Ex Parte Goering et al

Patent Trial and Appeal Board

Aug 19, 2016

12909582 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/909,582 10/21/2010
20999 7590 08/23/2016
FROMMER LAWRENCE & HAUG
745 FIFTH A VENUE- IOTH FL.
NEW YORK, NY 10151
FIRST NAMED INVENTOR
Jonathan GOERING
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.
930021-2038 6192
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
prosecutiondocketing@flhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JONATHAN GOERING and STEVE BIDDLE1
Appeal2015-003537
Application 12/909,582
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's non-final rejection of claims 1-17 and 35.2 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Although Appellants do not identify the Real Party in Interest in their
Appeal Brief, a search for the assignee of the instant application at
http://assignment.uspto.gov identifies Albany Engineered Composites, Inc.
as the assignee, which we understand to be the Real Party in Interest.
2 Pending claims 18-34 stand withdrawn from consideration. Non-Final
Office Action entered March 7, 2014, ("Non-Final Act."), 2.
Appeal2015-003537
Application 12/909,582
CLAIMED SUBJECT MATTER
Appellants' claimed invention is directed to an axisymmetric preform
for use in a fiber-reinforced composite comprising a seamless, tubular
woven structure having a central axis. Independent claims 1, 35.
Claim 1 is illustrative:
1. An axisymmetric preform for use in a fiber-reinforced
composite, the preform comprising:
a seamless tubular woven structure having a central axis
formed from two or more layers of warp yam interwoven with
one or more weft yams.
App. Br. 10 (Claims Appendix).
REJECTION
The Examiner rejects claims 1-17 and 35 under 35 U.S.C. § 103(a) as
obvious over Rose et al. (US 2009/0202763 Al, published August 13, 2009)
in view of Horovitz (US 6,086,968, issued July 11, 2000).
DISCUSSION
Having carefully reviewed the Examiner's rejection in light of
arguments advanced by Appellants in their Appeal and Reply Briefs, we are
not persuaded that the Examiner errs reversibly in concluding that claims 1-
17 and 35 are unpatentable for obviousness. We add the following for
emphasis. 3
3 We refer to the Non-Final Office Action entered March 7, 2014 ("Non-
Final Act."), the Appeal Brief filed July 28, 2014 ("App. Br."), the
Examiner's Answer entered December 5, 2014 ("Ans."), and the Reply Brief
filed January 8, 2015 ("Reply Br.").
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Appeal2015-003537
Application 12/909,582
Claims 1-5, 7-17, and 35
Appellants argue claims 1-5, 7-17, and 35 as a group on the basis of
claim 1, to which we limit our discussion. App. Br. 3-7.
The Examiner finds that Rose discloses an axisymmetric woven
preform that can be impregnated with a matrix material to form a three-
dimensional composite structure, which can be used in aircraft. Ans. 2-3;
Rose iii! 21, 59, 70, 71. The Examiner acknowledges that Rose does not
disclose that the woven preform has a seamless, tubular structure. Ans. 3.
To address this difference, the Examiner relies on Horovitz's disclosure of a
seamless, tubular woven material (preform) that can be impregnated with a
matrix material to produce a lightweight and flexible structural support
useful in aerospace and aircraft applications. Ans. 3--4; Horovitz col. 4, 11.
44--45; col. 4, 1. 57-col. 5, 1. 1; col. 6, 11. 13-29. The Examiner finds that
Horovitz discloses that the seamless, tubular woven material can be used in
multiple layers (col. 4, 11. 63-67), and concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to use
Horovitz's seamless, tubular woven structure as Rose's woven preform due
to its light weight and flexibility. Ans. 3-4.
Appellants do not argue that Rose teaches away from a woven,
seamless tubular preform, but contend only that Rose does not disclose such
a structure, as the Examiner acknowledges. Compare Ans. 3 with App. Br.
4-6. Appellants argue that although Horovitz does disclose a woven, tubular
structure, Horovitz discloses that the structure includes a single weft yam
woven in a spiral manner around a single layer of warp yams, and the
"multiple layers" disclosed in Horovitz are a laminate of two or more
independently woven fabrics. App. Br. 6-7. Appellants argue that Horovitz
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Application 12/909,582
therefore fails to disclose a seamless tubular woven structure having a
central axis formed from two or more layers of warp yam interwoven with
one or more weft yams, as recited in claim 1. Id.
We begin our analysis by determining the meaning of claim 1, giving
terms the broadest reasonable interpretation consistent with the Specification
as it would be interpreted by one of ordinary skill in the art. In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, "the 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."). Claim 1 recites an axisymmetric
preform for use in a fiber-reinforced composite that comprises a seamless
tubular woven structure having a central axis formed from two or more
layers of warp yam interwoven with one or more weft yams. The recitation
in claim 1 that the preform is "formed from two or more layers of warp yam
interwoven with one or more weft yams" is a product-by-process limitation,
and the patentability of the preform recited in claim 1 is thus based on the
preform (product) itself, and not on its method of production. In re Thorpe,
777 F.2d 695, 698 (Fed. Cir. 1985).
Looking to the Specification, preforms "formed from two or more
layers of warp yam interwoven with one or more weft yams" (claim 1) are
disclosed as including those having a single layered structure and those
having multilayered structure formed from "more than two warp layers and
more than one weft yam" with or without one or more layers of fabric.
(Spec. 7, 11. 3-30; Figs. 3, 4(a), 4(b)); Spec. 10, 11. 3-10).
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Application 12/909,582
Looking also to the claims, claim 11 recites that the preform is a
multilayered structure. In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011)
("Claims of narrower scope can be useful to clarify the meaning of broader,
independent claims under the doctrine of claim differentiation."); 37 C.F.R.
§ l.75(c) ("One or more claims may be presented in dependent form,
referring back to and further limiting another claim or claims in the same
application.). Because claim 11 depends from claim 1 and further limits the
scope of claim 1, it follows that claim 1 encompasses both single layer and
multilayer preforms comprising a seamless tubular woven structure having a
central axis. Accordingly, claim 1 does not exclude either a single layered
preform structure or a multilayered preform structure.
Thus, claim 1 reads on a preform formed of a seamless, single layered
tubular woven structure that is formed from a weft yam woven in a spiral
manner around a single layer of warp yams, as disclosed in Horovitz. See
Figs. 1, 2; col. 4, 1. 66-col. 5, 1. 7. On this record, Appellants do not
structurally distinguish the single layered preform encompassed by claim 1
from the single layered preform taught by Horovitz. Likewise, claim 1 reads
on a preform comprising a multilayered seamless tubular woven structure
that includes multiple layers of warp and weft direction fibers or yams
aligned in a parallel or offset orientation, as also disclosed in Horovitz. See
col. 4, 11. 62-65. Accordingly, regardless of whether the "multiple layered"
preforms disclosed in Horovitz are a laminate of two or more independently
woven fabrics as Appellants assert (App. Br. 7), Appellants do not identify
any structural distinction, or unobvious difference, between the multilayered
seamless, tubular woven material (preform) disclosed in Horovitz and a
preform comprising a seamless tubular woven structure having a central axis
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"formed from two or more layers of warp yam interwoven with one or more
weft yams" as recited in claim 1. App. Br. 4-8. In addition, Appellants do
not show that the method by which the claimed preform is made
distinguishes it from the preform disclosed in Horovitz in view of Rose. Id.
Appellants' arguments are therefore unpersuasive of reversible error. In re
Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (for product-by-process claims,
once the examiner provides a rationale tending to show that the claimed
product appears to be the same or similar to that of the prior art, although
produced by a different process, the burden shifts to applicant to come
forward with evidence establishing an unobvious difference between the
claimed product and the prior art product.).
We accordingly sustain the Examiner's rejection of claims 1-5, 7-17,
and 35 under 35 U.S.C. § 103(a).
Claim 6
Claim 6 depends from claim 1 and recites that the preform conforms
to a mandrel having a predetermined shape. Appellants dispute the
Examiner's finding that Rose discloses a preform having this feature by
describing an axisymmetric preform produced by forming fabric around a
mandrel using contour weaving. App. Br. 7-8. Specifically, Appellants
argue that the recitation in claim 6 of a preform that conforms to a mandrel
having a predetermined shape is not a structure wrapped in layers around a
mandrel, as supposedly disclosed in Rose. Id.
However, claim 6 recites only that the mandrel has a "predetermined
shape," and the mandrel can thus have any shape or size. Accordingly,
claim 6 places no concomitant limitation on the shape or size of the preform
that conforms to the mandrel. Therefore, Rose's disclosure of a woven
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preform formed around a mandrel in view of Horovitz's disclosure of a
seamless, tubular woven preform would have suggested a preform that
conforms to a mandrel of any predetermined shape, including that disclosed
in Rose, as recited in claim 6.
We accordingly sustain the Examiner's rejection of claim 6 under 35
U.S.C. § 103(a).
Reply Brief
Appellants present arguments for the first time in the Reply Brief
regarding the separate patentability of claims 4 and 5, which depend from
claim 1. Rep. Br. 2-5. However, Appellants' arguments are responsive to
statements made by the Examiner in the Non-Final Office Action from
which the present appeal was taken, which were reproduced by the
Examiner in the Answer. Compare Non-Final Act. 3-4 with Ans. 3.
Therefore, Appellants' arguments could have been raised earlier in the
Appeal Brief~ and because Appellants do not show good cause for why they
did not raise them earlier, we do not consider these arguments. 37 C.F.R. §
41.37(c)(l)(iv); 37 C.F.R. § 41.4l(b)(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown).
DECISION
In view of the foregoing, the Examiner's rejection of claims 1-17 and
35 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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