Cheong, Wun Chet Davy. et al.

Patent Trials and Appeals Board

Dec 10, 2019

13578605 - (D) (P.T.A.B. Dec. 10, 2019)

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.
13/578,605 11/20/2012 Wun Chet Davy Cheong 8948P036 4784
8791 7590 12/10/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
SALVATORE, LYNDA
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
12/10/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WUN CHET DAVY CHEONG,
BENG CHYE VINCENT TAN, and KHANT PHYO
____________

Appeal 2019-001185
Application 13/578,605
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 1–5, 7–9, 13, 14, 26, 28, 29, 34, and 35.
Appeal Br. 1. 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 parties in interest as the
applicants and assignees of the full interest in the invention, which are
(1) Agency for Science, Technology and Research and (2) National
University of Singapore. Appeal Br. 3.
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The invention is generally directed to a composite material that is able
to dissipate the kinetic energy of a moving object. Spec. ¶ 1. Claim 1
illustrates the invention (formatting added):
1. An encapsulated composite material able to dissipate the
kinetic energy of a moving object, the encapsulated composite
material comprising a plurality of stacks of composite material,
wherein each said stack of composite material comprises a layer
of ballistic material bonded to a layer of porous matrix material
by an adhesive, and the plurality of stacks of composite
material are held together by an encapsulation, wherein the
layer of ballistic material is formed from a material different
from that used to form the layer of porous matrix material,
wherein the layer of porous matrix material comprises a
polymer selected from the group consisting of polypropylene,
polyethylene, polymethylpentene, polybutene, poly(4-methyl-1-
pentene), polyester, and combinations thereof, the encapsulated
composite material further comprising a shear thickening fluid,
wherein the shear thickening fluid intercalates into the porous
matrix material.
Independent claim 34 is directed to an article made from the
encapsulated composite material recited in claim 1.
Appellant requests review of the following rejections maintained by
the Examiner:
I. Claims 1–5, 7–9, 13, 14, 28, 34, and 35 rejected under 35
U.S.C. § 103(a) as unpatentable over Wagner (US 2006/0234577 A1,
published October 19, 2006) and Matsumura (US 2006/0252325 A1,
published November 9, 2006).

II. Claim 29 rejected under 35 U.S.C. § 103(a) as unpatentable
over Wagner, Matsumura, and Gimbel (US 6,081,927, issued July 4, 2000).

III. Claim 26 rejected under 35 U.S.C. § 103(a) as unpatentable
over Wagner, Matsumura, and Sabesan (US 2005/0181024 A1, published
August 18, 2005).
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For Rejection I, Appellant focuses arguments on independent claim 1
as representative of all the claims rejected. Appeal Br. 10. Appellant
presents arguments for separately rejected claims 26 and 29 (Rejections II
and III). Appeal Br. 23–26. Accordingly, we select claim 1 as
representative of the subject matter claimed. Claims 2–5, 7–9, 13, 14, 28,
34, and 35 stand or fall with claim 1. We address the arguments for claims
26 and 29 separately.

OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and the Answer,
we affirm the Examiner’s prior art rejections of claims 1–5, 7–9, 13, 14, 26,
28, 29, 34, and 35 based on the fact-finding and for the reasons provided by
the Examiner. We add the following for emphasis.
Claim 1
The Examiner finds that Wagner teaches an encapsulated armor
composite material comprising multiple layers of fabric, some of which may
be impregnated with a shear thickening, where the armor composite material
differs from the subject matter of claim 1 in that Wagner does not disclose
employing an epoxy adhesive to join the layers together. Final Act. 3–4;
Wagner ¶¶ 25–30, 35. The Examiner turns to Matsumura for the missing
feature. The Examiner finds that Matsumura teaches it is known to make a
protection product having excellent impact resistance to a projectile, where
the product comprises multiple layers of ballistic woven fabrics joined with
an epoxy based adhesive. Final Act. 4; Matsumura ¶¶ 5, 59. The Examiner
determines that it would have been obvious to one having ordinary skill in
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the art to modify Wagner’s armor composite material by joining the layers
of fabrics, as taught by Matsumura, to provide it with more structural
stability. Final Act. 5.
Appellant argues that that the combined teachings of Wagner and
Matsumura would not have led one skilled in the art to the claimed plurality
of composite stacks comprising at least one layer of a porous matrix material
and at least one layer of a ballistic material bonded together. See generally
Appeal Br. Appellant specifically argues that Wagner fails to disclose
bonding of the individual ballistic layers to form composites stacks in
forming the armor composite material. Id. at 14. Appellant further argues
that Matsumura only discloses adhering laminated flat woven fabrics with an
adhesive to form a fiber-reinforced plastic, a hard plate, and/or a composite
molded product, which are all generally inflexible and contrary to Wagner’s
object to provide a ballistic resistant material that is more flexible. Appeal
Br. 18–19; Matsumura ¶¶ 59, 79, 105. Thus, Appellant argues that
modifying Wagner’s armor composite material so as to bond the ballistic
layers therein together by an adhesive, as taught by Matsumura, would have
rendered Wagner’s invention unsatisfactory for its intended purpose.
Appeal Br. 17, 19. Thus, Appellant contends that, absent impermissible
hindsight, one skilled in the art would not have arrived at the claimed
invention from the combined teachings of the cited art. Id. at 14.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
The Examiner finds that Wagner’s disclosure encompasses an
arrangement where a ballistic layer alternates with a layer of material
differing from the ballistic layer and that some layers can be impregnated
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with STF. Ans. 7; Wagner ¶ 25. The Examiner also finds that Wagner
discloses encapsulating the whole composite assembly with a polyethylene
film to prevent leakage of the STF. Ans. 7; Wagner ¶ 35. The Examiner
additionally finds that Matsumura discloses that it is known to use
thermosetting adhesives to make protective products, many of which are
similar to the products made by Wagner. Ans. 8–9; Matsumura ¶¶ 59, 92;
Wagner ¶¶ 59–71. Thus, the Examiner presents a reasonable basis for one
skilled in the art to use adhesives in bonding at least some of Wagner’s
ballistic layers with a reasonable expectation that the product from the
combined teachings of the prior art would be suitable as a protective
product. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.”).
As we note above, Appellant argues that Matsumura discloses the use
of adhesives for rigid protection products (Appeal Br. 18–19) and that
Wagner teaches away from the invention by explicitly describing that the
use of sticky resins in the formation of fiber-to-fiber bonds may result in
detrimental stress reflections at yarn crossovers during impact by a moving
article and decrease fabric flexibility. Appeal Br. 16–17; Wagner ¶ 9.
However, a fair reading of Matsumura’s disclosure reveals that the particular
application of making rigid protection products is only an example that does
not limit the application of adhesives to these types of products. Matsumura
¶ 59 (discussing examples of fixing methods); see Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the
prior art, including unpreferred embodiments, must be considered.”)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In re Fracalossi,
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681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s
disclosure is not limited to its examples).
With respect to Wagner, whether the prior art teaches away from the
claimed invention is a question of fact. DyStar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005). A reference teaches away from a claimed
invention when a person of ordinary skill, “upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
While Wagner points to some issues with respect to the use of “sticky
resins” in the prior art, we agree with the Examiner that there is no teaching
in Wagner that would have discouraged one skilled in the art from using
adhesives in making Wagner’s armor composite. Ans. 8. The Examiner
provides a reasonable explanation in the Answer that a person of ordinary
skill in the art would have recognized that the amount of adhesive could be
varied and tailored depending on desired end product (for example, helmet
v. protective body clothing). Ans. 9. Moreover, Appellant has not directed
us to any portion of Wagner disclosing that adhesives should not or cannot
be used in combination with the features of Wagner’s invention. In fact,
Appellant tacitly acknowledges that it is known, and therefore well within
the skill in the art, to bond multiple layers of fabric to make a flexible
protective product. Spec. ¶ 7. Thus, Appellant has not explained adequately
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why using adhesives in Wagner’s protective articles would have rendered
such articles unsuitable for their intended purpose.
Appellant argues that Wagner’s general disclosure of an armor
composite material having a plurality of ballistic material layers where some
or all of the ballistic material layers can be made of the same or different
materials does not specifically disclose the claimed structural configuration
of a plurality of stacks of composite material, where each stack comprising a
layer of ballistic material bonded to a layer of porous matrix material by an
adhesive and the plurality of stacks are being held together by an
encapsulation. Appeal Br. 19–21; Wagner ¶ 25.
This argument also fails to identify reversible error in the Examiner’s
determination of obviousness for the reasons presented by the Examiner.
Ans. 6–7.
Moreover, Appellant relies on a number of non-limiting examples to
describe the subject matter of claim 1, particularly on the non-limiting
embodiment illustrated on Figure 1B of the Application, and tailors the
arguments presented based on these non-limiting embodiments. Appeal Br.
11–13, 20. The non-limiting embodiment of Application Figure 1B shows a
specific structure for Appellant’s encapsulated composite material where
two stacks of composite material are stacked up with the ballistic material on
one stack contacting the porous material of the other stack.
We construe the claim language by giving it its broadest reasonable
meaning in light of the Specification without reading limitations from the
Specification into the claims. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004). In light of the Specification and Appellant’s arguments, we
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determine that the language of claim 1 describing the structure of the
encapsulated composite material is broader than the embodiments described
in the Specification and discussed in the Appeal Brief. For example, the
specific orientation of the stacks of composite material shown in Application
Figure 1B is encompassed by the claim language but it is not specifically
recited in the claim. The language of the claim also encompasses stacking
the stacks of composite material in other orientations, such as having the
foam layers contacting each other, having the ballistic material layers
contacting each other, or providing a plurality of stacks of composite
material in various other orientations. Further, the language in the claim
describing the structure of the encapsulated composite material is drafted
with the open transitional language of “comprising” that does not exclude
the inclusion of other layers not considered to be stacks of composite
material. Thus, given the broad scope of the claim, Appellant has not
adequately explained how the claimed invention distinguishes from the
encapsulated composite material resulting from the combined teachings of
the cited art.
Claims 26 and 29
Claim 26 requires that encapsulated composite material further
comprises an anti-bacterial agent. Claim 29 requires using latex to
encapsulate the composite material.
We refer to the Examiner’s Final Action for complete statements of
the rejection of these claims. Final Act. 5–6.
We have considered Appellant’s arguments with respect to the
rejections of claims 26 and 29 and find them unavailing for the reasons the
Examiner presents. Appeal Br. 23–26; Ans. 10–11.
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Moreover, the premise of Appellant’s arguments is based on the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Wagner and Matsumura not being sustained. We refer to our previous
discussion sustaining this rejection.
Thus, Appellant’s arguments do not point to error in the Examiner’s
determination of obviousness for the reasons we give above and because
Appellant’s arguments do not distinguish the additional features of the
rejected claims based on the additionally cited references.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–5, 7–9, 13, 14, 26, 28, 29, 34, and 35 for the reasons the Examiner
presents and we give above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
13, 14, 28,
34, 35
103(a) Wagner,
Matsumura
1–5, 7–9,
13, 14, 28,
34, 35

29 103(a) Wagner,
Matsumura,
Gimbel
29
26 103(a) Wagner,
Matsumura,
Sabesan
26
Overall
Outcome
1–5, 7–9,
13, 14, 26,
28, 29, 34,
35

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

AFFIRMED