Ex Parte Nelson

Board of Patent Appeals and Interferences

Aug 16, 2010

11245307 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL E. NELSON
____________

Appeal 2009-009045
Application 11/245,307
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-009045
Application 11/245,307

DECISION ON APPEAL1
This is an appeal from the final rejection of claims 1-20. Claim 1 is
illustrative:
1. A method for fabricating a composite article with a plurality of
material dispensers including at least one first material dispenser operable
for applying strip material during a first stroke, and at least one second
material dispenser separately operable from the at least one first material
dispenser for applying strip material during a second stroke, the at least one
first dispenser and the at least one second dispenser coupled to opposite
sides of a bridge rail and oriented to dispense material in opposite directions,
the method comprising:
applying strip material from the at least one first material dispenser to
a work surface datum in a first orientation of the bridge rail while moving
the at least one first material dispenser during the first stroke; and
applying strip material from the at least one second material dispenser
to the work surface datum in a second orientation of the bridge rail while
moving the at least one second material dispenser during the second stroke,
whereby the material dispensers form one or more layers of strip material.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Hailey 4,707,212 Nov. 17, 1987
Persson 4,995,937 Feb. 26, 1991
Glover 6,180,196 B1 Jan. 30, 2001

Appellant’s claimed invention is directed to a method for fabricating a
composite article with a plurality of material dispensers. One dispenser

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 11/245,307

applies strip material during a first stroke and a second dispenser that is
separately operable from the first dispenser applies strip material during a
second stroke. The first and second dispensers are coupled to opposite sides
of a bridge rail and are oriented to dispense material in opposite directions.
Appealed claim 7 stands rejected under 35 U.S.C. § 112, first
paragraph, written description requirement. Claims 18-20 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Hailey. Claims 1-3, 5, 9-
12 and 14-17 stand rejected under 35 § 103(a) as being unpatentable over
Hailey in view of Persson. Claims 4, 6-8 and 13 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Hailey in view of Persson and
Glover.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we agree with the Examiner that
the claimed subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the Examiner’s rejections under § 102 and §
103 for essentially those reasons expressed in the Answer. We will not,
however, sustain the Examiner’s rejection under § 112, first paragraph.
We consider first the § 102 rejection of claims 18-20 over Hailey.
Hailey, like Appellant, is directed to a method for fabricating a composite
article with a plurality of material dispensers. Appellant contends that the
crossbar 64 of Hailey is not rotatable or reversible and, therefore, has a
single orientation although it may be moved back and forth. However, as
pointed out by the Examiner, the claims do not require any feature to be
rotatable or reversible. While the claims recite first and second orientations
of the bridge rail to which the first and second dispensers are attached, we
agree with the Examiner that the claims do not require that the first and
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Appeal 2009-009045
Application 11/245,307

second orientations be different orientations. Also, since the claims do not
define a reference point for the first and second orientations, we agree with
the Examiner that the claims encompass the movement of Hailey even if
“first” and “second” are interpreted as defining different orientations.
Hailey’s movement of the rail would result in a change in orientation with
respect to many points adjacent the rail. For example, the rail would change
orientation relative to points the rail passes during its movement just like a
car traveling due north changes its position and orientation relative to a tree
that it passes. We also agree with the Examiner that “the bridge rail [of
Hailey] is reversible in that while traveling in the opposite direction the
bridge rail further travels in the opposite orientation” (Ans. 14).
Appellant also maintains that “[a]lthough a strip of tape is received at
roller 12 or 14, tape is not dispensed from a tape supply onboard the roller”,
thereby not meeting the claim 20 requirement of material dispensed from a
supply of strip material onboard the material dispenser (App. Br. 11, 1st
para.). However, Appellant has not refuted the Examiner’s rationale that the
“portion of the supply strip inside tape guide 54 [of Hailey] (see Figure 3) is
interpreted as the supply of strip material located onboard the material
dispensers” (Ans. 15, 2nd para).
Concerning the § 103 rejections of claims 1-3, 5, 9-12 and 14-17 over
Hailey in view of Persson, we agree with the Examiner that Persson
evidences the obviousness of positioning the material dispensers of Hailey
on opposite sides of the bridge rail and oriented to dispense material in
opposite directions, motivated by the ability “to use a tape applying
arrangement that can be adjusted independently and positionally in relation
to the bridge rail (col.1, ll. 59-66)” (Ans. 6, 1st para.). We are not persuaded
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Application 11/245,307

by Appellant’s argument that there is no reason to add a bridge rail to
Hailey’s device since, as pointed out by the Examiner, element 64 of Hailey
qualifies as a bridge rail. Also, Appellant has not addressed the thrust of the
Examiner’s rejection relating to the motivation to place dispensers on
opposite sides of the bridge rail as set forth by Persson at column 1, ll. 59-
66.
Turning to the § 103 rejection of claims 4, 6-8 and 13 over Hailey in
view of Persson and Glover, we find no error in the Examiner’s conclusion
that, based on the Glover disclosure, it would have been obvious for one of
ordinary skill in the art to use a plurality of first and second material
dispensers since “a duplication of dispensers does not alter the principle of
operation of Hailey but instead magnifies it, by allowing more tape to be
placed simultaneously”, thereby increasing operating speed and a faster
operation of the device (Ans. 16, 2nd para.).
As for the § 112, first paragraph rejection of claim 7, we disagree with
the Examiner that the original specification does not provide written
descriptive support for the claim recitation “collectively moving the first and
second material dispensers during the first and second strokes such that the
stroke direction of the first stroke is not parallel to the stroke direction of the
second stroke”. We agree with the Appellant that the original specification
fairly describes an embodiment wherein the first dispenser lays down
material, the second dispenser is rotated to a second orientation, and then the
second dispenser applies the second material. As explained by Appellant,
“[s]imply because the dispensers are recited as “oriented to dispense
material in opposite directions” does not compel a conclusion that their
stroke directions must always be parallel (or that the dispensers are operated
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Application 11/245,307

at the same time)” (App. Brief 9-10). Appellant also explains that “[i]f such
a bridge rail is rotated between a stroke of one dispenser and the stroke of
the other dispenser, then their stroke directions will not be parallel” (Rep.
Br. 7, penultimate para.). Also, paragraph [0007] of the Specification
explicitly states “rotating one of either the work surface datum or the
plurality of material dispensers, and applying the strip material over the first
layer along a predetermined axis to form a second layer having a second
orientation”. In addition, paragraphs [0047] and [0049] describe a rotary
dispensing unit 302 wherein a first layer is dispensed, the dispensing unit is
rotated to a different angle and then a second layer is dispensed.
As a final point, with respect to § 103 rejections, we note that
Appellant basis no argument upon objective evidence of nonobviousness,
such as unexpected results. In conclusion, based on the foregoing, the
Examiner’s decision rejecting the appealed claims is affirmed.
AFFIRMED
tc

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