.); In re Gibson, 39 F.2d 975, 976
(CCPA 1930) (Selection of any order of mixing ingredients is prima facie
obvious.); Ex parte Rubin, 128 USPQ 440, 441 (BPAI 1959) (Prior art
reference disclosing a process of making a laminated sheet wherein a base
sheet is first coated with a metallic film and thereafter impregnated with a
thermosetting material was held to render prima facie obvious claims
directed to a process of making a laminated sheet by reversing the order of
the prior art process steps.). Here, we perceive no difference between
assembling either the front sheet or the back sheet to the honeycomb sheet
first, so long as both sheets are attached to the honeycomb sheet prior to
curing. Moreover, the fact that Zhou does not specify any particular order
further supports Zhou’s recognition that the order of assembly of the front
and back sheets to the honeycomb sheet was within the ordinary skill in this
art.
Appellant next argues that Adee fails to disclose acoustically
perforating the front sheet after the composite panel is cured. Br. 12.
Appellant asserts that Adee teaches perforating the front sheet and not on a
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finished and cured panel. Id. Appellant also contends that Ackerlind has no
relevance to this issue because Ackerlind is directed to a different technical
problem and provides a different technical solution. Id. at 12–13.
This argument is also not persuasive of reversible error because Zhou
clearly teaches that an entirely assembled panel including composite front
and back sheets and honeycomb core is subjected to a single co-curing step
(Ans. 3; Zhou ¶ 20). While the Examiner acknowledges that Zhou fails to
teach perforation of the front sheet after polymerization/curing, the
Examiner finds Adee teaches it was known in the art to acoustically
perforate a composite material after the material has been polymerized/cured
in an autoclave (Ans. 5, 18). Although Appellant is correct that Adee
perforates a cured front sheet prior to assembly into a composite panel (Adee
6:50–53), Appellant has not addressed the Examiner’s position that it would
have been obvious to have modified Zhou’s process to include a perforation
step after the assembled panel is cured. The Examiner’s proposed
modification of Zhou is consistent with Adee’s teaching of perforating the
front sheet after curing.
In addition, Appellant’s arguments with regard to Ackerlind are also
not persuasive because the rejection relies on Ackerlind solely for a
suggestion to use a multiple head spindle drill in Zhou’s process to perforate
the cured composite panel. Ans. 6. Appellant’s arguments, which are
tantamount to asserting that Ackerlind is non-analogous prior art, fail to
specifically address the obviousness of this feature in the context of Zhou’s
process as modified in view of Beggs and Adee. A reference is analogous art
if it is either in the field of the applicant’s endeavor, or is reasonably
pertinent to the particular problem with which the inventor was concerned.
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In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). We note that Beggs teaches,
in addition to trimming, drilling holes in a finished panel. Beggs 3:65–67.
Although Appellant is correct that Ackerlind’s perforations 6 are themselves
a different solution to a different problem than presented in Adee and Beggs,
Ackerlind’s teaching that a multiple head spindle drill may be used to
perforate a panel is nonetheless reasonably pertinent to the particular
problem with which Appellant was concerned, i.e., perforating a composite
panel, and would have commended itself to those skilled in the art in
addressing perforating Zhou’s cured panel given Adee’s and Beggs’
teachings regarding panel perforating. Moreover, we note that because claim
1 does not require use of a multiple head drilling spindle, i.e., “a single or
multiple head drilling spindle,” the use of Ackerlind in the rejection is not
strictly necessary to meet the required limitations of the claim.
Appellant next argues that because Adee discloses making through
holes, Adee fails to suggest controlling depth of the holes to ensure acoustic
features of the assembled, cured panel. Br. 13.
This argument is not persuasive of reversible error because it is not
consistent with how this feature is claimed and it fails to specifically address
the Examiner’s findings in this regard. Claim 1, in relevant part, recites that
the front sheet is perforated by a drilling tool “to form perforations by
limiting the operation depth of said single or multiple head drilling spindle
in such a way to ensure acoustic and structural features of the sound-
absorbing acoustic composite panel.” Importantly, claim 1 does not exclude
through holes per se, nor does claim 1 expressly limit the hole depth.
Instead, claim 1 recites that the operation depth of the drill spindle is limited.
But claim 1 fails to indicate how the drill spindle’s operation depth is limited
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because “ensuring acoustic and structural features” fails to specify any
numerical or dimensional limits. Given that the breadth of this feature then is
quite broad, the Examiner’s finding that limiting the operation depth of the
drill spindle is inherent is reasonable and we find no error therein.
Appellant next contends that the fundamental error in the rejection lies
in asserting that each element of claim 1 was independently known without
showing any teaching that they could be combined as claimed, would
function as claimed, or that a person skilled in the art would have found it
obvious to combine the references. Br. 13. This contention is not persuasive
of reversible error because it fails to address with any specificity the
Examiner’s findings and reasoning in support of the obviousness conclusion.
Accordingly, having found no persuasive argument of reversible error,
we sustain the Examiner’s obviousness rejection of claims 1, 3, 10, 14, and
15.

Rejection II: Obviousness over Fuchs, Wang, Johnson, Zhou, Adee, Beggs,
and Ackerlind

The Examiner rejects claims 1, 3, 10, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Fuchs in view of Wang, Johnson, Zhou, Adee,
Beggs, and Ackerlind. Ans. 9–16. Appellant’s presents the same arguments
against independent claims 1 and 10, and does not present separate
arguments for the remaining claims covered by this rejection. Br. 14.
Therefore, we select claim 1 to address Appellant’s arguments, and claims 3,
10, 14, and 15 will stand or fall with claim 1.
Appellant argues that Fuchs’ holes have a completely different
function and that Fuchs uses a metal panel which does not require curing.
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Br. 16. As such, Appellant contends that Fuchs cannot suggest laminating a
front sheet to a honeycomb sheet in a mold, followed by laminating a back
sheet to the honeycomb sheet, nor polymerizing the layered structure in a
single step. Id. Appellant also argues that Adee merely discloses perforating
a front panel which is eventually assembled into a composite panel, rather
than perforating a front panel after the composite panel is assembled and
cured. Id. Further, Appellant argues that neither Adee nor Ackerlind disclose
controlling depth of the holes in order to safeguard the structure and permit
the desired acoustic features. Id.
Appellant’s arguments regarding Adee and Ackerlind with regard to
perforating a front panel prior to assembly and a lack of a teaching of
controlling hole depth to safeguard structural and acoustic properties are not
persuasive for the same reasons regarding these arguments given above.
Further, Appellant’s arguments regarding Fuchs are also not persuasive
because they fail to address the Examiner’s rejection and, specifically, the
Examiner’s findings regarding Fuchs, Wang, and Johnson. Specifically,
although the Examiner acknowledges that Fuchs fails to teach that the
materials used for the panel are a composite formed by lamination, the
Examiner finds that Fuchs teaches a variety of materials for the front and
back sheets including plastic and fibrous materials. Ans. 10. In addition, the
Examiner finds that Wang and Johnson both teach methods of
manufacturing composite laminates with a honeycomb core, and concludes
that it would have been obvious to use such materials in Fuchs to allow for
panels that are light weight and have attractive performance. Id.
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Accordingly, having found no persuasive argument of reversible error,
we sustain the Examiner’s obviousness rejection of claims 1, 3, 10, 14, and
15.

Rejection III: Obviousness over Fuchs, Wang, Johnson, Zhou, Adee, Beggs,
Ackerlind, and Manico

The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Fuchs in view of Wang, Johnson, Zhou, Adee, Beggs, and
Ackerlind, and further in view of Manico. In arguing against this rejection,
Appellant relies on the same arguments raised against Rejection D. Br. 17.
Because we did not find those arguments persuasive for the reasons given
above, we likewise sustain the Examiner’s obviousness rejection of claims 4
and 5.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1,
3–5, 10, 14, and 15 under 35 U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3, 10, 14,
15
103(a) Zhou, Adee,
Beggs, Ackerlind
1, 3, 10, 14,
15

1, 3, 10, 14,
15
103(a) Fuchs, Wang,
Johnson, Zhou,
Adee, Beggs,
Ackerlind
1, 3, 10, 14,
15

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4, 5 103(a) Fuchs, Wang,
Johnson, Zhou,
Adee, Beggs,
Ackerlind, Manico
4, 5
Overall
Outcome
1, 3–5, 10,
14, 15

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED