Ex Parte PrattDownload PDFBoard of Patent Appeals and InterferencesJun 16, 201010433198 (B.P.A.I. Jun. 16, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte WILLIAM F. PRATT ________________ Appeal 2009-005816 Application 10/433,198 Technology Center 1700 ________________ Decided: June 16, 2010 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-005816 Application 10/433,198 2 A. Introduction1, William F. Pratt (“Pratt”) timely appeals under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-11, 13-15, 21, and 23.3 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. The subject matter on appeal relates to composite structures said to be useful for damping vibrations in objects as diverse as rocket motor housings and golf club shafts. The structures comprise an in-plane wavy fiber- reinforced composite lamina combined with a unidirectional fiber-reinforced composite lamina, further combined with a viscoelastic layer attached to a side of the combined wavy and unidirectional laminas. The composite structures are said to provide improved damping, stiffness, and strength. (Spec. 1.) Representative Claim 1 is reproduced from the Claims Appendix to the Principal Brief on Appeal: 1. A composite structure which comprises: at least one wavy fiber composite lamina (1); 1 Application 10/433,198, Wavy Composite Structures, filed 29 May 2003, as the National Stage of an International Application filed 30 November 2001, which claims the benefit via continuation-in-part applications to applications filed as far back as 29 January 1998. The specification is referred to as the “198 Specification,” and is cited as “Spec.” The real party in interest is listed as William F. Pratt. (Appeal Brief, filed 10 August 2007 (“Br.”), 3.) 2 Office Action mailed 4 April 2006 (“Final Rejection”; cited as “FR”). 3 On filing the Appeal Brief, Appellants canceled claims 16-20, 22, and 24-29; rewrote claim 21 to include the limitations of claim 16; and rewrote claim 23 to include the limitations of claim 22. 37 C.F.R. § 41.33(b). Appeal 2009-005816 Application 10/433,198 3 at least one unidirectional fiber composite lamina (4) combined, in any stacking sequence, with said at least one wavy composite lamina (1); and at least one viscoelastic layer (2) attached to a side of the combined said at least one wavy composite lamina (1) and said at least one unidirectional fiber composite lamina (4). (Claims App., Br. 13; indentation and paragraphing added.) Claim 2 depends from claim 1 and adds the further limitation that “said viscoelastic layer (2) is periodically removed across the width of the lamina (5) [sic: 4].” (Claims App., Br. 13.) Figure 20, reproduced below, shows a composite structure within the scope of claim 1. {Figure 20 shows a composite laminate.} Appeal 2009-005816 Application 10/433,198 4 In the discussion that follows, as in the claims reproduced supra, when the terms “wavy,” “unidirectional,” and “lamina,” are used without the additional terms “composite” and “fiber,” the omissions are merely for convenient exposition: the presence of the missing terms should be understood to be implied throughout as needed. The Examiner has maintained the following ground of rejection:4 Claims 1-11, 13-15, 21, and 23 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Dolgin5 and Cabales.6 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. As the Appellant, Pratt bears the procedural burden of showing harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders, 129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect. . . . [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), 4 Examiner’s Answer mailed 13 June 2008. (“Ans.”) 5 Benjamin P. Dolgin, Composite Passive Damping Struts for Large Precision Structures, U.S. Patent 5,203,435 (1993). 6 Raymund S. Cabales et al., Golf Shaft for Controlling Passive Vibrations, U.S. Patent 6,155,932 (5 December 2000), based on an application filed 6 July 1999, which is a division of an application filed 9 September 1997. Appeal 2009-005816 Application 10/433,198 5 (discussing the role of harmless error in appeals from decisions of the Board of Patent Appeals and Interferences (“Board”)). Arguments not timely made have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the brief to the Board is waived on appeal). Regarding claims 1, 3-5, 10, and 11, Pratt contends the Examiner erred because neither reference describes combining a wavy lamina with a unidirectional lamina, particularly with no viscoelastic layer between the laminas. (Br. 8.) Moreover, Pratt argues, “at the time of Appellant’s invention, one of ordinary skill in the pertinent art would have thought that such a combination would destroy the desired damping.” (Id. at 9, ll. 1-2, and last two lines.) Pratt does not, however, support this argument with citations to any evidence. Pratt argues the patentability of claims 21, and 22 under separate headings (id. at 12) but does not raise issues distinct from those raised regarding claim 1. Accordingly, claims 1, 3, 4, 5, 10, 11, 21, and 22 stand or fall with claim 1. Regarding claims 2, 13, and 14, which require the presence of a unidirectional lamina, and also regarding claims 6-9, which do not require the presence of a unidirectional lamina, Pratt argues the Examiner erred in finding obviousness for the additional reason that neither reference discloses periodically removing a portion of the viscoelastic layer across the width of the lamina. (Br. 10-11.) Pratt raises additional arguments regarding claim 15, but, for the reasons discussed infra, claims 2, 6-9, and 13-15 stand or fall with claim 2. Appeal 2009-005816 Application 10/433,198 6 The Examiner finds that Dolgin describes a vibration-damping composite structures in which a viscoelastic layer is sandwiched between two sine-shaped or wavy fiber composite plies. (OA 6.)7 The Examiner admits that Dolgin does not expressly describe a structure comprising unidirectional lamina (id. at 7) and that Dolgin does not describe structures in which the viscoelastic layers are periodically removed (id. at 7-8). To remedy these deficiencies, the Examiner relies on Cabales as disclosing dampened shafts comprising a viscoelastic layer that is reinforced with unidirectional fibrous layers. (OA 8.) The Examiner finds further that Cabales describes shafts having multiple viscoelastic layers spaced along the shaft “thereby exhibiting a lamina with periodically removed section[s] of the viscoelastic layer.” (Id.) The Examiner concludes it would have been obvious “to have modified Dolgin to include a reinforced viscoelastic layer with unidirectional fibrous layers and to space the viscoelastic layers along the length of the substrate . . . such that passive vibrations are suppressed and to provide a shaft with variable flexing properties along its length.” (OA 9.) The Examiner explains further that, “when combining the two types of reinforcing plies, it would be obvious [sic: evident] that the viscoelastic layer would be attached to a side of the combined at least one wavy and at least one unidirectional fiber composite lamina because Dolgin and Cabales each teach that the fiber composites sandwich the viscoelastic layer therefore 7 Office Action mailed 9 August 2005, incorporated by reference at FR 2. Appeal 2009-005816 Application 10/433,198 7 there must be one of each on either side of the viscoelastic layer when both composites are used.” (Ans. 6.) Pratt did not file a Reply Brief. Pratt’s arguments against the rejection of claim 1 appear to be based on a “combination” of the teachings of Dolgin and of Cabales in which, for example, one of the laminas on either side of the viscoelastic layer taught by Dolgin is replaced by one of the laminas taught by Cabales. These arguments are ineffective because claim 1 does not exclude such combinations. While claim 1 requires that a wavy lamina be combined with a unidirectional lamina, claim 1 does not limit the way in which the laminas are combined. In particular, claim 1 does not require that there be nothing between the wavy lamina and the unidirectional lamina; nor does claim 1 exclude viscoelastic materials between those laminas. Limitations are not to be read from particular embodiments in the specification into to claims. Moreover, Pratt’s argument that such a combination would have been regarded as non-functional or ineffective is not supported by citation to credible evidence of record. We therefore accord them little weight. In any event, as the Examiner emphasizes (Ans. 6), the rejection is based on the stacking of the vibration-damping composite structures taught by the two references. Pratt has not argued that such a combination would have been contrary to the expectations of those skilled in the art or otherwise non-obvious in view of the prior art of record.8 Pratt’s decision not to file a 8 We note that stacked composite damping structures are shown in Cabales, Figure 5, which illustrates an embodiment described as having multiple layers sandwiched between plies. According to Cabales, Appeal 2009-005816 Application 10/433,198 8 Reply Brief indicates that Pratt has waived all further substantive arguments beyond those filed in the principal Brief on Appeal. We conclude that Pratt has not shown harmful error in the Examiner’s rejection of claim 1. As for the rejection of claim 2, Pratt argues that Cabales does not describe structures in which a portion of the viscoelastic layer has been periodically removed. Resolution of this part of the appeal hangs on the meaning of the term “periodically removed,” as used in the claims. Although the term “periodic” does not appear in the list of terms provided at pages 2 through 3 of the 198 Specification as having “their ordinary dictionary meaning as follows” (Spec. 2, ll. 17-189), the term “Wavy” is defined as “[t]he pattern of fiber lay that has a sinusoidal look, especially a sinuous wavy fiber in the plain [sic: plane] of a laminate; the wave pattern need not be periodic or uniform” (id. at 3, ll. 19-21; emphasis added). Thus, intrinsic evidence in the originally filed 198 Specification shows that Pratt uses the term “periodic” in a sense more limited than “recurrent” (one of the synonyms listed in, e.g., Webster’s Third New International Dictionary of the English Language, Unabridged (1993). Rather, the term “periodic” is used to indicate “uniform” waviness. The structures shown by Cabales in Figures 9a-9c and described in the accompanying text at column 6 are recurrent, and thus periodic in a general intermediate layer 411 “can be of different material orientation.” (Cabales, col. 4, ll. 57–67; Fig. 5.) Thus, Cabales supports the Examiner’s conclusion that stacked vibration damping structures would have been obvious. 9 The record copy of the 198 Specification in the USPTO electronic database, “eDAN,” jumps from a page labeled “3” to a page labeled “5.” The text is discontinuous, indicating that the lapse is not merely a page- labeling irregularity. Appeal 2009-005816 Application 10/433,198 9 sense. However, those structures are not “periodic” as that term must be interpreted in the appealed claims. Accordingly, we REVERSE the rejection of claim 2. C. Order We AFFIRM the rejection of claims 1, 3, 4, 5, 10, 11, 21, and 22 under 35 U.S.C. § 103(a) in view of the combined teachings of Dolgin and Cabales. We REVERSE the rejection of claims 2, 3, 6-9, 14, and 15 under 35 U.S.C. § 103(a) in view of the combined teachings of Dolgin and Cabales. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED-IN-PART kmm THOMPSON E. FEHR GOLDENWEST CORPORATE CENTER SUITE 300 5025 ADAMS AVENUE OGDEN, UT 84403 Copy with citationCopy as parenthetical citation