Ex Parte Nelson et al

Patent Trial and Appeal Board

Sep 27, 2017

13480179 (P.T.A.B. Sep. 27, 2017)

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.
13/480,179 05/24/2012 Karl M. Nelson 08-0885-US-DIV 1078
63759 7590 09/29/2017
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. KHARE, ATUL P
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL M. NELSON and
GEOFFREY ALLEN BUTLER
Appeal 2017-000766
Application 13/480,1791
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 22, 23, 27, 29, 30, and 32—37. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Boeing Company.
Appeal Br. 2.
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Application 13/480,179
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a method of
manufacturing parts in which exothermic reactions may be present.
Spec. 11. In particular, the method can be used for manufacturing
composite materials for aircraft. Id. Tffl 2—6. Claim 22, reproduced below
with emphases added to certain key recitations, is the only independent
claim on appeal and is illustrative of the claimed subject matter:
22. A method for curing a part, the method comprising:
providing a tool, the tool comprising:
a material having a first surface substantially
parallel to a second surface;
a plurality of cavities completely inside the
material and substantially parallel to the first
surface and to the second surface;
a phase change material disposed within the
plurality of cavities, the phase change material
having a phase change temperature that is about
a cure temperature for a composite laminate part,
the phase change material further selected so that a
change of phase of the phase change material
absorbs heat during the change of phase at the phase
change temperature;
placing the composite laminate part on the first surface
of the tool;
curing the composite laminate part, thereby generating
heat; and
transferring the heat, while curing, from the composite
laminate part to the phase change material by inducing
2 In this opinion, we refer to the Final Office Action dated March 1, 2016
(“Final Act.”), the Appeal Brief filed June 1, 2016 (“Appeal Br.”), the
Examiner’s Answer dated August 19, 2016 (“Ans.”), and the Reply Brief
filed October 19, 2016 (“Reply Br.”).
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the change of phase in the phase change material in the
plurality of cavities by maintaining a third
temperature of the part within a desired temperature
range near the cure temperature.
Appeal Br. 25 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Deuring US 3,651,861 Mar. 28, 1972
Takahashi et al. US 5,306,558 Apr. 26, 1994
(“Takahashi”)
Westerman et al.
(“Westerman”) US 6,270,603 B1
Aug. 7, 2001
Ackerman et al. US 2007/0177330 Al Aug. 2, 2007
(“Ackerman”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 22, 23, 27, 29, 30, and 32—37 as failing to
comply with the written description requirement of 35 U.S.C. § 112. Ans. 2.
Rejection 2. Claims 22, 23, 27, 29, 30, and 32—37 as indefinite under
35 U.S.C. § 112. Id.
Rejection 3.
a. Claims 22, 23, 27, 30, 32, 35, and 36 under 35 U.S.C. § 102
as anticipated by Westerman; and
b. Claims 22, 23, 27, 30, 32, 35, and 36 under 35 U.S.C. § 103
as unpatentable over Westerman in view of Deuring. Id. at 3.
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Rejection 4. Claim 29 under 35 U.S.C. § 103 as unpatentable over
Westerman, alternatively in view of Deuring, and further in view of
Ackerman. Id.
Rejection 5. Claims 33 and 34 under 35 U.S.C. § 103 as unpatentable
over Westerman, alternatively in view of Deuring (as applied, e.g., to claim
22), and further in view of Deuring. Id.
Rejection 6. Claim 37 under 35 U.S.C. § 103 as unpatentable over
Westerman, alternatively in view of Deuring. Id.
Rejection 7. Claims 22, 23, 27, 29, 30, and 32—34 under 35 U.S.C.
§ 103 as unpatentable over Deuring in view of Takahashi. Id. at 4.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error except where
otherwise explained below. Thus, where we sustain rejections below, we do
so for the reasons expressed in the Final Office Action and the Answer. We
add the following primarily for emphasis.
Rejection 1 - Written Description. The Examiner rejects claims 22,
23, 27, 29, 30, and 32—37 as failing to satisfy the written description
requirement of 35 U.S.C. § 112. Final Act. 3; Ans. 4. In particular, the
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Examiner determines that the Specification does not support the claim 22
recitation of cavities “completely” inside tool material. Final Act. 3.
Appellants respond by explaining that Figure 4 depicts cavities 410 in
which phase change material 412 and air gaps 414 are “completely inside”
the material forming tool 400. Appeal Br. 6. We agree with Appellants that
Figure 4 adequately describes the “completely inside” recitation. Appellants
persuasively explain that the nature of the invention, as described by the
Specification, requires that the cavities are bound by sides and persuasively
explain that the cavity can be opened to fill with phase change material and
then later closed. Reply Br. 5—6. Accordingly, we do not sustain this
rejection.
Rejection 2 - Indefmiteness. The Examiner rejects claims 22, 23, 27,
29, 30, and 32—37 as indefinite under 35 U.S.C. § 112. Ans. 2. During
prosecution, “[a] claim is indefinite when it contains words or phrases whose
meaning is unclear.” In re Packard, 751 F.3d 1307, 1310-14 (Fed. Cir.
2014) (per curiam)).
The Examiner presents four independent reasons why claim 22 is
indefinite and rejects claims depending from claim 22 for each of these same
four reasons. Final Act. 4. Each of the Examiner’s reasons for rejecting
claim 22 as indefinite is addressed below.
First, the Examiner states that “about” and “near” in claim 22 are
indefinite because it is unclear whether each term implies the same
approximation and to what degree these terms provide approximation. Id.
As to “about,” claim 22 recites “phase change material having a phase
change temperature that is about a cure temperature.” Appeal Br. 25 (Claim
App’x). We agree with Appellants that “about” is not unclear in this
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context. Appeal Br. 8—9; Reply Br. 6—7. Given the context of claim 22 and
the Specification (see, e.g., Spec. 112), the phrase change temperature must
be close enough to the cure temperature to be able to absorb heat (via phase
change) during the curing process.
As to “near,” claim 22 recites “maintaining a third temperature of the
part within a desired temperature range near the cure temperature.” Appeal
Br. 25 (Claim App’x). We also agree with Appellants that “near” is not
unclear in this context. Appeal Br. 8—9; Reply Br. 7. Given the context of
claim 22 and the Specification (see, e.g., Spec. 47^48), a person of skill in
the art would understand, for example, that the temperature should be held at
a cure temperature with a tolerance of plus or minus ten degrees Fahrenheit.
Second, the Examiner states that “[t]he first surface of the tool”
recitation of claim 22 is unclear because it lacks antecedent basis. Final Act.
4. The Examiner explains that this recitation is ambiguous as to whether it
refers to (1) the previously recited first surface of the recited material or (2)
to a first tool surface distinct from the previously cited first material surface.
Ans. 7. Appellants’ argument does not squarely address this ambiguity.
Appeal Br. 9; Reply Br. 9—10. Rather, Appellants acknowledge that the tool
comprises a material with a “first surface” (Reply Br. 9), but Appellants do
not address whether or not “the first surface of the tool” is the same as the
first surface of the material.
As to this issue, the Examiner has appropriately identified a point of
imprecision in the language of claim 22. The phrase “the first surface of the
tool” is not as precise as the subject matter reasonably permits. Thus, claim
22 does not meet the definiteness requirement of § 112. See In re Packard,
751 F.3dat 1313 (setting forth the standard that the claim language must be
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“as precise as the subject matter permits” and explaining that the USPTO
plays an important role in ensuring that patent claims are clear and
unambiguous); accord Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2123 (2014) (“Section 112’s definiteness requirement must take into
account the inherent limitations of language,” yet mandates clarity to the
extent possible under the circumstances).
Third, the Examiner states that “the third temperature of the part” as
recited in claim 22 is unclear. Final Act. 4. We agree with Appellants that
this recitation is not unclear because claim 22 recites three temperatures: “a
phase change temperature,” “a cure temperature,” and “a third temperature.”
Appeal Br. 9—10.
Fourth and finally, the Examiner states that it is not clear if “by
maintaining a third temperature” modifies claim 22 ’s previously recited heat
transfer, previously recited inducing, or both. Final Act. 4. We agree with
Appellants that this phrase is not unclear. Appeal Br. 10. Based on the
Specification, it is clear that heat transfer occurs by inducing change of
phase, and both the heat transfer and inducing occur by maintaining a third
temperature. See, e.g., Spec. Tflf 14, 47^48, 96.
For the reasons explained above, we agree with the Examiner that the
phrase “the first surface of the tool” is unclear, and sustain the Examiner’s
indefmiteness rejection for that reason. We disagree with the Examiner’s
determination that the terms “near” and “about” and the phrases “the third
temperature of the part” and “by maintaining a third temperature” render the
claims indefinite.
Ground 3a - Anticipation. The Examiner rejects claims 22, 23, 27, 30,
32, 35, and 36 under 35 U.S.C. § 102 as anticipated by Westerman. Ans. 3.
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The Examiner finds that Westerman teaches a tool having first and
second surfaces with cavities formed therein in which phase change material
is held, placing a part on the tool, curing the part, and transferring heat as
recited in claim 22. Final Act. 6 (providing citations to Westerman).
Appellants argue that Westerman does not disclose a phase change
material having a phase change temperature that is about a cure temperature
for the part as recited in claim 22. Appeal Br. 14. Westerman teaches
beeswax as a phase change material, and beeswax melts at about 140° F—a
temperature well below Westerman’s curing temperature of about 350° F.
See, e.g., Westerman 5:46—60. To address this discrepancy, the Examiner
construes “curing temperature” as recited in claim 22 to include
Westerman’s entire heating profile. Ans. 12—13. In the context of claim 22
and the Specification, this construction is unreasonably broad. The
Specification indicates that “curing temperature” is a single ideal
temperature for curing the part, rather than being any temperature along a
profile that may cause some curing. See, e.g., Spec. Tflf 47-48. We thus
agree with Appellants that Westerman does not teach a “phase change
material having a phase change temperature that is about a cure temperature”
as recited in claim 22. We therefore do not sustain the Examiner’s rejection
based on anticipation by Westerman.
Ground 3b - Obviousness. The Examiner rejects claims 22, 23, 27,
30, 32, 35, and 36 as obvious over Westerman in view of Deuring. In
addition to the Examiner’s findings regarding Westerman discussed above,
the Examiner finds that Deuring also teaches temperature control using a
phase change material and teaches “selecting the phase change material to
change phase in a temperature range over which uniform temperatures are
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desired.” Final Act. 6 (providing citations to Deuring); see also Deuring
1:68—73. The Examiner determines that “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to
incorporate these teachings from Deuring into Westerman so as to improve
or optimize uniformity of temperature distribution during Westerman’s
curing.” Final Act. 7. For the reasons discussed below, Appellants do not
persuasively identify error in the Examiner’s findings with respect to the
teachings of Westerman and Deuring and rationale for combining
Westerman and Deuring.
Appellants argue that Westerman does not teach “a plurality of
cavities completely inside the material and substantially parallel to the first
surface and to the second surface.” Appeal Br. 13. As the Examiner finds,
however, Westerman’s Figure 6 teaches reservoirs 34 and 36, and these are
cavities (i.e., spaces inside the silicone rubber bladder). Ans. 10-11.
Westerman’s figures also establish that these cavities are substantially
parallel to the surfaces of Westerman’s bladder. See Westerman Fig. 1—6;
Final Act. 6. Appellants’ argument therefore does not persuasively establish
reversible error.
Appellants also argue that Westerman does not teach placing the
composite laminate part on the first surface of the tool. Appeal Br. 14. In
particular, Appellants emphasize Figure 6 of Westerman which depicts a
caul plate and separator film between the part to be cured and the bladder.
Id.; Reply Br. 16. The Examiner, however, finds that Westerman explicitly
discloses this feature in a different embodiment. Ans. 12. Westerman
states: “In one embodiment,. . . [o]ne of the reservoirs contacts the repair
site. . . .” Westerman 3:43—52. Appellants do not persuasively dispute this
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finding and do not explain why the Examiner errs in relying on this
embodiment of Westerman.
Appellants also argue that neither Westerman nor Deuring teaches
maintaining temperature near the cure temperature. Appeal Br. 14—15.
After the Examiner addressed this issue in the Answer (Ans. 13—15),
Appellants conceded this argument. Reply Br. 19.
Because Appellants do not identify reversible error in the Examiner’s
rejection of claim 22 as obvious over Westerman and Deuring, we sustain
that rejection. Appellants do not separately argue claims 23, 32, 35, or 36.
We therefore group these claims with claim 22 and also sustain the rejection
of those claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Obviousness, claims 27 and 30. Appellants argue dependent claims
27 and 30 separately. Appeal Br. 15—16. Although the Examiner expresses
confusion as to what ground this argument addresses (Ans. 17), we
understand Appellants’ argument at pages 15 to 16 as relating only to
ground 3 because of where the argument is placed in the Appeal Brief and
also because the argument concerning claim 30 addresses only Westerman
(a reference not relevant to ground 7).
Claim 27 recites “The method of claim 22, wherein placing
comprises: laying up the composite part on the tool.” Appeal Br. 26 (Claims
App’x). Appellants argue that this recitation is not met by Westerman or
Deuring. Appeal Br. 15—16. This recitation, however, is met by Westerman
at column 3, lines 43—52 as explained above. Ans. 17. Appellants do not
persuasively refute the Examiner’s findings regarding this teaching and do
not identify harm fill error.
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Claim 30 recites “The method of claim 22, wherein said placing
includes placing the composite laminate part such that selected areas of the
composite laminate part are in closer proximity to the phase change material
than other areas of the composite laminate part.” Appellants first argue that
Westerman teaches uniformly heating a part such that no “selected areas are
in closer proximity to the phase change material in the tool.” Appeal Br. 16.
The Examiner addresses this argument by finding that, because Westerman’s
part has a thickness, some areas of the part are closer to the phase change
material than others. Ans. 16; see also Westerman, Fig. 6.
Appellants respond by stating that “[o]nly sophistry or hindsight
imagination would contemplate arbitrarily dividing up bladder 19 or patch
13 or part 11 to be closer or farther from [the] selected areas of the phase
change material.” Reply Br. 21. Appellants’argument is unpersuasive. No
sophistry or imagination is required. Figure 6 of Westerman depicts a part
13 placed so that selected areas of the part (e.g., the top surface of the part as
depicted in Figure 6) are closer to the heating unit 19 than other areas of the
part (e.g., the bottom surface of the part).
Appellants also argue that “selected” as recited in claim 30 “implies”
intention and that “[t]here is no intentionality in Westerman to do what is
claimed. . . .” Reply Br. 21—22. We disagree. A person placing part 13 of
Westerman would necessarily have to choose how to orient the part relative
to the heater and would thereby necessarily select what surface (i.e., the
“selected area”) is closer to (or contacts) the heater. Westerman Fig. 6; see
also id. at 3:43—58 (stating that a reservoir contacts the repair site).
Appellants do not cite anything in the Specification that would require
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“select” to be construed so narrowly that Westerman would not meet this
recitation.
We thus sustain the Examiner’s rejection of claims 27 and 30 as
obvious over Westerman and Deuring.
Ground 4 - Obviousness, claim 29. The Examiner rejects claim 29
under 35 U.S.C. § 103 as unpatentable over Westerman, alternatively in
view of Deuring, and further in view of Ackerman. Ans. 3. Appellants
argue that Ackerman does not cure the issues addressed above. Appeal Br.
17. For the reasons explained above, the arguments above do not identify
reversible error as to the combination of Westerman, Deuring, and
Ackerman. We therefore sustain this rejection. We do not sustain this
rejection to the extent the rejection relies on only Westerman and Ackerman.
Ground 5 - Obviousness, claims 33 and 34. The Examiner rejects
claims 33 and 34 under as obvious Westerman, alternatively in view of
Deuring (as applied, e.g., to claim 22), and further in view of Deuring.
Ans. 3. Appellants argue that the rejection does not make sense because
Deuring is cited twice. Appeal Br. 18. This argument does not identify
harm fill error. The rejection is reasonably clear that it rejects claims 33 and
34 under the same two theories as claim 22 is rejected (i.e., either
Westerman alone or Westerman combined with Deuring) with Deuring also
being necessary as teaching the particular recitations of claims 33 and 34.
Appellants also argue that Westerman and Deuring do not disclose air
gaps having the features recited in claim 34. Appeal Br. 18. The Examiner
finds, however, that Deuring teaches this recitation. Ans. 19—20. In
particular, the Examiner finds that Deuring’s air gaps include material that
changes phases such that the air gaps must provide adequate space for
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thermal expansion. Id. Appellants do not persuasively dispute the
Examiner’s findings in this regard. Reply Br. 25. Rather, Appellants argue
that Deuring’s sponge does not necessarily expand, but the sponge would
not need to expand to meet the recitations of claims 33 and 34 because the
claims merely recite “providing air gaps within the plurality of cavities along
with the phase change material” and “wherein the air gaps have a size that
takes into account different amounts of thermal expansion that occurs
between the tool and the phase change material.” Appeal Br. 26 (Claims
App’x).
Appellants do not dispute that Deuring’s sponge has air gaps (Reply
Br. 25), and a person of ordinary skill in the art would have understood that,
for the sponge to be able to undergo temperature changes and maintain its
function, the sponge including its air gaps would necessarily “take[] into
account” thermal expansion. Ans. 19—20. In other words, claim 34 as
written merely requires that the size of the air gaps permit the tool to
continue to function despite thermal expansion, and Deuring teaches that its
tool adequately functions as it undergoes temperature change (and, therefore,
necessarily exhibits some thermal expansion).
We therefore sustain this rejection to the extent it is relies on both
Westerman and Deuring to meet the recitations of claim 22.
Ground 6 - Obviousness, claim 37. The Examiner rejects claim 37 as
obvious over Westerman, alternatively in view of Deuring. Ans. 3.3 Claim
37 recites (with emphasis added to certain key recitations):
3 Appellants state that they believe the rejection is directed to claim 36 “as
there is no claim 37.” Appeal Br. 18, n. 1. Appellants acknowledge this as a
typographical error in the Reply Brief. Reply Br. 27.
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The method of claim 22, wherein the tool includes a first
section in which the plurality of cavities are located and a second
section in which there are none of the plurality of cavities, wherein
the composite laminate part includes a thicker portion relative to a
thinner portion of the composite laminate part, and wherein placing
the composite laminate part comprises placing the thicker portion of
the composite laminate part over the first section and placing the
thinner portion over the second section.
Appeal Br. 27 (Claims App’x).
Appellants also argue that the tool of Westerman does not meet the
recitations of claim 37 as illustrated by Westerman Figure 6. Appeal Br. 19—
20.
Figure 4 of the Specification illustrates a tool and temperature control
system having certain features recited in claim 37 and is reproduced below.
420 422
424 426
Figure 4 is a diagram illustrating a tool and temperature control system in
accordance with an embodiment of Appellants’ disclosure. Spec. 1 62; see
also Appeal Br. 3^4 (stating that Figure 4 depicts certain recitations of claim
22 from which claim 37 depends). As illustrated by Figure 4, cavities 410
are located around section 420 of tool 400 but not around section 422. Id. 1
62; see also Spec. 168 “cavities 410 with phase change material 412 may be
located only around section 420 of tool 400, and not section 422”). The
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material 418 to be cured is oriented so that the thicker part of the material is
above the section of the tool that includes cavities. Id.
The Examiner finds that the “bladder edges” of Westerman
correspond to claim 37 ’s “second section in which there are none of the
plurality of cavities.” Ans. 21—22. We disagree with this finding. In the
context of claim 37 and the Specification, the recited “second section”
cannot reasonably be construed so broadly as to include the relatively thin
bladder material of Westerman. Reply Br. 27 (“Claim 36 requires that the
tool includes two sections, one which has none of the cavities, and another
which does.”). Such a construction would improperly render the “second
section” recitation superfluous because any tool having cavities would
necessarily have some solid portions that define the cavities.
Because the Examiner’s explanation of Westerman does not
adequately support that it teaches the claim 37’s recited “second section,”
we do not sustain this rejection.
Rejection 7 - Obviousness, claims 22, 23, 27, 29, 30, and 32—34. As a
second obviousness rejection of claim 22 and certain dependent claims, the
Examiner rejects claims 22, 23, 27, 29, 30, and 32—34 as obvious over
Deuring in view of Takahashi. Ans. 4.
The Examiner finds that Deuring teaches a tool as recited by claim 22.
Final Act. 9—10 (providing citations to Deuring). The Examiner finds that
Deuring does not teach that its end product gasket comprises a composite
laminate, but Takashi teaches composite gaskets. Id. at 10-11 (providing
citations to Takashi). The Examiner determines that “[i]t would have been
obvious to one of ordinary skill in the art at the time the invention was made
to incorporate these teachings from Takahashi into Deuring as providing an
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interchangeable raw gasket material providing various benefits (Takahashi
1:5—20).” Id. at 11. Appellants argue that this rejection is in error for the
reasons Appellants argue against Deuring with respect to the other
references. Appeal Br. 21. As explained above, however, those arguments
do not identify reversible error.
Appellants also argue that Takashi is non-analogous art because it is
not in the same field of endeavor as the claimed invention and is not
reasonably pertinent to the problem faced by Appellants. Id. The Examiner,
however, finds that “Takahashi relates closely to Deuring in that both
references pertain to gasket formation by molding and vulcanization.” Ans.
23. This finding is supported by the evidence in Takahashi. See, e.g.,
Takahashi, Abstract. Takashi is in the same field of endeavor as the claimed
invention because the claimed invention because it also pertains to formation
of an article (which, given the scope of claim 22, could be a gasket) by
molding and vulcanization.
Appellants further argue that the references do not mention a cure
temperature or maintaining a part at a temperature near the cure temperature.
Appeal Br. 21. The Examiner, however, finds that Deuring and Takahashi
teach vulcanizing or heat treatment of raw material and concludes that this is
“curing” under a broadest reasonable construction. Ans. 23; see also, e.g.,
Deuring 2:4—13 (explaining mold for heating gasket parts). The Examiner
also finds that Deuring teaches selecting phase change material to reach a
desired target for uniform temperatures (i.e., a third temperature near the
cure temperature). Ans. 15. Appellants do not persuasively dispute these
findings, or the Examiner’s conclusion. See Reply Br. 19 (not addressing
findings made by the Examiner at argument (e)).
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Appellants also argue that Deuring discloses a compression mold with
material being cured inside the tool rather than “on” the tool as recited in
claim 22. Appeal Br. 22; Reply Br. 31—32. The Examiner, however, finds
that even if the material is placed inside the mold, it is also “on” the mold.
Ans. 24. The preponderance of the evidence supports this finding. Figure 1
of Deuring, for example, depicts recesses 3 which the material to be molded
are in. The recesses also have surfaces that the molded material is “on.” An
object can reside in a container while also resting on the bottom surface of
the container. Appellants do not present any persuasive argument as to why
“on” in the context of claim 22 would exclude being within a mold as taught
by Deuring.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of claim 22 as obvious over Deuring and Takahashi.
Appellants do not separately argue claims 27, 29, and 32—34. We therefore
group these claims with claim 22 and also sustain the rejection of those
claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Obviousness, claims 23 and 30. Claim 23 recites “[t]he method of
claim 22, wherein the plurality of cavities is located a distance from the first
surface of the tool on which the composite laminate part is placed, and
wherein the method further comprises: selecting the distance to allow the
phase change material to absorb the heat from the part.” Appeal Br. 25—26
(Claims App’x).
Appellants argue that Deuring does not disclose movable or selectable
strips because material is formed inside Deuring rather than on its surface.
Appeal Br. 23. The Examiner, however, explains that Deuring’s cavities are
located a distance from the part that allows the phase change material to
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absorb heat. Ans. 25. We agree with the Examiner that claim 23 does not
require movability of, for example, Deuring’s strips. Rather, Deuring’s
cavities are designed (i.e., selected) so that the phase change material can
absorb heat and achieve the temperature uniformity taught by Deuring.
Appellants also argue that the recitation of claim 30 cannot be met
because Deuring’s material is inside the tool rather than on its surface.
Appeal Br. 23. However, as the Examiner finds, a person inserting material
inside the tool simultaneously would be placing the material on a surface of
the tool and thereby would be choosing for some material (for example, the
bottommost material) to be nearer to the phase change material while
another selected area (for example, the upper or interior portion of the
material) is farther from the phase change material. Ans. 26. Thus claim 30
is satisfied.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of these claims.
Other arguments. Appellants argue against a rejection of claim 27 in
view of Deuring alone and argue against a combination of Deuring and
Worm (United States Patent No. 6,087,406). Appeal Br. 16—17. We do not
address these arguments because no such rejections are maintained on
appeal. Ans. 2-4, 17.
DECISION
For the above reasons, we affirm:
(1) the Examiner’s rejection of claims 22, 23, 27, 29, 30, and 32—
37 as indefinite under 35 U.S.C. § 112 to the extent the rejection is based
upon claim 22’s recitation of “the first surface of the tool”;
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Application 13/480,179
(2) the Examiner’s rejection of claims 22, 23, 27, 30, 32, 35, and
36 as obvious over Westerman in view Deuring;
(3) the Examiner’s rejection of claim 29 as obvious over
Westerman in view of Deuring and further in view of Ackerman;
(4) the Examiner’s rejection of claims 33 and 34 as obvious over
Westerman in view of Deuring as applied to claim 22 and further in view of
Deuring; and
(5) the Examiner’s rejection of claims 22, 23, 27, 29, 30, and 32—
34 as obvious over Deuring in view of Takahashi.
We reverse:
(1) the Examiner’s rejection of claims 22, 23, 27, 29, 30, and 32—
37 based on the written description requirement of 35 U.S.C. § 112;
(2) the Examiner’s rejection of claims 22, 23, 27, 29, 30, and 32—
37 as indefinite under 35 U.S.C. § 112 to the extent the rejection is based
upon claim 22’s recitations of “about,” “near,” “third temperature of the
part,” and/or “by maintaining a third temperature”;
(3) the Examiner’s rejection of claims 22, 23, 27, 29, 30, 32, 35,
and 36 as anticipated by Westerman;
(4) the Examiner’s rejection of claim 29 as obvious over
Westerman in view of Ackerman;
(5) the Examiner’s rejection of claims 33 and 34 as obvious over
Westerman in view of Deuring to the extent the Examiner relies only on
Westerman to meet the recitations of independent claim 22; and
(6) the Examiner’s rejection of claim 37 as obvious over
Westerman, both alone and in view of Deuring.
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Application 13/480,179
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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