Ex Parte Paci et al

Patent Trial and Appeal Board

Mar 13, 2018

13569683 (P.T.A.B. Mar. 13, 2018)

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.
13/569,683 08/08/2012 Robert Pad 12-0584-US-NP 1026
63759 7590 03/15/2018
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. WONG, JESSICA BOWEN
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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 ROBERT PACI, DANIEL FLORES,
and FAUSTINO A. AYSON
Appeal 2017-006554
Application 13/569,6831
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.
Opinion for the Board filed by ASTORINO, Administrative Patent Judge.
Opinion Dissenting filed by McSHANE, Administrative Patent Judge.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner’s decision rejecting claims 1, 3—9, 12—15, 18, 19, and 23—25 under
(pre-AIA) 35 U.S.C. § 103(a) as unpatentable over Cronkhite et al. (US
4,593,870, issued June 10, 1986) (“Cronkhite”). We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, “[t]he real party in interest in this appeal is
. . . The Boeing Company of Chicago, Illinois.” Appeal Br. 2.
Appeal 2017-006554
Application 13/569,683
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 14, and 15 are the independent claims on appeal. Claim 1,
reproduced below is illustrative of the subject matter on appeal.
1. An apparatus comprising:
a monolithic composite structure having a substantially
planar shape, the monolithic composite structure comprising:
a first edge of the monolithic composite structure
having a first shape, wherein the first shape is a T-shape; and
a second edge of the monolithic composite structure
having a second shape, wherein the second edge includes a
plurality of flanges integrally extending from the second edge,
wherein the plurality of flanges is connected to a skin of a
vehicle; and
a floor connected to the first edge, wherein the floor is
supported within an interior of the vehicle by the T-shape of the
first edge.
ANALYSIS
The Examiner relies on Cronkhite to teach substantially all of the
subject matter of independent claims 1,14, and 15, except for the composite
stmcture being monolithic.2 See Final Act. 2—3, 5—6. Cronkhite is directed
to a “controlled progressively crushable panel structure [] of composite
materials which may form a crush zone to absorb crash energy and improve
the crash-worthiness of aircraft,” where the “crushable panel. .. extend[s]
between the bottom surface of floor 32 and upper inner surface of the skin
74.” Cronkhite, col. 1,11. 6-9, col. 4,11. 15-17.
2 The Specification describes a “monolithic composite structure” as a single
component. See, e.g., Spec. 167 (describing, with emphasis omitted, “frame
400 is formed as a single component. ... As a result, different features and
parts of frame 400 are not fastened or bonded together to form frame 400.”).
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Appeal 2017-006554
Application 13/569,683
The Examiner finds that the claimed composite structure corresponds
to Cronkhite’s sandwich panel 78 and angle strips 86, 88, 94, and 96. Final
Act. 2—3 (citing Cronkhite, Fig. 5). The Examiner finds that Cronkhite’s
angle strips 86, 88 correspond to a first edge having a T-shape. Id. at 2.
However, in finding that Cronkhite teaches a first edge having a T-shape it
appears likely the Examiner is also relying on at least some of upper panel
78, which is positioned between angles 86 and 88. The Examiner finds that
Cronkhite’s angle strips 94 and 96 correspond to a second edge having a
plurality of flanges. Id. at 2—3. Further, we note that Cronkhite’s “sandwich
panel 78 ... is comprised of outer composite sheet laminates 80 and 82
adhered to and unitized with opposite faces of a central honeycomb core
84.” Cronkhite, col. 4,11. 17—21 (emphasis omitted). Also, Cronkhite
discloses angle strips 86, 88, 94, and 96 are adhered to laminates 80 and 82.
Id. at col. 4,11. 28—32, 35—37. In sum, the Examiner relies on Cronkhite’s
sandwich panel 78 (including laminates 80 and 82, and core 84) and angle
strips 86, 88, 94, and 96 to correspond to the claimed composite structure.
The Examiner correctly finds that Cronkhite does not disclose a
monolithic composite structure as required by claims 1,14, and 15. See
Final Act. 3. As such, the Examiner proposes a modification in which
Cronkhite’s sandwich panel 78 (including laminates 80 and 82, and core 84)
and angle strips 86, 88, 94, and 96 together are monolithic. Id. In this
regard, the Examiner determines:
it would have been obvious to one having ordinary skill in the art
... to provide the elements as one piece, since it has been held
that forming in one piece an article which has formerly been
formed in two pieces and put together involves only routine skill
in the art, in order to provide a more securely connected
apparatus.
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Appeal 2017-006554
Application 13/569,683
Id. (emphasis added).3
The Appellants argue that the Examiner’s reasoning “is not fully
explained or presented such that it presents a convincing line of reasoning.”
Reply Br. 6. The Appellants are “uncertain how the Examiner suggests that
the proposed combination provides ‘a more securely connected apparatus.’”
Id. at 6—7. The Appellants’ argument is persuasive of Examiner error.
At the outset, we note that a monolithic structure is formed of a single
piece, so it does not have connections. Hence, the Examiner’s reason to
modify Cronkhite’s elements to be monolithic “in order to provide a more
securely connected apparatus” seems incongruous. The Examiner’s
reasoning may be that modifying Cronkhite’s composite structure to be a
single piece creates a structure that is more secure. To the extent that the
modification would result in a structure that is more secure, the Examiner
fails to adequately explain why a skilled artisan would have considered it
beneficial to make Cronkhite’s controlled progressively crushable panel
structure more secure. See also Appeal Br. 13.
The remainder of the Examiner’s rejection fails to cure the deficiency
in the Examiner’s rejection. The Examiner points to Cronkhite’s Figures 6—
10 to show that Cronkhite’s second edge is monolithic. Final Act. 3;
Ans. 4—5. However, Cronkhite’s Figures 6—10 are of limited value to cure
the deficiency in the Examiner’s rejection. See also Reply Br. 4.
Cronkhite’s Figure 6 shows sandwich panel 78 having outer composite sheet
3 We note the Examiner’s use of the term “the elements” is vague because it
does not refer to the particular features of Cronkhite’s “composite structure.”
For the purposes of this appeal only, we assume the Examiner is referring to
Cronkhite’s sandwich panel 78 (including laminates 80 and 82, and core 84)
and angle strips 86, 88, 94, and 96.
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Appeal 2017-006554
Application 13/569,683
laminates 80 and 82 and central honeycomb core 84 adhered together, and as
such, is not monolithic. Cronkhite, col. 4,11. 48—54. Cronkhite’s Figures 6—
8 lack all of the claimed characteristics of the claimed monolithic composite
structure. Lastly, Cronkhite’s Figure 10, similar to Figures 5 and 6, does not
appear to show a structure that is monolithic. To the extent the Examiner
explains that the modification of shapes is a design choice (see Final Act. 3),
the Examiner does not adequately express what structure or structures of
Cronkhite are being modified and what shape or shapes those structure or
structures are modified to be. Lastly, we note the Examiner finds that
“monolithic planar composite structures with edges/flanges are well known
in the art (as evidenced by Swinfield US 4,531,695 figure 5 element 22 or
23).” Id. However, for the purposes of this appeal only, even if we were to
agree with this finding, we fail to ascertain how this finding by itself cures
the deficiency in the Examiner’s rejection. See Appeal Br. 13.
Thus, we do not sustain the Examiner’s rejection of claims 1, 3—9, 12—
15, 18, 19, and 23—25 as unpatentable over Cronkhite.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 3—9, 12—
15, 18, 19, and 23-25.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT PACI, DANIEL FLORES,
and FAUSTINO A. AYSON
Appeal 2017-006554
Application 13/569,683
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge, dissenting.
With the utmost respect, I dissent from the majority decision reversing
the Examiner’s rejection of claims 1, 3—9, 12—15, 18, 19, and 23—25 under
35 U.S.C. § 103(a).
The Examiner correctly finds that Cronkhite’s sandwich panel 78 and
angle strips 86, 88, 94, and 96 as depicted in Figure 5, reproduced below,
correspond to the claimed composite structure.
Appeal 2017-006554
Application 13/569,683
Angle strips 86, 88, 94, and 96 shown in Figure 5 are attached to the sides of
laminates 80 and 82 of sandwich panel 78 by “a suitable adhesive.”
Cronkhite, 4:29—31, 35—37.
I find no reversible error with the Examiner’s determination that it
would have been obvious to one having ordinary skill in the art to modify
Cronkhite’s structure to eliminate the adhesive attachments of the angle
strips and instead provide the elements as one monolithic piece. It is well
settled law that forming in one piece an article which has formerly been
formed in two pieces and put together involves only routine skill in the art.
In re Larson, 340 F.2d 965, 968 (CCPA 1965) (use of one piece construction
is “merely a matter of design choice”); In re Fridolph, 309 F.2d 509 (CCPA
1962); Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893) (“it
involves no invention to cast in one piece an article which has formerly been
cast in two pieces, and put together.”). Although the Examiner’s articulation
that the modified structure would “provide a more securely connected
apparatus” could have been more precisely worded, the “connections” may
be viewed as the structure at the intersection of the formed “flanges” with
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Application 13/569,683
the remainder of the composite, where the “connections” are formed by
virtue of monolithic fabrication. I discern no need for additional detail on
why a monolithic “connection” is more secure than an adhesive connection
in the view of one of skill in the art, or that a lack thereof constitutes a
reversible error, because the Examiner’s findings as presented provide a
stated rational basis for making the modification, and serve as adequate
notice to Appellants.
Additionally, I agree with the Examiner that Appellants have not
shown that a benefit or advantage of a monolithic structure would have been
unexpected or surprising to one of ordinary skill in the art. See Ans. 4—5. A
benefit must be unexpected to be probative of unobviousness. Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007).
On the present record, I would sustain the rejection of claims 1, 3—9,
12—15, 18, 19, and 23—25 advanced by the Examiner. Accordingly, I
respectfully dissent from the reversal of that rejection.
3