Ex Parte Nelson

Patent Trial and Appeal Board

Feb 25, 2014

12914592 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL E. NELSON
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Appeal 2012-009366
Application 12/914,592
Technology Center 1700
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Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

Appeal 2012-009366
Application 12/914,592

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DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting Claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Collins (U.S. 2,723,705, issued Nov. 15, 1955), Usui
(U.S. 4,511,424, issued Apr. 16, 1985), Torres Martinez (U.S. 6,968,883 B2,
issued Nov. 29, 2005), Negishi et al. (U.S. 5,653,646, issued Aug. 5, 1997),
Benson et al. (U.S. 6,096,164 issued Aug. 1, 2000), and Carley (U.S.
4,532,169, issued July 30, 1985).2 We have jurisdiction under 35 U.S.C. §
6(b).
We affirm and designate our affirmance a new ground of rejection.
“The invention relates to . . . [an] apparatus for producing off-axis
composite prepreg material for fabricating composite parts for aircraft.”
Spec.3 ¶ 0002. Prepreg “is a shortened version of the term
‘preimpregnated’” and “[p]repreg material is a combination of mat, fabric,
or nonwoven material with resin which is typically cured.” Id. at ¶ 0017.
Claims 1 and 3 are representative of the invention and are reproduced below
from the Claims Appendix to the Appeal Brief:
1. An apparatus for producing a two layer off-axis composite
prepreg material in tape form comprising:
a roll of backing paper mounted on a first roll stand;
at least one paper guide adapted to unroll the backing
paper and wrap the backing paper around a cylindrical mandrel
supported on at least two mandrel stands;
at least two application wheels supported independently
of the mandrel and designed to rotate co-axially around the

1 Final Office Action mailed Sept. 19, 2011 (“Final”).
2 Appeal Brief filed Dec. 19, 2011 (“App. Br.”).
3 Specification filed Oct. 28, 2010.
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mandrel in opposite directions to one another, wherein within
each wheel is mounted a paper stripping roll and at least one
composite prepreg supply roll having prepreg material, where
the paper stripping roll and the prepreg supply roll are on
respective axes that are off-axis relative to a normal vector from
a centerline of the mandrel, and further wherein each wheel is
designed to synchronously lay from the prepreg supply roll a
tape layer over the backing paper in a helix orientation around
the mandrel;
a compacting component for compacting and pressing the
prepreg material onto the backing paper to form a prepreg tube
wrapped around the mandrel;
a cutting component for cutting the prepreg tube; and,
an opener component for opening and laying flat the cut
prepreg tube to form a substantially flat two layer off-axis
composite prepreg output material in tape form formed from the
backing paper and the composite prepreg, wherein the tape is
wrapped around to form an output roll mounted on a second roll
stand.
App. Br. 53.
3. The apparatus of claim 1, wherein the two layer off-
axis composite prepreg material comprises uni-directional
carbon fibers in an uncured resin matrix, wherein the carbon
fibers are oriented at an angle of approximately plus five
degrees for a first prepreg layer and minus five degrees for a
second prepreg layer from a central axis of the backing paper.
Id. at 54.
Collins teaches that at the time of the invention, it was known in the
art to produce a multi-layer off-axis tape laminate. Ans. 4 (citing Collins
Fig. 1, col. 1, ll. 15-18.) The apparatus of Collins includes a mandrel (26)
that is wrapped with a cellophane backing (27) and at least two supply rolls
of tape (20, 21) that are “unwound and are subsequently wound around the
mandrel in a helix orientation in opposite directions to each other.” Ans. 4
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(citing Collins Fig. 1, col. 4, ll. 30-45.) The supply rolls are mounted on
rotatable wheels (39). Id. The tape is wound tightly on the mandrel and
compaction is further facilitated by squeegee rings (45, 46, 49). Ans. 4-5
(citing Collins Figs. 1, 4, col. 4, l. 72 – col. 5, l. 5, col. 5, ll. 20-25.) A
cutting tool (62) slices the composite laminate to lay flat and form sheets of
glass fiber reinforced laminates. Ans. 5 (citing Collins Fig. 4, col. 6, ll. 13-
23.)
The Examiner finds that
Collins fails to disclose whether the backing (27) is
dispensed from a roll of material before wrapping said backing
around the mandrel (26), whether a guide is used to wrap the
backing around the mandrel, whether an opening component
may be used to lay the sliced composite laminate (60) flat, and
whether the composite laminate may be stored on a take up roll.

Ans. 5-6. The Examiner also finds that Collins fails to disclose a release
liner on the spools of prepreg tape (42, 44). Ans. 7.
Usui evidences that at the time of Appellant’s invention, an apparatus
was known for
[F]orming a composite laminate wherein a roll of carrier film is
unwound from a supply roll and is subsequently wrapped
around a mandrel by a guide (14), thereafter weft linear
materials are wound around the film; followed by cutting open
the cylindrically formed composite laminate to flatten the
composite into a belt-like sheet with [an] opening component
(13), and winding up the belt like sheet onto a take up roll (7).

Ans. 6 (citing Usui Fig. 1, col. 1, l. 63-col. 2, l. 8.)
Torres Martinez evidences that at the time of Appellant’s invention, it
was “known in the art to utilize prepreg material with a release liner thereon
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and to use a liner collection means (20) for collecting said liner prior to
application of said prepreg material.” Ans. 7 (citing Torres Martinez Figs. 1,
2, col. 4, l. 62 – col. 5, l. 3.)
Based on the above findings of fact, the Examiner determined
It would have been obvious to one of ordinary skill in the
art at the time of the invention to use a known successful
method/means of wrapping and unwrapping a backing material
around a mandrel, such as the guides disclosed by Usui, in the
method and apparatus of Collins because such an addition
would have been well within his technical grasp. . . . It is also
well known to wind up a web of semi-finished/finished
composite material into [an] easily portable roll for further
processing or delivery to a customer, as exemplified by Usui . .
. .
Ans. 6. The Examiner also determined
It would have been obvious to one of ordinary skill in the art at
the time of the invention to utilize a known conventional
prepreg material, such as a roll of prepreg material with release
liner as disclosed by Torres Martinez, and include a known
conventional means for removing a release liner from a prepreg
material prior to application of said material, such as the
prepreg material with liner and liner stripping rollers disclosed
by Torres Martinez, in the method and apparatus of Collins to
remove any backing from the prepreg tape spools and allow the
tape to be adhered to the mandrel as Collins discloses, because
such a modification would have been within his technical grasp.
Furthermore, one of ordinary skill in the art would recognize
the operational flexibility . . . of utilizing rolls of prepreg tape
with or without a liner.
Ans. 7-8.
Regarding claims 3 and 4, the Examiner finds that Negishi discloses
“a carbon fiber composite wherein uncured pre-preg tape is wound around a
mandrel at a predetermined angle relative to longitudinal axis of the
mandrel.” Ans. 10 (citing Negishi Abstract, col. 2, ll. 27-45.) The Examiner
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determines that it would have been obvious for one of ordinary skill in the
art at the time of the invention to incorporate the teachings of Negishi to
apply Collins’ prepeg tapes “at angles between 5 and 30 degrees relative to
the longitudinal axis of the mandrel adds to the bending rigidity of the
composite formed.” Id. at 11.
Appellant contends that “Collins does not utilize prepreg material in
tape form,” but rather, “application of actual fibers to the mandrel, not a
prepreg tape.” App. Br. 17. Appellant asserts that “[o]ne having ordinary
skill in the art would understand that Collins was suggesting the use of a
composite fabric and not prepreg tapes.” Id. at 18; see Reply Br. 4.
According to Appellant, “prepreg tapes were not created and used until the
early 1960s.” App. Br. 18. Similarly, Appellant asserts that “Usui does not
disclose the use of prepreg tape.” Id. Instead, Appellant contends “Usui
discloses the wrapping of linear fibers around a cylindrically shaped belt and
the addition of resin to crease a sheet molding compound.” Id. Appellant
contends the Examiner reversibly erred in rejecting the claims because the
combination would change the principle of operation of Torres Martinez and
the combination does not disclose all of the requirements of claim 1. Id.
Appellant further argues that “the cellophane of Collins is not
equivalent to ‘a roll of backing paper mounted on a first roll stand,’ as in
claim 1, as cellophane is not ‘backing paper.’” Id. at 19; see also Reply Br.
7-8. Appellant asserts that “cellophane is only a protective covering to
prevent resin from adhering to the mandrel.” App. Br. 20; see also Reply
Br. 8. Appellant asserts that the Examiner’s rationale for combining Collins
and Usui is not reasonable because “[t]he cellophane layer in Collins and the
carrier film of Usui are deposited in different ways due to the different
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structures of the apparatuses.” App. Br. 20. Appellant asserts that Usui
“keep[s] . . . materials from sticking to a continuous belt” and “teaches
against the more commonly used mandrel method of filament winding.” Id.;
see also Reply Br. 8-9. Appellant also asserts that “the output material of
Collins may preferably stay in a cylindrical form” and that “a required
cutting step as in Usui to free a backing in Collins would be undesirable and
would change the operation of Collins.” App. Br. 21.
Appellant additionally asserts that the squeegee rings of Collins,
which “facilitate forcing the resin or plastic to the periphery of the mandrel
between the fibers of all of the warps” is not equivalent to the requirement in
claim 1 of “a compacting component for compacting and pressing the
prepreg material onto the backing paper to form a prepreg tube wrapped
around the mandrel.” Id. at 24; see Reply Br. 12-13. Appellant’s position is
that “Collins does not utilize prepreg material in tape form.” App. Br. 24.
Appellant also argues that “these rings would tend to scrape off prepreg
material off of backing paper. A squeegee in its operation drags against the
surface of the material.” Id.
Appellant further argues that Torres Martinez is non-analogous art
because “Torres Martinez is directed towards a system for simultaneous
application of multiple lengths of fibre [sic] tape to objects in
manufacturing.” Id. at 30; see Reply Br. 15-16. Appellant also argues that
the “issues of efficiently laying down standard angle fiber tape on irregular
objects” is a different goal than the inventor’s purpose of “how to reduce the
time and waste of laying down non-standard ply fiber angles.” Id. at 35.
Similarly, Appellant argues that Negishi is non-analogous art because it is
directed to a method of producing a golf club shaft. Id. at 37.
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The difficulty with Appellant’s arguments distinguishing the Collins
and Usui references as not disclosing a prepreg or prepreg material in tape
form is that the Specification broadly defines “prepreg” to encompass a
combination of mat, fabric, or nonwoven material with resin that is either
cured or not cured. Spec. ¶ 0017. The ordinary meaning of the word “tape”
is
1. a long, narrow strip of linen, cotton, or the like, used for
tying garments, binding seams or carpets, etc.
2. a long, narrow strip of paper, metal, etc.
3. a strip of cloth, paper, or plastic with an adhesive surface,
used for sealing, binding, or attaching items together; adhesive
tape or masking tape.4

The Examiner points to column 2, lines 48-51 of Collins describing a sheet
of glass fiber reinforced laminate as being the same as prepreg material, the
laminate defined as “assembled glass strands coated with an adhesive so that
said strands maintain a parallel relation to one another, which can be wound
into suitable spools or reels for a laminating machine, as a tape.” Ans. 14.
The preponderance of the evidence in this record shows that Collins teaches
a prepreg material in tape form.
Appellant’s argument that the squeegee rings of Collins are not
encompassed by the claimed “compacting component” is not persuasive
because claim 1 does not require any particular degree of compaction. See
Ans. 16. The Examiner reasonably determines that the squeegee rings
squeeze and thereby compact the warp (22) against the next adjacent layer.
Id.; see Collins col. 5, ll. 21-23. The Examiner additionally reasonably finds
that the driving rolls of Collins “create enough friction between the tube and

4 http://www.dictionary.reference.com/browse/tape.
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the rollers to drive said tube in a desired direction” in order to meet the
“compacting component for compacting and pressing the prepreg material
onto the backing paper to form a prepreg tube wrapped around the mandrel”
as claimed in claim 1. Id.
Regarding Appellant’s argument that the cellophane backing taught
by Collins for covering the mandrel is not equivalent to a backing paper
around a cylindrical mandrel, the Examiner responds that “cellophane is
defined as a transparent, paper like product of viscose, impervious to
moisture.” Ans. 15 (citing
http://www.dictionary.reference.com/browse/cellophane). The Examiner
also finds that “[o]ne of ordinary skill would recognize and consider
cellophane as a ‘backing paper’ which prevents the adhesives of the
composite from sticking to a surface prematurely.” Id. We agree with
Appellant that the record does not establish that backing paper is equivalent
to cellophane. However, Collins teaches protecting the mandrel with a layer
and Torres Martinez teaches a protective strip of paper or backing paper
under the prepreg tape. Torres Martinez, col. 4, l. 62-col. 5, l. 3. Therefore,
it would have been obvious to one of skill in the art of forming prepreg tape
material to substitute the protective covering of the mandrel taught by
Collins with the backing paper of Torres Martinez for the reason that the
backing paper was known at the time of the invention to be a protective
covering and capable of being stripped off the prepreg tape material if
desired. See id.
Appellant’s argument that there would have been no motivation to
combine Usui with the operation of Collins because Usui prefers a
continuous belt operation to a mandrel is not persuasive. See App. Br. 20;
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Reply Br. 9. Appellant provides no support for the contention that Usui
teaches away from the use of a mandrel. App. Br.; cf. Usui Fig. 1. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). The Usui reference cannot be said to teach away from a cylindrical
mandrel in a prepreg tape forming apparatus because Usui includes a
cylindrical mandrel in the apparatus shown in Figure 1. Moreover, the
Examiner relies upon Usui’s disclosure of “a method/means of supplying
backing material and wrapping around a cylindrical mandrel.” Ans. 22; see
id. (citing Usui col. 1, l. 63-col. 2, l. 8.)
Appellant’s argument that Torres Martinez is not analogous art
because it is directed to a different goal than that of the inventor’s is not
persuasive. “As long as some [reason,] motivation or suggestion to combine
the references is provided by the prior art taken as a whole, the law does not
require that the reference be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). The
Examiner provided a reason for combining the prepreg tape form of Torres
Martinez with its backing paper and paper stripping rolls to the apparatus of
Collins for the purpose of providing the apparatus with the flexibility of
accepting tape forms with or without backing paper. Ans. 8. Appellant does
not persuasively rebut the Examiner’s rationale for combining these
teachings of Torres Martinez with the apparatus of Collins for this purpose.
For the same reason, Appellant’s argument that Negishi is non-
analogous art and therefore not properly combinable with Collins, Usui, and
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Torres Martinez is also unpersuasive. Appellant does not direct us to any
evidence in this record that the winding angles taught by Negishi for laying
down a fiber composite material on a shaft would not be expected to
similarly impart bending rigidity to the composite formed on the mandrel of
Collins. Moreover, Figure 1 of Collins suggests winding the prepreg tape
forms at opposite angles to the mandrel. Appellant has not shown on this
record that the particular size of the angles is critical to the function of the
claimed invention.
For the reasons stated above, we affirm the Examiner’s decision to
reject Claims 1-20. Because we recognize our decision is based on
reasoning which differs from that advanced by the Examiner, we denominate
the affirmed rejection as a NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 41.50(b).

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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/NEW GROUND OF REJECTION
(37 C.F.R. § 41.50(b))

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