Ex Parte Ruskin

Patent Trial and Appeal Board

Dec 6, 2016

12801742 (P.T.A.B. Dec. 6, 2016)

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.
12/801,742 06/23/2010 Edward Ruskin SCS-5065-79 6554
23117 7590 12/08/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD RUSKIN
Appeal 2015-000961
Application 12/801,742
Technology Center 1700
Before BRADLEY R. GARRIS, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 1—10 and
17—26. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
November 26, 2013 (“Final Act.”), the Appeal Brief dated April 21, 2014
(“App. Br.”), the Examiner’s Answer to the Appeal Brief dated August 13,
2014 (“Ans.”), and the Appellant’s Reply Brief dated October 14, 2014
(“Reply Br.”).
2 Appellant identifies Airbus Operations Limited as the Real Party in
Interest. App. Br. 4.
Appeal 2015-000961
Application 12/801,742
The Claimed Invention
Appellant’s disclosure relates to a composite component comprising a
co-cured stack of composite laminate plies, which is said to be less
susceptible to edge glow. Spec. 1; Abstract. Claim 1 is representative of the
claims on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 21) (key disputed limitations italicized):
1. An assembly comprising a first component and a second
component, said first component having a lateral extent
comprising a co-cured stack of composite laminate plies, said
first component is joined to said second component along a
common surface, wherein the lateral extent of said first
component is an edge free of laterally facing cut ply edges, and
wherein at least one of the plies is turned to abut said common
surface.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Nodaetal. US 2003/0062653 A1 Apr. 3, 2003
(hereinafter “Noda”)
Hansen US 2006/0280613 A1 Dec. 14, 2006
K. He et al., The study of tapered laminated composite structures: a
review, 60 Composites Science and Technology 2643—2657 (2000)
(hereinafter “He”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—4, 7, 8, 17—20, 23, and 24 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by He. Ans. 2; Final Act. 2.
2. Claims 5 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over He. Ans. 3; Final Act. 4.
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3. Claims 6 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over He, as applied above, in view of Hansen. Ans. 4; Final
Act. 4.
4. Claims 9, 10, 25, and 26 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over He, as applied above, in view of Noda. Ans. 4;
Final Act. 5.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own.
Nevertheless, we highlight and address specific findings and arguments for
emphasis as follows.
Rejection 1
Appellant argues independent claims 1 and 17 as a group and does not
present argument for the separate patentability of dependent claims 2—10 and
18—26. We, therefore, select claim 1 as representative and the remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that He teaches a composite laminate structure
satisfying all of claim 1 ’s limitations and concludes that the reference
anticipates claim 1. Ans. 2, 3 (citing He, Abstract, part (b) of Fig. 5).
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner has failed to establish a prima facie case of
anticipation under § 102. App. Br. 9, 15. In particular, Appellant argues
that the Examiner has failed to establish that He teaches the following
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limitations of claim 1: (1) “an edge free of laterally facing cut ply edges”;
(2) “at least one of the plies is turned to abut said common surface”; and (3)
“said first component having a lateral extent comprising a co-cured stack of
composite laminate plies.”3 Id. at 10—14.
Appellant further argues that this rejection should be reversed because
“[t]he Examiner fails to appreciate that He et al has no recognition of the
‘edge glow’ problem solved by Applicant’s claimed invention” and that
“there would be no reason or motivation to . . . solve this unrecognized
problem.” App. Br. 15 (emphasis omitted).
We are not persuaded by Appellant’s arguments. To serve as an
anticipatory reference, “the reference must disclose each and every element
of the claimed invention, whether it does so explicitly or inherently.” In re
Cleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Based on the record before us, we are persuaded that the Examiner’s
finding that He teaches all of claim 1 ’s limitations and conclusion that He
anticipates claim 1 are supported by a preponderance of the evidence. He,
Abstract, Figs. 1 and 5, p. 2643.
As the Examiner found (Ans. 2, 3, 6) and contrary to Appellant’s
argument, He does teach a composite laminate structure having “an edge
free of laterally facing cut ply edges” and that “at least one of the plies is
turned to abut said common surface.” In particular, He’s Figure 5(b) depicts
a laminate structure having a first component in which the ply edges are
tapered downward such that they are abutting the common surface shared by
the first and second component and are not facing laterally, which reads on
3 We note that the limitations argued by Appellant appear only in claim 1.
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claim 1 and corresponds to Figures 3 and 5 of the Specification. Appellant’s
argument exposes no reversible error in the Examiner’s analysis and factual
findings in this regard.
Appellant’s contention that “[e]ach of He’s horizontal plies has a cut
edge which faces laterally” (App. Br. 11) is unpersuasive because it is
unsupported by the evidence. According to the evidence, each of He’s ply
edges does not face laterally. He, Fig. 5(b), Abstract. Rather, as the
Examiner found (Ans. 2, 3, 6) and previously discussed above, He’s ply
edges are actually tapered downward to abut the common surface. Id.
Appellant’s contention that He “does not disclose the negative
limitation set out in claim 1” and “in fact teaches the opposite” (App. Br. 11)
is equally unpersuasive because it is conclusory and, without more,
insufficient to establish reversible error in the Examiner’s findings and
analysis in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
We do not find Appellant’s argument that He does not disclose a “co­
cured stack of composite laminate plies” (App. Br. 13) persuasive for the
well-stated reasons provided by the Examiner at page 7 of the Appeal Brief.
In particular, we agree with the Examiner’s finding (Ans. 7) that He
discloses a composite that it is made of up multiple laminate plies that are
cured together. He, Fig. 5. We also agree with the Examiner’s finding,
which Appellant does not meaningfully rebut in the appeal briefing, that the
recitation “co-cured” in claim 1 is a product-by-process limitation and thus,
is not further limiting insofar as the structure of the claimed laminate. In re
Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985).
Appellant’s argument that He does not recognize the “‘edge glow’
problem solved by Applicant’s claimed invention” (App. Br. 15) is
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misplaced because a reference “may be directed to an entirely different
problem from the one addressed by the inventor, yet the reference will still
anticipate if it explicitly or inherently discloses every limitation recited in
the claims.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Moreover, He directly relates to the field of and expressly discloses
laminate composites for use in “aircraft-wing” applications, which is the
same field as Appellant’s claimed invention. See He, p. 2643 (disclosing the
“increasing use of the tapered composites in commercial and military
aircraft applications), (disclosing that “[ojther applications include
composite aircraft-wing skins, helicopter flexbeams, flywheels, etc.”), Fig 1.
(depicting “commercial composite” used in helicopter “rotor-blade yoke
assembly”); Spec. 1 (“Figure 1 is a schematic cross-sectional view through
and aircraft wing box.”), Figs. 1—5 (depicting laminate structure of aircraft
wing box assembly and components).
Accordingly, we affirm the Examiner’s rejection of claims 1—4, 7, 8,
17—19, 20, 23, and 24 under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by He.
Rejections 2, 3, and 4
Appellant does not present separate arguments in response to the
Examiner’s Rejections 2, 3, and 4, stated above. Rather, Appellant repeats
and incorporates by reference the same arguments presented above in
response to Rejection 1, stating that:
Each of these obviousness rejections incorporates He et al.
as the primary reference and therefore the above comments
distinguishing the He reference from independent claims 1
and 17, from which the above claims depend, are herein
incorporated by reference.
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App. Br. 16. Accordingly, we do not find Appellant’s argument in this
regard persuasive for the same reasons discussed above in affirming the
Examiner’s Rejection 1.
Appellant further argues that Rejections 2, 3, and 4 should be reversed
because: (1) “[t]he Examiner does not show that either He by itself or in
combination with Hansen and/or Noda discloses the above claimed features
in independent claim 1”; (2) “the Examiner fails to provide any evidence to
establish that He et al. either taken by itself or in combination with the
secondary references teaches all of the limitations of Appellant’s
independent claims 1 and 17 or the claims dependent thereon”; and (3)
“[t]he Examiner fails to provide any ‘analysis’ of reasons for combining the
references.” App. Br. 16, 17 (emphasis omitted).
We do not find these arguments persuasive because they are
conclusory and naked assertions that the prior art fails to teach or suggest a
claim’s limitations which are not arguments in support of separate
patentability. Cf. In re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir. 2011); see
also 37 C.F.R. § 41.37(c)(l)(iv).
Moreover, we find that a preponderance of the evidence and sound
technical reasoning supports the Examiner’s findings (Ans. 3—5) regarding
the teachings of the prior art and stated reasoning for why one of ordinary
skill in the art would have combined these teachings to arrive at the claimed
invention. He, Figs. 1, 5; Hansen, Abstract; Noda^f 4, 10, 11; Ans. 4
(explaining that one of ordinary skill in the art would have combined He’s
and Hansen’s teachings to “improve the product’s lightning resistance”);
Ans. 5 (explaining that one of ordinary skill would have combined He’s and
Noda’s teachings because “doing so would improve the robustness of the
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product” and “Noda explicitly teaches that such aviation parts may be made
from laminate composite[s] like those of He”). Appellant’s arguments
reveal no reversible error in the Examiner’s analysis and findings in this
regard.
Appellant’s teaching away arguments (App. Br. 18, 19) are
unpersuasive because Appellant does not identify sufficient evidence to
support them, and we will not read into the references a teaching away
where no such language exists. Cf. DyStar Textilfarben GmbHv. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006); In re Fulton, 391 F.3d
1195, 1201 (finding that there is no teaching away where the prior art’s
disclosure “does not criticize, discredit, or otherwise discourage the solution
claimed”).
Appellant’s assertions that “He teaches away from any possible edge
being ‘free of laterally facing cut ply edges[]’” and “clearly leads one of
ordinary skill in the art away from the claimed invention,” (App. Br. 19),
without more, are conclusory and insufficient to establish that the reference
teaches away from the claimed invention. De Blauwe, 736 F.2d at 705 (Fed.
Cir. 1984).
Accordingly, we affirm the Examiner’s Rejections 2, 3, and 4 stated
above.
DECISION/ORDER
The Examiner’s rejections of claims 1—10 and 17—26 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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