Corning Incorporated

Patent Trials and Appeals Board

Jul 21, 2020

2019005183 (P.T.A.B. Jul. 21, 2020)

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.
15/993,044 05/30/2018 Patrick Wilson Albor SP18-144TZ 5532
22928 7590 07/21/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK WILSON ALBOR, ROY JOSEPH BOURCIER,
and ERIC HAMILTON STARNS

____________

Appeal 2019-005183
Application 15/993,044
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claim 38 under 35 U.S.C. § 103 as
unpatentable over the combined prior art of Nagakura (US 2014/0370245
A1; Dec. 18, 2014), and Bhatnagar (US 2009/0025111 A1; pub. Jan. 29,
2009).2

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Corning Incorporated as the real party
in interest (Appeal Br. 1).
2 Appellant cancelled all claims except for claim 38 in an amendment filed
12/12/2018. The Examiner indicated that this amendment was entered
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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 38 is the sole claim and illustrative of the subject matter on
appeal:
38. A composite sheet, comprising:
a layer of discontinuous fibers enveloped by and distributed
throughout a matrix, wherein the sheet is nonplanar, and wherein the
discontinuous fibers are commonly aligned such that most of the
discontinuous fibers of the layer are lengthwise oriented within 15-degrees
of a common direction extending along curvature of the sheet;
wherein the matrix comprises a polymer; and
wherein most of the discontinuous fibers are no longer than 5 mm in
length and have a widest cross-sectional dimension orthogonal to the length
thereof that is less than 1.2 mm.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejection (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.

(cover sheet under “STATUS OF CLAIMS” shows that the only claim
rejected is claim 38 (Advisory Action mailed 01/09/2019)).
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It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contention is that Bhatnager could not have
produced short fibers in a commonly aligned direction as claimed because 1)
if the fibers were twisted together in a yarn as taught in Bhatnager, the fibers
would not be in a commonly aligned direction (Appeal Br. 3), 2) such
twisted fibers would not be enveloped and distributed in a matrix (id.), 3)
since the claimed fibers are short, Bhatnager’s teachings of alignment does
not apply (Appeal Br. 4), and 4) Bhatnager does not teach the fiber
orientation is within 15 degrees of a common direction (id.). These
arguments are reiterated in the Reply Brief, where Appellant contends that
the Examiner has misread paragraph 35 of Bhatnager (Reply Br. 2, 3).
Appellant’s arguments are not persuasive of reversible error for reasons
presented by the Examiner (Ans. 11–13).
It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact).
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Contrary to Appellant’s argument that the Examiner has misread
paragraph 35 of Bhatnager, one of ordinary skill in the art would have
inferred and readily appreciated that a known fiber orientation, such as
taught in Bhatnager to be “unidirectionally oriented fibers” explicitly as an
alternative to “a random orientation” (Bhatnager ¶ 33), may be useful in
making the nonplanar short fiber reinforced composite of Nagakura (e.g.,
Ans. 3–5)3. An artisan of ordinary skill would have weighed the advantages
and disadvantages of these two known alternative orientations, random or
unidirectionally aligned. “The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8
(Fed. Cir. 2000).
To the extent many of Appellant’s arguments imply that Bhatnager is
not enabled for unidirectionally aligning short fibers as claimed, the burden
of rebutting the presumption of enablement of the cited prior art by a
preponderance of the evidence falls on the applicant. In re Sasse, 629 F.2d
675, 681 (CCPA 1980); discussed further in In re Antor Media Corp., 689
F.3d 1282, 1288 (Fed. Cir. 2012) (“[W]e now hold that a prior art printed
publication cited by an examiner is presumptively enabling”). Appellant has
not established that a preponderance of the evidence fails to support the
Examiner’s position that one of ordinary skill in the art would have been

3 The Examiner unnecessarily repeated the rejections of all the claims
present in the Final Action; whereas claim 38 is the only remaining claim.
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able to make a sheet such that “most of the discontinuous” short fibers (as
recited in claim 38) of Nakagura are oriented in a unidirectional alignment
as taught in Bhatnager. Appellant has not provided sufficient evidence that
making most of the short fibers of Nakagura unidirectionally oriented as
taught to be one of two possible options in Bhatnager would have been
beyond the capabilities of a person of ordinary skill in the art. As we “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ,” we determine that a person of ordinary skill in the art
would have overcome any difficulties to make short fibers unidirectionally
aligned within their level of skill. See KSR, 550 U.S. at 418.
Thus, Appellant has not shown reversible error in the Examiner’s
obviousness determination of the claimed composite sheet based on the
combined teachings of Nakagura and Bhatnager. See KSR, 550 U.S. at 417
(the predictable use of known prior art elements performing the same
functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted).
Accordingly, we sustain the Examiner’s rejection of independent
claim 38.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
38 103 Nagakura,
Bhatnager
38

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)(1)(iv).

AFFIRMED