Ex Parte Kaye

Board of Patent Appeals and Interferences

May 19, 2008

10362748 (B.P.A.I. May. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALLAN KAYE
____________

Appeal 2008-1192
Application 10/362,748
Technology Center 1700
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Decided: May 19, 2008
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Before THOMAS A. WALTZ, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s non-final
rejection of claims 1-7. Although the action appealed from was a non-final
rejection, we have jurisdiction since the claims have been twice presented
and rejected. See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1998);
and 35 U.S.C. §§ 6(b) and 134. Claims 8-21 are the only other claims
remaining in this application but stand withdrawn from consideration (App.
Br. 2).
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Application 10/362,748

According to Appellant, the invention is directed to an apparatus for
forming structural stiffening comprising aligning means, first and second
forming means, and bonding means (App. Br. 3-4). Further details of the
invention may be gleaned from a reading of independent claim 1 as
reproduced below:
1. An apparatus for forming structural stiffening, said apparatus
comprising:
aligning means to align first and second sheets of material, said sheets
of material located adjacent and generally co-planar with one another;
first and second forming means adapted to receive respective said first
and second sheets and form an upstanding portion in each of said sheets,
said upstanding portions of each of said sheets extending in a given direction
and adjacent one another, said first and second forming means for
progressively deflecting and folding opposed edges of said sheets, and
bonding means for bonding together said adjacent upstanding portions
of said progressively folded opposed edges to form an integral component.

The Examiner has relied on the following prior art references as
evidence of obviousness:
Forsch 4,299,871 Nov. 10, 1981
Skoien 5,670,220 Sep. 23, 1997
Bolukbasi 6,620,484 B1 Sep. 16, 2003

ISSUES ON APPEAL
Claims 1-7 stand rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as their invention (Ans. 3).
Claims 1-4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Forsch (Ans. 3).

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Claims 1, 3, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bolukbasi in view of Skoien and Forsch (Ans. 5).
The Examiner contends that the claims are unclear as to whether one
or two aligning means are required as the only device described in the
Specification as aligning is the forming device (Ans. 3). With regard to
claim 6, the Examiner contends that it does not appear to limit claim 2, upon
which claim 6 depends (id.).
Appellant contends that the aligning means are more than the forming
means, and also include dispenser 38 with reels 44 located in tiers 46 and 48
(App. Br. 5-6; Reply Br. 2-5, citing Fig. 3 and Spec. 5:17-26).
The Examiner contends that Forsch discloses an apparatus that joins
together two webs using a bonding agent and mechanical fasteners, and that
forming means would be needed to shape the webs into the required
upstanding portions (Ans. 4).
Appellant contends that the Examiner admits that Forsch does not
disclose first and second forming means, and even if the art recognizes the
need for these means, the structures are not obvious (App. Br. 7-8; Reply Br.
8). Appellant also contends that Forsch does not disclose aligning means
and bonding means (App. Br. 8-9; Reply Br. 9).
The Examiner contends that Bolukbasi discloses a structural stiffening
article made of multiple webs which have adjacent upstanding portions
which are stitched together, while Skoien discloses forming means to form
upstanding portions in adjacent webs and Forsch teaches stitching to join
two webs together to act as a crack stopper to the spread of assembly failure
(Ans. 5).

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Appellant contends that there is no disclosure of the three claimed
structures in the cited prior art references and there is no suggestion for
combining the three references in the manner of the claims (App. Br. 9-11
and 12-13).
Accordingly, we determine the following issues presented from the
record in this appeal: (1) Has Appellant shown that the Examiner reversibly
erred in determining that the scope of claims 1-7 was indefinite; (2) Has
Appellant established that the Examiner reversibly erred in concluding that
the claimed forming means would have been suggested to one of ordinary
skill in the art in view of the Forsch disclosure; and (3) Has Appellant
established that the Examiner reversibly erred in concluding that the
combination of Bolukbasi, Skoien, and Forsch would have rendered obvious
the claimed subject matter?
On the record presented in this appeal, we determine that Appellant
has met the burden of establishing that the Examiner reversibly erred with
regard to the first two rejections, namely the rejection based on § 112,
second paragraph, and the § 103(a) rejection over Forsch alone. Therefore,
we cannot sustain these rejections essentially for the reasons stated in the
Appeal Brief and Reply Brief, as well as those reasons set forth below. With
regard to the third rejection, namely the rejection under § 103(a) over the
combination of Bolukbasi, Skoien, and Forsch, we determine that the
Examiner has properly established a prima facie case of obviousness which
has not been adequately rebutted by Appellant’s arguments. Therefore, we
sustain this ground of rejection essentially for the reasons stated in the
Answer, as well as those reasons set forth below. Accordingly, the decision
of the Examiner is AFFIRMED-IN-PART.
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OPINION
A. The Rejection based on § 112, ¶2
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994). If one skilled in the art would understand the
bounds of the claim when read in light of the specification, then the claim
satisfies the second paragraph of § 112. See Miles Labs., Inc. v. Shandon,
Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
We determine the Examiner has not met the initial burden of
establishing why one of ordinary skill in this art would not have understood
the bounds of the claim term “aligning means” when read in light of
Appellant’s Specification, regardless of whether “aligning means” was
limited to the “forming means,” as alleged by the Examiner (Ans. 3-4), or
whether the “aligning means” includes other structures, as alleged by
Appellant (Reply Br. 2-5). Furthermore, we agree with Appellant that the
“aligning means” includes the forming plates of the forming means as well
as the dispenser, reels, and guides (Reply Br. 2-5; Spec. 1a:1-2 and 5:10-29;
see also Fig. 3). Accordingly, we determine that the aligning means,
construed under § 112, sixth paragraph, as the corresponding structure and
equivalents as disclosed in the Specification, includes any of the forming
plates, dispenser, reels, guides, and equivalents thereof. Therefore, we
cannot sustain the Examiner’s rejection that the scope of the claim 1
language is indefinite. With regard to claim 6 on appeal, we agree with
Appellant that claim 6 clearly limits claim 2 to “adjacent” upstanding
portions (App. Br. 6).
B. The Rejection under § 103(a) over Forsch
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Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. See
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
With regard to the first and second determinations required by
Graham, the Examiner admits that Forsch does not disclose first and second
forming means as required by claim 1 on appeal (Ans. 4). The Examiner
addresses the third Graham determination by stating that “one in the art
reading the reference as a whole would appreciate that since the webs are
intended to end upright with a space between them for a web to be inserted,
forming means which would shape the webs into these upstanding portions
would be needed.” (Ans. 4). See also Ans. 7. The Examiner further finds
that, based on the reference using blocks to hold the web in place during
stitching, “some sort of plate or block” would seem to be the forming means,
and these forming means are considered equivalent to Appellant’s forming
means (Ans. 4).
We determine that the Examiner has not adequately presented any
factual findings or technical reasoning to support the above quoted
statements on pages 4 and 7 of the Answer. We determine that the Examiner
has not properly set forth any rational basis why “forming means” would be
the only means necessary to accomplish the upstanding portions of the web
in the process and apparatus of Forsch. Additionally, we determine that the
Examiner has not properly explained why the blocks disclosed by Forsch to
hold the web in place during stitching would have led one of ordinary skill
in this art to the plates as the forming means in the claims on appeal. See In
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re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusionary statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”).
For the foregoing reasons and those stated in the Briefs, we do not
sustain the rejection under § 103(a) over Forsch.
C. The Rejection under § 103(a) over Bolukbasi, Skoien, and Forsch
We determine the following Factual findings (FF) from the record
presented in this appeal:
(1) Bolukbasi discloses a structural stiffening article made of a
plurality of U-shaped webs which have adjacent upstanding
portions stitched together (Ans. 5; Bolukbasi, Abstract;
Figs. 2-3; col. 1, ll. 9-12; and col. 3, ll. 12-20);
(2) Bolukbasi does not disclose or suggest a method for making
the structural stiffening article, but teaches the advantages
of stitched composite materials, such as superior damage
tolerance and compression-after-impact capabilities (Ans. 5;
Bolukbasi, col. 1, ll. 50-56; and col. 4, ll. 21-25);
(3) Skoien discloses an insulating batt having two sheets of heat
reflective insulating material with a connecting means
including a bracing web (Skoien, Abstract);
(4) Skoien teaches forming upstanding portions in adjacent
webs using fingers 56, which correspond to the claimed
“forming means,” teaches “aligning means” such as guide
plates 59 and guide member 57, but uses an adhesive to join
the upstanding webs together (Ans. 4-5; Skoien, Figs. 1 and
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5; col. 3, ll. 23-29 and 54-57; col. 4, ll. 30-35; col. 7, ll. 37-
45; and col. 8, ll. 50-54);
(5) Forsch discloses an integrated composite structure made by
orienting two webs in adjacent upstanding portions and
joining them via a stitcher (Ans. 5; Forsch, Abstract; Figs. 1
and 6; col. 1, ll. 16-46; col. 2, ll. 21-32 and 56-60; and col.
3, ll. 59-63).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007), quoting
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976).
Applying the preceding legal principles (including those above from
Graham v. John Deere) to the Factual Findings (FF) from the record of this
appeal, we determine that the Examiner has established a prima facie case of
obviousness which has not been adequately rebutted by Appellant’s
arguments. As shown by FF (1) and (2) listed above, we determine that
Bolukbasi discloses a structural stiffening article made of a plurality of U-
shaped webs which have adjacent upstanding portions advantageously
stitched together. As shown by FF (3) and (4) listed above, we determine
that Skoien teaches an apparatus for forming stiffening structures including
aligning means and forming means but using adhesive bonding means. We
note that Appellant presents no arguments disputing the Examiner’s finding
that the fingers 56 taught by Skoien are equivalent to the “forming means”
as recited in the claims on appeal, nor is there any argument that Skoien

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discloses aligning means within the scope of the claim term. As shown by
FF (1), (2), and (5) listed above, we determine that it was well known in the
art of stiffening structures to employ stitching as a means of bonding two
adjacent upstanding webs, and the advantages of stitching were well known
in the art. Accordingly, we agree with the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art to employ the
aligning means and forming means taught by Skoien to align and form the
folded upstanding portions of the adjacent webs of Bolukbasi, and also to
use stitching as taught by Bolukbasi and Forsch as the bonding means to join
together the two webs (Ans. 5-6).
Appellant argues that there is no disclosure of the three claimed
structures in the prior art references (App. Br. 12). This argument is not
persuasive in view of the Factual Findings listed above, which show that the
three references disclose aligning means, forming means, and bonding
means within the scope of the claimed apparatus.
Appellant argues that there is no suggestion for combining the three
references in the manner of claims 1, 3, 5, and 7 (App. Br. 12). As discussed
in KSR, supra, the teaching/suggestion/motivation test is not a required
determination to support a conclusion of obviousness. As stated above, it is
sufficient to establish obviousness for the evidence to show that the claimed
subject matter “‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement.” KSR, 127 S. Ct. at 1740.
Appellant argues that the prior art would lead one of ordinary skill in
the art “away” from the claimed subject matter (App. Br. 13). However,
Appellant has not submitted any specific reason why the “alternative
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methods and/or structures” of the cited references would lead away from the
claimed subject matter. Therefore, we find this argument unpersuasive.
For the foregoing reasons and those stated in the Answer, we affirm
the Examiner’s rejection of claims 1, 3, 5, and 7 under § 103(a) over
Bolukbasi in view of Skoien and Forsch.
D. Conclusion
The rejection of claims 1-7 under the second paragraph of § 112 is
reversed. The rejection of claims 1-4, 6, and 7 under § 103(a) over Forsch is
also reversed.
The rejection of claims 1, 3, 5, and 7 under § 103(a) over Bolukbasi in
view of Skoien and Forsch is affirmed.
Therefore, the decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

tc

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