Ex Parte Kaye

Board of Patent Appeals and Interferences

Dec 18, 2008

10362748 (B.P.A.I. Dec. 18, 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: December 18, 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 REQUEST FOR REHEARING
This is a decision on Appellant’s Request for Rehearing (hereafter
“Request” or “Req.”) under 37 C.F.R. § 41.52(a)(1), timely filed on July 21,
2008, requesting rehearing of the Decision dated May 19, 2008 (hereafter
“Decision” or “Dec.”), where this merits panel affirmed the rejection of
claims 1, 3, 5, and 7 under 35 U.S.C. § 103(a) over Bolukbasi (US

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Application 10/362,748

6,620,484) in view of Skoien (US 5,670,220) and Forsch (US 4,299,871).1
Appellant requests rehearing based on “clearly erroneous statements
of fact” and misinterpretations of the KSR Int’l Co. v. Teleflex Inc. decision,2
“as well as a failure to apply . . . the requirements of that decision.” Req. 1.
Specifically, Appellant first contends that Factual Finding (4) in the
Decision is clearly erroneous since it states that Skoien “uses an adhesive to
join the upstanding webs together” (Req. 2, emphasis omitted). Appellant
contends that Skoien does not teach joining of any upstanding webs
together, but instead only teaches joining webs to the insulating sheets (Req.
3).
Secondly, Appellant contends that Factual Finding (5) in the Decision
is clearly erroneous since it states that “Forsch discloses an integrated
composite structure made by orienting two webs in adjacent upstanding
portions and joining them via a stitcher” (Req. 5). Appellant contends that a
detailed review of Forsch shows that the webs or upstanding portions of the
beam caps 34 and 36 are never joined together via a stitcher, but the stitcher
is only used to attach the beam caps to the panel 32 (Req. 6, citing dash lines
38 in Figs. 2-3 of Forsch).
In view of these contentions regarding Factual Findings (4) and (5),
Appellant contends that the Board’s statements based on these findings are
also erroneous (Req. 8-9).

1 Dec. 4. We note that the other rejections on appeal, namely the rejection of
claims 1-7 under 35 U.S.C. § 112, second paragraph, and the rejection of
claims 1-4, 6, and 7 under 35 U.S.C. § 103(a) over Forsch, were not
sustained. Id.; Req. 2.
2 127 S. Ct. 1727 (2007).
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We are not persuaded of error in our Decision regarding these points
contended by Appellant. First, we determine that the bonding means for
upstanding portions, as disclosed and suggested by Skoien and Forsch, are
not controlling to our Decision. As shown by Factual Findings (1) and (2),
Bolukbasi discloses a structural stiffening article made of a plurality of U-
shaped webs which have upstanding portions stitched together, with
teachings of the advantageous results from the use of stitching to join or
bond the composite materials (Dec. 7). Therefore, even assuming arguendo
that Factual Findings (4) and (5) were in error, we determine that the
conclusion reached by this merits panel in the Decision that “it was well
known in the art of stiffening structures to employ stitching as a means of
bonding two adjacent webs, and the advantages of stitching were well
known in the art” (Dec. 9) was based on a preponderance of evidence in the
appeal record.
Furthermore, we do not agree that Factual Findings (4) and (5) in the
Decision were erroneous. With regard to Factual Finding (5), we agree with
Appellant that Forsch discloses the well known use of stitching to bond two
structures together, although Forsch does not show the upstanding adjacent
webs bonded together by stitching. Factual Finding (5) states this disclosure
from Forsch, but does not clearly state what the upstanding webs are joined
to via the stitcher (Dec. 8). This is more clearly set forth in the Answer,
where the Examiner found that Forsch discloses joining two upstanding
webs “to a supporting material via a stitcher” (Ans. 5, as cited at Dec. 8).
Accordingly, Factual Finding (5) was merely relied upon as evidence that
joining webs to composite materials by stitching, and the advantage of
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stitching regarding structural strength as compared to mechanical fasteners
and adhesive bonding, was well known in this art (Dec. 9).
With regard to Factual Finding (4) as discussed above, we do not
agree with Appellant that Skoien fails to disclose or suggest joining the
upstanding adjacent portions of the web material together (Req. 3-4).
Skoien discloses and suggests multiple glue bonding stations to achieve
adhesive bonding of every portion of the insulating batt, including each
partition strip, side margin, and connector strip everywhere they overlap,
thus rendering obvious the bonding of any upstanding adjacent portions. See
Skoien, Fig. 1; col. 2, ll. 35-44; col. 4, ll. 1-35; col. 6, ll. 29-31; and col. 8, ll.
20-49.
Appellant contends that Skoien does not disclose any aligning means
falling within the properly construed scope of this claim term (Req. 9).
Appellant contends that the Board incorrectly determined that “nor is there
any argument that Skoien discloses aligning means within the scope of the
claim term” (Id.). These contentions are not persuasive of error. First, we
note that the Examiner stated that Skoien shows that the webs are “aligned”
(Ans. 6, citing Fig. 5). Secondly, we again note that there is no argument or
contention in the Appeal Brief or Reply Brief that any of the three applied
references fail to show “aligning means” within the proper scope of that
term, only that the references in general fail to disclose the claimed
structures (App. Br. 12-14). Third, as stated in the Decision, Skoien
discloses aligning means within the properly construed scope of this term
(Dec. 5 and 7-8; FF (4)). See also Skoien, col. 3, ll. 26-29 and 54-57; and
col. 7, ll. 44-47. Accordingly, we determine that Skoien teaches forming
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plates, dispensers, reels or rollers, and guides within the properly construed
scope of the claimed term “aligning means.”
Finally, Appellant contends that the Board “may” have improperly
applied the Supreme Court decision of KSR Int’l Co. v. Teleflex, Inc. (Req.
11). Specifically, Appellant first contends that the Board’s conclusion that
KSR states that any and all combinations of known elements, in which the
elements operate in a known manner, are obvious is incorrect (Req. 11-12).
Secondly, Appellant contends that the Board incorrectly stated that the
Examiner does not have the obligation to provide an “explicit” analysis of
the rationale for combining references in an obviousness rejection (Req. 11
and 13).
We do not find these contentions persuasive of error in our Decision.
As stated by the Supreme Court in KSR:
Neither the enactment of §103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need
for caution in granting a patent based on the combination of
elements found in the prior art[. ] For over a half century, the
Court has held that a “patent for a combination which only
unites old elements with no change in their respective functions
. . . obviously withdraws what is already known into the field of
its monopoly and diminishes the resources available to skillful
men.” Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., 340 U.S. 147, 152 (1950). This is a principal
reason for declining to allow patents for what is obvious. The
combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield
predictable results.

KSR, 127 S. Ct. at 1740 (emphasis added). Furthermore, as cited in our
Decision, when a patent “‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
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more than one would expect from such an arrangement,” the combination is
obvious (Dec. 9, citing id.; Req. 11). Claim 1 on appeal only requires at
least three structures, namely an aligning means, a forming means (first and
second forming means), and bonding means (see claim 1 on appeal; Dec. 2).
As shown by the Factual Findings in the Decision, all three of these means
were known in the art, there is no change in their respective functions, and
the combination of old elements merely yields predictable results (Dec. 8-9).
In other words, the aligning means aligns the web material coming off the
reels and dispenser, the forming means forms upstanding adjacent portions
of the web material, and the bonding means joins the upstanding adjacent
portions together. Appellant has not contended, nor shown, that any of the
claimed elements perform a function different from the function of the
corresponding elements known in the prior art.
With regard to Appellant’s contention that the Board concluded that
the Examiner does not have the obligation to provide an “explicit analysis”
of the obviousness rejection (Req. 11), we find no such statement in our
Decision. We also note that Appellant has not pointed to any such statement
in the Decision to support their assertion. With regard to a “rationale” or
explanation of the contested obviousness rejection, we refer Appellant to
pages 8-10 of the Decision, as well as pages 5-6 and 9 of the Answer.
For the foregoing reasons and those expressed in the Decision, we
have reconsidered our Decision in light of Appellant’s Request for
Rehearing, but find no points overlooked or misapprehended. Accordingly,
Appellant’s Request is denied.

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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).

DENIED

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