Ex Parte Jalowka et al

Patent Trial and Appeal Board

Nov 30, 2017

13661354 (P.T.A.B. Nov. 30, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/661,354 10/26/2012 Joseph Jalowka PA-0022993-US(12-247) 2795
52237 7590 12/01/2017
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH JALOWKA, CHARLES R. WATSON, and
CRISTAL CHAN
____________________

Appeal 2017-002535
Application 13/661,354
Technology Center 1700
____________________

Before CHUNG K. PAK, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.

GUPTA, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 13–16, 19, and 20. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 In this decision, we refer to the Specification filed October 26, 2012
(“Spec.”), the Final Office Action mailed August 21, 2015 (“Final Act.”),
the Advisory Action mailed November 9, 2015 (“Advisory Act.”), the
Appeal Brief filed March 18, 2016 (“Appeal Br.”), the Examiner’s Answer
mailed October 5, 2016 (“Ans.”), and the Reply Brief filed
December 1, 2016 (“Reply Br.”).
2 Appellant is the Applicant, United Technologies Corp., which, according
to the Appeal Brief, is the real party in interest. Appeal Br. 2.
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The subject matter on appeal relates to composites produced using
pressure enhanced vacuum assisted resin transfer molding (VaRTM).
Spec.¶ 1. Claim 13, reproduced below from the Claims Appendix of the
Appeal Brief, is illustrative of the claims on appeal.
13. A composite comprising:
a preform having a plurality of layers;
a tackifier applied to each of said layers, wherein said tackifier
is applied to only select locations on each of said layers to form
locally strengthened regions, wherein said select locations are
each shorter than a length of each of said layers, wherein said
plurality of layers includes two outer layers and at least one
intermediate layer and wherein said tackifier is applied to an
inner surface of each of said outer layers and two opposed
surfaces of said at least one intermediate layer; and
an infused main resin located between said layers.
Appeal Br. 14 (Claims App.)
DISCUSSION
The Examiner maintains the rejection of claims 13–16, 19, and 20
under pre-AIA 35 U.S.C. §103(a) as unpatentable over White et al. (US
5,766,534, issued June 16, 1998) (“White”) in view of Lane et al.
(US 2007/0231571 A1, published October 4, 2007) (“Lane”). Final Act. 2;
Ans. 3.
Appellant argues the claims as a group. Appeal Br. 8–13. Thus, we
select claim 13 as representative of the rejected claims, and the remaining
claims on appeal will stand or fall with claim 13. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of the evidence
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supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Final Office Action and Answer. We add the following.
The Examiner finds that White teaches a composite that includes a
preform having a plurality of layers, a tackifier applied to each of the layers,
and an infused main resin located between the layers, but fails to specifically
teach that the tackifier is applied to only select locations shorter than the
length of each preform layer to form locally strengthened regions. Final
Act. 2 (citing White Abstract, 2:55–3:29, 6:54–7:16, 8:46–57). The
Examiner also finds that White’s tackifier is applied to adhere two layers
together and would predictably strengthen the composite, forming a locally
strengthened region wherever the tackifier is applied. Ans. 4.
The Examiner finds that Lane teaches a pressure sensitive adhesive
(PSA) laminate that includes at least one filmic layer, at least one adhesive
layer, and at least one tackifier layer, where the tackifier layer can be applied
discontinuously (i.e., to select locations that are shorter than the length of
each adhesive layer) depending on the use for the PSA laminate. Final
Act. 2–3 (citing Lane Abstract, ¶ 38; Figs. 12, 13).
The Examiner finds that one of ordinary skill would have been led to
apply the tackifier as a discontinuous layer as taught by Lane to the preform
layers of White’s composite because applying tackifier as either a
continuous or discontinuous layer was well-known and understood in the art.
Advisory Act. 2. Moreover, the Examiner finds that it would have been
predictable that when tackifier is applied as a discontinuous layer, the areas
that receive tackifier would exhibit higher tackiness and stickiness (i.e.,
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strength), and the areas that do not receive tackifier would exhibit lower
tackiness and stickness. Id.
Appellant argues that because White teaches that the tackifier is
applied substantially evenly across the reinforcing material, it teaches away
from applying the tackifier to “select locations” on each of the reinforcing
layers to form locally strengthened regions as required by claim 13. Appeal
Br. 9 (citing White 8:54–56).
Appellant’s argument is not persuasive of reversible error. A
reference teaches away when it criticizes, discredits, or otherwise
discourages the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). White’s disclosure that tackifier is “preferably applied
substantially evenly across the reinforcing material” (White 4:21–22), does
not teach away from other ways of applying the tackifier, such as applying
the tackifier as a discontinuous layer across the reinforcing material. In fact,
White, by disclosing the substantially event application of the tackifier as a
preferred embodiment, implies or suggests that the tackifier can be applied
unevenly (even if this is not preferred). Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”); In re Preda, 401 F.2d 825, 826-27 (CCPA 1968) (“[I]n
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
Appellant also contends that Lane’s disclosure relates to pressure
sensitive adhesive (PSA) laminates, such as tapes, labels, protective films,
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signs, and decals, which is unrelated to White’s resin matrix composites.
Appeal Br 10. Thus, Appellant argues that the Examiner impermissibly
relied on Lane to remedy the defects of White. Id.
Appellant’s argument is not persuasive of reversible error. A
reference is analogous prior art if: (1) it is from the same field of endeavor,
regardless of the problem addressed, or (2) it is reasonably pertinent to the
particular problem with which the inventor was involved. In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). The Federal Circuit counsels us to
construe the scope of analogous art broadly. Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 402 (2007) (“familiar items may have obvious uses beyond
their primary purposes, and a person of ordinary skill often will be able to fit
the teachings of multiple patents together like pieces of a puzzle”)).
Appellant broadly defines their field of invention as relating to composite
structures. Spec. ¶ 4. Appellant’s argument defines too narrowly the scope
of Lane’s disclosure to assert that Lane is non-analogous art. Like White,
Lane is drawn to a layered composite comprising tackifier layers intended to
help the adherence of the composite. As the Examiner finds, Lane teaches
that the tackifier containing structure can be used to form a wide variety of
structures, beyond label and tape related applications, such as roofing,
sheets, carpet under-layers, protective clothing and protective films. Ans. 6
(citing Lane ¶¶ 115–119). Accordingly, we are not persuaded that the
Examiner erred in finding that Lane is analogous art, and thus can be
properly relied upon to support the Examiner’s obviousness rejection.
Appellant argues that the Examiner has not made a prima facie case of
obviousness because the Examiner has not made an evidentiary showing that
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one of ordinary skill in the art would have combined the claimed elements as
set forth in claim 13. Appeal Br. 11. Appellant also argues that the only
way to arrive at the claimed invention starting from the primary reference of
White and combining with Lane is to use impermissible hindsight. Id.
Appellant’s arguments are not persuasive of reversible error. The
Examiner’s rationale relies on the teachings of the prior art, as they would
have been understood by a person of ordinary skill in the art at the time of
the invention, not hindsight reasoning. The Examiner finds that Lane
teaches that it was known in the art to apply tackifier as a continuous or
discontinuous layer in a pressure sensitive adhesive (PSA) laminate (a
composite material) depending on the end use of the laminate. Final Act. 2–
3 (Lane ¶ 38). The Examiner also finds that one of ordinary skill in the art
would have been capable of applying the tackifier in White’s composite as a
discontinuous layer, as taught by Lane, and the results would have been
predictable to one of ordinary skill in the art. Advisory Act. 2. Appellant
has not identified error in the Examiner’s reasoning for combining the prior
art teachings.
Further, as the Examiner points out, White’s preferred embodiment of
applying the tackifier “substantially evenly” across the reinforcing material
(White 4:21–22) could have many interpretations. Ans. 5. For example, it is
reasonable to interpret applying the tackifier “substantially evenly” across
the reinforcing material in White broadly as encompassing applying dots of
adhesive “substantially evenly” across the reinforcing material. Thus, White
arguably suggests applying the tackifier evenly to only select locations
across the reinforcing material, where the select locations are each shorter
than the length of each reinforcing layer.
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In sum, we have carefully considered Appellant’s arguments, but we
are not persuaded of reversible error in the Examiner’s obviousness analysis.
Accordingly, we sustain the rejection of claim 13. Claims 14–16, 19, and
20, not separately argued, fall with representative claim 13.
DECISION
For the above reasons, the rejection of claims 13–16, 19, and 20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED