Ex Parte Sherwood

Board of Patent Appeals and Interferences

Dec 24, 2009

10235480 (B.P.A.I. Dec. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENT SHERWOOD
____________

Appeal 2008-005885
Application 10/235,480
Technology Center 1700
____________

Decided: December 24, 2009
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 4, 5, and 17-19. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
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Statement of the Case
Appellant claims a surface-reinforced article 10 comprising a core
assembly 12 which includes: a core of unreinforced foam material 20 and a
first surface region 22 which includes an inner layer of inner fibrous
material; and an outer reinforcing covering 14 which includes an outer layer
of outer fibrous material 32 lying around the core assembly 12 and resin 30
which impregnates the outer reinforcing covering by surrounding the outer
layer fibrous material 32; wherein the outer reinforcing covering 14 has a
greater stiffness per unit volume than the first surface region 22 of the core
assembly 12, and the first surface region 22 of the core assembly 12 has a
greater stiffness per unit volume than the core 20 of unreinforced foam
(claim 1; Figure 8).
Appellant’s claimed article further comprises an embodiment wherein
the inner layer of fibrous material includes coupling fibers 100 with inner
portions 102 surrounded by the foam material and with outer portions 106
that project outside the foam material, and wherein the outer portions of the
coupling fibers are embedded in the resin of the outer covering 14 in order to
securely hold the covering to the core assembly (claim 2; Figures 4, 7).
Finally, Appellant’s claimed article also includes an embodiment
wherein the outer layer of fibrous material of the outer covering 14 consists
of fibers whose average tensile strength is a plurality of times that of the
average strength of the fibers of the inner layer (claim 4).
Representative claims 1, 2, and 4 read as follows:
1. A surface-reinforced article, comprising:
a core assembly which includes a core of
unreinforced foam material and a first surface region which
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includes at least one inner layer of inner fibrous material
impregnated with the same foam material as said core, said
foam material which impregnates said inner layer of fibrous
material being integral with the foam material in said core;
an outer reinforcing covering which includes at least one
outer layer of outer fibrous material lying around said core
assembly and resin which impregnates said outer reinforcing
covering by surrounding said outer layer of fibrous material and
forming a continuous layer, said resin being bound to said core
assembly by molding said resin to said core assembly;
said outer reinforcing covering having a greater stiffness
per unit volume than said first surface region of said core
assembly, and said first surface region of said core assembly
having a greater stiffness per unit volume than said core of
unreinforced foam of said core assembly.
2. The article described in claim 1 wherein:
said inner layer of fibrous material includes multiple
coupling fibers with inner portions surrounded by said foam
material and with outer portions that project outside said foam
material;
said outer portions of said coupling fibers are embedded
in said resin, to thereby securely hold said covering to said core
assembly.
4. The article described in claim 1 wherein:
said outer layer of fibrous material of said outer covering
consists of fibers whose average tensile strength is a plurality of
times that of the average strength of the fibers of said at least
one inner layer, said fibers of said at least one inner layer being
less rigid than the fibers of said outer covering.

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The prior art set forth below is relied upon by the Examiner as
evidence of obviousness:
Smith 3,873,654 Mar. 25, 1975
Sherwood 4,664,974 May 12, 1987

The Examiner rejects all appealed claims under the first paragraph of
35 U.S.C. § 112 as failing to comply with the written description
requirement.
According to the Examiner, the independent claim limitations relating
to “[a] core of unreinforced foam material and relative stiffness of the
individual layers in the surface-reinforced article are not fully supported in
Appellant’s specification” (Ans. 3).
The Examiner also rejects all appealed claims under 35 U.S.C. § 103
as being unpatentable over Smith in view of Sherwood.
The Examiner concludes that “it would have been obvious to one
having ordinary skill in the art at the time the invention was made to
substitute Sherwood’s surface reinforced article for the unreinforced foam
core of Smith motivated by the desire to provide strength to a composite
material without adding significant weight” (Ans. 4).
Issues
Has Appellant shown error in the Examiner’s determination that the
independent claim limitations relating to “unreinforced foam material” and
“greater stiffness” (claims 1, 17) fail to comply with the written description
requirement of § 112?
Has Appellant shown error in the Examiner’s conclusion that it would
have been obvious to substitute Sherwood’s surface reinforced article for the
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unreinforced foam core of Smith, thereby resulting in the article defined by
independent claims 1 and 17?
Has Appellant shown error in the Examiner’s obviousness conclusions
for the dependent claim requirements regarding “coupling fibers” (claims 2,
18) and regarding outer layer fibers having an average tensile strength which
is plural times that of the inner layer fibers (claims 4, 5, 19)?
Findings of Fact
Concerning the § 112 rejection:
Appellant pictorially and narratively discloses a core of foam material
20 having a surface region 22 which includes a layer of fibrous material
(Figs. 4, 7, 8; Spec. 5, ll. 2-22). As shown and described, the core of foam
material 20 is unreinforced in that the reinforcing fibers are depicted and
described only with respect to surface region 22 (id.).
As for the “greater stiffness” limitations of the independent claims,
Appellant teaches that the purpose of the first fibrous material is to
strengthen the surface of the core assembly so it will not deflect under
pressure during resin injection (i.e., during formation of the outer covering)
and that the purpose of the fiber-reinforced resin covering is to “greatly
strengthen” the surface of the final article (Spec. 2, last para.).
Concerning the § 103 rejection:
Appellant acknowledges that the core assembly of the independent
claims corresponds to the surface reinforced article disclosed by Sherwood
and that the outer reinforcing covering of the independent claims
corresponds to the reinforced covering material taught by Smith (App. Br. 4,
para. bridging 6-7).

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Sherwood expressly teaches that providing a core of foam with a
surface which is reinforced by fibers creates a stronger article (Abstract).
Principles of Law
Concerning the § 112 rejection:
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, the applicant was in possession of the claimed invention. Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The drawing alone may be sufficient to satisfy the written description
requirement. Id. at 1564.
Concerning the § 103 rejection:
In assessing the obviousness of claims directed to a combination of
prior art elements, the question to be asked is whether the improvement is
more than the predictable use of the prior art elements according to their
established functions. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Under the correct analysis, any need or problem known in the field of
endeavor at the time of the invention and addressed by the patent application
can provide a reason for combining the elements in the manner claimed. Id.
at 420.
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR v. Teleflex, 550 U.S. at 418.

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Analysis
Concerning the § 112 rejection:
Appellant argues that the independent claim limitation directed to a
core of “unreinforced” foam material is supported by the
Specification and drawing (Reply Br. 1). In this regard, Appellant
specifically refers to page 5 of the Specification and Fig. 8 of the drawing
(id.).
We agree.
As indicated in the findings above, Appellant’s Specification and
drawing describe and depict reinforcing fibers with respect to surface region
22 but not with respect to the core of foam material 20 (see, for example,
Figs. 4, 7). According to the Examiner, “although the Specification does not
positively disclose reinforcing fillers being incorporated into the foam, the
mere absence of a positive recitation is not basis for an exclusion” (Ans. 7).
This truism is not applicable to the facts before us. Here, Appellant’s
express disclosure of reinforcing fibers in surface region 22 in combination
with the absence of any such reinforcing teaching for foam material core 20
would convey to an artisan that core 20 is unreinforced. This determination
is further supported by the fact that Appellant’s drawing depicts foam core
20 as not containing the enforcing fibers whereas the adjacent surface region
22 is depicted as containing such fibers.
As for the “greater stiffness” limitation of the independent claims,
Appellant argues this limitation is descriptively supported by the
Specification teaching that the fibrous materials of the claimed article serve
a strengthening purpose (App. Br. 5).
We agree.
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The Specification teaches that the purpose of the fibrous material in
the surface region is to strengthen the surface of the core assembly and the
purpose of the fiber-reinforced resin covering is to greatly strengthen the
surface of the final article (Spec. 2, last para.). Further, this strengthening
disclosure is expressly related to inhibiting deflection of the core assembly
surface (id.). An artisan would appreciate that an improved ability to resist
deflection would necessarily involve greater stiffness.
For these reasons, the Specification and drawing disclosure would
convey with reasonable clarity to those skilled in the art that, on the
application filing date, Appellant was in possession of the claimed subject
matter including the “unreinforced foam material” and “greater stiffness”
limitations of the independent claims.
Concerning the § 103 rejection:
Appellant argues that an artisan “would not substitute Sherwood’s
surface-reinforced article for the unreinforced foam core of Smith” because
these references contain no teaching or suggestion of the problem addressed
by Appellant involving deflection of the core assembly surface during resin
injection (App. Br. para. bridging 4-5, para. bridging 6-7).
This argument is unpersuasive.
As explained earlier, any need or problem known in the field of
endeavor at the time of the invention and addressed by the patent application
can provide a reason for combining the elements in the manner claimed.
Therefore, nonobviousness is not established simply because Smith and
Sherwood contain no teaching or suggestion of the deflection problem
addressed by Appellant. Furthermore, it is significant that Appellant has
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failed to identify any claim recitation which requires the claimed article to
avoid such a deflecting problem.
According to the Examiner, it would have been obvious to substitute
Sherwood’s surface-reinforced article for the unreinforced foam core Smith
in order to provide strength (Ans. para. bridging 3-4). This is one of the
purposes served by the use of fibrous material in the core assembly and in
the outer reinforcing covering of Appellant’s claimed article (Spec. 2, last
para.). Appellant argues that an artisan would not have combined the
applied references in order to obtain strength because “[t]he extra strength
added by the fibers in the surface region of the primarily foam core, to an
article with an outer covering of fibers impregnated by resin, would appear
negligible” (Reply Br. para. bridging 1-2).
This argument lacks convincing merit for two reasons. First, the
argument that the extra strength “would appear negligible” (id.) is
unsupported by evidence. Second, this argument is contradicted by
Sherwood’s express disclosure that a core of foam having a surface
reinforced by fibers creates a stronger article (Abstract).
Under these circumstances, Appellant’s arguments do not reveal error
in the Examiner’s rejection of independent claims 1 and 17.1, 2

1 In the Appeal and Reply Briefs, Appellant has failed to contest with any
reasonable specificity the Examiner’s position that the stiffness requirements
of the independent claims would be inherently present in the article resulting
from the proposed combination of Smith and Sherwood (Ans. 5, first para.).

2 We observe that Appellant’s Appeal Brief includes an attached copy of a
Declaration by William Kramer. In the record before us, this Declaration is
not relied upon as evidence rebutting the Examiner’s § 103 rejection. Rather
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Appellant also argues that the applied references contain no teaching
or suggestion of the dependent claim limitations regarding “coupling fibers”
(claims 2, 18) and regarding outer covering fibers having an average tensile
strength which is plural times that of the inner layer fibers (claims 4, 5, 19)
(App. Br. 4, 6, 7).
We agree.
The Examiner has identified no teaching in Sherwood that reinforcing
fibers protrude from the foam core surface and therefore would be capable
of performing the coupling-fibers function recited in dependent claims 2 and
18. We acknowledge the Examiner’s reference to the paragraph bridging
columns 4 and 5 of Sherwood as disclosing a textured surface (Ans. para.
bridging 7-8). However, nothing in this disclosure suggests that the textured
surface is provided by protruding fibers. To the contrary, it appears from
this disclosure and Figure 6 of Sherwood that the textured surface 54 is
created by tissue paper layer 46 rather than protruding fibers.
Similarly, the Examiner has identified no disclosure in the applied
references which teaches or would have suggested that the reinforcing fibers
of Smith’s outer covering possess an average tensile strength which is plural
times that of the reinforcing fibers on the surface of the foam core. As
support for an obviousness conclusion with respect to this claim feature, the
Examiner states that the fibers used by Appellant appear to be the same as
the fibers used by Smith and Sherwood (Ans. 8, first full para.). However
the Examiner does not support this statement with any the evidence that the

the Declaration is mentioned only in discussing the circumstances which led
to the Examiner’s § 112 rejection (App. Br. 5, second full para.).
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average tensile strength of Smith’s fibers are plural times that of Sherwood’s
fibers as required by dependent claims 4, 5, and 19.
Conclusions of Law
Appellant has shown error in the Examiner’s determination that the
independent claim limitations relating to “unreinforced foam material” and
“greater stiffness” (claims 1, 17) fail to comply with the written description
requirement of § 112.
It follows that we cannot sustain the Examiner’s § 112, first
paragraph, rejection of all appealed claims.
Appellant has not shown error in the Examiner’s conclusion that it
would have been obvious to substitute Sherwood’s surface reinforced article
for the unreinforced foam core of Smith, thereby resulting in the article
defined by independent claims 1 and 17.
Therefore, we sustain the Examiner’s § 103 rejection of independent
claims 1 and 17 as being unpatentable over Smith in view of Sherwood.
Appellant has shown error in the Examiner’s obviousness conclusions
for the dependent claim requirements regarding “coupling fibers” (claims 2,
18) and regarding outer layer fibers having an average tensile strength which
is plural times that of the inner layer fibers (claims 4, 5, 19).
For this reason, we cannot sustain the Examiner’s § 103 rejection of
claims 2, 4, 5, 18, and 19 as being unpatentable over Smith in view of
Sherwood.
Order
The decision of the Examiner is affirmed-in-part.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37.C.R.F. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

kmm

LEON D. ROSEN
FREILICH, HORNBAKER & ROSEN
SUITE 1220
10960 WILSHIRE BLVD.
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