Ex parte Ohliger et al.

Board of Patent Appeals and Interferences

Jul 27, 2001

08627213 (B.P.A.I. Jul. 27, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLA OHLIGER, MAHENDRA MAHESHWARI
and JOE F. SPANGLER
____________
Appeal No. 1998-1822
Application No. 08/627,213
____________
ON BRIEF
____________
Before, KIMLIN, PAK and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s refusal
to allow claims 1-14, which are all of the claims pending in
this application.
BACKGROUND
Appellants’ invention relates to a method for making a
perforated panel useful in sound suppression applications.
The method includes the step of drilling a plurality of
apertures in a partially cured sheet of polymer material or a
panel formed thereof. The perforated partially cured sheet or
Appeal No. 1998-1822 Page 2
Application No. 08/627,213
panel is conformed or juxtaposed to a tool surface and
subsequently cured via heating. An understanding of the
invention can be derived from a reading of exemplary claims 1
and 11, which are reproduced below.
1. Method for fabricating polymer panels
with apertures, comprising the steps of:
providing a flat polymer panel, partially
cured to a state in which the panel can be
handled as a rigid sheet at room temperature;
drilling a plurality of apertures into said
partially cured panel to produce a partially
cured perforated sheet;
juxtaposing a surface of said partially
cured perforated sheet with an elastomeric tool
surface having a shape conforming to a desired
final shaped of said panel;
while said perforated sheet is juxtaposed
with said elastomeric tool surface, heating said
perforated sheet sufficiently to completely cure
said perforated sheet; and
removing said cured perforated sheet from
said tool surface.
11. A method for producing a perforated
acoustic article, comprising the steps of:
providing an uncured sheet of polymer
material;
partially curing said uncuring sheet to a
form in which the resulting partially cured
sheet can be handled as a rigid sheet at room
temperature;
drilling a plurality of apertures in said
partially cured sheet to form a partially cured
perforated sheet;
preheating said partially cured perforated
sheet to make it flexible;
Appeal No. 1998-1822 Page 3
Application No. 08/627,213
following said preheating step, conforming
said partially cured partially cured perforated
article with an elastomeric surface of a tool,
which may be said tool surface, with a mold
release material lying between said surface of
said article and said elastomeric surface;
providing a vacuum about said conformed
partially cured perforated article, and heating
said conformed partially cured perforated
article to generate a cured perforated article.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Harrier 3,704,194 Nov. 28,
1972
Pratt et al. (Pratt) 3,787,546 Jan. 22,
1974
Savigny 5,242,652 Sep. 07,
1993
Claims 11-14 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicant regards as the invention. Claims 1, 2 and 5-14
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Pratt in view of Harrier. Claims 3 and 4 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Pratt in view
of Harrier and Savigny.
Appeal No. 1998-1822 Page 4
Application No. 08/627,213
We refer to the brief and to the answer for the opposing
viewpoints expressed by the appellants and by the examiner
concerning the above-noted rejections.
OPINION
For the reasons which follow, we will not sustain any of
the examiner's rejections.
Rejection Under 35 U.S.C. § 112, second paragraph
The examiner has expressed a number of concerns regarding
the claim language. See answer, page 9 for the statement of
the examiner’s rejection. However, the examiner simply does
not carry the burden of explaining why the language of either
claims 11 or 14, as it would have been interpreted by one of
ordinary skill in the art in light of appellants’
specification, drawings and the prior art, fails to set out
and circumscribe a particular area with a reasonable degree of
precision and particularity.
As explained by appellants (brief, pages 13-15), the
claim language in question is reasonably definite. We are in
agreement with appellants’ position since the examiner has not
shown that the claims, in question, do not define appellants’
Appeal No. 1998-1822 Page 5
Application No. 08/627,213
process with a reasonable degree of precision and clarity,
especially when read in light of appellants’ specification.
The examiner’s questioning of several of the terms of
claims 11 and 14 (answer, page 9 and pages 16-18) appears to
be premised on the examiner’s preference for somewhat
different wording in the claims as well as the examiner’s
concern with claim breadth rather than with the establishment
of any actual ambiguity or indefiniteness of the language
employed by appellants. In short, the examiner has apparently
not given due regard to the principle that claims are not to
be interpreted in a vacuum, but in light of information
disclosed in appellants’ specification and knowledge available
in the prior art as understood by a person of ordinary skill
in the art. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Consequently, we will not sustain the
rejection under 35 U.S.C. § 112, second paragraph.
Rejections Under 35 U.S.C. § 103
The examiner has not carried the burden of explaining how
the teachings of Pratt and Harrier, in combination, furnish
sufficient evidence to have reasonably suggested the method of
either of the independent claims 1 and 11, on appeal. As
Appeal No. 1998-1822 Page 6
Application No. 08/627,213
argued by appellants in their brief (pages 9 and 10), neither
Pratt nor Harrier, alone or in combination, suggests the
drilling of a partially cured panel or sheet in combination
with the other claimed method steps in forming a perforated
article, as herein claimed. The examiner recognizes that
Pratt does not disclose such a drilling step (answer, page 5,
first sentence). Harrier (column 1, lines 28-36) discloses a
prior art method of drilling a sheet after curing. As
recognized by the examiner (answer, page 12) however, Harrier
does not disclose drilling a partially cured sheet or panel as
herein claimed. Rather, Harrier (column 1, line 59 through
column 2, line 54) teaches that pointed studs are used to form
perforations in a partially cured sheet, not a drilling step.
Hence, even if the teachings of Pratt and Harrier were
combined, the examiner has not established, by the reference
evidence relied upon, how the herein claimed process including
drilling of a partially cured sheet would have been suggested
to one of ordinary skill in the art. Nor, with regard to
claims 3 and 4, has the examiner convincingly explained how
Savigny would have cured the above-noted deficiency in the
teachings of Pratt and Harrier.
Appeal No. 1998-1822 Page 7
Application No. 08/627,213
The examiner’s generalized assertion that it would have
been obvious to replace one technique for forming apertures
with another (answer, page 12) is simply not enough to sustain
an obviousness determination as to the specific claimed
subject matter herein based on the evidence relied upon by the
examiner. On this record, the examiner has not proffered
satisfactory supporting evidence or a convincing rationale
that specifically addresses how the applied references would
have taught or suggested the herein claimed method including
the limitations discussed above.
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness.
Accordingly, we reverse both § 103 rejections before us.
CONCLUSION
The decision of the examiner to reject claims 11-14 under
35 U.S.C. § 112, second paragraph as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention, to
reject claims 1, 2 and 5-14 under 35 U.S.C. § 103 as being
Appeal No. 1998-1822 Page 8
Application No. 08/627,213
unpatentable over Pratt in view of Harrier, and to reject
claims 3 and 4 under 35 U.S.C.
§ 103 as being unpatentable over Pratt in view of Harrier and
Savigny is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/sld
Appeal No. 1998-1822 Page 9
Application No. 08/627,213
WILLIAM H. MEISE
PATENT OPERATION LOCKHEED MARTIN CORP
ROOM 10B50 BLDG. B
P.O. BOX 8555
PHILADELPHIA, PA 19101
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 25 Oct 02
FINAL TYPED: