Ex Parte Duffy

Board of Patent Appeals and Interferences

Feb 1, 2011

10518241 (B.P.A.I. Feb. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER PHILIP DUFFY
____________

Appeal 2010-004188
Application 10/518,241
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 4-9, 11-14, and 17-21 under 35 U.S.C. §
103(a) as unpatentable over Kromrey (US 4,983,341, issued Jan. 8, 1991) in
view of Cole (US 4,325,899, issued Apr. 20, 1982), further in view of Muir
(US 2002/0124945 A1, pub. Sep. 12, 2002).3 We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
2 Final Office Action mailed Mar. 19, 2009 (“Final”).
3 Appeal Brief filed Aug. 17, 2009 (“Br.”).
Appeal 2010-004188
Application 10/518,241
We AFFIRM.
The “invention relates to the field of composite curing,” e.g., in the
manufacture of aerospace laminate components. (Spec. 1:2-5.) The invention
relates, more particularly, to a breather sheet used when “[v]acuum bagging
is employed to create pressure on a laminate during its cure cycle.” (Spec.
1:5-6.) The breather sheet “maintain[s] a path throughout the bag to the
vacuum source, enabling air and volatiles produced as the laminate cures to
escape whil[e] continuous pressure is applied in the curing of the laminate”
and “absorbs any excess resin bled from the laminate.” (Spec. 1:13-16.)
Independent claims 1 and 7 are representative of the invention and are
reproduced below from the Claims Appendix to the Appeal Brief. Claim 14,
the only other independent claim, recites a “[m]ethod of using a breather
sheet” in the curing of a laminate.
1. A breather sheet for use in the curing of a composite part
comprising two distinct, affixed outer layers of semi-rigid
material with a mesh layer interposed therebetween and
incompressible across a plane of its surface such that the
breather sheet as assembled is incompressible, each of the outer
layers being provided with a plurality of holes prior to assembly
of the breather sheet, the holes being configured and disposed
such that when the two outer layers are fixed together to form
the breather sheet a plurality of passageways is formed for air
and/or volatiles to pass freely through the breather sheet from
one outer layer to the other, the passageways being configured
and disposed such that that [sic] the interposition of the mesh
layer in any position or orientation relative to the outer layers
does not substantially obstruct all of the passageways.

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Application 10/518,241

7. A method of assembly of a breather sheet comprising two
outer layers and a mesh layer such that the assembled breather
sheet has a plurality of passageways therethrough for the free
passage of air and/or volatiles from one outer layer to the other,
comprising interposing a mesh layer between two outer layers,
each of which outer layer is of semi-rigid material and is
provided with a plurality of holes prior to assembly, aligning
the two outer layers and the mesh layer, and fixing the layers
together to form a unitary breather sheet.

The Examiner found that Kromrey discloses a breather sheet as
claimed, with the exception of “a mesh layer” and outer layers having “a
plurality of holes.” (Final 2; see also, Ans. 4 3-4). The Examiner relied on
Cole for a teaching of a mesh layer (Final 2; see also, Ans. 3-4) and Muir for
a teaching of using perforations in a mold layer to allow increased venting
(Final 2; see also, Ans. 4). The Examiner determined:

[i]t would have been obvious to one of ordinary skill of the art
to have substituted the metal mesh layer of Cole et al. for the
glass bead layer of Kromrey as the metal mesh layer serves a
similar function of allowing cross ventilation when the laminate
is compressed in the mold. It further would have been obvious
to one of ordinary skill in the art to have perforated the outer
fiber layers of Kromrey in view of Cole et al. to increase the
venting flow normal to the plane of the sheet because of the
teachings of Muir et al. to increase vapor flow through a layer
in a mold by perforation of the layer.

(Final 3; see also, Ans. 4.)
Appellant argues the Examiner:

4 Examiner’s Answer mailed Nov. 10, 2009.
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Application 10/518,241
1. erred in finding that the outer layers of Kromrey’s breather
sheet are a “semi-rigid” material as claimed, contending that Kromrey’s
outer layers are flexible (Br. 6-7);
2. relied on improper hindsight reasoning in determining that it
would have been obvious to have replaced Kromrey’s glass bead layer with
Cole’s mesh layer (Br. 8-9); and
3. erred in relying on Muir, because Muir is non-analogous art
(Br. 10-11).
As further discussed below, after considering the respective positions
of the Examiner and Appellant, we determine that a preponderance of the
evidence favors the Examiner’s conclusion of obviousness as to argued
claims 1, 7, and 14 for the reasons stated in the Examiner’s Answer.
Accordingly, we adopt the Examiner’s fact finding and reasoning (Final 2-4;
Ans. 3-8) as our own in affirming the Examiner’s decision to reject claims 1,
4-9, 11-14, and 17-21. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
As an initial matter, we note that Appellant separately argues the
patentability of method claims 7 and 14 on the basis that the Examiner did
not specifically discuss these claims in the Final, but appears to have relied
on the rationale used in connection with apparatus claim 1. (Br. 11-12.)
We have reviewed the Final and Answer and are in agreement with
the Examiner that while the statement of the rejection does not specifically
refer to claims 7 and 14, it is clear the Examiner is relying on Kromrey for a
teaching of the steps of assembling a breather sheet and using a breather
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Application 10/518,241

sheet. (Ans. 7-8; Final 2 (“[Kromrey] teaches venting through the bead
layer”); see also, Kromrey, col. 1, ll. 8-10 (“The field of art to which this
invention pertains is molding apparatus and methods and particularly
breather materials and methods of using same.”).)
Turning now to the above-listed issues raised by Appellant (supra p.
4), we first consider whether the Examiner erred in finding that the outer
layers of Kromrey’s breather sheet are a “semi-rigid” material as claimed.
The Examiner does not disagree with Appellant’s contention that Kromrey’s
outer layers are flexible. (See Ans. 5.) However, the Examiner maintains
the claim term “semi-rigid” reads on a material “having some degree of
flexibility . . . , and enough rigidity that the molded article has an even
surface.” (Ans. 5.)
The Examiner’s interpretation of the claim term “semi-rigid” is
consistent with the use of this term in Appellant’s Specification (see Spec.
3:1-12, 6:9-11). Appellant has not explained why the relied-upon disclosure
in Kromrey (i.e., col. 4, ll. 1-2 and 15-20) does not support the Examiner’s
finding that Kromrey’s outer layers possess enough rigidity to provide an
even surface (see Ans. 5-6 (Response to Argument)) and, therefore, are a
“semi-rigid material” as claimed.5 Moreover, Appellant has not
convincingly explained why the Examiner erred in finding that Kromrey’s
outer layers are semi-rigid because they are made of a glass fiber material,
which Appellant’s Specification identifies as a semi-rigid material (Ans. 5
(citing Kromrey, col. 3, ll. 65-69 and Spec. 5:5-10 (“The breather sheet . . .
comprises two outer layers 13, 15 of semi-rigid material, such as carbon

5 We note that Appellant has not filed a Reply Brief addressing the
Examiner’s Response to Argument.
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Application 10/518,241

fibre or glass fibre.”)). 6 See In re Crish, 393 F.3d 1253, 1259 (Fed. Cir.
2004) (“[W]hen the prior art evidence reasonably allows the PTO to
conclude that a claimed feature is present in the prior art, the evidence
‘compels such a conclusion if the applicant produces no evidence or
argument to rebut it.’” (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed.
Cir. 1990))).
We now turn to Appellant’s contention that the Examiner relied on
improper hindsight reasoning in combining Kromrey and Cole.
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Cf. In re Mayne,
104 F.3d 1339, 1340 (Fed. Cir. 1997) (stating that the substitution of one
known element for a known equivalent is prima facie obvious).
The Examiner’s proposed modification of Kromrey in view of Cole is
based on a finding that Kromrey’s glass beaded layer and Cole’s mesh layer
perform similar functions of providing a pathway for gases to escape and
preventing defects in the final product. (Final 2-4; see also, Ans. 3-4.) The
Examiner’s position is supported by the disclosures in Kromrey and Cole.
(Compare Kromrey, col. 2, 33-36 (“A layer of larger beads 113 . . . serves as
the main lateral fluid flow path for liquids, vapors, and gases.”) with Cole,
col. 3, ll. 22-23 (“[G]ases and vapours released from the sheet follow the

6 (See Br. 7 (“The mere fact that [Kromrey’s] material is made of glass fiber
does not of necessity make it semi-rigid.”).)
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Application 10/518,241
surface of the screen to escape from the die.”); Kromrey col. 3, ll. 51-56 (“It
is . . . preferred that at least one layer of very small size beads 110 is
disposed near the article to be molded to “aid in attaining a smooth surface
on the molded part.”) with Cole, col. 3, ll. 44-45 (formation of blisters and
other defects in the finished part is prevented).
Appellant has not provided evidentiary support for his argument that
the ordinary artisan would have replaced Kromrey’s entire breather
structure, not merely the beaded layer, with Cole’s mesh layer. (See Br. 9-
10.) Nor has Appellant otherwise convincingly explained why the
Examiner’s fact finding was insufficient to establish that the ordinary artisan
would have had a reasonable expectation of success in using Cole’s mesh
layer in place of Kromrey’s glass beaded layer. Accordingly, Appellant’s
arguments fail to persuade us that the Examiner relied on improper hindsight
reasoning.
With respect to the Examiner’s proposed combination of Kromrey and
Cole with Muir, Appellant’s argument is limited to his contention that Muir
is non-analogous art. (See Br. 10-11.)
If a reference is in a different field from that of the inventor’s
endeavor, it is still considered analogous art if it deals with a matter which
logically would have commended itself to an inventor’s attention in
considering his problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992); see
also, Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods.,
Inc., 21 F.3d 1068, 1072 (Fed. Cir. 1994) (“[I]n order to determine whether a
reference is reasonably pertinent to the inventor’s field of endeavor, one
looks to, among other things, the problem confronting the inventor.” (citing
Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1009 (Fed. Cir. 1983))).
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Application 10/518,241
Appellant argues one of ordinary skill in the art would not have
looked to Muir because the patent is not directed to breather sheets. (Br. 10-
11.) However, Appellant has not explained why the Examiner erred in
determining that the ordinary artisan would, nonetheless, have reasonably
considered Muir in attempting to solve a “common problem of increasing
the escape of gas trapped between layers during molding in a direction
normal to the surface of the layers” (Ans. 6-7; see also, Final 4).
In sum, for the reasons explained above and in the Answer, we are not
persuaded of error in the Examiner’s obviousness determination as to
appealed claims 1, 4-9, 11-14, and 17-21. Therefore, we affirm the rejection
of these claims under 35 U.S.C. § 103(a) as unpatentable over Kromrey in
view of Cole and Muir.
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).
AFFIRMED

TC

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