Ex Parte Lucas et al

Board of Patent Appeals and Interferences

Sep 30, 2003

09317409 (B.P.A.I. Sep. 30, 2003)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 26

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte SCOTT D. LUCAS
and ROBIN K. MASKELL
______________

Appeal No. 2003-1974
Application 09/317,409
_______________

ON BRIEF
_______________

Before WARREN, LIEBERMAN and JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 55 and 57 through 59. Claims 1 through 12, 39 through 46, 60 through 76 and
87 are also of record and have been withdrawn from consideration by the examiner under
37 CFR § 1.142(b). Claim 55 is illustrative of the claims on appeal:
55. A prepreg of a honeycomb sandwich structure precursor including a honeycomb core,
a stiffness-treated prepreg ply and a second prepreg ply, in the absence of a tiedown ply
contacting the honeycomb core, and where the stiffness-treated prepreg ply and the second
prepreg ply are disposed adjacent one another, said stiffness-treated prepreg ply comprising:
a stiffness-treated fabric including a plurality of fibers and a polymeric material disposed
on at least some of the fibers, where the stiffness-treated fabric exhibits an ASTM stiffness value
greater than the ASTM stiffness value of an untreated fabric; and
a resin system,
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Application 09/317,409
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the stiffness-treated prepreg ply, when disposed on the second prepreg ply comprising a
resin system and a fabric selected from the group consisting of the stiffness-treated fabric and
untreated fabrics, exhibiting a frictional resistance between the stiffness-treated prepreg ply and
the second prepreg ply sufficiently greater than the frictional resistance between two untreated
prepreg plies disposed on one another, where each of the two untreated prepreg plies comprises
the resin system and an untreated fabric, so as to enhance resistance to core crush during
fabrication of a honeycomb core structure from the honeycomb structure precursor.
The reference relied on by the examiner and appellants in the grounds of rejection is:
Corbett et al. (Corbett) 5,895,699 Apr. 20, 1999
The examiner has advanced the following grounds of rejection on appeal:
claims 55 and 57 through 59 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention; and
claims 55 and 57 through 59 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Appellants state in their brief that the appealed claims “stand or fall together” (page 3).
Thus, we decide this appeal based on appealed claim 55. 37 CFR § 1.192(c)(7) (2002).
We affirm the ground of rejection under 35 U.S.C. § 112, first paragraph, written
description requirement, and we reverse the ground of rejection under 35 U.S.C. § 112, second
paragraph.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
The initial burden of establishing a prima facie case on any ground under the second
paragraph of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984) (“As discussed in In re Piasecki, the examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). In making out a prima facie case of non-compliance with this statutory
provision on the basis that a claim is indefinite for failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention, the examiner must establish
that when the language of the claim is considered as a whole as well as in view of the written
description in the specification as it would be interpreted by one of ordinary skill in the art, the
Appeal No. 2003-1974
Application 09/317,409
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claim in fact fails to set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
With respect to 35 U.S.C. § 112, first paragraph, written description requirement, it is
well settled that the examiner has the burden of making out a prima facie case that the appealed
claims do not comply with this section of the statute by setting forth evidence or reasons why, as
a matter of fact, the written description in appellant’s disclosure would not reasonably convey to
persons skilled in this art that appellants were in possession of the invention defined by the
claims, including all of the limitations thereof, at the time the application was filed. See
generally, In re Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996),
citing In re Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976). A negative
limitation which does not appear in the written description of the specification as filed would
cause the claim to violate the written description requirement of § 112, first paragraph, if it
introduces new concepts. See Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem.,
738 F.2d 453 (Fed. Cir 1984), citing In re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA
1973).
The claim language at issue here is the phrase “in the absence of a tiedown ply contacting
the honeycomb core” appearing in the preamble of appealed claim 57. It seem to us from the
plain language of the phrase that one of ordinary skill in this art would find that the “tiedown
ply” intended is one that would “tiedown” the honeycomb core if attached thereto and thus this
claim in fact sets out and circumscribe a particular area with a reasonable degree of precision and
particularity as required by § 112, second paragraph. Indeed, in response to the examiner’s
contentions that one of ordinary skill in this art would not understand the meaning of the phrase
(answer, pages 3 and 8-9), appellants point to tiedown ply 150 in contact with honeycomb core
106 along a chamfer 155 in Corbett (e.g., col. 5, line 49, to col. 6, line 18, and FIG. 6) to support
their argument that one of ordinary skill in this art would have understood the meaning of the
term. Because we agree with appellants’ position, we reverse this ground of rejection.
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Application 09/317,409
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What is “tied down” with a “tiedown ply” according to the written description in the
specification is the issue in the second ground of rejection. We find the following disclosure in
appellants’ specification:
. . . known methods utilized to reduce core crush during the autoclave process have
focused on preventing the differential movement by either mechanical/physical means
(i.e., using tie downs to keep the prepreg plies from differentially moving) . . .
. . . .
As discussed above, known prepreg plies have their differential movement
constrained to reduce core crush in honeycomb sandwich structures produced
therefrom. Known methods of constraining this differential movement have focused
on mechanical/physical constraining means (i.e., using tie downs) . . . . [pages 1-3.]
We further find that in addition to tiedown ply 150 in contact with honeycomb core 106,
Corbett discloses that
[t]raditionally, we use four complete cover sheet tiedown plies 175 in an effort to
anchor the layers and the core, and we show all these plies in FIG. 6, These traditional
plies 175 were commonly used in sandwich panel fabrication prior to introducing the
Hartz-type barrier film, and we commonly use them all, although we believe we can
now eliminate all but the outer plies and the peripheral, core contacting tiedown ply
150. That is, we would use three total plies rather than five, as FIG. 6 shows.
The tiedown plies 150 and 175 extend through the edgeband 160 beyond the net
trim line 165 to anchoring points that we tape to the layup mandrel. To further prevent
slippage of the tiedown plies, we have incorporated a low curing . . . film adhesive 180
between the tiedown plies just outside the net trim line of the part. The film adhesive
180 eliminates movement of one ply relative to the others when we apply pressure
during the autoclave curing cycle.
Thus, the tiedown method of the present invention can save material, reduce costs,
and save weight, if only the “picture frame” peripheral tiedown ply 150 is used (with
the traditional, internal sheets omitted). The normal tiedown procedure entails plys on
the outer surfaces of the skins and internally between the skin and underlying
adhesive. This tiedown system fails without the “picture frame” ply because the barrier
film 110 permits the core to slip. [Col. 6, lines 19-45.]
In comparing the disclosure that it was known to use “tie downs to keep the prepreg plies
from differentially moving” in appellants’ specification with the exclusionary phrase “in the
absence of a tiedown ply contacting the honeycomb core” in appealed claim 57, in light of the
disclosure in Corbett that different tiedowns are used for the honeycomb core, tiedown ply 150,
and for prepregs, tiedown ply 175, it seems to us that as a matter of fact, the “tiedown” for the
Appeal No. 2003-1974
Application 09/317,409
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honey comb core in appealed claim 57 involves a different concept than the “tie down” for the
prepreg plies in the specification. Thus, we are of the opinion that the exclusion of a tie down
which is not described to one of ordinary skill in this art in the written description in the
specification and not the tie down that is described therein, adds a negative limitation involving a
new concept to the claimed invention which violates § 112, first paragraph, written description
requirement.
We are not convinced otherwise by appellants’ arguments (brief, pages 3-6). Appellants
at once argue that a negative limitation which is not found at all in the specification is
permissible and that the specification provides a basis for the negative limitations in stating that
tie downs are to be avoided. Indeed, in view of the different types of tiedowns known in the art,
the elimination of one type but not the other does not support appellants’ contention that “[t]he
use of stiffened fabric instead of, not in addition to tie down plies is, as set forth above, clearly
conveyed by the present specification” (id., page 5).
Accordingly, on this record, we affirm the ground of rejection based on 35 U.S.C.
§ 112, first paragraph, written description requirement.
The examiner’s decision is affirmed.

Appeal No. 2003-1974
Application 09/317,409
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

Appeal No. 2003-1974
Application 09/317,409
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Fran Wasserman
Cytec Industries Inc., Patent Law Department
1937 West Main Street
P.O. Box 60
Stamford, CT 06904-0060