Ex Parte Moon et al

Patent Trial and Appeal Board

Dec 30, 2016

12661948 (P.T.A.B. Dec. 30, 2016)

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.
12/661,948 03/26/2010 Hyun Moon 10006 7070
20879 7590 12/30/2016
EMCH, SCHAFFER, SCHAUB & PORCELLO CO
P O BOX 916
ONE SEAGATE SUITE 1980
TOLEDO, OH 43697
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
12/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HYUN MOON, SEMEN KHARCHENKO, and ROBERT H. BECK1
____________

Appeal 2015-000052
Application 12/661,948
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and JENNIFER R. GUPTA,
Administrative Patent Judges.

PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 6‒9.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is Masco Corporation. Appeal
Brief filed March 11, 2014 (“App. Br.”) at 1.
2 Final Action entered November 14, 2013 (“Final Act.”) at 2‒6 and the
Examiner’s Answer entered July 15, 2014 (“Ans.”) at 3‒6.
3 According to Appellants, claims 1‒5 and 10–15, the other pending claims in the
above-identified application, stand withdrawn from consideration by the Examiner.
App. Br. 2; see also Final Act. 1.
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Application 12/661,948

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STATEMENT OF THE CASE
The subject matter defined by the claims on appeal relates to multilayer
sandwich structures, such as “sandwich constructions comprising two external
skins with a foam core sandwiched between the skins” and to “a Model for
Calculation of Stiffness/Cost Values for the Structures.” Spec. 1, ll. 5‒10. This
“analytical model for calculation of multilayer sheet bending stiffness in relation to
the total materials cost” is used to form “2-, 3- (and more) layer sheet-like
structures, such as films, walls and other types of ‘physical barriers’, ranging from
flexible to rigid, whereby the unlimited range of the individual layer thicknesses,
their moduli as well as the costs can be used as input parameters.” Spec. 1, l. 30‒2,
l. 4. The analytical model is said to “provide[] reliable means for prediction of the
stiffness of multilayer structures in relation to the materials cost without the need
to manufacture the representative prototypes.” Spec. 5, ll. 16‒18. According to
page 2, lines 7‒13, of the Specification:
A preferred embodiment results in a homogenized, multilayer
sandwich structure wherein the structure has a total bending stiffness.
The structure has two external skins each of a material having a
modulus, a thickness and a width with contribution to the total
moment of inertia. The structure also has a core of a foam material
sandwiched between the two external skins, wherein the core has a
modulus, a thickness and a width with contribution to the total
moment of inertia. . . .

For example, in hull shapes of boats, the strips of foam material are
applied to wet resin such as polyester, polyether, or epoxy resin and
provide that the width of the strip of the foam material is limited, the
foam material will remain in intimate contact with the resin and
become securely bonded to it without voids, without use of external
holding down arrangement.

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Spec. 6, ll. 4‒8. “Alternatively, the skin may be allowed to set and the strips of
foam may be bonded together using further resin.” Spec. 6, ll. 8‒10.
Details of the appealed subject matter are recited in illustrative claims 6 and
9, which are reproduced below from the Claims Appendix of the Appeal Brief:
6. A process for calculating the total bending stiffness (ST) of a
nonhomogenous multilayer sandwich structure comprising the steps
of:
providing non-homogenous a multilayer structure wherein each
layer has a modulus (E1), each layer has a moment of inertia (h), each
layer has a thickness, each layer has a location in the structure, each
layer has a width;
calculating a neutral axis location in the non-homogenous,
multilayer structure;
depicting a layer E1 as a reference layer;
achieving layer homogenization by changing the width of a
layer by a multiplier n1 calculated as a ratio of that layer's modulus to
the modulus of the reference layer;
wherein the layer homogenization is represented by the
formula:

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9. A multilayer sandwich structure having layer homogenization
produced by the process of claim 6.
App. Br., Claims Appendix.
The Examiner maintains the following grounds of rejection:
1. Claim 6 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as their invention;
2. Claim 9 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
either Seddon (US 4,121,008 issued Oct. 17, 1978), Wolf (US 4,188,428 issued
Feb. 12, 1980), Figone (US 4,706,597 issued Nov. 17, 1987) or Messinger
(US 2004/0028887 A1 published Feb. 12, 2004); and
3. Claims 6‒8 under 35 U.S.C. §103(a) as unpatentable over the
disclosure of Keiser (US 6,521,312 B1 issued Feb. 18, 2003). Final Act. 2‒6;
Ans. 3‒6. Appellants seek review of these grounds of rejection. App. Br. 4.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we find no
reversible error in the Examiner’s rejection of claim 6 under 35 U.S.C. § 112,
second paragraph, and claim 9 under 35 U.S.C. § 102(b), but find reversible error
in the Examiner’s rejection of claims 6‒8 under 35 U.S.C. § 103(a). Accordingly,
we sustain the Examiner’s §§ 112 and 102(b) rejections of claims 6 and 9 for the
reasons set forth in the Final Action and the Answer, but reverse the Examiner’s
§ 103(a) rejection of claims 6‒8 for the reasons set forth in the Appeal Brief. We
add the following primarily for emphasis and completeness.

I. 35 U.S.C. § 112, Second Paragraph
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“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). Claims are indefinite “only if it can be concluded that one of ordinary
skill in this art, having appellants’ disclosure and claims before him, would not be
possessed of a reasonable degree of certainty as to the exact subject matter
encompassed within the claims.” In re Moore, 439 F.2d 1232, 1236 (CCPA 1971);
see also In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“As the statutory
language of ‘particular[ity]’ and “distinct[ness]’ indicates, claims are required to be
clear—as opposed to ambiguous, vague, indefinite—terms”). Appellants bear the
burden of precise claim drafting, as they are in the best position to resolve
ambiguities through amendments and arguments. In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112, ¶ 2. . . . [T]his section puts the
burden of precise claim drafting squarely on the applicant.”)
Applying the above principles of law to the limitations of claim 6 in light of
the Specification, we find no reversible error in the Examiner’s determination that
the scope of the recited formula representing the layer homogenization and the
recited calculation identifying the total stiffness (ST) of a non-homogenous
multilayer structure cannot be ascertained. Although claim 6 is directed to “[a]
process for calculating the total bending stiffness (ST) of a non-homogenous
multilayer sandwich structure” involving layer homogenization defined by a
formula, it does not provide any formula or technique by which the total bending
stiffness calculation is conducted or provide any formula that represents the layer
homogenization. Compare Ans. 3, 7, and 8, with claim 6. As indicated by the
Examiner, claim 6 identifies a pictorial illustration of a non-homogenous
multilayer structure, an arrow, and a homogenous multilayer structure, with layers
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of the structures identified by a width (w) or inertia multiplied by a width (n*w),
moduli (E1, E2, and E3), and locations defined by j*h, (i-j)*h and (1-j)*f*h or J*h,
(1-j)(1-f)*h, and (1-j)*f*h as the formula representing the layer homogenization.
See Ans. 3 and 8; claim 6. However, claim 6 does not actually provide a formula
or an equation explaining the relationship of all or some of the variables in the
illustration to define the layer homogenization. Compare Ans. 3 and 8, with
claim 6. Nor does claim 6 indicate how the parameters of the non-homogenous
multilayer and the homogeneous multilayer defined in the illustration identified as
a formula are related to calculating the total stiffness (ST). Compare Ans. 3 and 8,
with claim 6.
The Specification also does not provide adequate guidance to ascertain the
scope of the recited formula representing the layer homogenization or the scope of
the recited calculation means for determining the total bending stiffness (ST) of a
non-homogenous multilayer structure. The Specification, for example, states that
in reference to the illustration recited in claim 6 (Figure 3), “the left side…shows a
non-homogeneous multilayer structure wherein the layers have the same width
[and] [t]he right side…shows a homogenized multilayer structure wherein the
width of a layer is change by a multiplier ni…” Spec. 4, l. 30–5, l. 2. In other
words, the Specification indicates that the illustration recited in claim 6 (Figure 3)
are structures, not a formula representing the layer homogenization. Id.
In addition, the Specification states that “[‘t]he homogenization allows for
direct application of equations (1) and (2) [recited in dependent claim 7], so that
the total stiffness of the multilayer structure (ST) is calculated.” Spec. 4, ll. 21–22
and 5, ll. 3–4. The Specification does not define any other equations or formulas
by which the total stiffness of the multilayer structure (ST) is calculated. Spec. 1–
6. Rather, it states that “[t]he above detailed description of the present invention
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[at page 5] is given for explanatory purposes. It will be apparent to those skilled in
the art that numerous changes and modifications can be made without departing
from the scope of the invention.” Spec. 6, ll. 16–19. While the Specification, like
claim 6, indicates that something other than equations (1) and (2) recited in
dependent claim 7 can be used to calculate the total bending stiffness (ST), it
provides no guidance to determine what other kind of calculating means for
determining the total bending stiffness (ST) are included by claim 6.
Accordingly, on this record, we find no reversible error in the Examiner’s
rejection of claim 6 under 35 U.S.C. § 112, second paragraph.

II. 35 U.S.C. § 102(b)
Claim 9 recites “[a] multilayer sandwich structure having layer
homogenization produced by the process of claim 6.” In other words, claim 9 is
written in a product-by-process format. In such circumstances, “the patentability
of the products defined by the claims, rather than the processes for making them, is
what we must gauge in light of the prior art.” In re Wertheim, 541 F.2d 257, 271
(CCPA 1976); see also In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“[E]ven
though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself”).
“If the product in a product-by-process claim is the same as…a product of
the prior art, the claim is unpatentable even though the prior product was made by
a different process.” Thorpe, 777 F.2d at 697; see also, In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same [under 35 U.S.C. § 102(b)],
the applicant has the burden of showing that they are not.”). Once the PTO
establishes that the prior art product appears to be identical to the claimed product,
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the burden shifts to Appellants to prove the prior art products do not necessarily or
inherently possess the characteristics of the claimed product. Thorpe, 777 F.2d at
698.
Here, Messinger and Figone, for example, disclose multilayer sandwich
structures comprising two external skins with a foam core sandwiched between the
skins as required by Appellants’ preferred embodiment disclosed in the
Specification. Compare Messinger ¶ 1 and Figone col. 2, ll. 51–63, with Spec. 2,
ll. 7–13. Messinger and Figone are not required to disclose the total bending
stiffness (ST) of their multilayer sandwich structures as claims 6 and 9 do not recite
the total bending stiffness (ST) of their homogenized multilayer sandwich
structures. Compare, e.g., App. Br. 13 and 15, with claims 6 and 9. Although
Appellants appear to argue that their claim 9 employs a non-homogeneous
structure which may have different top and bottom areas, Appellants do not argue
that the resulting homogenized multilayer structure4 encompassed by claim 9 is
patentably different from those disclosed by, for example, Messinger and Figone.
See, e.g., App. Br. 12–17. Indeed, Appellants acknowledge that Figone’s or
Messinger’s multilayer structure, like Appellants’ multilayer structure, “ends with
homogeneous layers.” App. Br. 13 and 15.
Consistent with this acknowledgement, Appellants also state that “[t]his
invention (claim 6) offers an analytical model for calculation of multilayer sheet
bending stiffness in relation to the total materials cost.” App. Br. 7; see also Spec.
1, ll. 31–32. According to page 5, lines 16 through 18, of the Specification, “[t]he

4 According to Appellants, the layer homogenization involves changing the width
[(area)] of the ith layer….” Spec. 4, ll. 27–29; claim 6. In other words, the non-
homogeneous structure provided initially will no longer have the same non-
homogeneous structure, after the layer homogenization.

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analytical model provides reliable means for prediction of the stiffness of
multilayer structures in relation to the materials cost without the need to
manufacture the representative prototypes.” In other words, the claimed method
involves the use of an analytical model that allows the formation of, inter alia,
known and unknown multilayer structures having a predicted stiffness desired by
one of ordinary skill in the art or by a given industry at a given cost, without the
need to manufacture the representative prototypes. Id. Indeed, neither claim 6 nor
claim 9 specify the level of stiffness desired, the type of materials used, and the
cost of the materials employed. Stated differently, other than the layer
homogenization, which is admittedly present in the multilayer structures taught by
the applied prior art, claim 6 or 9 does not require its multilayer structures or the
individual layers of its multilayer structure to have any stiffness, modulus, inertia,
thickness, and cost, which are patentably different from those disclosed by the
applied prior art. Appellants’ arguments directed to the method do not indicate
that the products embraced by claim 9 are patentably different from those of the
applied prior art. App. Br. 8–17.
Accordingly, on this record, we find no reversible error in the Examiner’s
rejection of claim 9 under 35 U.S.C. § 102(b).

III. 35 U.S.C. § 103(a)
In rejecting claims 6‒8 under 35 U.S.C. §103(a) as unpatentable over the
disclosure of Keiser, the Examiner takes the position (Ans. 6) that:
Keiser does not specifically teach that the method relates to a non-
homogeneous sandwich structure, however, a person skilled in the art
at the time the invention was made would have been able to determine
that each layer has a moment of inertia, to calculate a neutral axis
location in a non-homogeneous, multilayer structure, depict a
reference layer and achieve layer homogenization by changing the
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width of a layer by a ratio of that layer’s modulus to the modulus of
the reference layer, according to the formulas recited in claim 6‒8.

However, the Examiner does not proffer any factual evidence to support the
above conclusory statement. Id.; In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“A rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention from the
prior art”). Nor does the Examiner provide adequate explanation of the factual
evidence of record to support the above conclusory statement. Ans. 6. As our
reviewing court stated in Vaidyanathan5:
KSR did not free the PTO’s examination process from explaining its
reasoning. In making an obviousness rejection, the examiner should
not rely on conclusory statements that a particular feature of the
invention would have been obvious or was well known. Instead, the
examiner should elaborate, discussing the evidence or reasoning that
leads the examiner to such a conclusion.

Accordingly, on this record, we find reversible error in the Examiner’s
rejection of claims 6‒8 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Keiser.
ORDER
In view of the foregoing, we affirm the Examiner’s decision rejecting
claim 6 under 35 U.S.C. §112, second paragraph, and claim 9 under 35 U.S.C.

5 In re Vaidyanathan, 381 Fed. App’x. 985, 994 (Fed. Cir. 2010) (non-
precedential).
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§102(b), but reverse the Examiner’s decision rejecting claims 6‒8 under 35 U.S.C.
§103(a).
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