Ex Parte Pyles et al

Patent Trial and Appeal Board

Mar 17, 2017

11983980 (P.T.A.B. Mar. 17, 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.
11/983,980 11/13/2007 Robert A. Pyles P09059/MD06-53 5314
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
ABDOSH, SAMIR
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. PYLES, JAMES M. LORENZO, and
RAYMOND L. GOODSON
Appeal 2014-000140
Application 11/983,980
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert A. Pyles et al. (“Appellants”)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—18 and 20—25 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appeal Brief identifies Bayer MaterialScience LLC and
Raymond L. Goodson as the real parties in interest. Br. 2.
Appeal 2014-000140
Application 11/983,980
CLAIMED SUBJECT MATTER
Claims 1, 7, 20, and 21 are independent. Claim 1 illustrates the
subject matter on appeal, and it recites:
1. A blast-resistant barrier comprising one or more
units each including a panel fixedly attached to a frame, said
panel being greater than 20 and less than 40 millimeter[s] in
thickness and including at least one polycarbonate sheet
vertically positioned between a source of the blast and a building,
and said panel being placed at a distance from the surface of the
building.
Br. 16 (Claims App.).
REJECTIONS ON APPEAL
Claims 1—6, 11, 14—16, and 20-25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mardirossian (US 7,784,389 B2, iss. Aug. 31,
2010) and Dlubak (US 2004/0226231 Al, pub. Nov. 18, 2004).
Claims 7—10 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mardirossian, Dlubak, and Piscitelli
(US 2010/0242714 Al, pub. Sept. 30, 2010).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mardirossian, Dlubak, Piscitelli, and Tucker (US 2009/0139091 Al,
pub. June 4, 2009).
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mardirossian, Dlubak, and Park (US 7,549,366 B2, iss.
June 23, 2009).
2
Appeal 2014-000140
Application 11/983,980
ANALYSIS
A. Obviousness based on Mardirossian and Dlubak
Claims 1—6, 11, 14—16, 20, and 21
Appellants argue for the patentability of claims 1—6, 11, 14—16, 20,
and 21 together as a group. Br. 5—9. Accordingly, we select claim 1 to
decide the appeal of the rejection of these claims, with the other claims of
the group standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1, the Examiner finds Mardirossian discloses an
anti-terrorist system including protective gateway 122 spaced from a surface
of a building (i.e., secured area 10). Final Act. 5; see Mardirossian, Fig. 1,
3:23—30. The Examiner finds Mardirossian fails to teach gateway 12
“comprising one or more units each including a panel fixedly attached to a
frame,” as specified in claim 1. Final Act. 5.
The Examiner finds “Dlubak teaches a blast-resistant barrier
comprising one or more units each including a panel (via polymeric
sheet 30) attached to a frame (12).” Id. at 5 (citing Dlubak, Fig. 1,151).
The Examiner finds Dlubak indicates the panel can be utilized “as a window,
door, or the like.” Id. at 2 (quoting Dlubak, Abstract). According to the
Examiner, Dlubak’s panel is greater than 20 and less than 40 millimeters in
thickness, and includes at least one polycarbonate sheet. Id. at 5 (citing
Dlubak 11 51, 93); see also id. at 2—3 (more detailed analysis).
The Examiner determines it would have been obvious “to combine the
gateway of Mardirossian with the barrier of Dlubak under the motivation of
2 The Examiner refers to Mardirossian’s “gateway (18),” whereas
Mardirossian describes “gateway 12 . . . bounded by gateway walls 18.”
Mardirossian, 4:1, Fig. 1. We, therefore, use reference numeral 12.
3
Appeal 2014-000140
Application 11/983,980
providing a windowed portion looking into [Mardirossian’s] gateway [12]
that is capable of sustaining a blast impact.” Id. at 5 (citing Dlubak | 6).
The Examiner further determines it would have been obvious to incorporate
Dlubak’s panel into Mardirossian’s gateway 12 as a blast proof door
structure, thereby “providing a stronger door means” at entrance 14 or
exit 16 of Mardirossian’s gateway 12. Id. at 3.
Appellants argue the Examiner applies an improper “hindsight
reconstruction” by failing to “show reasons why” a person of ordinary skill
in the art would have combined Mardirossian and Dlubak to reach the
invention of claim 1. Br. 7. This argument is not persuasive. We determine
that providing a window within walls 18 of Mardirossian’s bomb blast-
resistant gateway 12, to permit an observer to look into the enclosed space,
is a sufficiently articulated reason with a rational basis for adding a window
to gateway 12. See Final Act. 5; Mardirossian, Abstract, 4:1—6 (walls 18 of
gateway 12 enclose a chamber so that hidden bombs carried by individuals
seeking access to secured area 10 can be detonated within the chamber by
detonation signals). Dlubak, correspondingly, discloses blast resistant
assembly 10 comprising composite panel 20 that “may be used as a
window.” Dlubak || 50—51, Figs. 1 and 2. Further concerning the
Examiner’s alternate rationale of using Dlubak’s assembly 10 as a door
structure in Mardirossian’s gateway 12, Appellants’ conclusory analysis fails
to apprise us of error in the Examiner’s determination that using Dlubak’s
assembly 10 would provide a stronger door means in Mardirossian’s
gateway 12. See Final Act. 3; Br. 7.
Appellants further assert Mardirossian is deficient because gateway 12
“mitigate[s] damage caused by individuals carrying relatively small,
4
Appeal 2014-000140
Application 11/983,980
concealed, portable explosive devices,” and “the means to protect an entire
building from the devastating effects of a much larger and more powerful
vehicular bomb” is not disclosed in Mardirossian. Br. 8. Appellants further
contend Dlubak fails to remedy that deficiency of Mardirossian, because its
assembly 10 was tested “as an individual ffamed-panel” such as a window or
door, rather than “a multiple framed-panel system.” Id. Appellants assert
the invention of claim 1 “is designed and tested to withstand much greater
blast pressures that would destroy” Mardirossian’s gateway 12 and Dlubak’s
assembly 10. Id. at 8—9. Appellants argue the invention of claim 1 “is not a
gateway [as in Mardirossian] nor a protective window or door [as in
Dlubak], but rather is a protective system totally encompassing either an
existing structure or is a complete, load-bearing wall.” Id. at 8. Appellants
additionally rely on “the instant invention” dissipating energy by “flexing of
the transparent panels,” so the distance of the protective system from the
building is “critical.” Id. at 9.
These arguments are not persuasive, because they rely on multiple
limitations not found in claim 1. The claim pertinently recites only a “blast-
resistant barrier comprising one or more units including a panel fixedly
attached to a frame,” with the panel “placed at a distance from the surface of
[a] building.” Br. 16 (Claims App.). Claim 1 does not specify the entire
building is protected (indeed, building protection is at most only an intended
use of the claimed barrier), or the size of a blast against which the barrier is
effectively resistant, or the barrier being a load-bearing wall, or flexure of
the panel, or any critical distance between the panel and the building surface.
Thus, even if the combination of Mardirossian with Dlubak fails to disclose
5
Appeal 2014-000140
Application 11/983,980
such features, the failure is insufficient to distinguish claim 1 from the cited
prior art.
For the foregoing reasons, we sustain the rejection of claims 1—6, 11,
14—16, 20, and 21 as unpatentable over Mardirossian and Dlubak.
Claims 22—25
Claim 22 depends from claim 1 to recite that “the panel is placed at a
distance of at least 12 inches from the building.” Br. 18 (Claims App.).
Claims 23—25 depend, respectively, from independent claims 7, 20, and 21,
and recite “the panel is placed at a distance of at least 12 inches from the
surface of the building.” Id. Thus, these claims, unlike claim 1 discussed
above, specify a minimum distance between the panel and the building.
The Examiner finds “neither Mardirossian nor Dlubak expressly
teach . . . that the panel is spaced at least 12 inches from the building.” Final
Act. 6. However, the Examiner determines:
[Sjpacing the building at least one foot away from the panel is
considered to be an obvious variant capable of being performed
by one of ordinary skill in the art. Presuming, for the sake of
argument, that the distancing of the panel from a building by at
least 12 inches is a critical aspect of the invention, it is unclear
what new or unexpected function results from that specific
configuration. In other words, it is unclear how placing the panel
12 inches from the protected object yields some new or
unexpected function from the panel that would be absent if not
for that 12 inch spacing.
Id.; see also id. at 7 (discussing the law relating to unexpected results for
claimed ranges of values).
In rebuttal, Appellants argue:
[A] possible mechanism to dissipate the blast energy is
flexing of the transparent panels within the protective system.
6
Appeal 2014-000140
Application 11/983,980
The distance of the protective system from the building is critical
because the flexing of the individual panels could potentially
physically impact the building, and hence, do damage to the
building. Moreover, because the building is totally encompassed,
a secondary blast energy/shock-wave is generated between the
protective system and the building surface by the flexing of the
panels. This secondary blast energy/shock wave can produce
sufficient energy to damage the building if the distance is not
carefully managed. Such an effect is nowhere taught, suggested
or even observed with either Mardirossian’s gateway or Dlubak’s
window/door disclosures.
Br. 9 (emphasis added).
As a general rule, when “the difference between the claimed invention
and the prior art is some range or other variable within the claims . . . the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Such is the case here, where Mardirossian discloses that the size of
gateway 12 is determined by its use. See Mardirossian, 2:36-42
(gateway 12 may be sized to accommodate one person or a group of people
at one time, and also be sized to accommodate an automobile), 3:55—67
(gateway 12 may be large enough to prevent blast debris from substantially
escaping gateway 12 even if door panels are not present at entrance 14 and
exit 16). A person of ordinary skill in the art would have appreciated that
the length and width dimensions of gateway 12 must be at least 12 inches in
order to accommodate at least one person.
There is no evidence to indicate that the claimed distance of at least
12 inches is critical to provide an unexpectedly good result. Appellants’
Specification states: “the inventive panel is preferably placed at a distance
7
Appeal 2014-000140
Application 11/983,980
of at least 12 inches from the surface of the protected target to avoid the
polycarbonate panels striking the building while bending as a result of being
hit with the shockwave resulting from a blast f and “[s]horter distances may
be used for lower threat levels or smaller panels.” Spec. 10:27—31
(emphasis added). Nonetheless, there is no evidence to indicate the
described benefit provided by the 12 inch separation would have been
unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)
(establishing an expected result requires “show[ing] that the claimed
invention exhibits some superior property or advantage that a person of
ordinary skill in the relevant art would have found surprising or
unexpected'1'’) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995))
(emphasis added). For example, the Specification does not provide any
comparative test results showing that the minimum 12 inch separation
represents superior results versus other distances. See Geisler, 116 F.3d at
1469—70 (“it is well settled that unexpected results must be established by
factual evidence,” not “[m]ere argument or conclusory statements in the
specification”) (citations omitted); In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (alleged unexpected results must be shown to be
unexpected compared with the closest prior art).
For the foregoing reasons, we sustain the rejection of claims 22—25 as
unpatentable over Mardirossian and Dlubak.
B. Obviousness based on Mardirossian, Dlubak, and Piscitelli
Appellants argue for the patentability of claims 7—10 and 12 together
as a group. Br. 10—12. Accordingly, we select claim 7 to decide the appeal
of the rejection of these claims, with the other claims of the group standing
8
Appeal 2014-000140
Application 11/983,980
or falling with claim 7. 37 C.F.R. § 41.37(c)(l)(iv). Claim 7 is an
independent claim reciting:
7. A blast-resistant barrier comprising one or more
units each including a panel fixedly attached to a frame, said
panel being greater than 20 and less than 40 millimeter[s] in
thickness and vertically positioned between a source of the blast
and a building, wherein said panel is in the form of a laminate
containing more than one polycarbonate sheet and wherein said
panel is placed at a distance from the surface of the building.
Br. 16 (Claims App.) (emphasis added).
The Examiner relies on Mardirossian and Dlubak as discussed above
for the common subject matter between claims 1 and 7, but finds those
references “fail[] to teach a plurality of said [polycarbonate] sheets.” Final
Act. 7. The Examiner finds “Piscitelli teaches an anti-ballistic composite
that includes a laminate layer that can [be] made up of a variety of materials
such as polycarbonate.” Id. (citing Piscitelli || 71—72). The Examiner
determines it would have been obvious “to simply utilize the resins in a
manner similar to that taught by Piscitelli in the barrier taught by the
Mardirossian/Dlubak combination since such resins are considered to be
well known composite materials used in similar anti-ballistic panels.” Id. at
8; Ans. 13.
In rebuttal, Appellants argue:
In Piscitelli, only the antiballistic properties of the window
assemblies were tested. In contrast to the instantly recited
invention, no effort was taken to determine the magnitude of any
blasts, or assess the effect of said blasts on a simulated structure,
or alternatively, actual structures such as buildings, which were
protected by the window assemblies.
Br. 11. This attorney argument is not persuasive of Examiner error. For
9
Appeal 2014-000140
Application 11/983,980
example, there is no evidence in the record to suggest that a person of
ordinary skill in the art would not have expected Piscitelli’s anti-ballistic
window assembly to be effective to protect against bomb blasts. Indeed, the
available evidence is to the contrary. Piscitelli indicates its anti-ballistic
window “is penetration-resistant and will protect living subjects from a
range and variety of moving projectiles traveling at speed, and from the
effects of exploding and/or advancing solid fragments moving at high
velocity.” Piscitelli, Abstract; see also id. Tffl 3—5, 43 (Piscitelli’s invention
is directed to the need to protect military combat personnel from
“improvised exploding devices, bombs and other detonated explosives,
shells and grenades”).
Thus, we sustain the rejection of claims 7—10 and 12 as unpatentable
over Mardirossian, Dlubak, and Piscitelli.
C. Obviousness based on Mardirossian, Dlubak, Piscitelli, and Tucker
Concerning the rejection of claim 13, which depends directly from
claim 1 to add a UV-stabilizer in the panel, Appellants assert “Tucker fails
to add the . . . teaching or suggestion” missing from the other prior art
references. Br. 13. The conclusory nature of Appellant’s argument is not
persuasive of Examiner error in relying on Tucker to establish the
obviousness of adding a UV-stabilizer to the blast-resistant panel of
Mardirossian, Dlubak, and Piscitelli. See Final Act. 9. Thus, we sustain the
rejection of claim 13 as unpatentable over Mardirossian, Dlubak, Piscitelli,
and Tucker.
D. Obviousness based on Mardirossian, Dlubak, and Park
Concerning the rejection of claims 17 and 18, which depend from
claim 1 to add an adhesive bonding at least two polycarbonate sheets to each
10
Appeal 2014-000140
Application 11/983,980
other, Appellants assert “Park fails to add the . . . teaching or suggestion”
missing from the other prior art references. Br. 14. The conclusory nature
of Appellants’ argument is not persuasive of Examiner error in relying on
Park to establish the obviousness of using an adhesive to bond the blast-
resistant panels of Mardirossian and Dlubak. See Final Act. 9—10. Thus, we
sustain the rejection of claims 17 and 18 as unpatentable over Mardirossian,
Dlubak, and Park.
DECISION
The Examiner’s decision to reject claims 1—18 and 20—25 is affirmed.
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)(iv).
AFFIRMED
11