Ex Parte Midali et alDownload PDFPatent Trial and Appeal BoardJan 22, 201812157125 (P.T.A.B. Jan. 22, 2018) Copy Citation 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. 12/157,125 06/06/2008 Alberto Midali 1661-006 5966 47888 7590 01/24/2018 HEDMAN & COSTIGAN, P.C. ONE ROCKEFELLER PLAZA, 11TH FLOOR NEW YORK, NY 10020 EXAMINER CAILLOUET, CHRISTOPHER C ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 01/24/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOmail@hgcpatent.com ipdocket @hgcpatent. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERTO MIDALI, MAURO ALIVERTI, MAURO ROCCATI, and PIER GIORGIO FERRANTE Appeal 2017-000759 Application 12/157,125 Technology Center 1700 Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-5, and 10. We have jurisdiction under 35 U.S.C. § 6(b). 1 We note that Appellants fail to identify a real party in interest (Br. 1). Although, in the absence of a statement in the Appeal Brief identifying a real party in interest, we may assume that the named inventors are the real party in interest in accordance with 37 C.F.R. § 41.37(c)(l)(i), we note that the Office assignment Appeal 2017-000759 Application 12/157,125 We AFFIRM.* 2 STATEMENT OF THE CASE The invention relates to a process for manufacturing sound absorbing panels for aircraft (Spec. 1), wherein an entirely assembled acoustic panel including a facing or front sheet, an intermediate honeycomb structure, and a backing sheet (id. 5:14— 18) is co-cured (id. 4:16-17) and the front sheet is acoustically perforated (id. 6:13). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. Process for manufacturing a sound-absorbing composite panel characterized in that it comprises a sequence of the following steps: (a) lamination of a front sheet, made of composite material comprising a resin material; (b) assembly of an intermediate honeycomb sheet on said front sheet; (c) lamination of a back sheet on a side of said intermediate honeycomb sheet formed in step (b) where said back side is a side that is opposite a side having said front sheet made out of composite material comprising a resin material to form an uncured assembled acoustic panel; records indicate that the assignee of this application is ALENIA AERMACCHI S.p.A. (Reel/Frame: 021111/0825, recorded June 6, 2008). 2 Our Decision refers to the Specification (Spec.) filed June 6, 2008, Appellants’ Appeal Brief (Br.) filed December 28, 2015, and the Examiner’s Answer (Ans.) dated August 11, 2016. 2 Appeal 2017-000759 Application 12/157,125 (d) polymerization of said uncured assembled acoustic panel, by co-curing the entire-uncured assembled acoustic panel wherein said polymerization is carried out as a single step in an autoclave; (e) acoustic perforation of the front sheet by mechanical means wherein said acoustic perforation of the front sheet is carried out as a single step[;] (f) trimming of the assembled panel; and (g) fixing the panel to a portion of an aircraft. REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection under 35 U.S.C. § 103(a): 1. Claims 1, 3, and 10 as unpatentable over Zhou3 in view of Adee4 and Beggs;5 2. Claims 1, 3, and 10 as unpatentable over Fuchs6 in view of Wang,7 Johnson,8 Zhou, Adee, and Beggs; and 3. Claims 4 and 5 as unpatentable over the combination of Fuchs, Wang, Johnson, Zhou, Adee, and Beggs as applied to claims 1, 3, and 10, and further in view of Manico.9 3 Zhou et al., US 2002/0079052 Al, published June 27, 2002 (“Zhou”). 4 Adee et al., US 4,612,737, issued September 23, 1986 (“Adee”). 5 Beggs et al., US 4,254,171, issued March 3, 1981 (“Beggs”). 6 Fuchs, Jr., US 3,373,480, issued March 19, 1968 (“Fuchs”). 7 Wang et al., US 2006/0204714 Al, published September 14, 2006 (“Wang”). 8 Johnson et al., US 2004/0003885 A9, published January 8, 2004 (“Johnson”). 9 Manico et al., US 5,031,773, issued July 16, 1991 (“Manico”). 3 Appeal 2017-000759 Application 12/157,125 ANALYSIS Rejection 1: Obviousness over Zhou in view of Adee and Beggs Appellants do not present separate arguments for the claims covered by this rejection. Accordingly, we address Appellants’ arguments focusing on the limitations of claim 1. Claims 3 and 10 stand or fall with claim 1 in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2015). After review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness adduced by the Examiner in light of the countervailing Declaration evidence proffered by Appellants, we determine that the Appellants’ arguments and evidence are insufficient to outweigh the evidence of obviousness marshalled by the Examiner. Thus, Appellants have not identified reversible error in the Examiner’s obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). We adopt the Examiner’s findings, reasoning, and conclusions as well expressed in the Answer, pages 2—6, as our own and offer the following for emphasis only. Initially, we note, as did the Examiner (Ans. 14), that to the extent Appellants argue the references individually, Appellants arguments fail to persuade us of reversible error in the Examiner’s rejection. Pointing out that each reference does not disclose an element of the claim is not helpful in identifying reversible error by the Examiner when the Examiner is not 4 Appeal 2017-000759 Application 12/157,125 relying on the reference for teaching that claim element. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Appellants’ arguments that Zhou fails to make an acoustic panel (Br. 4), Adee fails to teach a single curing step (id. at 3), and Beggs fails to teach a single curing step, perforation after curing, and fixing the panel to an aircraft (id. at 3-4), fail to address the Examiner’s findings regarding the combined teachings of these references where the Examiner’s rejection does not rely on any single reference to teach these steps and/or features. Appellants further argue that Zhou fails to explicitly disclose a co-curing step (Br. 3). However, Zhou teaches uncured composite sheets are applied to a honeycomb core “and then cured.” Zhou 20. The clear implication of this disclosure is that the entirely assembled panel including composite front and back sheets and honeycomb core is subjected to a single co-curing step. Appellants further argue that Zhou fails to make obvious the sequence of steps recited in claims 1 and 10, where a front sheet is laminated, then assembled to a honeycomb sheet, followed by lamination of a back sheet to the honeycomb sheet on a side 5 Appeal 2017-000759 Application 12/157,125 opposite the front sheet (Br. 3). Appellants urge that Zhou’s use of pre-preg sheets that are hot coated with resin does not teach assembly of the honeycomb sheet onto a laminated back sheet (id.). In addition, Appellants assert that “the claimed process avoids the complex and time consuming steps of preparing a pre- preg sheets of Zhou which must have thermoplastic particles” (id.). These arguments are not persuasive of reversible error in the Examiner’s rejection. The Examiner determines that a pre- preg sheet falls within the scope of the recited sheet made of composite material comprising a resin material (Ans. 14). Appellants fail to rebut this determination. Further, we note neither Appellants’ claims nor Specification define the recited composite resin sheet so as to exclude pre-preg sheets or the use of thermoplastic particles therein. Although claim 1 recites a particular order for the assembly of the panel prior to polymerization/curing, the only argument Appellants raise that the order is critical is directed to when the polymerization step and acoustic perforation step occur (Br. 5, citing two Declarations10 of Luca Bottero under 37 C.F.R. § 1.132). Appellants fail to direct our attention to any reason in the record 10 Declaration of Luca Bottero under 37 C.F.R. § 1.132 (1st Deck), filed November 26, 2014, and Declaration of Luca Bottero under 37 C.F.R. § 1.132 (2nd Deck), filed May 22, 2015. 6 Appeal 2017-000759 Application 12/157,125 for the particular order of assembly of the panel components prior to polymerization, nor do we find any. In the absence of any reason, advantage, or new and unexpected result, we are in complete agreement with the Examiner that the selection of any order of assembly of Zhou’s panel components would have been obvious to one of ordinary skill in the art. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946). Moreover, the fact that Zhou does not specify any particular order further supports Zhou’s recognition that such was within the ordinary skill in this art. As to the polymerization/curing step occurring after the assembly of the panel and prior to acoustic perforation of the front sheet, as we note above, Zhou clearly teaches that an entirely assembled panel including composite front and back sheets and honeycomb core is subjected to a single co-curing step (Ans. 14; Zhou 20). While the Examiner acknowledges that Zhou fails to teach perforation of the front sheet after polymerization/curing, the Examiner finds Adee teaches it was known in the art to acoustically perforate a composite material after the material has been polymerized/cured in an autoclave (Ans. 4). With regard to Adee, Appellants argue that Adee requires masking which is not recited in Appellants’ claims (Br. 6). Appellants also argue that Adee generates the perforations via an abrasion method which, Appellants contend, cannot be considered as made by mechanical means, cannot be performed in a single 7 Appeal 2017-000759 Application 12/157,125 step, and does not achieve the tolerances required to accurately manufacture an acoustic panel that will properly attenuate aircraft noise (id.). These arguments are not persuasive of reversible error in the Examiner’s rejection. The Examiner finds that “Adee clearly discloses that mechanical drilling is known and conventional in the art (column 1, lines 55-60) as well as abrasive perforation” (Ans. 15).11 Appellants do not respond to or otherwise address this finding. Finally, Appellants argue that “the present invention is based on the sequence of steps which result in the polymerization 11 Moreover, we note that abrasive perforation is a mechanical means. Appellants have not defined “mechanical means” in the Specification, nor disclosed a limitation on such that could reasonably be read to exclude particle abrasion. Instead, Appellants merely teach “[perforation of the sheet can be obtained by punching, mechanical perforation or laser perforation. Alternatively, perforation can be performed by sandblasting or through a mat with spikes” (Spec. 2:25-3:2). The term “mechanical” includes “brought about by friction, abrasion, etc.” (http://www.dictionary.com/browse/mechanical, last accessed on January 17, 2018). Therefore, the broadest reasonable interpretation of “mechanical means” would include Adee’s abrasive perforation. In addition, Appellants’ claims do not exclude masking, which Adee discloses for use with abrasive drilling, prior to acoustic perforation. Neither do the claims recite any tolerance standard nor do Appellants provide any evidence supporting the assertion that Adee’s abrasive perforation will not achieve the necessary hole tolerances in contrast to Appellants’ “mechanical means.” 8 Appeal 2017-000759 Application 12/157,125 taking place at a different point in the process,” which “solves a problem in the clogging of holes in the acoustic panel” (Br. 5). Appellants contend the two Bottero Declarations point out the problem of adhesive migration and evidence the presently claimed sequence of steps solves this problem (id.). Appellants urge that Figures 7 and 8 of the second Bottero Declaration “document the unexpected results that are provided by the claimed sequence of steps” (id.). However, the only evidence of any purportedly surprising or unexpected result is directed to the reduction of curing steps from a prior multistep curing process to a single curing step (see 1st Decl. Tf 7 and 2nd Decl. ^ 7). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”); see also Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988). 9 Appeal 2017-000759 Application 12/157,125 Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no hard-and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692- 93 (Fed. Cir. 1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Here, the Examiner has presented evidence that not only was it known in the art to fully assemble a panel prior to a single curing step as taught in Zhou, but that it was also known in the art to acoustically perforate a cured panel as taught in Adee. Appellants have not compared the claimed process to either that of Zhou or Adee and, therefore, have not compared the claimed process to the closest prior art. Because Zhou provides a single 10 Appeal 2017-000759 Application 12/157,125 curing step, the ordinary artisan would have expected that Zhou would provide the same cost savings alleged by Declarant as surprising. Because Adee acoustically perforates a cured panel, Adee necessarily avoids any problem with clogging of holes that would have occurred had the perforation been done before curing.12 As such, Appellants’ results as shown in Figures 7 and 8 of the second Bottero Declaration would have been expected by one of ordinary skill in the art. Accordingly, we will sustain the Examiner’s rejection of claims 1, 3, and 10 as unpatentable over the combination of Zhou, Adee, and Beggs. Rejection 2: Obviousness over Fuchs in view of Wang, Johnson, Zhou, Adee and Beggs Appellants do not present separate arguments for the claims covered by this rejection. Accordingly, we address Appellants’ arguments focusing on the limitations of claim 1. Claims 3 and 10 12 We note Appellants argue that the Examiner is relying on inherency in maintaining the rejections before us in this appeal (Br. 13). We disagree. The only reference to inherency in the rejection statements is with regard to claim 6 which is not pending and is not before us on appeal (Ans. 13). In the rejection of claims 1, 3, and 10 over the combination of Zhou, Adee, and Beggs, the Examiner does cite to Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) in support of the concept that certain advantages argued by Appellants such as reduced hole plugging would flow naturally from the teachings of the applied prior art. 11 Appeal 2017-000759 Application 12/157,125 stand or fall with claim 1 in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2015). We note that although this rejection relies on the additional references to Fuchs, Wang, and Johnson, this rejection includes Zhou, Adee, and Beggs, the references from the first rejection discussed above. For the reasons discussed above, we determined that a preponderance of the evidence supported the obviousness of claims 1, 3, and 10 based on these latter three references. Therefore, we determine here that, for these same reasons, the teachings of Fuchs, Wang, and Johnson, when added to the teachings of Zhou, Adee, and Beggs, likewise render obvious the claimed process by a preponderance of the evidence. We adopt the Examiner’s findings, reasoning, and conclusions as well expressed in the Answer, pages 6-12, as our own and offer the following for emphasis only. We note, as before, that to the extent Appellants argue the references individually, Appellants arguments fail to persuade us of reversible error in the Examiner’s rejection. Keller, 642 F.2d at 425; Merck, 800 F.2d at 1097. Thus, Appellants’ arguments that Fuchs fails to teach making acoustic panels and uses sheets that are not composite materials (Br. 8-9, 10), Wang fails to teach making acoustic panels (id. at 9), Johnson fails to teach making acoustic panels and uses “on-the-fly” curing (id.), Zhou includes steps and materials not required by the claimed process (id. at 10), 12 Appeal 2017-000759 Application 12/157,125 Adee uses abrasive perforation (id.), and Beggs fails to teach a single curing step, perforation after curing, and fixing the panel to an aircraft (id.), all fail to address the Examiner’s findings regarding these references and the Examiner’s rejection which did not rely on these references to teach these features or steps. Accordingly, we will sustain the Examiner’s rejection of claims 1, 3, and 10 as unpatentable over the combination of Fuchs, Wang, Johnson, Zhou, Adee, and Beggs. Rejection 3: Obviousness over Fuchs in view of Wang, Johnson, Zhou, Adee and Beggs, and further in view of Manico Appellants argue that “nothing in Manico makes obvious the sequence of steps that have been set forth in claim 11 where an adhesive film is laminated to the other components using a single polymerization step” (Br. 12). Appellants contend that “Manico is concerned with a photographic image set that has nothing to do with a sound absorbing panel” (id.). We note claim 11 is not pending and is, therefore, not before us. The Examiner relies on Manico to reject claims 4 and 5, which depend from claim 1 and respectively require lamination of an adhesive sheet on the front sheet and lamination of an adhesive sheet between the honeycomb and back sheet. In particular, the Examiner finds Fuchs teaches that the front and back sheets may be bonded to the honeycomb core with an adhesive, but does not disclose the use of an adhesive sheet per se (Ans. 13). The 13 Appeal 2017-000759 Application 12/157,125 Examiner merely relies on Manico for teaching that an adhesive film may be used as an adhesive for bonding two layers together, and thereby concludes it would have been obvious to use adhesive films for bonding the front and back sheets in Fuchs to the honeycomb core (id.).13 We understand Appellants’ argument regarding Manico to be that this reference is non-analogous prior art. A reference is analogous art if it is either in the field of the applicant’s endeavor, or is reasonably pertinent to the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Here, Manico is at least reasonably pertinent because it deals with adhesive bonding of two layers together and demonstrates the use of adhesive films to be a known alternative for adhesively bonding. Thus, we are not persuaded that the 13 We note that adhesive sheets such as adhesive tape are generally well-known for adhesively bonding two substrates together. Indeed, “tape” is defined to be “a strip of cloth, paper, or plastic with an adhesive surface, used for sealing, binding, or attaching items together; adhesive tape or masking tape” (http://www.dictionary.com/browse/tape, last accessed on January 17, 2018). 14 Appeal 2017-000759 Application 12/157,125 Examiner’s reliance on Manico in the rejection of claims 4 and 5 was harmful error. CONCLUSION In summary: Claims Rejected Basis Reference(s) Affirmed Reversed 1, 3, 10 § 103(a) Zhou, Adee, Beggs 1, 3, 10 1, 3, 10 § 103(a) Fuchs, Wang, Johnson, Zhou, Adee, Beggs 1, 3, 10 4,5 § 103(a) Fuchs, Wang, Johnson, Zhou, Adee, Beggs, Manico 4,5 Summary 1, 3-5, 10 DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1, 3-5, and 10 is affirmed. TIME PERIOD FOR RESPONSE 15 Appeal 2017-000759 Application 12/157,125 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). AFFIRMED 16 Copy with citationCopy as parenthetical citation