Ex Parte Pratt

Board of Patent Appeals and Interferences

Jun 16, 2010

10433198 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM F. PRATT
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Appeal 2009-005816
Application 10/433,198
Technology Center 1700
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Decided: June 16, 2010
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Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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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).
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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.}
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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.
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(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.
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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.
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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,
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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.
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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

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