Ex Parte Farmer et al

Patent Trial and Appeal Board

Jun 13, 2016

12439267 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/439,267 0212712009 Benjamin Lionel Farmer
22429 7590 06/15/2016
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4928-011 2626
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN LIONEL FARMER and DANIEL MARK JOHNS
Appeal2014-008420
Application 12/439,267
Technology Center 1700
Before ROMULO H. DELMENDO, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal from the Examiner's final rejection of claims 1--4,
7-20, 24, and 25. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellants identify Airbus Operations Limited (formerly Airbus UK
Limited) as the real party in interest. App. Br. 2.
Appeal2014-008420
Application 12/439,267
The Claimed Invention
Appellants' disclosure relates to a method of manufacturing a
composite material, comprising: growing a layer of reinforcement;
impregnating the layer with a matrix; and aligning the reinforcement layer
by applying an electromagnetic field during growth of the reinforcement
layer. Spec. 1, 11. 13-18; Abstract. Claims 1 and 9 are representative of the
claims on appeal and are reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 26-28):
1. A method of manufacturing a composite material, the
method comprising:
growing a first layer of reinforcement;
impregnating the first layer with a first matrix;
growing a second layer of reinforcement on the matrix-
impregnated first layer;
impregnating the second layer with a second matrix; and
aligning the reinforcement of the first layer by applying an
electromagnetic field during growth of the first layer at an acute
angle to the reinforcement layer, and aligning the reinforcement
of the second layer by applying the electromagnetic field during
growth of the second layer at an angle that is different to the acute
angle.
9. A method of manufacturing a composite material, the
method comprising:
a. manufacturing a first sheet in a process chamber by
growing a first layer of reinforcement and impregnating the first
layer of reinforcement with a matrix;
b. after step a., removing the first sheet from the process
chamber;
c. manufacturing a second sheet in the process chamber by
growing a second layer of reinforcement and impregnating the
second layer of reinforcement with a matrix;
d. after step c., removing the second sheet from the process
chamber.
e. laying the first and second sheets together to form a laminate
structure; and
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f. moulding the laminate structure.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Gelbart US 6,214,276 Bl Apr. 10, 2001
Oobayashi et al., US 2004/0005448 Al Jan. 8, 2004
(hereinafter "Oobayashi")
Buretea et al., US 2005/0064185 Al Mar. 24, 2005
(hereinafter "Buretea")
Chopra et al., US 2005/0116336 Al June 2, 2005
(hereinafter "Chopra")
Tsakalakos US 2005/0133254 Al June 23, 2005
Huang et al., US 2005/0167647 Al Aug. 4, 2005
(hereinafter "Huang")
Furukawa et al., US 2006/0022221 Al Feb. 2, 2006
(hereinafter "Furukawa")
Von Ehr, II US 2006/0083927 Al Apr. 20, 2006
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 7, 8, 15-20, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Chopra.
2. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chopra as applied to claim 1, and in further view of
Huang and Gelbart.
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Application 12/439,267
3. Claims 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Chopra as applied to claim 1, and in further view of
Oobayashi.
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chopra as applied to claim 1, and in further view of
Buretea.
5. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chopra.
6. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chopra in view of Von Ehr.
OPINION2
Rejection 1
Claims 1--4, 7, 8, and 15-20. Appellants argue claims 1--4, 7, 8, and
15-20 as a group. We, therefore, select claim 1 as representative of this
group, and the remaining claims stand or fall \vith claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). The Examiner finds that Chopra teaches all of claim 1 's
limitations. Final Act. 2, 3 (citing Chopra i-fi-125, 65, 69, 70, 79, 84, 96, 97;
Fig. 9; claims 18, 19, and 26-29).
Appellants argue that the Examiner's rejection should be reversed
because "Chopra fails to enable, let alone teach or suggest to, one of
ordinary skill in the art to make such an embodiment of Figure 9 ... during
growth of the second layer as recited in claim 1." App. Br. 15. Appellants
2 We affirm the Examiner's rejections for the reasons set forth in the Answer
dated June 2, 2014 and the Final Office Action dated October 7, 2013, which
we adopt as our own. Nevertheless, we highlight and address specific
findings and arguments for emphasis as follows.
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Application 12/439,267
further argue that "Chopra's lack of a description about making the layered-
structure raises no presumption of enablement." Id. at 16.
We are not persuaded by Appellants' arguments. Prior art cited by an
examiner is presumed to be enabling. Cf In re Sasse, 629 F.2d 675, 681
(CCP A 1980). Once such a reference is found, the burden is on the
applicant to provide evidence rebutting the presumption. Id.; see also MPEP
2121 (I). Here, Appellants have not directed us to sufficient evidence in the
record to rebut the presumption that Chopra's disclosure is enabling. In re
Sasse, 629 F .2d at 681. Appellants' conclusory assertions that "Chopra fails
to enable ... one of ordinary skill in the art to make such an embodiment of
Figure 9" and that "Chopra's lack of a description about making the layered-
structure raises no presumption of enablement" (App. Br. 15, 16), without
more, are insufficient to satisfy Appellants' evidentiary burden in this
regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants argue that this rejection should be reversed because "there
is [no] motivation to modify Chopra" as proposed by the Examiner and "the
proposed modification lacks predictability for purposes of obviousness."
App. Br. 16. Appellants further argue that, even based on the Examiner's
findings regarding Chopra's teachings, "one of ordinary skill in the art
would ... not have arrived at an embodiment falling within the scope of
[claim 1]." App. Br. 16, 17.
We do not find these arguments persuasive because Appellants fail to
direct us to sufficient evidence in the record or provide an adequate technical
explanation to support them. Attorney argument cannot take the place of
evidence. In re De Blauwe, 736 F.2d at 705. Appellants' conclusory
assertions that the Examiner's "proposed modification lacks predictability
for purposes of obviousness" and that, based on Chopra's teachings, one of
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ordinary skill would not have arrived at the claimed invention (App. Br. 16,
17), without more, are insufficient to establish reversible error in the
Examiner's obviousness analysis and conclusion. Id.
Moreover, based on the record before us and contrary to Appellants'
argument, the Examiner's findings regarding Chopra's teachings and
conclusion that, based on Chopra' s teachings, the claimed invention would
have been obvious to one of ordinary skill in the art are well-supported by
the evidence and based upon sound technical reasoning. Chopra i-fi-125, 65,
69, 70, 79, 84, 96, 97; Fig. 9; claims 18, 19, and 26-29.
Indeed, as the Examiner found (Ans. 2, 3), Chopra teaches a method
of manufacturing a composite material (i.e., Chopra, Abstract, i125),
comprising: (a) growing a first layer of reinforcement (i.e., Chopra i170); (b)
impregnating the first layer with a first matrix (i.e., Chopra i-fi-169, 70); (c)
growing a second layer of reinforcement on the matrix-impregnated first
layer (i.e., Chopra i170); (d) impregnating the second layer with a second
matrix (i.e., Chopra i1i169, 70); and (e) aligning the reinforcement of the first
layer by applying an electromagnetic field during growth of the first layer at
an acute angle to the reinforcement layer, and aligning the reinforcement of
the second layer by applying the electromagnetic field during growth of the
second layer at an angle that is different to the acute angle (i.e., Chopra
i-fi-165, 79, 96, 97, and Fig. 9).
As the Examiner also found (Ans. 3), in light of Chopra's teachings, it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have grown the first layer of reinforcement by applying the
electromagnetic field during growth of the first layer at an acute angle to the
reinforcement layer for the benefit of creating a thermal pathway through the
first layer that is at an acute angle to the surface of the substrate. Chopra
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i-f 84. We discern no reversible error in the Examiner's factual findings and
legal conclusion in this regard.
Accordingly, we affirm the Examiner's rejection of claims 1--4, 7, 8,
and 15-20 under 35 U.S.C. § 103(a) as unpatentable over Chopra.
Claim 25. Claim 25 is analogous to and recites largely the same
limitations as recited in claim 1. Compare claim 25 (App. Br. 30) with claim
1 (App. Br. 26).
In response to the Examiner's rejection of claim 25 (Final Act. 5-7),
Appellants do not present any new or additional arguments. Instead,
Appellants state that the Examiner's rejection of claim 25 should be reversed
"for reasons analogous to those offered for claim 1." App. Br. 17, 18.
Based on the findings and technical reasoning provided by the Examiner,
and for the reasons discussed above, we find that Appellants have failed to
establish reversible error in the Examiner's factual findings and legal
conclusions with respect to claim 25.
Accordingly, we affirm the Examiner's rejection of claim 25 under
35 U.S.C. § 103(a) as unpatentable over Chopra.
Rejection 2
Appellants argue claims 10 and 11 as a group. We, therefore, select
claim 10 as representative of this group, and claim 11 stands or falls with
claim 10. 37 C.F.R. § 41.37(c)(l)(iv). Claim 10 depends from claim 1 and
adds the limitation: "further comprising heating the first matrix during
impregnation." App. Br. 28 (Claims App'x). The Examiner finds that the
combination of Chopra as applied to claim 1, Huang, and Gelbart teaches all
the limitations of claim 10. Final Act. 7, 8 (citing Huang i-fi-113, 15, 16, 18,
29; Gelbart, col. 2, 11. 27-33, 61---63, col. 3, 11. 47-53).
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Appellants argue that this rejection should be reversed for the same
reasons and "deficiencies of Chopra" previously discussed above for claim
1. App. Br. 18. Appellants further argue that the rejection should be
reversed because "[n]either Huang nor Gelbart was applied in a manner to
address [Chopra's] deficiencies ... and because Gelbart was applied for
teachings regarding heating." Id.
Because Appellants rely on the same arguments presented above for
the patentability of claim 1 and because Appellants fail to provide an
adequate technical explanation or direct us to evidence sufficient to rebut the
Examiner's findings regarding the combined teachings of the cited prior art
references, In re De Blauwe, 736 F.2d at 705, for the reasons discussed
above for affirming the Examiner's rejection of claim 1, we find that
Appellants have failed to establish reversible error in the Examiner's factual
findings and legal conclusions with respect to claim 10.
Accordingly, we affirm the Examiner's rejection of claims 10 and 11
under 35 U.S.C. § 103(a) as unpatentable over the combination of Chopra,
Huang, and Gelbart.
Rejection 3
Appellants argue claims 10, 12, and 13 as a group. We select claim
10 as representative of this group, and claims 12 and 13 stand or fall with
claim 10. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the
combination of Chopra as applied to claim 1 and Oobayashi teaches all the
limitations of claim 10. Final Act. 8 (citing Oobayashi i-f 96).
Appellants argue that this rejection should be reversed for the same
"deficiencies of Chopra ... noted above for claim 1." App. Br. 19.
Appellants further argue that the rejection should be reversed because
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"Oobayashi was not applied in a manner to address [Chopra's] deficiencies,
because Oobayashi was applied for teachings regarding impregnating." Id.
Because Appellants rely on the same arguments presented above for
the patentability of claim 1 and because Appellants fail to provide an
adequate technical explanation or direct us to evidence sufficient to rebut the
Examiner's findings regarding the combined teachings of the cited prior art
references, In re De Blauwe, 736 F.2d at 705, for the reasons discussed
above for affirming the Examiner's rejection of claim 1, we find that
Appellants have failed to establish reversible error in the Examiner's factual
findings and legal conclusions with respect to claim 10.
Accordingly, we affirm the Examiner's rejection of claims 10, 12, and
13 under 35 U.S.C. § 103(a) as unpatentable over the combination of Chopra
and Oobayashi.
Rejection 4
Claim 14 depends from claim 1 and adds the limitation "wherein the
first layer of reinforcement is impregnated by capillary action." App. Br. 28
(Claims App 'x). The Examiner finds that the combination of Chopra as
applied to claim 1 and Buretea teaches all the limitations of claim 14. Final
Act. 9 (citing Buretea iii! 111, 112, 114, and 118-123).
Appellants argue that this rejection should be reversed for the same
"deficiencies of Chopra ... noted above for claim 1." App. Br. 20.
Appellants further argue that the rejection should be reversed because
"Buretea was not applied in a manner to address [Chopra's] deficiencies,
because Buretea was applied for teachings regarding dip-coating." Id.
Because Appellants rely on the same arguments presented above for
the patentability of claim 1 and because Appellants fail to provide an
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adequate technical explanation or direct us to evidence sufficient to rebut the
Examiner's findings regarding the combined teachings of the cited prior art
references, In re De Blauwe, 736 F.2d at 705, for the reasons discussed
above for affirming the Examiner's rejection of claim 1, we find that
Appellants have failed to establish reversible error in the Examiner's factual
findings and legal conclusions with respect to claim 14.
Accordingly, we affirm the Examiner's rejection of claim 14 under
35 U.S.C. § 103(a) as unpatentable over the combination of Chopra and
Buretea.
Rejection 5
The Examiner finds that Chopra teaches all the limitations of claim 9.
Final Act. 9, 10 (citing Chopra i-fi-128, 69, 70, 87, 107). Appellants argue that
the Examiner's rejection of claim 9 should be reversed because Chopra
"fails to teach or suggest the embodiment of claim 9 ... especially step f"
App. Br. 22.
We are not persuaded by Appellants' argument because a naked
assertion that a reference fails to teach or suggest a claim limitation is not an
argument in support of separate patentability. Cf In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv).
Moreover, as the Examiner found (Ans. 6) and contrary to Appellants'
argument, Chopra does teach step f of claim 9, i.e., "moulding the laminate
structure." See Chopra i128 (noting that the laminate "body may be shaped
for any purpose"), i1 87 (disclosing that "[ o ]ther fabrication processes may
also be used"), and i-f l 07 ("Nano-composite plastics can then be formed into
appropriate shapes for the product in question, using injection molding or
other conventional techniques.") (emphasis added).
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Accordingly, we affirm the Examiner's rejection of claim 9 under
35 U.S.C. § 103(a) as unpatentable over Chopra.
Rejection 6
Claim 24 is analogous to and recites largely the same limitations as
recited in claim 9. Compare claim 24 (App. Br. 29, 30) with claim 9 (App.
Br. 27, 28). The Examiner finds that the combination of Chopra and Von
Ehr teaches all the limitations of claim 24. Final Act. 10-12 (citing Chopra
iTiT 28, 57, 69, 70, 73, 87, 107; Von Ehr iTiT 36-45).
Appellants argue that this rejection should be reversed for the same
"deficiencies ... noted above for Chopra" with respect to claim 9. App. Br.
24. Appellants further argue that the rejection should be reversed because
"Von Ehr was not applied in a manner to remedy [Chopra's] deficiencies,
[because] Von Ehr was applied for teachings regarding spraying." Id.
Because Appellants rely on the same arguments presented above for
the patentability of claim 9 and because Appellants fail to provide an
adequate technical explanation or direct us to evidence sufficient to rebut the
Examiner's findings regarding the combined teachings of the cited prior art
references, In re De Blauwe, 736 F.2d at 705, for the reasons discussed
above for affirming the Examiner's rejection of claim 9, we find that
Appellants have failed to establish reversible error in the Examiner's factual
findings and legal conclusions with respect to claim 24.
Accordingly, we affirm the Examiner's rejection of claim 24 under
35 U.S.C. § 103(a) as unpatentable over the combination of Chopra and Von
Ehr.
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DECISION/ORDER
The Examiner's rejections of claims 1--4, 7-20, 24, and 25 under
35 U.S.C. § 103(a) are affirmed.
It is ordered that the Examiner's decision is affirmed.
AFFIRMED
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