Ex Parte Corden et alDownload PDFPatent Trial and Appeal BoardMar 30, 201712518523 (P.T.A.B. Mar. 30, 2017) Copy Citation 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. 12/518,523 08/17/2009 Thomas Joseph Corden ACG-41827US1 6110 116 7590 04/03/2017 PFARNF fr GORDON T T P EXAMINER 1801 EAST 9TH STREET BESLER, CHRISTOPHER JAMES SUITE 1200 CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS JOSEPH CORDEN and MARK RAYMOND STEELE Appeal 2014-005004 Application 12/518,523 Technology Center 3700 Before EDWARD A. BROWN, RICHARD H. MARSCHALL, and FREDERICK C. LANEY, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Thomas Joseph Corden and Mark Raymond Steele (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 32, 33, 35, 36, 38-42, and 44-48.1 Appeal Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 After the Final Office Action, Appellants filed, and the Examiner entered for purposes of appeal, amendments to claims 32 and 47 and cancellation of several dependent claims. Br. 5; Adv. Act. 1 (dated Mar. 14, 2013). We consider the claims on appeal as presented in Appellants’ Claims Appendix. See Br. 10-12 (Claims App.). Appeal 2014-005004 Application 12/518,523 THE CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to a method of securing metallic coatings to resin-based composite materials. Spec. 1:3—5. Claims 32 and 47 are independent. Claim 32 is illustrative of the claimed subject matter and is reproduced below. 32. A method of securing a metallic coating to a resin- based composite material, characterized in that the method comprises forming a metallic electroplated preform on a tool, pattern or mold to conform one or more surfaces thereof to a predetermined shape, forming a keying structure on the electroplated preform to provide a coating, said keying structure being formed by spraying a metallic material onto said electroplated preform, the keying structure having an at least partially open structure thereby providing voids and interstices, bringing the coating and the composite material together, and subjecting them to conditions to cause the composite material and the keying structure to interlock. Appeal Br. 10 (Claims App.). The Examiner relied upon the following prior art references in rejecting the claims on appeal: THE EVIDENCE Kitano US 5,106,483 US 2005/0066510 A1 Apr. 21, 1992 Mar. 31,2005Wu 2 Appeal 2014-005004 Application 12/518,523 THE REJECTION Appellants seek review of the Examiner’s rejection of claims 32, 33, 35,36, 38-42, and 44-48 under 35 U.S.C. § 103(a) as unpatentable over Kitano and Wu. ANALYSIS Claims 32, 33, 35, 36, 38, 39, 41, 42, and 44—48 Appellants argue the claims on appeal as a group with the exception of claim 40, which Appellants also argue separately (addressed below). See Appeal Br. 7—9. Independent claims 32 and 47 both require, among other things, an “electroplated preform,” spraying a metallic material on the electroplated preform to form a coating, and bringing the coating into contact with a composite material. Appeal Br. 10, 12 (Claims App.). The specification depicts the electroplated preform as metallic layer 18. Spec. 5:14—18, 7:26, Figs. 4, 5. The Examiner found that Kitano discloses a method of securing a metallic coating to a resin-based composite, including providing a coating on an electroplated preform. Final Act. 2, 5; Ans. 2, 6. In the Answer, the Examiner refers to Kitano’s Figure 3 and elements 7 (first metal layer) and 3 (electroform matrix) as disclosing the “metallic electroplated preform on a tool.” Ans. 2 (citing Kitano 3:14—16, 3:25—32). The Examiner also found that “electroforming” in Kitano falls within the scope of an “electroplated” preform in the claims because the terms overlap and Kitano’s process mirrors the process described in the specification in relevant part. Id. at 8—9. The Examiner also found that Kitano teaches applying a keying structure 3 Appeal 2014-005004 Application 12/518,523 and coating to the electroplated preform, and bringing that coating into contact with a composite. Final Act. 2, 5—6; Ans. 2—3, 6. The Examiner found that Wu teaches spraying a metallic material on a preform as well as sand blasting a metallic layer to roughen its surface, and determined that it would have been obvious to substitute the spraying or sand blasting steps of Wu for Kitano’s coating step due to various benefits. Final Act. 2—3, 6; Ans. 3—4, 6-8. Appellants argue that Kitano discloses “electroforming a roughened metal surface 9a in order to form minute pores on the surface of the metal member 9,” and that electroform 9a does not disclose the claimed electroplated preform. Appeal Br. 7—8. Appellants assert that Kitano’s electroforming process does not disclose forming an electroplated preform on a tool because Kitano’s process takes the electroform 9a and subsequently forms it on a tool. Id. at 8. In the Reply Brief, Appellants assert that neither Kitano nor Wu discloses preforms because neither employs the electroplating process, where a preform “is subsequently applied to and shaped or formed on a tool.” Reply Br. 1. Appellants also argue that the claimed preform “is a resin-based composite material that is electroplated.” Id. According to Appellants, an “electroplated preform (i.e., a composite material pre-cure) is formed or shaped on a tool, pattern or mold to conform one or more surfaces thereof to a predetermined shape.” Id. at 1—2. Finally, Appellants argue that neither Kitano nor Wu disclose forming layers so that they are partially open voids. Br. 8. We are not persuaded that the Examiner erred in the findings regarding the disclosures of Kitano and Wu or in the determination that it 4 Appeal 2014-005004 Application 12/518,523 would have been obvious to modify Kitano by employing the spraying or sand blasting step of Wu. With respect to claim 32, the Examiner relies on Kitano’s first metal layer 7, formed on electroform matrix 3, as the electroplated preform formed on a tool. Ans. 2. Appellants do not apprise us of error in this finding. As an initial matter, Appellants do not address the Examiner’s finding that first layer 7 corresponds to the claimed preform. See Appeal Br. 7—8 (referring to second metal layer 9 and roughened surface 9a). Appellants broadly argue that Kitano and Wu fail to disclose the claimed preform, but those arguments are not commensurate in scope with the claims read in light of the specification. Appellants assert that the preform “is a resin-based composite material” or “a composite material pre cure,” Reply Br. 1, but those statements are not supported by any citations to evidence or the specification. The specification actually contradicts Appellants’ primary argument in the Reply Brief because it refers to metallic layer 18 alone as the “electroplated preform” and does not describe electroplated preform 18 as a composite material. Spec. 5:14—18, 7:26 (referring to “metallic electroplated layer 18”). The specification does refer to “composite 10” that includes three components (electroplated preform 18, inner keying structure 20, and resin-based composite material 12) and composite material 12, but those structures are distinguished by name and reference number from electroplated preform 18. Id. These arguments do not establish that the claimed preform must be a composite material, or that the Examiner erred in finding that first metal layer 7 of Kitano discloses the claimed electroplated preform formed on a “tool, pattern or mold” (matrix 3). 5 Appeal 2014-005004 Application 12/518,523 Appellants also argue that Kitano’s electro forming process differs from the claimed electroplated preform, but to the extent that argument stands apart from the “preform” argument addressed above, Appellants again fail to address adequately the Examiner’s findings. The Examiner found that the terms electroforming and electroplating overlap and that the similarities between Kitano and the specification support the conclusion that the scope of “electroplated preform,” read in light of the specification, encompasses the electroforming process Kitano discloses. Ans. 8—9. For example, the Examiner noted the similarity between Kitano’s plating onto a mold (metal layer 7 on matrix 3) and the specification’s “electroplating” method. Id. By not persuasively arguing, or even directly addressing, whether Kitano’s matrix 3 falls within the scope of “tool, pattern or mold” in claim 32 (claim 47 does not contain the limitation), or that metal layer 7 discloses an electroplated preform layer formed on the matrix, Appellants have also not adequately challenged the Examiner’s finding that Kitano discloses an electroplated preform.2 Given the lack of any special definition or explanation in the specification for the “electroplated” limitation3 * * 6and the 2 Appellants do argue that Kitano fails to disclose forming an electroplated preform on a tool because Kitano’s process takes the electroform 9a of Kitano and subsequently forms it on a tool. Br. at 8. This argument fails to explain or cite to any portion of Kitano that describes “subsequently” forming “electroform 9a” on a tool, or address whether matrix 3 falls within the scope of “tool, pattern or mold” or layer 7 falls within the scope of “electroplated preform.” See id. 3 The specification merely states that the electroplated preform layer 18 may be formed directly on the tool 24 preferably “using conventional electroplating techniques.” Id. at 3:11—14. 6 Appeal 2014-005004 Application 12/518,523 Examiner’s reliance on metal layer 7, matrix 3, and the similarity between the processes broadly described in Kitano and the specification, we are not persuaded that the Examiner erred in finding that Kitano discloses an “electroplated preform.” To the extent that the terms “electroplating” and “electroforming” have different meanings in the context of the claimed invention or otherwise, Appellants have not cited to anything in the specification defining either of those terms, or pointed to any other evidence or declaration testimony to support the attorney argument in the briefing portraying alleged differences between the terms. The record before us, therefore, lacks evidence that undermines the Examiner’s finding that Kitano discloses the claimed electroplated preform. Finally, Appellants’ argument that Wu fails to disclose forming layers so that they are at least partially open, leaving voids and interstices, does not establish error in the Examiner’s findings related to this limitation. The Examiner did not rely on Wu’s layers alone in the findings. The Examiner found that Wu’s spraying technique as well as the alternative sand blasting technique would both produce the roughened surface resulting in the claimed structure if either of those methods were applied to Kitano. Final Act. 2—3, 6; Ans. 3—4, 6—8. The Examiner also found that the specification, which describes the spraying technique as forming voids and interstices, supported this conclusion. Ans. 4, 8. Appellants do not directly address these findings, or assert that the use of spraying or sand blasting in Kitano’s method would not disclose the relevant claim limitations. 7 Appeal 2014-005004 Application 12/518,523 Based on the foregoing, we are not persuaded that the Examiner erred in the findings related to the rejection of claims 32 and 47. Appellants do not raise any additional arguments regarding claims 33, 35, 36, 38, 39, 41, 42, 44-46, and 48. We therefore sustain the rejection of those claims under § 103(a) for the same reasons discussed above. Claim 40 Claim 40 depends from claim 32, and further requires “that the keying structure is formed from material with a thermal expansion coefficient equal to or similar to that of the composite material.” Appeal Br. 11 (Claims App.). The Examiner found that “Kitano does not teach the material for the composite material, other than being a general epoxy resin material.” Final Act. 4. Nevertheless, the Examiner determined that it would have been obvious to select materials with similar coefficients of expansion because Kitano teaches heating the keying structure and composite material together. Id. According to the Examiner, one of skill in the art would recognize the benefit of having similar coefficients of expansion “so that they do no[t] separate during heat treatment.” Id.', see also Ans. 4—5. Appellants argue that Kitano never mentions the problem of heating two different materials together. Appeal Br. 9. According to Appellants, one considering Kitano and Wu would have no evidence to support the Examiner’s assertion that it would have been obvious to use similar coefficients of expansion. Id. We agree with Appellants. The Examiner does not support the assertion that using similar coefficients of expansion would have been obvious with citation to the prior art of record or any other source. Because 8 Appeal 2014-005004 Application 12/518,523 the prior art admittedly fails to disclose the limitation of claim 40, and the Examiner’s finding does not cite any evidence to support the conclusion that the limitation would have been obvious, we do not sustain the rejection of claim 40 as unpatentable over Kitano and Wu. DECISION We affirm the decision of the Examiner to reject claims 32, 33, 35, 36, 38, 39, 41, 42, and 4AA8 under 35 U.S.C. § 103(a). We reverse the decision of the Examiner to reject claim 40 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation