Ex Parte Midali et al

Patent Trial and Appeal Board

Jan 22, 2018

12157125 (P.T.A.B. Jan. 22, 2018)

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.
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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”).
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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
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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
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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.
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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
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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.”
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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).
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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
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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.
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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),
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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
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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).
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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
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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).
AFFIRMED
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