Ex Parte Hethcock et al

Board of Patent Appeals and Interferences

Mar 18, 2011

10533427 (B.P.A.I. Mar. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte J. DONN HETHCOCK, J. SCOTT DRENNAN,
and KENNETH D. COMINSKY
________________

Appeal 2010-003271
Application 10/533,427
Technology Center 1700
________________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22-26. Claims 27, 28, and 32-44, which are all of the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003271
Application 10/553,427

2
other pending claims, stand withdrawn from consideration by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for bonding at least two composite
preforms together. Claim 22 is illustrative:
22. A method of bonding at least two composite preforms together
comprising the steps of:
providing at least two composite preforms, each composite preform
having composite fibers extending generally in an X-Y plane;
inserting discrete fibers through each preform generally in a Z
direction, so as to form exposed Z-direction fibers and loops protruding
outward from each preform;
overlapping the exposed Z-direction fibers and loops from one
preform with the exposed Z-direction fibers and loops from another preform;
infusing a resin material through each preform and the overlapped Z-
direction fibers and loops;
co-curing the preforms, thereby bonding the preforms together.
The Reference
Sidles 4,888,228 Dec. 19, 1989
The Rejections
Claims 22-26 stand rejected under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Sidles.
OPINION
We reverse the rejections.

Appeal 2010-003271
Application 10/553,427

3
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Sidles discloses, or would have rendered prima facie
obvious, to one of ordinary skill in the art, inserting discrete fibers through a
preform?
Findings of Fact
Sidles discloses a fiber ply (15) comprising a substrate (22) having
warp (24) and weft (26) filaments in X and Y directions and fibers (30)
extending at 70-100° in the Z direction (col. 2, ll. 8-23). The fibers (30)
extend from either side of the substrate (22) to form fiber tips (36) which
may be cut pile tufts (34) or loops (32) (col. 2, ll. 24-28; Fig. 4). “The
fibers [30] may form loops [32] on either side by tuft insertion techniques
known to the art, or the loops [32] may be ground or cut on one or both sides
to form tufts [34]” (col. 4, ll. 27-30).
Analysis
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
The Examiner argues that Sidles’ “tuft insertion techniques known to
the art” (col. 4, ll. 28-29) “clearly included insertion of discrete fiber tufts
into the assembly as an alternative to insertion of a continuous fiber
followed by severing one side of the same” (Ans. 3).
The Appellants argue that they are not using a known technique
(Br. 15).
Appeal 2010-003271
Application 10/553,427

4
The Examiner’s argument is not persuasive because it has been
challenged by the Appellants and the Examiner has not supported the
argument with evidence.
The Examiner argues that “the severing of the loops of fibers to form
loops on one side and tufts on the opposed side would have resulted in
discrete fibers being integrated into the base fabrics (and thus insertion of
discrete fibers therein)” (Ans. 5) and “that insertion of a continuous length
fiber followed by severing the same is in fact insertion of discrete fiber into
the fabric plies as the claims do not exclude the subsequent cutting step”
(Ans. 5-6).
The Appellants argue “that one of ordinary skill in the art of the
invention would have understood that, in Sidles, continuous fibers were
woven through the substrate, rather than inserting discrete fibers, as required
by claim 22 and the claims dependent thereto” (Reply Br. 5-6) and that
“Appellants’ claim 22 requires ‘inserting discrete fibers.’ This step does not
read on inserting a continuous fiber then severing the fiber. A fiber is not
discrete if it is part of a continuous fiber that is subsequently severed”
(Reply Br. 7).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Appellants’ Specification states
(Spec. 7:11-18):
Z-direction fibers are introduced into the dry preform using a process
referred to herein as “fiber insertion,” in which straight barbed needles
are inserted into the preform in the Z direction. A mat of discrete
fibers is placed on the preform. As the needles pass through the mat
Appeal 2010-003271
Application 10/553,427

5
of discrete fibers, the barbs catch and fill up with some of the discrete
fibers. As the needles are forced through the layers of the preform,
the discrete fibers are pulled through the preform by the barbs. As the
needles retract back through the preform, the discrete fibers are
released by the barbs and left in the preform as Z-direction
reinforcement fibers.

The Examiner’s argument is not convincing because the Examiner has not
provided evidence that in view of the meaning given to the claim term
“inserting discrete fibers” by the Appellants’ Specification set forth above,
one of ordinary skill in the art would have considered that claim term to
encompass weaving continuous fibers into the substrate and then cutting or
grinding them (Sidles, col. 4, ll. 29-30).
Accordingly, we find that the Examiner has not established a prima
facie case of anticipation of the Appellants’ claimed method by Sidles.
Regarding the obviousness rejection the Examiner argues that “it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to employ discrete fibers which were inserted into each
perform [sic] in order to form a perform [sic] useful for making a composite
article having high interlamina strength as suggested by Sidles” (Ans. 6).
The Appellants argue that the Examiner “has provided no evidence
that one of ordinary skill in the art would have understood that altering
Sidles[’] process to insert discrete fibers would have been desirable or even
possible to try” (Reply Br. 8).
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
Appeal 2010-003271
Application 10/553,427

6
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
See also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection
based on section 103 clearly must rest on a factual basis, and these facts
must be interpreted without hindsight reconstruction of the invention from
the prior art”). The Examiner has not provided evidence that Sidles’ method
for improving delamination resistance (col. 1, l. 9) wherein loops are cut to
form piles (col. 2, ll. 28-29; col. 4, ll. 27-30) would have led one of ordinary
skill in the art to a step of inserting discrete fibers. The Examiner has
merely provided a conclusory statement which lacks the required articulated
reasoning with rational underpinning. Hence, the record indicates that the
Examiner used impermissible hindsight in rejecting the Appellants’ claims.
Conclusion
The Appellants have indicated reversible error in the Examiner’s
determination that Sidles discloses, or would have rendered prima facie
obvious, to one of ordinary skill in the art, inserting discrete fibers through a
preform.
DECISION/ORDER
The rejections of claims 22-26 under 35 U.S.C. §§ 102(b) and 103
over Sidles are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

sld

Appeal 2010-003271
Application 10/553,427

7
LAW OFFICES OF JAMES E. WALTON, PLLC
1169 N. BURLESON BLVD.
SUITE 107-328
BURLESON TX 76028