Ex Parte Engwall et al

Board of Patent Appeals and Interferences

Dec 30, 2003

09407278 (B.P.A.I. Dec. 30, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DWIGHT L. ENGWALL, CHRIS J. MORROW,
KEVIN J. STEEN, and ROGER A. JOHNSON
__________
Appeal No. 2003-2058
Application No. 09/407,278
__________
ON BRIEF
__________
Before GARRIS, OWENS, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 17, 18 and 28 which are all of the claims remaining in the
application.
The subject matter on appeal relates to a method of
manufacturing a composite part on a hybrid tool wherein a face
sheet of the hybrid tool is made from a composite material made
Appeal No. 2003-2058
Application No. 09/407,278
2
on a master tool. Further details of this appealed subject
matter are set forth in representative independent claim 17 which
reads as follows:
17. A method of manufacturing a composite part on a hybrid
tool, comprising:
coating a face sheet of a hybrid tool with a release agent,
said face sheet made from a composite material made on a master
tool, the composite material having a mold surface the same shape
and size as a surface of said part;
laying up plies of resin impregnated fabric material on said
face sheet to a desired thickness;
debulking said plies in a vacuum bag with gas pressure, and
curing said resin to form said part on said face sheet;
placing said hybrid tool on a machine tool bed at a position
designated in a machine tool program using positioning devices;
probing reference features on said hybrid tool to accurately
establish the position of said face sheet relative to a home
position of the machine tool, said reference features having been
transferred from corresponding reference feature on said master
tool;
normalizing said machine tool part program to correspond to
the actual position of the hybrid tool on the machine tool bed as
determined by said probing of said hybrid tool reference
features;
operating the machine tool to rotate a cutting tool while
following a cutting path along and within a groove in said face
sheet so that said cutting tool projects into said groove and
engages the full thickness of said laid-up part on said hybrid
tool face sheet for peripheral edge trimming of the part; and
removing the trimmed part from the mold surface.
Appeal No. 2003-2058
Application No. 09/407,278
3
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Carver et al. (Carver) 4,937,768 Jun. 26, 1990
Engwall 5,746,553 May 5, 1998
(filed Apr. 8, 1996)
All of the appealed claims stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Engwall in view of Carver.
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by the
appellants and by the examiner concerning the above noted
rejection.
OPINION
For the reasons set forth in the answer and below, we will
sustain this rejection.
The sole claim-distinction argument advanced by the
appellants on this appeal is that the “tool [of Engwall] uses an
Invar metal forming surface, so Engwall fails to teach or to
suggest a tool having a composite material as the mold surface”
and correspondingly that “Carver fails to cure the deficiencies
of Engwall” (brief, page 3). As correctly indicated in the
answer, however, this argument is based on a clearly erroneous
premise. That is, contrary to the appellants’ apparent belief,
Engwall explicitly teaches using a composite material in forming
Appeal No. 2003-2058
Application No. 09/407,278
4
a mold surface of his tool (e.g., see lines 61-67 in column 3) as
repeatedly explained by the examiner. It follows that the
argument under consideration lacks persuasive merit.
In addition to the foregoing, the appellants argue that the
Engwall patent is not available as prior art with respect to the
here claimed subject matter. This argument is not convincing for
the reasons thoroughly explained in the answer. Engwall is
available as prior art in the examiner’s section 103 rejection
via 35 U.S.C. § 102(e). See Hazeltine Research, Inc. v. Brenner,
382 U.S. 252, 147 USPQ 429, 430 (1965) and the Manual of Patent
Examining Procedure (MPEP) § 2136.02 (Rev. 1, Feb. 2003).
Moreover, the Engwall patent is available as prior art
notwithstanding apparently common ownership with respect to the
present application because the prior art disqualification
provisions of 35 U.S.C. § 103(c) are not applicable to utility
patent applications of the type under consideration which were
filed before November 29, 1999. See MPEP § 706.02(l)(1).
In response to the examiner’s exposition of this last
mentioned point, the appellants state that, “[i]f this
application had a filing date after November 29, 1999, (which it
could have, quite simply, by filing a Request for Continued
Appeal No. 2003-2058
Application No. 09/407,278
1 As a matter of clarification, the appellants are
unquestionably incorrect in believing that a Request for
Continued Examination under 37 CFR § 1.114 would somehow avoid
Engwall as a prior art reference. See the MPEP at
§ 706.02(l)(1), particularly the last full paragraph in the right
hand column on page 700-50.
5
Examination1), [sic] Engwall would not be a [prior art]
reference” (reply brief, page 3). We recognize that Engwall may
be avoided as prior art under § 103(c) under the circumstances
explained in MPEP §§ 706.02(l)(1) through 706.02(l)(3).
Nevertheless, the fact remains that such circumstances do not
presently exist in the application before us on this appeal.
Thus, the Engwall patent is available as prior art with respect
to the subject matter defined by the appealed claims of this
application.
For the reasons set forth above and in the answer, we hereby
sustain the examiner’s section 103 rejection of all appealed
claims as being unpatentable over Engwall in view of Carver.
The decision of the examiner is affirmed.
Appeal No. 2003-2058
Application No. 09/407,278
6
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Terry J. Owens ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Catherine Timm )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2003-2058
Application No. 09/407,278
7
John C. Hammar
The Boeing Company
P.O. Box 3707 MC 13-08
Seattle, WA 98124-2207