Ex Parte Pacchione et al

Patent Trial and Appeal Board

Jan 24, 2017

13486444 (P.T.A.B. Jan. 24, 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.
13/486,444 06/01/2012 Marco PACCHIONE 1406/656 PCT/US 1047
25297 7590 01/26/2017
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
u sptomail @ j wth. com
mmcjunkin@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO PACCHIONE and
DOMENICO FURFARI
Appeal 2016-000396
Application 13/486,444
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 12, 13, 15, and 17 under 35 U.S.C. § 103(a). App. Br. 4; Ans. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
The subject matter of this appeal relates to connecting a fiber
composite component to a structural component of an aircraft and
spacecraft. Spec. 1:13—15. In particular, a metal foil inserted in a
1 This decision makes reference to the Specification (filed June 1, 2012)
(“Spec.”), the Final Office Action (mailed May 22, 2014) (“Final Act.”), the
Appeal Brief (filed Jan. 26, 2015) (“App. Br.”), the Examiner’s Answer
(mailed July 31, 2015) (“Ans.”), and the Reply Brief (filed Sept. 30, 2015)
(“Reply Br.”).
Appeal 2016-000396
Application 13/486,444
connection portion of the fiber composite component and the structural
component has at least one anchoring portion which protrudes from the
surface of the metal foil. Spec. 4:22—27. Claim 12 is illustrative and
reproduced from the Claims Appendix (paragraphing added and disputed
elements italicized):
12. An arrangement comprising a fibre composite
component and a structural component of an aircraft and
spacecraft, in which a metal foil is inserted in a connection
portion of the fibre composite component and structural
component as a transverse reinforcement element, wherein the
metal foil comprises
at least one anchoring portion which protrudes from a
surface of the metal foil, the at least one anchoring portion being
in the form of a surface element having a tapered or cylindrical
shape,
wherein the at least one anchoring portion having a
tapered shape is punch-bent from the metal foil and
comprises anchoring elements which are disposed
substantially perpendicularly or at a predetermined angle
with respect to the respective surface of the metal foil, and
wherein the at least one anchoring portion having a
cylindrical shape comprises anchoring pins which are
welded to the metal foil.
App. Br. 11 (Claims Appendix).
The Examiner maintains, and Appellants2 appeal, the rejection of
claims 12, 13, 15, and 17 under 35 U.S.C. § 103(a) as unpatentable over
2 Appellants identify the real party in interest as Airbus Operations GmbH.
App. Br. 1.
2
Appeal 2016-000396
Application 13/486,444
Kirkwood3 in view of Matsui4 and Giannuzzi.5 Ans. 2; App. Br. 4.
Appellants argue the subject matter of independent claim 12, and rely on
those same arguments for claims 13, 15, and 17. App. Br. 3—8. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 13, 15, and 17 will stand
or fall together with claim 12 on which they depend either directly or
indirectly.
OPINION
The dispositive issue for this appeal is whether the Examiner erred in
finding that the shape of the anchoring portion required by claim 12 is
suggested by Kirkwood’s disclosure of a metal foil susceptor having a
pattern of openings cut therein and barbs formed in the Z-axis by folding
prongs out of the X-Y plane, in view of the anchor shapes disclosed by
Matsui and Giannuzzi and also Kirkwood’s disclosure of tailoring,
salvaging, structurally modifying, and reinforcing the susceptor.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejection.
The Examiner determines that Kirkwood in view of Matsui and
Giannuzzi suggests the subject matter of claims 12, 13, 15, and 17 for the
reasons stated on pages 2—11 of the Answer.6
3 Kirkwood et al., WO 96/40487 A1 (published Dec. 19, 1996)
(“Kirkwood”).
4 Matsui et al., US 5,121,537 (issued June 16, 1992) (“Matsui”).
5 Giannuzzi et al., US 5,575,600 (issued Nov. 19, 1996) (“Giannuzzi”).
6 The Final Office Action was modified by the Advisory Action dated July
31, 2014, following the amendments after final cancelling claims 14 and 16
and amending claim 12. Ans. 2; App. Br. 3. In the Answer, the Examiner
does not maintain the written description and indefmiteness rejections under
35 U.S.C. § 112 of the Final Office Action (Final Act. 2—3). Additionally,
the term “first direction” quoted in the Final Office Action (Final Act. 3)
3
Appeal 2016-000396
Application 13/486,444
In the Appeal Brief, Appellants argue that Kirkwood “fails to disclose
the at least one anchoring portion being in the form of a surface element
having a tapered or cylindrical shape, as recited in claim 12.” App. Br. 5.
Appellants further argue that neither Matsui nor Giannuzzi cure this
deficiency of Kirkwood because (1) Matsui requires corresponding anchor
grooves in order for the protruding ribs to function as contemplated by
Matsui and (2) Giannuzzi neither discloses nor suggests that the anchor can
be made in both tapered and cylindrical shape. Id. at 5—6. Appellants
further contend that “punch bending and/or welding are not conventional
methods with regard to the present subject matter.” Id. at 6. In addition,
Appellants argue that even if “these methods were considered conventional
in metal working,” the combination of references would not lead a person
having ordinary skill in the art to the “solution presented in claim 12”
because “punch-bending and/or welding has no useful application when
considered in the context of Kirkwood (i.e., providing a plurality of spaced
barbs extending into the Z-plane).” Id. at 6—7.
The Examiner responds that the only difference between claim 12 and
Kirkwood is the tapered shape or the cylindrical shape of the anchoring
portion, but “the Kirkwood reference does not restrict the anchoring shape
on the metal foil.” Ans. 6. The Examiner finds that Kirkwood evidences the
opposite, i.e., multiple shapes for the anchor, because it “encourages or
suggests that the anchor portion maybe tailored, salvaged (or in another
word, edge treatment), structurally modified or reinforced particularly to
increase the bonding strength (see e.g. line 15-20 in page 13).” Id. The
does not appear in currently pending claim 12. Therefore, we understand the
Section 112 rejections to be withdrawn and not before us on appeal.
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Appeal 2016-000396
Application 13/486,444
Examiner further finds that “because Kirkwood is already suggesting an
anchor portion maybe tailored, salvaged . . . modifying it with the shapes in
either Matsui and/or Giannuzzi would be within the purview of one of
ordinary skill in the art.” Id. at 7, 9. The Examiner additionally finds that
Kirkwood’s disclosure of folding prongs out of the xy plane “is the same or
an obvious variant of the punch bent method that is claimed in the instant
application.” Id. at 8, 10 (citing Kirkwood 13:15—30, Fig. 5) (emphasis
omitted). The Examiner also finds that
[although Kirkwood did not use [a] welding method to weld the
anchoring portion to the metal foil, Kirkwood uses welding
methods throughout the specification..., thus it would also have
been obvious for a person with ordinary skills in the art to use [a]
welding method to weld the anchoring pin to the metal foil
because it is a well-established method for metal working.
Id. at 8, 10 (citing Kirkwood 1, 2, 5). In response to Appellants’ argument
that punch-bending and welding distinguish claim 12 over the cited art, the
Examiner states that Appellants “failed to distinctively point out why and
how this process distinguishes the instant application from the prior art
structure.” Id. at 7, 10.
In the Reply Brief, Appellants contend that “punch-bending and/or
welding limits the claimed subject matter of independent claim 12 insofar as
not all forms and shapes of protrusions in a metal foil may be obtained by
punch bending and/or welding.” Reply Br. 3. Appellants further assert that
“punch-bending would not be used to produce the anchoring portions, and
overall structure, of Matsui.” Id. Appellants assert that “the anchors or ribs
6 of Matsui are only formed in conjunction with an inextricable metal-metal
link, such that they cannot be obtained by punch-bending and cannot be
separated from an underlying steel base plate 1.” Id. at 4. Similarly,
5
Appeal 2016-000396
Application 13/486,444
Appellants argue that “welding would not be used to produce anchoring
portions, and overall structure, of Giannuzzi, which in no way comprises a
tapered or cylindrical shape within the meaning of independent claim 12.”
Id. at 5. According to Appellants, “the anchors A of Giannuzzi are formed
to receive nails N, such that anchors A cannot be obtained by punch-bending
or welding.” Id.
For the reasons discussed below, Appellants’ arguments fail to
identify a reversible error in the Examiner’s findings as to claim 12. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
First, it is undisputed that Kirkwood teaches the anchor portion of the
metal foil may be tailored, salvaged, structurally modified or reinforced
particularly to increase the bonding strength. Ans. 6; Kirkwood 13:15—20.
It is also undisputed that Kirkwood’s disclosure of folding prongs out of the
xy plane “is the same or an obvious variant of the punch bent method that is
claimed in the instant application.” Ans. 8, 10; Kirkwood 13:15—30, Fig. 5.
Although Appellants assert that “punch-bending . . . has no useful
application when considered in the context of Kirkwood (i.e., providing a
plurality of spaced barbs extending into the Z-plane)” (App. Br. 7), their
argument is devoid of any meaningful explanation on why Kirkwood’s
folding prongs out of the xy plane does not disclose or suggest “punch-bent”
as recited in claim 12. Appellants’ argument also lacks any meaningful
explanation as to how and why the recited “punch-bent” process renders a
structure different from the structure of Kirkland. See Ans. 7.
Second, Appellants do not direct us to any evidence that would rebut
the Examiner’s finding that one of ordinary skill in the art would have
modified the shape of Kirkwood’s anchor portion in order to tailor it for
6
Appeal 2016-000396
Application 13/486,444
specific requirements in view of the tapered shape taught in Matsui for
anchor bonding of separate materials to form a single unitary structure. Ans.
4. Appellants’ arguments that the tapered ribs of Matsui “require the
corresponding anchor grooves 3 in order for the ribs 6 to function as
contemplated by Matsui” (App. Br. 6) are not persuasive because “[t]he test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). The Examiner’s rejection is over the disclosure of
Kirkwood in view of the tapered shape disclosed in Matsui, which is cited
not for Matsui’s anchoring system, but to support the Examiner’s finding
that an anchor can have a tapered shape (Ans. 6) and that a tapered shape
would have been “within the purview of one of ordinary skill in the art” {id.
at 7). Appellants’ argument lacks any meaningful explanation as to why it
would not have been within the purview of one of ordinary skill in the art to
modify Kirkwood’s rectangular tabs or prongs depicted in Figure 5 (item 25)
in view of Kirkwood’s teaching to tailor and structurally modify the metal
foil. See Kirkwood 13:15—20, Figs. 3—5 (item 250); Ans. 6—7. Moreover,
Kirkwood suggests a tapered shape is imparted to its prongs that are folded
in the Z-axis. Kirkwood describes barbs being formed out of the prongs “by
scoring the prong with a cut that starts relatively closer to the body of the
susceptor and extends into the prong at an angle running from the surface
toward the tip.” Kirkwood 13:28—30. Appellants do not dispute that
Kirkwood forms “barbs 250 in the Z-axis by folding prongs out of the X-Y
plane” (App. Br. 5). Such an angled cut to form a barb suggests that
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Appeal 2016-000396
Application 13/486,444
Kirkland’s prong includes a tapered portion as a result. In any event,
Appellants do not adequately explain why a tapered shape for Kirkland’s
prongs would not have been obvious to a skilled artisan in view of the
disclosures of both Kirkwood and Matsui.
Because claim 12 requires that the “at least one anchoring portion
being in the form of a surface element having a tapered OR cylindrical
shape,” and we find that Appellants have not identified a reversible error in
the Examiner’s rejection over Kirkwood in view of the tapered anchor of
Mitsui, we need not address the additional findings and arguments
concerning the optional cylindrical shape claim limitation.
For the foregoing reasons, we affirm the Examiner’s rejection under
35 U.S.C. § 103(a) of claims 12, 13, 15, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
8