Ex Parte Hanusa et al

Patent Trial and Appeal Board

Sep 25, 2018

12762879 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/762,879 04/19/2010
28289 7590 09/27/2018
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Lotar Hanusa
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.
6149-092747 4395
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOT AR HANUSA
and MAUNG A YE THAN
Appeal2017-010388
Application 12/762,879
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-3, 5, 6, 8-10, and 21-31 of
Application 12/762,879 under 35 U.S.C. § 103(a) as obvious. Non-Final
Act. (Oct. 6, 2016). Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek
reversal of these rejections. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm.
1 AA Technology LLC is identified as the applicant and real party in
interest. Appeal Br. 2.
2 Claim 4 is withdrawn from consideration and, thus, is not subject to the
appealed rejections. See Non-Final Act. 1.
Appeal2017-010388
Application 12/762,879
BACKGROUND
The '879 Application describes basalt composite panels. Spec. ,r 2.
Claim 1 is representative of the '879 Application's claims and is reproduced
below from the Claims Appendix:
1. A composite panel comprising:
a thermoplastic base comprising a plurality of ultra high
molecular weight polyethylene fabric layers, the thermoplastic
base not including basalt fibers;
a composite layer comprising basalt fibers, the composite
layer attached to the thermoplastic base, the composite layer
including at least two sub-layers of basalt material, each sub-
layer of basalt material being bonded to adjacent sub-layers of
basalt material, wherein each sub[-]layer of basalt material
comprises a non-encapsulated basalt fabric, and wherein the
composite layer provides a protective fire barrier configured to
prevent flame and smoke generation upon application of a
3400°F flame to the composite layer.
Appeal Br. 21 (Claims App.)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3, 5, 6, 8-10, and 28-31 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Pilpel3 and
Green. 4 Non-Final Act. 3; see also Answer 2.
3 US 2007/0232168 Al, published Oct. 4, 2007.
4 US 6,133,167, issued Oct. 17, 2000.
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Application 12/762,879
2. Claims 1-3, 5, 6, 8-10, and 21-31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Pilpel, Green,
Degroote, 5 and Li. 6 Non-Final Act. 7; see also Answer 6.
DISCUSSION
Appellants argue for the reversal of the obviousness rejections to all
of the appealed claims on the basis of limitations present in independent
claim 1. See Appeal Br. 8-19; see also Reply Br. 2-9. We select claim 1 as
representative. Claims 2, 3, 5, 6, 8-10, and 21-31 will stand or fall with
claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
In rejecting claim 1, the Examiner found that Pilpel describes the
claimed composite panel comprising a thermoplastic base and a composite
basalt fabric layer. Answer 2. The Examiner, however, found that Pilpel
does not disclose or suggest that the basalt fabric layers are nonencapsulated.
Id. at 2. The Examiner further found that
Green discloses that rather than stacking resin impregnated
unidirectional fabric layers[,] a known alternative in the fiber
reinforced resin composite art is to first form an intermediate
product wherein dry (no resin) woven fabric layers are stacked,
bonded together, and sandwiched between resin films, and
second form a final product by heating and pressing the
composite panel to melt and impregnate the resin into the
woven fabric layers.
Id. at 2-3 (emphasis added). According to the Examiner, "Green discloses
that the process advantageously produces aligned fiber reinforced
composites with low void content, high strength, and lower cost." Id. at 3.
5 US 7,001,857 B2, issued Feb. 21, 2006.
6 US 4,916,000, issued Apr. 10, 1990.
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Application 12/762,879
Thus, the Examiner determined that it would have been obvious to the
ordinary skilled artisan at the time of the invention that these advantages
could be realized by constructing Pilpel's composite panel using the process
taught by Green. As found by the Examiner, "[!]he intermediate product
[]taught by the applied prior art reads on the claimed composite panel." Id.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner has failed to establish that Pilpel and Green would
have rendered claim 1 obvious. Appeal Br. 8. In particular, Appellants
argue that: ( 1) the applied prior art "fails to disclose where each sub-layer of
basalt material is bonded to adjacent sub-layers of basalt material," id. at 10,
see also id. at 13; (2) "the Hanusa Declaration rebuts any primafacie case of
obviousness and provides ... evidence of unexpected results," id.;
(3) because Pilpel fails to provide an enabling disclosure of the claimed
invention, Pilpel does not anticipate claim 1, id. at 15-18; and ( 4) the
Examiner's interpretation of"'bonded' to encompass [Green's] selectively
applied adhesive and textile stitching to inhibit movement of the sheets in
relation to each other ... is an unreasonable interpretation inconsistent with
the present specification and drawings." Reply Br. 5.
Appellants' arguments are not persuasive.
First, we are not persuaded by Appellants' arguments (1) and (4)
because we discern no reversible error in the Examiner's finding that Green
teaches the requisite bonded feature.
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
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Application 12/762,879
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). "[A
claim] construction is unreasonable [when] it comports with neither the plain
meaning of the term nor the specification." In re Imes, 778 F.3d 1250, 1254
(Fed. Cir. 2015).
Thus, the question before us is whether the Examiner's interpretation
of the claim language "each sub-layer of basalt material being bonded to
adjacent sub-layers of basalt material" is reasonable. As the Examiner
found, Green's "superposed sheets of woven fabric may be held together by
retaining means" and that "[s ]uch retaining mean[s] may be,for example,
selectively applied adhesive or, preferably, textile stitching." Answer 8
( quoting Green 1 :67-2:4).
We begin by considering the ordinary meaning of the claim term
"bonded" to a person of ordinary skill in the art at the time of the invention.
In particular, we must consider whether such a person would have
considered Green's two superposed sheets of woven fabric, which are held
together by selectively applied adhesive, as "bonded."
A review of various dictionaries demonstrates that the ordinary skilled
artisan would have understood these sheets as having been "bonded"
together. See, e.g., bonded Meaning in the Random House Unabridged
Dictionary, Random House Unabridged Dictionary (September 23, 2018),
https://www.dictionary.com/browse/bonded ( defining bonded as "Textiles.
made of two layers of the same fabric ... attached to each other by a
chemical process or adhesive" (emphasis added)); Bonded Fabric definition
in Sewcratic, Sewipedia (September 23, 2018),
http://www.sewcratic.com/learn/ sewipedia/fabrics/bonded-fabric ("Bonded
fabrics come in 2 main forms: non-woven textiles, and layers of woven and
non-woven fabric joined by means of a bonding agent like fabric glue"
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( emphasis added)); Bonded - Definition from Merriam-Webster's Learner's
Dictionary, LeamersDictionary.com (September 23, 2018),
http://leamersdictionary.com/ definition/bonded ( defining bonded as "the
condition of being held together or joined[, e.g., ']The glue provides a
good/strong bond between the two pieces of wood."').
Based upon these definitions, a person having ordinary skill in the art
at the time of the invention would have understood that claim 1 encompasses
two woven fabric sheets held together by adhesive, even if selectively
applied.
Appellants argue that "[i]n construing 'bonded,' the Examiner has
apparently not considered the present specification." Reply Br. 5. However,
Appellants have not pointed to any specific passages in the Specification,
nor have we found any such passages, that suggests that the interpretation set
forth above is not reasonable. The Specification does not contain any
disclosure that is inconsistent with the broader interpretation, which in tum
is completely consistent with the plain language of the claim.
In view of the foregoing, we agree that Examiner's construction of the
phrase "each sub-layer of basalt material being bonded" as encompassing
instances in which such bonds are facilitated by adhesive is consistent with
the plain meaning of the claim term "bonded." Imes, 778 F.3d at 1254.
Second, we are not persuaded by Appellants' argument (2) regarding
the Rule 132 Declaration ofLotar Hanusa, Ph.D. See Appeal Br. 13.
To establish the existence of unexpected results, Appellants must
establish (1) that there actually is a difference between the results obtained
through the claimed invention and those of the closest prior art and (2) that
the difference actually obtained would not have been expected by a person
of ordinary skill in the art at the time of the invention. In re Freeman, 4 7 4
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F.2d 1318, 1324 (CCPA 1973) (citinginreKlosak, 455 F.2d 1077 (CCPA
1972); In re D'Ancicco, 439 F.2d 1244 (CCPA 1971)).
In this case, the instant Rule 132 Declaration's results would have
been expected by a person of ordinary skill in the art at the time of the
invention. As the Examiner explained, the results in the Rule 132
Declaration of Lo tar Hanusa, Ph.D.
show that multiple outer layers of basalt fibers provide a panel
with the most (longest) fire resistance, a single outer layer of
basalt fibers provides a panel with the second most fire
resistance, and that no outer layer of basalt fibers provides a
panel the least fire resistance" [but] "even the appellant
admits that it is known in the art that basalt fabrics provide
fire protection.
Answer 12-13; see Spec. ,r 3 ( disclosing that "[b ]asalt fabric is known to
give some protection from fire exposure ... and has been used, for example,
in manufacturing protective clothing for fire fighters"). Based on
Appellants' admission that basalt fabric's properties in fire exposure
protection were well known in the art, we agree with the Examiner that the
Rule 132 Declaration of Lotar Hanusa, Ph.D., fails to establish the existence
of unexpected results.
Third, we are not persuaded by Appellants' argument (3) because the
Examiner does not apply Pilpel or Green as anticipatory references.
"While a reference must enable someone to practice the invention in
order to anticipate under § 102(b ), a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under§ 103." Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (citing
Reading & Bates Constr. Co. v. Baker Energy Resources Corp., 748 F.2d
645, 652 (Fed. Cir. 1984)) (reference that lacks enabling disclosure is not
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anticipating, but "itself may qualify as a prior art reference under § 103, but
only for what is disclosed in it.").
Therefore, Appellants reliance on In re Wands, 85 8 F .2d 731, 73 6-
737 (Fed. Cir. 1988) as persuasive authority is misplaced. See Appeal Br.
15-16. In other words, factors for determining whether the applied prior art
includes an enabling disclosure are not germane in the present appeal.
To the extent Appellants implicitly argue that the composite layer
taught or suggested by the combination of Pilpel and Green would not have
been capable of preventing flame and smoke generation, we are not
persuaded. See id. at 16-17.
It is well established that when claimed and prior art products are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1256 (CCPA 1977). Appellants have not met this burden. The
record is silent as to any persuasive technical reasoning or evidence
demonstrating that Pilpel' s modified composite layer comprising basalt
fibers would not have the requisite fire protective properties. Rather, we
agree with the Examiner that because "the composite layer taught by the
applied prior art is substantially identical to the claimed composite layer, it
would [have] inherently possess[ed] the claimed characteristics." Answer 4.
Appellants argue that the Examiner's reliance upon Pilpel, Green,
Degroote, and/or Li fail to cure the deficiencies of Pilpel and Green (Appeal
Br. 18-19). We, however, agree with the Examiner that Appellants have not
identified any such deficiencies.
In view of the foregoing, we affirm the Examiner's rejections of
claims 1-3, 5, 6, 8-10, and 21-31.
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Application 12/762,879
CONCLUSION
For the reasons set forth above, we affirm the§ 103(a) rejections of
claims 1-3, 5, 6, 8-10, and 21-31 of the '879 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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