Ex parte Rysgaard

Board of Patent Appeals and Interferences

May 11, 1999

08161650 (B.P.A.I. May. 11, 1999)

Application for patent filed December 2, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS A. RYSGAARD
____________
Appeal No. 97-3007
Application No. 08/161,6501
____________
ON BRIEF
____________
Before CALVERT, COHEN, and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 16, 19 through 21, which are all of the
claims pending in this application. Claims 1 through 15, 17,
18 and 22-27 have been canceled.
The appellant's invention relates to a method of
manufacturing a structural support member. An understanding
Appeal No. 97-3007 Page 2
Application No. 08/161650
of the invention can be derived from a reading of exemplary
claim 16, which appears in the appendix to the appellant's
brief.
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Randolph Re. 25,241 Sep. 11,
1962
Burton 3,475,768 Nov. 4,
1969
Medler 3,574,104 Apr. 6,
1971
Allen 3,610,563 Oct. 5,
1971
(‘563)
Burkholz et al. 3,766,573 Oct. 23,
1973
(Burkholz)
Porter 4,275,534 Jun. 30,
1981
Walter 4,642,962 Feb. 17,
1987
Fondiller 4,678,157 Jul. 7,
1987
Hale 4,746,471 May 24,
1988
Allen 4,838,292 Jun. 13,
1989
(‘292)
Plantier 4,885,879 Dec. 12,
1989
Santosuosso 4,901,484 Feb. 20,
1990
Appeal No. 97-3007 Page 3
Application No. 08/161650
The examiner’s answer has included claim 17 in several of the rejections,2
however, claim 17 has been canceled. As such, we will not address the examiner’s
rejections of claim 17.
Kittaka et al. 5,221,391 Jun. 22,
1993
(Kittaka) (filed Feb. 9,
1990)
The rejections
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Medler in view of any of Randolph or
Allen’563 or Kittaka or Hale or Fondiller.
Claims 19 through 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Medler in view of Randolph or
Allen’563 or Kittaka or Hale or Fondiller as applied to claims
16 above, and further in view of Burkholz.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Medler in view of any of Randolph or
Allen’563 or Kittaka or Hale or Fondiller as applied to claim
16 above, and further in view of any of Burton or Allen’292 or
Walter or Porter.2
Claims 19 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Medler in view of any of Randolph or
Allen’563 or Kittaka or Hale or Fondiller as applied to claim
Appeal No. 97-3007 Page 4
Application No. 08/161650
16 above, and further in view of either of Plantier or
Santosuosso.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 18, mailed March 17, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 16, filed July 24, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We turn first the examiner’s rejections of claim 16 under
35 U.S.C. § 103 as being unpatentable over Medler in view of
Randolph or Allen’563 or Kittaka or Hale or Fondiller. We
initially note that in rejecting claims under 35 U.S.C. § 103,
Appeal No. 97-3007 Page 5
Application No. 08/161650
the examiner bears the initial burden of presenting a prima
facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie
case of obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on § 103 must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of
the invention from the prior art. The examiner may not,
because of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction
Appeal No. 97-3007 Page 6
Application No. 08/161650
to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968). Our reviewing
court has repeatedly cautioned against employing hindsight by
using the appellant's disclosure as a blueprint to reconstruct
the claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
In the instant case, the examiner found that Medler
teaches forming a structural tube by layering FRP (fiber-
reinforced plastic) around a mandrel or support. The examiner
relies on Randolph, Allen’563, Kittaka, Hale or Fondiller for
teaching utilizing an inflatable bladder as a mandrel.
The examiner concludes:
To have utilized an inflatable bladder as a
mandrel to form the initial support for the
Medler structural tube, with the inflatable
mandrel subsequently being removed upon
hardening of the tube, thus allowing for
easy removal of the support or mandrel, as
is desired by Medler, would have been an
obvious expedient to one of ordinary skill
in the art as taught by any of Randolph, at
30, or Allen’563, at 32, or Kittaka et al.,
at 10, or Hale, at 18, 60, or Fondiller, at
Appeal No. 97-3007 Page 7
Application No. 08/161650
202, 208, for example. [examiner’s answer
at page 4]
Randolph discloses a method of impregrating glass fiber
articles in which a loose mat of fiber 10 is wound on a core
11 and inserted into a mold casing 12 (Col. 2, lines 52-56).
After insertion, the core is removed and a flexible envelope
or bladder is inserted and inflated (Col. 3, lines 73-Col. 4
line 4). After inflation of the bladder, the resin is
introduced and the bladder is inflated further to exert
further pressure (Col 4, lines 39-42). The mold is then
heated to cure the resin (Col. 4, line 72-Col. 5, line 1).
The bladder is then deflated and removed (Col. 5, line 6).
Similarly, Allen ’563 discloses a method of forming
fiber-reinforced plastic articles in which a fiber matting is
laid in a casing and a fiber preform is inserted (Col. 2,
lines 56-66). An inflation tube or bladder is inserted and
inflated (Col. 2, line 72-Col. 3, line 11). The inflation of
the bladder is enough to compact the fiber (Col. 3, lines 9-
11). Resin is then introduced and cured by heat, catalyst or
the like. The bag is then deflated and removed (Col. 3, lines
32-34).
Appeal No. 97-3007 Page 8
Application No. 08/161650
Kittaka discloses a process for forming a pipe in which a
preform is heated and placed in a mold, and a bladder is
placed into the preform and inflated. After inflation, resin
is injected and cured. The bag is then deflated and removed.
As detailed above, Randolph, Allen’563, and Kittaka each
disclose the use of an inflatable bladder in a method that
includes the steps of placing material to be compressed or
compacted within an outer mold, placing an uninflated bladder
within the mold and inflating the bladder so that the material
to be compacted is pressed against the inside of the mold.
These references do not disclose teach or suggest this use of
inflatable bladders as mandrels around which material is
wrapped. As such, we find no suggestion in Randolph,
Allen’563 or Kittaka to modify the method disclosed in Medler
in the manner proposed by the examiner. As such we will not
sustain the examiner’s rejections of claim 16 as unpatentable
over Medler in view of Randolph, or Allen’563 or Kittaka.
In regard to the rejection of claim 16 under 35 U.S.C.
§ 103 as being unpatentable over Medler in view of Hale, we
note that Hale discloses the use of an inflatable bladder to
Appeal No. 97-3007 Page 9
Application No. 08/161650
form a concrete structure. Cement is sprayed on the
inflatable bladder, which has a wire mesh disposed thereon,
and allowed to cure (Col. 5, lines 53-60). Hale does not
disclose, suggest or teach that the inflatable bladder can be
used as a mandrel to form glass fiber tubes as disclosed in
Medler. As such, we find no suggestion to combine the
teachings of Hale and Medler and therefore, we will not
sustain the examiner’s rejection of claim 16 under 35 U.S.C. §
103 as unpatentable over Medler in view of Hale.
We turn next to the examiner’s rejection of claim 16
under 35 U.S.C. § 103 as being unpatentable over Medler in
view of Fondiller. Fondiller discloses a method in which
building material is sprayed on an inflatable form to
construct a building structure (Col. 7, lines 59-68).
Fondiller does not disclose, teach or suggest that the method
disclosed therein can be used to form glass fiber rods as are
formed in Medler. As such, we find no suggestion to combine
the teachings of Medler and Fondiller. Therefore, we will not
sustain this rejection.
We have reviewed the disclosures of Burkholz, Burton,
Allen’292, Walter, Porter, Plantier and Santosuosso and have
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Application No. 08/161650
determined that the disclosures of these references do not
cure the deficiencies noted above for the combination of
Medler and
one of Randolph, Allen’563, Kittaka, Hale or Fondiller. As
such, we will not sustain the remaining rejections of the
examiner. The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Appeal No. 97-3007 Page 11
Application No. 08/161650
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC/kis
Janet P. Schafer
651 Driftwood Court
New Brighton, MN 55112
APPEAL NO. 97-3007 - JUDGE
CRAWFORD
APPLICATION NO. 08/161650
APJ CRAWFORD
APJ CALVERT
APJ COHEN
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 27 Jul 00
FINAL TYPED: