Ex Parte Smith

Board of Patent Appeals and Interferences

Sep 5, 2003

09568616 (B.P.A.I. Sep. 5, 2003)

1 In rendering our decision, we have considered Appellant’s arguments presented in the Brief,
filed July 31, 2002.
2 The after final amendment to claim 25 has been entered by the Examiner. (Answer, p. 2).
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES R. SMITH
____________
Appeal No. 2003-0574
Application No. 09/568,616
____________
ON BRIEF
____________
Before KIMLIN, JEFFREY T. SMITH and MOORE, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicant appeals the decision of the Primary Examiner finally rejecting claims
11-17 and 19-27.1,2 We have jurisdiction under 35 U.S.C. § 134.
Appeal No. 2003-0574
Application No. 09/568,616
-2-
CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following references:
Murray et al. (Murray) 4,698,247 Oct. 06, 1987
Miller 5,387,451 Feb. 07, 1995
Smith 6,203,924 Mar. 20, 2001
The Examiner has rejected claims 13, 14, 20, 22, 23 and 27 as unpatentable under
35 U.S.C. § 112, second paragraph, as being indefinite; claims 11 to 14, 19 and 21 to 23
as unpatentable under 35 U.S.C. § 102 (b) as anticipated by Murray; claims 11, 12, 15-17,
19-21 and 24-26 as unpatentable under 35 U.S.C. § 103(a) as obvious over Miller; and
claims 13, 14, 20, 22, 23 and 27 as unpatentable under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 9 of Smith. (Answer, pp. 4 to 7).
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellant concerning the above-noted rejections, we refer to the Answer and the Brief.
DISCUSSION
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in support
of their respective positions. This review leads us to conclude that the Examiner’s §§
112, 102 and double patenting rejections are not well founded. We also conclude that the
Appeal No. 2003-0574
Application No. 09/568,616
-3-
Examiner’s § 103 rejection of claims 13, 14, 20, 22, 23 and 27 is not well founded.
However, we affirm the Examiner’s § 103 rejection of claims 11, 12, 15-17, 19, 21, 24-
26. Our reasons appear below.
Appellant’s invention is directed to a lightweight flywheel containment composed
of a combination of three layers of various material which absorb the energy of a flywheel
during structural failure. The various layers of material act as a vacuum barrier,
momentum spreader, energy absorber, and reaction plate. (Specification, p. 5). Claim 11,
which is representative of the claimed invention, appears below:
11. A lightweight containment for flywheels consisting of:
three radially positioned layers of material constructed to enclose a
flywheel;
each of said layers of material being in contact with an adjacent layer and
composed of a different material.
I. The Rejection under Section 112, ¶2
The Examiner must demonstrate that the claims do not “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), emphasis added. The purpose
of the second paragraph of Section 112 is to basically insure an adequate notification of
Appeal No. 2003-0574
Application No. 09/568,616
-4-
the metes and bounds of what is being claimed. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
The Examiner has rejected claims 13, 14, 20, 22, 23 and 27 under 35 U.S.C.
§ 112, second paragraph as indefinite.
According to the Examiner, the claims are indefinite because “[i]t is not clear
whether the claims are directed to a containment structure per se, as stated in the
preamble of claim 13, or to the combination of a containment structure and flywheel as
implied in the last two lines of claim 13 where the impedance matching material is
defined as being between the flywheel and the three containment layers. Similarly, claim
22 implies that a flywheel is being claimed in combination with the containment structure
in view of the term ‘and an associated flywheel’ yet the preamble is directed to a
containment structure per se.” (Final Rejection, paper no. 18, p. 2).
We determine that the Examiner has not met the initial burden by failing to present
convincing reasons why one of ordinary skill in the art would not be appraised of the
scope of the claims on appeal. The subject matter of claims 13 and 22 is directed to a
containment structure. We find that the disputed language of claims 13 and 22 defines
the location of a layer that has impedance matching characteristics relative to the flywheel
that is being contained by the claimed invention and not the flywheel per se. We
Appeal No. 2003-0574
Application No. 09/568,616
-5-
therefore conclude that the claims provide adequate notification of the metes and bounds
of the claimed subject matter.
For the foregoing reasons and those set forth in the Brief, the rejection under 35
U.S.C. § 112, second paragraph, is reversed.
II. The Rejection under Section 102
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in support
of their respective positions. This review leads us to conclude that the rejection of claims
1, 3, 5 to 7 and 9 to 20 are not well founded. Our reasons appear below. We will limit
our discussion to the independent claims, i.e., claims 11, 13 and 21.
Murray describes a multiple layer packaging sheet material capable of holding
caynoacrylate-type products and having barrier properties to the passage of matter
through the sheet material. (Col. 1). According to the Examiner, “Figures 1 and 2 show
three and four layer structures respectively with all the layers in contact with adjacent
layers and being formed of different materials.” (Final Rejection, paper no. 18, p. 3).
Anticipation under § 102 requires that the identical invention that is claimed was
previously known to others and thus is not new. Scripps Clinic & Research Foundation
v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991);
Appeal No. 2003-0574
Application No. 09/568,616
-6-
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780, 227 USPQ 773, 777-78
(Fed. Cir. 1985); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick
Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Murray does not
disclose his invention is constructed for containment of flywheels. The Examiner has
therefore not adequately disclosed why it is believed that a sheet material of Murray is the
same as the claimed containment for a flywheel of claims 11, 13 and 21. Consequently,
the rejection under 35 U.S.C. § 102 is reversed.
III. The Rejection under Section 103
The Examiner rejected claims 11, 12, 15-17, 19-21 and 24-26 as unpatentable
under 35 U.S.C. § 103(a) as obvious over Miller.
Appellant states that the claims on appeal should not stand or fall together. (Brief,
p. 6). We will consider the claims separately only to the extent that separate arguments
are of record in this appeal. See In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d
1462, 1465 (Fed. Cir. 2002) (“If the brief fails to meet either requirement, the Board is
free to select a single claim from each group of claims subject to a common ground of
rejection as representative of all claims in that group and to decide the appeal of that
rejection based solely on the selected representative claim.”).
Appeal No. 2003-0574
Application No. 09/568,616
-7-
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in support
of their respective positions.
Miller describes a lightweight, flywheel containment device that captures dust and
dissipates a significant amount of energy if the flywheel fails. (Col. 1). Miller’s flywheel
containment device 2, shown in figures 1-3, includes a flywheel 6 and an annular shaped
honeycomb structure 8. The honeycomb structure 8 enables the flywheel containment
device 2 to capture dust and dissipate energy into material strain rather than heat if the
flywheel 6 fails. (Col. 2, ll. 18 to 27). Miller discloses the flywheel 6 may be made of any
material conventionally used in flywheel fabrication including a resin matrix composite.
The honeycomb structure 8 includes an annular shaped honeycomb layer 10 having a
plurality of pores 11 that are open on the inner diameter of the honeycomb layer 10 to trap
dust created if a small portion of the flywheel 6 fails. (Col. 2, ll. 39 to 46). The
honeycomb layer 10 may be a deformable polymeric material or a metal such as steel,
brass and aluminum. (Col. 2, l. 63 to col. 3, l. 2).
Miller discloses the honeycomb structure 8 may comprise an additional metal layer
12, such as steel, that may be positioned around the outer diameter of the honeycomb
layer 10. (Col. 3, ll. 30 to 37). The metal layer 12 spreads the load of debris impacting
Appeal No. 2003-0574
Application No. 09/568,616
-8-
the honeycomb layer 10 to a second honeycomb layer 14. (Col. 3, ll. 37 to 40). The
second honeycomb layer 14 is positioned around the metal layer 12. The second
honeycomb layer 14 comprises a plurality of pores that absorb energy by deforming if the
flywheel 6 fails. (Col. 3, ll. 49 to 51). The second honeycomb layer 14 may be a
deformable polymeric material or an expanded metal such as aluminum, brass or steel.
(Col. 3, ll. 64 to 67).
The device 2 also includes a containment vessel 18 for supporting the honeycomb
structure 8. (Col. 4, ll. 25 to 29). The containment vessel 18 may be a composite or a
metal such as steel. Miller discloses when the vessel is a composite, composites such as
metal matrix composites are suitable, but resin matrix composites are preferred. (Col. 4,
ll. 34 to 36).
Miller’s containment device describes that the inner structural layer 12, the energy
absorbing layer 14 and the outer structural layer 18 can be formed of different materials.
We therefore conclude that the subject matter of claims 11, 12, 15-17, 19, 21, 24 and 25
would have been obvious to a person of ordinary skill in the art.
Miller discloses the containment vessel 18 should be constructed of materials
which are sufficient to contain a blast such as resin composites and metals. (Col. 4, ll. 36
to 46). We therefore conclude that Miller would have rendered the subject matter of
Appeal No. 2003-0574
Application No. 09/568,616
-9-
claim 26 obvious. Moreover, a person of ordinary skill in the art would have recognized
that the containment vessel of Miller must have been capable of withstanding a blast and
selected the appropriate resin composite and/or metal.
The specification discloses “[t]he impedance matching material layer 12 is
optional and is composed of material that matches the mechanical impedance of
fragments of the rotor 11, and is added to the containment structure 10 to reduce
momentum transfer”. (Specification, p. 6).
Miller discloses the layers 12 and 14 are designed to reduce the impact to
surrounding layers. However, Miller does not describe the various layers as being formed
of an “impedance matching material” as required by claims 13, 14, 20, 22, 23 and 27.
The Examiner has not presented arguments as to why a person of ordinary skill in the art
would have chosen to match the impedance of the layers. Thus, the rejection of claims
13, 14, 20, 22, 23 and 27 is reversed.
IV. The Obviousness-type Double Patenting Rejection
The Examiner has rejected claims 13, 14, 20, 22, 23 and 27 under the judicially
created doctrine of double patenting over claim 1 of U.S. Patent No. 6,203,924. The
Examiner believes the claims are directed to essentially the same invention. (Final
Rejection, paper no. 18, p. 2). We cannot sustain this rejection on this record.
Appeal No. 2003-0574
Application No. 09/568,616
-10-
The Examiner’s rejection is premised on the same basis presented in the rejection
under section 112 discussed above. As we stated above, the subject matter of claims 13
and 22 is directed to a containment structure. The disputed language of claims 13 and 22
defines the location of a layer that has impedance matching characteristics relative to the
flywheel that is being contained by the claimed invention.
The third sentence of 35 U.S.C. 121 prohibits the use of a patent issuing on an
application with respect to which a requirement for restriction has been made as a
reference against any divisional application, if the divisional application is filed before
the issuance of the patent. The Examiner has not argued that the present application was
not timely filed. Thus, we reverse the Examiner’s rejection.
CONCLUSION
The Examiner’s rejections of claims 13, 14, 20, 22, 23 and 27 under 35 U.S.C.
§ 112, second paragraph; claims 11 to 14, 19 and 21 to 23 under 35 U.S.C. § 102 (b)
as anticipated by Murray; claims 13, 14, 20, 22, 23 and 27 under the judicially
created doctrine of obviousness-type double patenting over claims 1 to 9 of Smith are
reversed. We also reverse the Examiner’s § 103 rejection of claims 13, 14, 20, 22, 23
and 27. However, we affirm the Examiner’s § 103 rejection of claims 11, 12, 15-17,
19, 21, 24-26.
Appeal No. 2003-0574
Application No. 09/568,616
-11-
Time for taking action
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
)
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JAMES T. MOORE )
Administrative Patent Judge )
JTS/kis
Appeal No. 2003-0574
Application No. 09/568,616
-12-
ALAN H. THOMPSON
ASSISTANT LABORATORY COUNSEL
LAWRENCE LIVERMORE NATIONAL LABORATORY
P. O. BOX 808 L-703
LIVERMORE, CA 94551