Ex Parte Sheu et al

Board of Patent Appeals and Interferences

May 30, 2007

10243796 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHI HSIEN SHEU, DENISE M. SHIMAZU,
and DAVID MICHAEL KANE
____________

Appeal 2007-0407
Application 10/243,796
Technology Center 1700
____________

Decided: May 30, 2007
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-38. We have jurisdiction under 35 U.S.C. § 6.

Appeal 2007-0407
Application 10/243,796

Appellants’ invention relates to a co-cured vacuum assisted resin
transfer molding manufacturing method. Representative independent claim
1, as presented in the Brief, appears below:
1. A co-cured vacuum-assisted resin transfer molding manufacturing
method, comprising;

providing a tool base;

disposing a prepreg skin panel outwardly from the tool base;

disposing one or more tooling details outwardly from the prepreg
skin panel;

disposing one or more preforms proximate the one or more tooling
details, the one or more preforms being either dry or binderized;

disposing a high permeability medium between the one or more
tooling details and the one or more preforms;

enclosing the prepreg skin panel, the one or more tooling details,
the one or more preforms, and the high permeability medium with at least
one vacuum bag;

pulling a vacuum on the vacuum bag;

infusing the one or more preforms with a resin; and

curing the one or more preforms and the prepeg skin panel.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Palmer ...................................... US 4,942,013 Jul. 17, 1990
Waldrop, III............................... US 2002/0022422 A1 Feb. 21, 2002
McKague, Jr. ............................. US 2003/0051434 A1 Mar. 20, 2003
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Appeal 2007-0407
Application 10/243,796

Claims 1, 2, 6-17, and 21-30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Waldrop in view of Palmer; claims 3-5, 18-20, and 31-
38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Waldrop in
view of Palmer and McKague; and claims 1-38 stand rejected under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 1-17 of U.S. Patent Application No. 10/153,301 in
view of Waldrop.

The § 103 Rejections
The issue presented for review is as follows:
Has the Examiner demonstrated that a person having ordinary skill in the
art would have been led to place a resin distribution plate position
between the mold tool and the fiber preform in the process of Waldrop
within the meaning of 35 U.S.C. § 103?
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007) quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
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Appeal 2007-0407
Application 10/243,796

Cir. 2006); see also DyStar Textilfarben GmBH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006)(“The motivation need not be found in the references sought to be
combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself.”); In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
In re Hoeschele, 406 F.2d 1403, 1406-07, 160 USPQ 809, 811-812 (CCPA
1969) (“[I]t is proper to take into account not only specific teachings of the
references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom...”). The analysis supporting
obviousness, however, should be made explicit and should “identify a reason
that would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR, 127 S.Ct. at 1731, 81 USPQ2d at
1389.
As evidence of obviousness of the claimed subject matter under § 103,
the Examiner has primarily relied on the disclosures of Waldrop and Palmer
(Answer 6-10). The Examiner has found at page 6 of the Answer that
Waldrop teaches a resin transfer molding process that includes providing a
fiber reinforced panel on a tool. The Examiner cited various components
from the figures of Waldrop. However, the Examiner did not cite to portions
of the reference narrative disclosure. The Examiner has recognized that
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Appeal 2007-0407
Application 10/243,796

Waldrop does not teach employing a resin distribution plate position
between the mold tool and the fiber preform as required by independent
claims 1, 16, and 31 (Answer 6-10).
To remedy this deficiency, the Examiner has referred to the
disclosures of Palmer.1 The Examiner has found that Palmer teaches a
vacuum resonant fusion molding process that includes a resin distribution
plate (id). It appears to be the Examiner’s position that these findings would
have led one of ordinary skill in the art to place a resin distribution plate
position between the mold tool and the fiber preform in the process of
Waldrop (Answer 7). The Appellants do not agree with this position (Br. 5-
13).
The dispositive question is, therefore, whether the Examiner has
demonstrated that a person having ordinary skill in the art would have been
led to place a resin distribution plate position between the mold tool and the
fiber preform in the process of Waldrop within the meaning of 35 U.S.C.
§ 103. On this record, we answer this question in the negative.
Waldrop describes a vacuum assisted resin transfer molding process
(Waldrop 0032). Waldrop discloses that the resin is infused into the
molding preform by using vacuum pressure that causes the resin to travel
from one side of the preform to the opposite side where excess resin is
recovered (see Figure 1 and Waldrop 0188-0191). The Examiner has not
adequately explained how a resin distribution plate could have been
incorporated into the apparatus of Waldrop. The Examiner has not

1 The Examiner did not rely upon the teachings of McKague for remedying
the identified deficiency in the Waldrop reference.
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Appeal 2007-0407
Application 10/243,796

identified how the caul plate of Palmer would function in conjunction with
the other components such as the peel ply material (59) and the flow media
(60) described and Waldrop. The Examiner has failed to specifically
identify the portions of the Waldrop reference that the caul plate of Palmer
would have replaced. Furthermore, Appellants contend that Waldrop is
directed to a slow resin and fusion process while the Palmer reference is
directed towards rapid resin flow and the caul plate of Palmer is a rigid
structure and not suitable for application between a tooling detail and a
preform (Br. 6; Reply Br. 5). The Examiner has failed to explain why a
rigid material suitable for rapid resin flow would have been suitable for use
in the invention of Waldrop. Thus, contrary to the Examiner’s contentions
in the Answer, we determine that a person having ordinary skill in the
relevant art would not have been led to the claimed subject matter within the
meaning of 35 U.S.C. § 103. The Examiner’s §103 rejection is reversed.

The Double Patenting Rejection
Claims 1-38 stand rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-17 of U.S.
Patent Application No. 10/153,301 in view of Waldrop. We affirm.
Appellants do not explain the reasons why the appealed claims are
patentably indistinct from the claims of Application No. 10/153,301
Appellants only state that “Appellant proposes filing a terminal disclaimer in
compliance with 37 C.F.R. §1.321(b), or otherwise addressing this
obviousness-type double patenting rejection, if this rejection still stands
upon issuance of a Notice of Allowability in the present case or in U.S.
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Appeal 2007-0407
Application 10/243,796

Patent Application No. 10/153,301” (Br. 5). It is not the function of this
Board to examine the claims in greater detail than argued by Appellants. In
re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”); see also 37 C.F.R. § 41.37(c)(1)(vii)(2006).
We affirm the stated rejection because Appellants have failed to explain the
reasons they believe that the rejection is inappropriate.

ORDER
The rejection of claims 1, 2, 6-17, and 21-30 under 35 U.S.C. § 103(a)
as unpatentable over Waldrop in view of Palmer, and of claims 3-5, 18-20,
and 31-38 under 35 U.S.C. § 103(a) as unpatentable over Waldrop in view
of Palmer and McKague have been reversed.
The rejection of claims 1-38 under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-17 of U.S.
Patent Application No. 10/153,301 in view of Waldrop has been affirmed.

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Appeal 2007-0407
Application 10/243,796

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)(iv).

AFFIRMED

A
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