Ex Parte Elzey et al

Board of Patent Appeals and Interferences

Jul 14, 2009

10487291 (B.P.A.I. Jul. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANA M. ELZEY and HAYDN N.G. WADLEY
____________

Appeal 2009-003705
Application 10/487,291
Technology Center 1700
____________

Decided:1 July 15, 2009
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
ROMULO H. DELMENDO and BEVERLY A. FRANKLIN,
Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8, 9, 16-19, 27, 33, and 34 (Appeal Brief filed May 22, 2008,
hereinafter “App. Br.”; Final Office Action mailed August 10, 2007). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Appellants’ claimed invention relates to “reversible shape memory
multifunctional structures,” i.e., structures that are “able to undergo a
reversible change in shape without any external or bias forces required to
complete the full cycle of shape change” (Specification, hereinafter “Spec.,”
3, ll. 22-26).
Claims 1, 6, and 8 read as follows:
1. A multifunctional member adapted for reversible
structural deformation from a first shape to a second shape, the
multifunctional member comprising:
a first active member, said first active member adapted to
contract if exposed to a temperature above a first transition
temperature range;
a second active member, said second active member
adapted to contract if exposed to a temperature above a second
transition temperature range;
at least one core member, wherein said first and second
active members are connected to opposite sides of said core
member;
at least one heat source operatively connected to said first
and second active members to expose said first and second
active members to said first and second temperatures,
respectively;
wherein said first and second active members are
operable to alter the shape of the multifunctional member
between said first and second shapes, wherein:
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said first active member contracts while above said first
transition temperature range causing said at least one core
member to bend out-of-plane and thereby causing said second
active member to expand, whereby said multifunctional
member assumes said first shape;
said second active member contracts while above said
second transition temperature range causing said at least one
core member to bend out-of-plane and thereby causing said first
active member to expand, whereby said multifunctional
member assumes said second shape; and
wherein said multifunctional member retains each of said
first and second shapes after exposure to said first and second
temperatures by said at least one heat source has been stopped.

6. The multifunctional member of claim 1, wherein said
core is made from a material selected from the group consisting
of polymers, metals, and ceramics.

8. The multifunctional member of claim 1, wherein said
core is comprised of at least two corrugated layers with a center
sheet disposed between adjacent said corrugated layers.
(App. Br. 12, 13, Claims Appendix.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed August 1, 2008, hereinafter
“Ans.” 3-8):
Cincotta US 5,114,104 May 19, 1992
Beauchamp US 5,186,420 Feb. 16, 1993
Gregg US 5,534,354 Jul. 9, 1996
Maclean US 5,662,294 Sept. 2, 1997

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The Examiner rejected the claims as follows:
I. claims 1, 2, 18, 19, 27, 33, and 34 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Cincotta (Ans. 3-5);
II. claims 3-5, 16, 17, 33, and 34 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Cincotta and
Maclean (Ans. 5-7);
III. claim 6 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Cincotta and Beauchamp (Ans. 7); and
IV. claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Cincotta and Gregg (Ans. 8).
We uphold Rejections I-III. With respect to Rejection IV, we affirm
the rejection of claim 6, but reverse as to claims 8 and 9.

ISSUES
Rejection I
The Examiner found that Cincotta describes every limitation of claim
1 (Ans. 3-4). Specifically, the Examiner asserted that “[t]he outer surfaces
of the ‘control surfaces’ . . . clearly correspond to the claimed first and
second active members and the material present between said outer surfaces
is considered the claimed core member” (Ans. 9). The Examiner further
found that Cincotta “teaches that the member retains said first and second
(bent) shapes, at least for a moment, after exposure to the first and second
temperatures has been stopped” (id. at 11).
In the alternative, the Examiner asserted that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
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“to construct the [multifunctional] member with a material of low modulus
of elasticity and without a static spring, thus resulting in the member failing
to spring back to its original shape, because Cincotta discloses that some
applications do not require spring back operational movement” (Ans. 4-5).
Appellants, on the other hand, contended that the Examiner erred in
finding anticipation because “Cincotta does not contain a core member that
causes deformation of a second active member in response to contraction of
a first active member as set forth in” claim 1 (App. Br. 6). Furthermore,
Appellants argued that Cincotta does not disclose the core member when
disregarding the spring because the claimed invention “requires first and
second active members connected to opposite sides of a core member” (id. at
7). Also, Appellants contended that Cincotta does not anticipate the claimed
invention because “the control surface 13 does not retain first or second
shapes assumed by the multifunctional member by contraction of the first or
second active member after exposure to the first or second temperatures by
the heat source has been stopped, as set forth in claim 1” (App. Br. 7).
Specifically, Appellants argued that in contrast to the claimed invention,
Cincotta discloses that “when the current through [the shape memory alloy]
fibers is stopped, the fibers cool and the control surface 13 returns to its
original shape” (id.).
With respect to the Examiner’s obviousness rejection, Appellants
similarly asserted that “Cincotta fail[s] to disclose that the multifunctional
member retains its deformed shape after exposure to temperatures by a heat
source [and] does not suggest any modification of the control surface 13 to
do so” (App. Br. 8).
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Thus, the issues arising from the contentions of the Examiner and
Appellants are:
Have Appellants shown reversible error in the Examiner’s finding that
the core member causes deformation of the second active member in
response to contraction of the first active member, as required in claim 1?
Have Appellants shown reversible error in the Examiner’s finding that
Cincotta discloses first and second active members connected to opposite
sides of the core member, as required in claim 1?
Have Appellants shown reversible error in the Examiner’s finding that
Cincotta discloses a multifunctional member that retains a first and second
shape after exposure to first and second temperatures is stopped, as required
in claim 1?
If so, with respect to the obviousness rejection, have Appellants
shown reversible error in the Examiner’s conclusion that it would have been
obvious to one of ordinary skill in the art to modify Cincotta’s member so
that it does not return to its original shape, as required in claim 1?

Rejection II
The Examiner concluded that the claimed subject matter of claims 3-
5, 16, 17, 33, and 34 would have been obvious to one of ordinary skill in the
art in view of the combined teachings of Cincotta and Maclean (Ans. 5-7).
Appellants’ only argument was that “Maclean, relied on for disclosure
of a transition temperature and Ni-Ti-Cu composite material otherwise is
irrelevant to the claimed invention, as further confirmed by the withdrawal
in the final rejection of Maclean as a primary reference as relied on in a
previous Office action” (App. Br. 9-10).
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Thus, the sole issue raised by the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to combine
the teachings of Maclean and Cincotta to arrive at an apparatus encompassed
by the rejected claims because, in the Final Office Action, Maclean was
withdrawn as a primary reference as applied in a previous Office Action?

Rejection III
The Examiner found that “Cincotta is silent with regards to specific
core materials,” as recited in claim 6 (Ans. 7). To account for this
difference, the Examiner relied on Beauchamp, which was found to teach
“that it is known in the shape memory alloy fin art to use a metal core” (id.).
The Examiner then concluded:
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to make the core from
metal motivated by the expectation of successfully practicing
the invention of Cincotta and because it has been held to be
within the general skill of a worker in the art to select a known
material on the basis of its suitability and desired characteristics
[id.].
Appellants, on the other hand, contended: “Beauchamp does not
disclose a core member as set forth in claim 6” because “Beauchamp
discloses a control surface constructed of an elastomer with a spring metal
backbone” (App. Br. 9). Furthermore, Appellants asserted: “Beauchamp
fails to make up for the shortcomings of Cincotta with respect to
independent claim 1, which limitations are incorporated into claim 6 by
dependency” (id.).
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Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to combine
the teachings of Beauchamp and Cincotta to arrive at a structure
encompassed by the subject matter of claim 6 including a core made from
polymers, metals, or ceramic?

Rejection IV
As to claim 6, the Examiner acknowledged that “Cincotta is silent
with regards to [the] specific core materials” recited in the claim (Ans. 8).
To account for this difference, the Examiner relied on Gregg, which was
found to teach that it is well known in the wing art to use a metal core (id.).
The Examiner concluded from these findings that it would have been
obvious to one of ordinary skill in the art to make the core from metal in
Cincotta because it is within the general skill of a worker in the art to select
a known material based on its suitability and known characteristics (id.).
With regard to claims 8 and 9, the Examiner found that “Cincotta does
not specifically mention the claimed core layer structure, but Gregg
discloses that it is known in the aircraft wing art to construct the core of a
wing from at least two corrugated layers with a center sheet disposed
between the layers” (id.). The Examiner concluded that it would have been
obvious to use Gregg’s core structure in Cincotta’s multifunctional member
“because the core structure would provide the member with low weight and
structural efficiency and because it is within the general skill of a worker in
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the art to select a known structure on the basis of its suitability and desired
characteristics” (id.).
Appellants’ only contention with regard to claim 6 is that Gregg “fails
to cure any of the fundamental deficiencies of Cincotta as related to claim 1”
(App. Br. 10). With regard to the rejection of claims 8 and 9, Appellants
argued that the Examiner erred because “there exists no reason that one of
ordinary skill in the art would have made the unidentified ‘core structure’ of
Cincotta from the corrugated structure shown by Gregg” (id.). Specifically,
Appellants asserted that “it is not apparent how the core structure of Gregg
would be substituted for the ‘core structure’ of Cincotta while maintaining
the functionality and operation of the Cincotta device” (id.).
Thus, the issues arising from the contentions of the Examiner and
Appellants are:
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to combine
the teachings of Gregg and Cincotta to arrive at the subject matter of claim 6
including a core made from metals?
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion with respect to claims 8 and 9 because a person
having ordinary skill in the art would not have expected Cincotta’s
multifunctional member to retain its function when modified to include
Gregg’s core structure?

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FINDINGS OF FACT (“FF”)
1. Figures 1 and 2 of Cincotta are reproduced below:

Figures 1 and 2 depict a control surface system 10 including a
moldable control surface 13, attached to a leading edge 11,
having a static spring 14 embedded within the moldable surface
and a plurality of shape memory alloy fibers 15 attached to
wider material strips 16 that are embedded within the surface of
the moldable control surface 13 (col. 2, ll. 46-48 and 60-63; col.
3, ll. 3-4). Figure 2 further illustrates the curved control surface
13 resulting from the contraction of shape memory alloy fibers
15 on one side of the control surface (col. 3, ll. 44-48).
2. Cincotta discloses that an “[e]lectric current can be used to
generate heat and [cause] a resulting temperature change in the
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shape memory alloy which results in a change of length of the
shape memory alloy” (col. 3, ll. 20-23).
3. Cincotta discloses: “In operation, when electrical source 17
applies current to the shape memory alloy fibers 15 on one side
of the control surface 13, the fibers 15 attached to strips 16
contract to cause a curved shape in control surface 13 as shown
in FIG. 2” (col. 3, ll. 44-48; Fig. 2).
4. Cincotta discloses that “[w]hile only one side is shown in FIG.
1, fibers 15 attached to strips 16 are embedded in the control
surface 13 on both sides of control surface 13” (col. 3, ll. 8-10).
5. Cincotta discloses:
A static spring 14 may also be embedded within
the moldable control surface 13 in order to help
retain the shape of control surface 13. The
necessity of static spring 14 is dependent upon the
choice of elastomeric material for control surface
13 as well as operational movement requirements
of the control surface 13. For example, if the
material chosen for the control surface 13 had a
relatively high modulus of elasticity or was not
required operationally to quickly “spring back” to
its original shape, a static spring 14 may not be
necessary [col. 2, l. 60 to col. 3, l. 2; emphasis
added].
6. Thus, Cincotta discloses that the moldable control surface 13
fills the space between the outer surfaces of the control surface
system 10 and includes embodiments wherein: (i) a spring is
embedded in the moldable control surface material; and (ii) no
spring is present.
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7. Cincotta discloses that “[t]he moldable control surface 13 is
typically a flexible elastomeric material that retains its
resiliency when heated and for numerous shapings” (col. 2, ll.
58-60).
8. Cincotta discloses:
When the electrical source 17 is disconnected from
fibers 15, the fibers 15 cool in an ambient or
forced water stream to once again elongate to their
original size. Should the cooling from ambient
water be insufficient, an external cooling means
(not shown) could be used. As mentioned above,
the optional static spring 14 may be embedded
within control surface 13 to supply a bias force to
return control surface 13 to its original shape as the
fibers 15 cool [col. 3, ll. 55-63].
9. Beauchamp discloses a spring metal backbone that connects the
leading and trailing edge structures in a moldable control
surface (col. 3, ll. 44-49).
10. Gregg discloses a method of superplastically forming sandwich
structures:
The method reduces problems with grooving and
thinning in corners associated with prior art
superplastic forming operations. The present
invention also allows structural engineers to tailor
the internal reinforcement of the sandwich
structure to take account for differing loads
throughout the sandwich structure. This ability to
tailor the internal reinforcement decreases weight
and increases structural efficiency [col. 3, ll. 25-
35].
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11. Gregg discloses, in a preferred embodiment, that a wing is
fabricated in accordance with the superplastic forming
operation (col. 5, ll. 14-15).

PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification.
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”) (Citation omitted);
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a
disputed claim term its broadest reasonable interpretation during patent
prosecution.”).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416.
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ANALYSIS
Rejection I
Rejection of Claims 1, 2, 18, 19, 27, 33, and 34 under 35 U.S.C. § 102(b) as
Anticipated by, or, in the Alternative, under 35 U.S.C. § 103(a) as Obvious
over Cincotta.
Appellants have relied on the same arguments for all the claims
subject to this rejection (App. Br. 5-9). Accordingly, in addressing
Appellants’ arguments, we select claim 1 as representative and confine our
discussion to this selected claim. See 37 C.F.R. § 41.37(c)(1)(vii).
We start with claim construction. Claim 1 recites that the
multifunctional member “retains each of said first and second shapes after
exposure to said first and second temperatures by said at least one heat
source has been stopped.” Appellants do not direct us to any special
definition in the Specification that restricts the scope of the claim terms
(App. Br. 5-9), and thus we apply a broad interpretation. ICON Health and
Fitness, 496 F.3d at 1379.
When the terms are given their broadest reasonable interpretation
based on their plain meanings, one skilled in the relevant art would have
understood the phrase “retains each of said first and second shapes after
exposure to said first and second temperatures by said at least one heat
source has been stopped,” to read on a characteristic of the multifunctional
member to retain each of the first and second shapes for any length of time
“after exposure to said first and second temperatures by said at least one heat
source has been stopped.” Thus, we are in complete agreement with the
Examiner’s explicit claim interpretation (Ans. 11).
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Having ascertained the full scope of claim 1, we find no persuasive
merit in Appellants’ argument that claim 1 differs from Cincotta on the basis
that the prior art reference does not describe a “multifunctional member
[that] retains each of said first and second shapes after exposure to said first
and second temperatures by said at least one heat source has been stopped,”
as recited in the claim (App. Br. 7). In this case, the Examiner found that
“[t]he outer surfaces of [Cincotta’s] ‘control surfaces’ (13) (see Figures 1
and 2) clearly correspond to the claimed first and second active members
and the material present between said outer surfaces is considered the
claimed core member” (Ans. 9; FF 1). The Examiner further found that
“Cincotta clearly teaches that the member[s] retain[] said first and second
(bent) shapes, at least for a moment, after exposure to the first and second
temperatures has been stopped” (Ans. 11; FF 2-8). That is, the Examiner’s
position was that Cincotta discloses that ambient or forced water cooling,
without the static spring 14, would not cause the member to return
immediately to its original shape (FF 5, 6, and 8).
Appellants, however, have not directed us to any persuasive evidence
or reasoning why the Examiner’s position (which we find reasonable)
constitutes error, let alone reversible error. Contrary to Appellants’ belief,
and as aptly stated by the Examiner, Cincotta’s disclosure anticipates
because “the current claims do not limit the time the claimed member must
retain shape after exposure to the first and second temperatures has been
stopped” (Ans. 11).
We are also unpersuaded by Appellants’ contention that Cincotta does
not disclose a core member that causes deformation of a second active
member in response to contraction of a first active member (App. Br. 6).
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Cincotta teaches that the inner portion of moldable control surface 13 (i.e.,
the portion between the outer or exposed surfaces of moldable control
surface 13) comprises elastomeric material, with or without an embedded
spring (FF 1 and 5-7). Cincotta’s Figures 1 and 2 would have plainly
disclosed to one of ordinary skill in the art that when the shape memory
fibers of a first active member (i.e., outer surface of control surface 13)
contract, the forces from the contraction would necessarily transmit through
the inner material to the second active member on the opposite side of the
moldable control surface 13 (FF 1-4 and 6-8). Also, while Appellants argue
that the static spring does not cause deformation of a second active member
as a result of contraction of a first active member because it is not needed in
all applications (App. Br. 6-7), this argument fails to address why the core
member, which is always present, would not cause deformation.
We also affirm the rejection under 35 U.S.C. § 103, because
Appellants have not shown reversible error in the Examiner’s rejection
under 35 U.S.C. § 102. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).

Rejection II
Rejection of Claims 3-5, 16, 17, 33, and 34 under 35 U.S.C. § 103(a) as
Obvious in View of Cincotta and Maclean.
Appellants rely on the same argument for all the claims subject to this
rejection without any specific discussion as to the separate patentability of
any particular claim (App. Br. 9-10). We address this argument accordingly,
with particular focus on claim 3, which is representative of all the rejected
claims. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants do not dispute the Examiner’s stated reasons for
combining Cincotta with Maclean (App. Br. 9-10). Rather, Appellants argue
that the withdrawal of Maclean as a primary reference in another rejection in
a previous Office Action demonstrates that Maclean is “otherwise irrelevant
to the claimed invention” (id. at 9).
But this argument fails at the outset because Appellants have not
explained why the withdrawal of Maclean in another rejection necessarily
precludes a different rejection based on a combination of references, namely
Cincotta and Maclean. Accordingly, Appellants have failed to show
reversible error in the Examiner’s rejection.

Rejection III
Rejection of Claim 6 under 35 U.S.C. § 103(a) as Obvious in View of
Cincotta and Beauchamp.
Appellants’ contention that “Beauchamp does not disclose a core
member as set forth in claim 6” (App. Br. 9), is unpersuasive to show that
the Examiner reversibly erred. Specifically, the Examiner found that
Beauchamp teaches a core member made of metal (Ans. 7; FF 9).
Appellants have not directed us to any persuasive evidence or reasoning that
the Examiner erred in this finding or in concluding that it would have been
obvious to one of ordinary skill in the art to substitute Cincotta’s core
member with Beauchamp’s metal core member to arrive at the claimed
multifunctional member having a core “made from a material selected from .
. . metals . . . .” Moreover, Cincotta discloses a core member (i.e., material
between the outer surfaces of the control surface) that is made of an
elastomer (i.e., a polymer) (FF 1, 5, and 7).
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For these reasons, we uphold the Examiner’s obviousness rejection of
claim 6 over the combined teachings of Cincotta and Beauchamp.

Rejection IV
Rejection of Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as Obvious in View
of Cincotta and Gregg.
Claim 6
With respect to claim 6, Appellants rely on the same arguments
offered in support of the patentability of claim 1 in Rejection I discussed
above (App. Br. 10). Thus, for the same reasons as discussed above, we find
that Appellants have not shown reversible error in the Examiner’s
obviousness rejection of claim 6 in view of Cincotta and Gregg.

Claims 8 and 9
We agree with Appellants that the Examiner has not established, in
the first instance, how the disclosed function and operation of Cincotta’s
device would be maintained if modified to include Gregg’s core structure
(App. Br. 10). The Examiner acknowledged that Cincotta does not disclose
the claimed subject matter of the core layer structure required in claim 8
(from which claim 9 depends) (Ans. 8). While the Examiner relied on
Gregg as teaching a core “comprised of at least two corrugated layers with a
center sheet disposed between adjacent . . . corrugated layers,” Gregg
discloses the use of this core in sandwich structures used in superplastic
forming operations (FF 10 and 11).
The Examiner, however, has not adequately explained why a person
having ordinary skill in the art would have been led to combine Gregg,
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which teaches multiple density sandwich structures used in superplastic
forming operations, with Cincotta, which is directed to a multifunctional
member adapted for reversible structural deformation. Specifically, the
Examiner has not directed us to any evidence or persuasive reasoning that
Gregg’s core would reasonably have been expected to work successfully as
Cincotta’s core in a multifunctional member for reversible structural
deformation, wherein a first active member contracts, “causing said at least
one core member to bend out-of-plane and thereby causing said second
active member to expand, whereby said multifunctional member assumes
said first shape” (Ans. 8 and 15).
On this record, the Examiner has not provided sufficient evidence to
support the conclusion of obviousness as to claims 8 and 9.

CONCLUSION
Rejection I
Appellants have not shown reversible error in the Examiner’s finding
that Cincotta discloses a multifunctional member that retains a first and
second shape after exposure to first and second temperatures is stopped, as
required by claim 1.
Appellants have not shown reversible error in the Examiner’s finding
that the core member causes deformation of the second active member in
response to contraction of the first active member, as required in claim 1.
Appellants have not shown reversible error in the Examiner’s finding
that Cincotta discloses first and second active members connected to
opposite sides of the core member, as required in claim 1.

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Rejection II
Appellants have not shown reversible error in the Examiner’s
conclusion that it would have been obvious to one of ordinary skill in the art
to combine the teachings of Maclean and Cincotta to arrive at an apparatus
encompassed by the rejected claims based upon their argument that, in the
Final Office Action, Maclean was withdrawn as a primary reference as
applied in a previous Office Action.

Rejection III
Appellants have not shown reversible error in concluding that it would
have been obvious to one of ordinary skill in the art to combine the
teachings of Beauchamp and Cincotta to arrive at the claimed subject matter
including a core made from metals or polymer as required by claim 6.

Rejection IV
Appellants have not shown reversible error in concluding that it would
have been obvious to one of ordinary skill in the art to combine the
teachings of Gregg and Cincotta to arrive at the claimed subject matter of
claim 6, including a core made from metals.
However, Appellants have shown reversible error in the Examiner’s
obviousness rejection of claim 8 over the combined teachings of Cincotta
and Gregg based on a lack of reasonable expectation of success in using
Gregg’s core structure in Cincotta.

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DECISION
We affirm the Examiner’s decision to reject:
I. claims 1, 2, 18, 19, 27, 33, and 34 under 35 U.S.C. § 102(b) as
anticipated by, or, in the alternative, under 35 U.S.C. § 103(a)
as unpatentable over Cincotta;
II. claims 3-5, 16, 17, 33, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Cincotta and Maclean;
III. claim 6 under 35 U.S.C. § 103(a) as unpatentable over Cincotta
and Beauchamp; and
IV. claim 6 under 35 U.S.C. § 103(a) as unpatentable over Cincotta
and Gregg.
We reverse, however, the Examiner’s decision to reject claims 8 and 9
under 35 U.S.C. § 103(a) as unpatentable over Cincotta and Gregg.
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)(v).

AFFIRMED-IN-PART

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WASHINGTON, DC 20005