Ex Parte Evans

Board of Patent Appeals and Interferences

Feb 15, 2008

10864817 (B.P.A.I. Feb. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Richard B. Evans
__________

Appeal 2007-3792
Application 10/864,817
Technology Center 1700
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Decided: February 15, 2008
___________

Before RICHARD E. SCHAFER, JAMESON LEE, and RICHARD
TORCZON, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
Applicant appeals from the Final Rejection of Claims 1-10 and 37-46. 1
35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6 (b). 2
STATEMENT OF THE CASE 3
An Examiner finally rejected claims 1-10 and 37-46 under 35 U.S.C. 4
§ 103(a) as obvious over the combined teachings of Black1, Grimshaw2, 5
Turner3, Eaton4, and Lewis5. We affirm. 6

1 US Pre-Grant Publication 2003/0102070.
2 US Patent 5,078,592.
3 US Patent 5,651,850.
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FINDINGS OF FACT 1
The Claimed Subject Matter 2
F. 1. The claimed subject matter relates to a method of producing laminates 3
by applying backed ply material to a contoured layup form. Spec., 4
p. 6, ¶¶ 0025, 0026; Claim 37. 5
F. 2. The plies are heated to facilitate adhesion. Spec, p. 2, ¶ 0005. 6
F. 3. The temperature of the ply and backing are monitored during the 7
process. Claim 37. 8
F. 4. If the temperature of the ply is below a predetermined minimum, heat 9
is applied to raise the ply temperature. Claim 37. 10
F. 5. If the temperature of the backing is above a predetermined maximum, 11
heat is removed from the backing. Claim 37 12
F. 6. A blower may be used to remove excess heat. Spec., p. 22, ¶ 0066. 13
F. 7. The heated ply is applied to and follows the contours of the layup 14
form. Spec., pp. 2 and 3, ¶ 0008. 15
F. 8. Representative Claim 37 provides6: 16
37. A method of generating a laminated item from a ply placed on a 17
layup form, the method comprising: 18
sensing a temperature of the ply; 19
apply[ing] heat to the ply in response to the sensed temperature 20
of the ply being below a predetermined minimum ply 21
temperature; 22
sensing a temperature of a ply backing; 23

4 US Patent 4,491,493.
5 US Patent 4,696,707.
6 All references to the claims are to the copy appearing in the Claims
Appendix submitted with the Appeal Brief. The Examiner has certified the
copy to be correct. Ans., p. 2.
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removing heat from the ply backing in response to the sensed 1
temperature of the ply backing being above a predetermined 2
maximum ply backing temperature; and 3
applying the ply along a natural path of the layup form between 4
a first location on the layup form and a second location on the 5
layup form. 6
App. Br., p. 18 (Appendix). 7
Scope and Content of the Prior Art 8
Black 9
F. 9. Black teaches a method of making laminates by applying heated plies 10
to a contoured layup form. Black, ¶¶ 0018-0021. 11
F. 10. Heating causes the ply to adhere to the form. Black, ¶ 0004. 12
F. 11. Black teaches that the temperature of the ply must be controlled 13
during the process. Black, ¶ 0004. 14
F. 12. Excessive heat can disfigure or damage the plies. Black, ¶ 0004. 15
F. 13. Insufficient heat can result in adhesion problems which increase the 16
likelihood of separation of the successive ply layers and decreases the 17
strength of the finished article. Black, ¶ 0004. 18
F. 14. Black teaches monitoring the temperature of the ply using electric 19
sensors. Black, ¶ 0007. 20
F. 15. Temperature signals from the sensors are sent to a feedback control. 21
Black, ¶ 0044. 22
F. 16. The feedback control compares the temperature with a predetermined 23
target temperature. Black, ¶ 0045. 24
F. 17. If the ply temperature is too high, the feedback control causes heating 25
to cease or decrease. Black, ¶ 0045. 26
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F. 18. If the ply temperature is too low, the feedback control causes heating 1
to begin or increase. Black, ¶ 0045. 2
F. 19. Black also teaches that temperature sensors may be placed to monitor 3
the temperature at any appropriate location. Black, ¶ 0027. 4
F. 20. The reference teaches placing the ply along a contoured path of the 5
layup form between a first location on the layup form and a second 6
location on the layup form. Black, ¶¶ 0019, 0021. 7
F. 21. Black does not teach the use of a backed ply, sensing the temperature 8
of the backing and removing heat from the backing in response to a 9
temperature above the predetermined maximum target temperature. 10
Grimshaw 11
F. 22. Grimshaw teaches a method of making laminates by applying heated 12
plies7 to a contoured layup form. Grimshaw, col. 2, ll. 21-28 and 38-13
60. 14
F. 23. The plies may include a backing. Grimshaw, col. 2, ll. 12-17. 15
F. 24. Grimshaw also notes that the heating must be carefully regulated to 16
avoid damaging the plies. Grimshaw, col. 2, ll. 4-6. 17
F. 25. Grimshaw teaches controlling heating by sensing the temperature of 18
the plies using feedback thermocouples 34 and 42.8 Grimshaw, col. 4, 19
ll. 7-11 and 33-34. 20
F. 26. The thermocouples provide feedback temperature signals to the heater 21
controls. Grimshaw, col. 4, ll. 7-11 and 33-34. 22

7 Grimshaw refers to “tapes” rather than “plies.” However, the words “tape”
and “ply” are used interchangeably in this art. See F. 38, infra. For
consistency we use “ply” rather than “tape” throughout this opinion.
8 See Figure 4, reproduced in F. 28, infra.
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F. 27. The heater controls provide and adjust the power of the heaters in 1
response to the feedback signals in “a well known manner.” 2
Grimshaw, col. 3, ll. 58-67. 3
F. 28. Figure 4 is reproduced below. 4

F. 29. Figure 4 shows the thermocouple 34 located adjacent the ply 5
immediately above any backing on ply 20 (Grimshaw, col. 4, ll.7-11) 6
F. 30. Grimshaw teaches that the backing does not appreciably impede the 7
transfer of heat. Grimshaw, col. 4, ll. 54-56. 8
F. 31. The person having ordinary skill in the art would have recognized that 9
Grimshaw’s temperature sensor 34 would inherently sense the 10
temperature of the ply backing. 11
F. 32. The person having ordinary skill in the art would have recognized that 12
the feedback signal from Grimshaw’s thermocouple 34 would result 13
in decreased heating when the temperature of the ply is too high. 14
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F. 33. The person having ordinary skill in the art would have recognized that 1
controlling the temperature of the ply would inherently control the 2
temperature of the ply backing. 3
Level of Ordinary Skill in the Art. 4
F. 34. The person having ordinary skill in the art would have known that 5
plies used to make laminates typically include a paper backing layer. 6
Spec., p. 1, ¶ 0002. 7
F. 35. One of ordinary skill in the art would have understood the necessity of 8
protecting the ply and ply backing from excess or undesired heat, in 9
order to avoid damage or adhesion problems during the layup process. 10
Black, ¶ 0004; Grimshaw, col. 2, ll. 4-6. 11
F. 36. The person having ordinary skill in the art would have been aware of 12
conventional techniques for controlling temperature. 13
F. 37. The person of ordinary skill would have been aware of conventional 14
means, such as fans or blowers, for cooling or removing heat. 15
F. 38. The person having ordinary skill in the art would understand the 16
words “ply” and “tape” to be interchangeable. E.g., Spec. p. 6, ¶ 0026 17
(“the ply material… is a graphite fiber tape”); Spec. p. 8, ¶ 0029 18
(“tape laying head … dispenses the ply material”); Spec, p. 11, ¶ 0037 19
(“the ply material … may include … oriented strand tape”). 20
ISSUES 21
Applicant contends that the prior art cited by the Examiner fails to 22
render the claimed subject matter obvious. In particular, Applicant asserts 23
that none of the references teach or suggest sensing the temperature of the 24
ply backing and removing heat from the backing when the sensed 25
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temperature is above a predetermined maximum ply backing temperature. 1
App. Br.9, pp. 11-15; Reply Br., pp. 2-4. 2
The Examiner contends that the subject matter of claims 1-10 and 37-3
46 is obvious over the combined teachings of the references. Ans., pp. 3-7. 4
In particular, the Examiner maintains that Grimshaw teaches or suggests 5
sensing the temperature of the ply backing and removing heat from the ply 6
backing when the sensed temperature of the backing exceeds a 7
predetermined temperature. Ans., pp. 7 and 8. 8
The overall issue before us is whether the Examiner erred in rejecting 9
the subject matter of claims 1-10 and 37-46 as obvious over the combined 10
teachings of the references. The specific dispositive issue is whether it 11
would have been obvious to sense the ply backing temperature and remove 12
heat when the temperature is too high. 13
ANALYSIS 14
Applicant does not argue the claims separately. Applicant’s brief only 15
discusses the subject matter of independent Claims 1 and 37. Applicant 16
relies solely on the following limitations appearing in both Claims 1 and 37 17
to distinguish the claimed subject matter over the prior art: “sensing a 18
temperature of a ply backing and removing heat from the ply backing in 19
response to the sensed temperature of the ply backing being above a 20
predetermined maximum ply backing temperature.” App. Br., pp. 11-14. 21
Since Applicant has not asserted any of the other claim limitations as 22
imparting patentability, the claims have not been separately argued. 23
Accordingly, we select independent claim 37 as representative of the 24

9 We refer to the corrected Appeal Brief filed on December 18, 2006.
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appealed subject matter. 37 C.F.R. § 41.37(c)(vii). Claims 1-10 and 38-46 1
stand or fall with claim 37. 2
The Examiner relies on Grimshaw as teaching “sensing a temperature 3
of a ply backing … and removing heat from the ply backing in response to 4
the sensed temperature of the ply backing being above a predetermined 5
maximum ply backing temperature . . . .” Ans., p. 4. Applicant discusses 6
Grimshaw teachings on page 13 of the Appeal Brief, arguing that Grimshaw 7
does not teach the limitation. With respect to the other references, Applicant 8
notes only that they do not teach or suggest the limitation. App. Br., pp. 12-9
14. The Examiner does not rely on any of the other references for this 10
limitation. Accordingly, we need only address Black and Grimshaw to 11
decide this appeal. 12
The subject matter of Claim 37 is directed to the method of making 13
laminates from heated plies applied to a contoured layup form. The claim 14
requires measuring or sensing the temperature of the ply and heating it if the 15
temperature is too low. Claim 37 also requires measuring the temperature of 16
the backing and removing heat if the temperature is above a predetermined 17
maximum temperature. 18
Black teaches a method of making laminates from heated plies applied 19
to a contoured layup form. Black, ¶¶ 0018-0021. Black emphasizes the 20
importance of controlling the temperature of the ply. A temperature that 21
becomes too high may cause disfigured plies or ply adhesion problems. 22
Adhesion problems lead to ply separation and loss of strength of the 23
laminate. Black, ¶ 0004. 24
Black accomplishes temperature control using electric sensors that 25
detect the temperature of the ply and send the output to a feedback controller 26
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which in turn controls the heat applied to the ply to maintain a desired 1
temperature. Black, ¶¶ 0027, 0029, 0030. The temperature of the ply can 2
be measured at any appropriate location: 3
[T]here may actually be any number of temperature sensors 4
[and a] temperature sensor…may check the temperature of the 5
fiber [ply] at any location… 6
Black, ¶ 0027 (reference number omitted). If the sensed temperature is too 7
high, i.e., above a predetermined target temperature, heating is stopped: 8
If the target temperature is less than or equal to the 9
temperature of the [ply], the feedback control value is set 10
to zero, and the heating device controller will 11
subsequently cause the heating device to cease heating. 12
Black, ¶ 0045 (reference number omitted). 13
Black does not describe the use of a ply backing. Nor does Black 14
teach sensing the temperature of a ply backing and removing heat from the 15
backing if the temperature gets too high. 16
With respect to the use of a backing, Applicant notes that the plies 17
used in making laminates typically include a paper backing. Spec., p. 1, ¶ 18
0002. Grimshaw teaches a method similar to Black’s for making laminates 19
by applying heated plies to a layup form. Grimshaw, col. 1, ll. 15-27. The 20
ply may include a backing. Grimshaw, col. 2, ll. 12-17. The manufacture of 21
laminated items using backed rather than unbacked plies would have been 22
obvious. 23
Grimshaw, like Black, teaches controlling the temperature of the plies. 24
Grimshaw teaches sensing the temperature of the plies using feedback 25
thermocouples 34 and 42. Grimshaw, col. 4, ll. 7-11 and 33-34. The 26
thermocouples provide feedback temperature signals to the heater controls. 27
Grimshaw, col. 4, ll. 7-11 and 33-34. The heater controls provide and adjust 28
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the power of the heaters in response to the feedback signals. Grimshaw, 1
col. 3, ll. 58-67. As shown in Grimshaw’s Fig 4, the temperature sensing 2
thermocouple 34 is located immediately above any backing on the ply. 3
Grimshaw, Fig. 3 and col. 4, ll. 7-11. y. In this regard, we note that 4
Grimshaw teaches that the backing does not appreciably impede the transfer 5
of heat. Grimshaw, col. 4, ll. 54-56. Thus, thermocouple 34, inherently 6
senses the temperature of the backing as well as the ply. One having 7
ordinary skill in the art would have also understood that the temperature of 8
the ply and backing are essentially the same. Thus, Grimshaw reasonably 9
teaches sensing the temperature of backing with feedback from 10
thermocouple 34 and adjusting the temperature in response to the feedback 11
signal in “a well known manner.” Grimshaw, col. 3, ll. 58-67. At the time 12
of Applicant’s invention, “a well known manner” would have included 13
activating and deactivating the heaters as described by Black in response to 14
the sensed temperature. Black, ¶ 0045. Thus, it would have been obvious to 15
sense the temperature of the ply and backing and deactivate the heaters if 16
that temperature was above a predetermined maximum. 17
Claim 37, however, requires “removing heat” from the ply backing in 18
response to the sensed temperature of the ply backing being above a 19
predetermined maximum ply backing temperature. The Examiner argues 20
that Grimshaw teaching of “adjusting the temperature of the ply backing 21
through activation or deactivation of the heating elements” meets this 22
limitation. Ans. p. 8. Applicant argues that Grimshaw does not teach 23
removing heat from the ply backing in response to the sensed temperature. 24
App. Br. p. 13; Reply Br. p. 3. 25
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We agree that the person having ordinary skill in the art would have 1
understood Grimshaw as stated by the Examiner. However, it is apparent 2
that Applicant and the Examiner construe the meaning of the phrase 3
“removing heat from the backing” differently. Therefore, we must 4
determine the meaning of this phrase. 5
Applicant’s specification describes two techniques for adjusting the 6
temperature of the backing when the temperature is too high: (1) decreasing 7
the amount of thermal energy input by the heaters and (2) using a blower 8
“to remove excessive thermal energy. . . .” Specification, p, 22; ¶ 0066. 9
With the first technique, cooling occurs passively as a result of decreasing 10
the heat input. In the second, cooling occurs by the use of a blower actively 11
removing excess heat. Thus the specification indicates “removing heat from 12
the backing” implies an active step to reduce temperature which would be 13
exemplified by the cooling with a blower or fan. 14
So construing the “removing heat” limitation is also consistent with 15
the prosecution history. During the prosecution, Applicant argued that none 16
of the references teach removing heat from the backing. E.g., App. Br., pp. 17
12-14. Black and Grimshaw each teach the first technique described in 18
Applicant’s disclosure – controlling the temperature by adjusting the heaters. 19
Black, ¶¶ 0006, 0045; Grimshaw, col. 3, ll. 58-67. Thus, Applicant can 20
argue that these references do not teach “removing heat . . .” only if 21
“removing heat from the backing” is construed to exclude merely adjusting 22
the heaters as described by Black and Grimshaw. 23
The construction is also consistent with the ordinary meaning of 24
“removing.” “Removing” encompasses positive action such as in “removing 25
a plate from a table.” 26
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Thus we construe the phrase “removing heat from the ply backing in 1
response to the sensed temperature . . .” as requiring some positive action 2
which would be exemplified by the use of a fan, blower or other cooling 3
means. 4
Given this construction, we agree with Applicant that Grimshaw does 5
not teach “removing heat from the ply backing . . . .” 6
Notwithstanding this construction, we conclude the subject matter of 7
Claim 37 would have been obvious from the combined teachings of the 8
references. While neither Black nor Grimshaw describes cooling by actively 9
removing heat from the ply, a person having ordinary skill in the art would 10
have been aware of both the necessity of preventing the temperature of the 11
ply and backing from getting too high and of conventional means for 12
controlling temperature. It would have been obvious to use conventional 13
means of cooling, such as a fan or blower, in addition to or in lieu of 14
decreasing heat output of the heaters to modulate the temperature of the ply 15
and backing. 16
Applicant argues that the temperature sensor 42 in Grimshaw cannot 17
sense the temperature of the ply backing because the temperature sensor is 18
on the opposite side from the backing. App. Br., p. 13. While temperature 19
sensor 42 is on the side opposite the backing, Grimshaw also teaches a 20
temperature sensor 34 shown adjacent the ply on the side with backing. 21
Grimshaw, Fig. 4 and col. 4, ll. 7-11 and 47-54. The sensor 34 would 22
necessarily sense the temperature of the backing as well as the ply. The 23
feedback signals from sensor 34 are used to control and adjust the 24
temperature. Grimshaw, col. 3, ll. 58-67; col. 4, ll. 7-11 and 33-34. 25
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Applicant also argues that Grimshaw teaches away from the claimed 1
invention. In particular, Applicant argues that Grimshaw teaches that the ply 2
and backing temperatures would be the same and “there could be no 3
expectation of successfully sensing the temperature of the backing and 4
removing heat from the ply backing in response to the sensed temperature of 5
the ply backing being above a predetermined maximum ply backing 6
temperature.” Reply Br. p. 3. Applicant also argues that Grimshaw does not 7
teach a method capable of differentially heating or sensing the ply over the 8
ply backing. Reply Br., p. 3. However, nothing in Claim 37 precludes the 9
temperature of the ply and the backing from being the same, or requires 10
differential heating or sensing of the ply and backing. In any event, we note 11
that Grimshaw’s sensors 34 and 42 provide feedback signals to separate 12
controllers 28a and 28b which regulate separate heaters 31 and 38. 13
Grimshaw Fig. 4, and col.4, ll. 1-42. Thus Grimshaw is capable of 14
differential sensing and heating. 15
Applicant argues that Grimshaw does not actually sense the 16
temperature of the ply or ply backing. Reply Br., pp. 2-3. According to 17
Applicant, Grimshaw merely teaches the temperature of the air in the 18
heating chute. We disagree. Due to the positioning of Grimshaw’s 19
sensor 34 adjacent the backing as shown in Figure 4, the sensor would 20
necessarily sense the temperature of the ply backing. Additionally, we have 21
not been directed to anything in Claim 37 or elsewhere in Applicant’s 22
disclosure which that would distinguish Applicant’s sensors and technique 23
for sensing temperature from Grimshaw’s. In other words, to the extent the 24
output of Grimshaw’s sensors may be influenced by the temperature of the 25
air or other factors, we have not been directed to anything in Applicant’s 26
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disclosure that would indicate that Applicant’s sensors would not be 1
similarly influenced. 2
CONCLUSION OF LAW 3
On the record before us, Applicant has not sustained its burden of 4
establishing that that Examiner erred in holding that the claimed subject 5
matter would have been obvious within the meaning of 35 U.S.C. § 103(a). 6
DECISION 7
The decision of the Examiner rejecting the subject matter of Claims 8
1-10 and 37-46 under 35 U.S.C. § 103(a) is affirmed. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a). 11
AFFIRMED 12
13
MAT 14
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BAKER & HOSTETLER, LLP 1
FOR BOEING COMPANY 2
WASHINGTON SQUARE, SUITE 1100 3
1050 CONNECTICUT AVENUE, N.W. 4
WASHINGTON DC 20036 5