Ex Parte Taxacher et al

Patent Trial and Appeal Board

Mar 28, 2017

13586930 (P.T.A.B. Mar. 28, 2017)

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.
13/586,930 08/16/2012 Glenn Curtis Taxacher 254418-1 8372
80944 7590 03/30/2017
Hoffman Warniok T T .P
EXAMINER
540 Broadway
4th Floor
MALEKZADEH, SEYED MASOUD
Albany, NY 12207 ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN CURTIS TAXACHER, PETER DE DIEGO,
PAUL EDWARD GRAY, and PHILIP HAROLD
MONAGHAN
Appeal 2016-002773
Application 13/586,9301
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants do not identify the real party in interest. Based on publicly
recorded assignments, we presume the real party in interest is General
Electric Company. Appellants should take care to identify the real party of
interest in future appeal briefs. 37 C.F.R. § 41.37(c)(i).
Appeal 2016-002773
Application 13/586,930
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4, 5, 7—9, 11—14, and 21. We have
jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE2
Appellants describe the invention as relating to consumable cores for
use in the manufacture of composite articles and particularly composite
articles with hollow features. Spec. Tflf 2, 14. Claims 1 and 8, reproduced
below with emphases added to certain key recitations, are the only
independent claims on appeal and are illustrative of the claimed subject
matter:
1. A system comprising:
a consumable core configured to be disposed within a
hollow feature within a composite precursor, the consumable
core completely enclosed by the composite precursor, the
consumable core configured to be consumed during a melt
infiltration manufacturing process, wherein the consumable
core is integrated with the composite precursor, wherein the
hollow feature is vacated by the consumable core.
8. A system, comprising:
a composite precursor having a hollow feature; and
a consumable core disposed within the hollow feature of the
composite precursor, the consumable core completely enclosed by the
composite precursor, the consumable core configured to convert
into an infiltrant during a manufacturing process and infiltrate
2 In this decision, we refer to the Final Office Action mailed January 30,
2015 (“Final Act.”), the Appeal Brief filed June 12, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed November 9, 2015 (“Ans.”), and the Reply Brief
filed January 8, 2016 (“Reply Br.”).
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Application 13/586,930
the composite precursor wherein the hollow feature is vacated
during the melt infiltration manufacturing process.
Appeal Br. 9—10 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Hillig et ah, US 4,238,433 Dec. 9, 1980
(hereinafter “Hillig”)
Basso, Jr. et al., US 6,036,470 Mar. 14, 2000
(hereinafter “Basso, Jr.”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 4, 5, 8, 11, 12, and 21 under 35 U.S.C.
§ 102(b) as anticipated by Basso, Jr. Ans. 2.
Rejection 2. Claims 7, 9, 13, and 14 under 35 U.S.C. § 103 as
unpatentable over Basso, Jr. in view of Hillig. Id. at 6.
ANALYSIS
The Examiner rejects independent claims 1 and 8 as anticipated by
Basso, Jr. Ans. 2. Appellants argue that Basso, Jr. does not teach a
consumable core that integrates with the composite precursor (claim 1) or
that is configured to convert into an infiltrant during a manufacturing
process and infiltrate the composite precursor (claim 8). Appeal Br. 6.
We begin our analysis of Appellants’ argument with claim
construction. The Specification explains how the consumable core
“infiltrates” by stating that the “consumable core is absorbed into the
composite precursor” by, for example, “self-consuming from within the
composite precursor and becoming a part of the composite article itself
while vacating the interior of the hollow feature.” Spec. 116. In the Reply
Brief, Appellants embrace this explanation as providing a definition of
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Application 13/586,930
“consumable core” as recited in claims 1 and 8. Reply Br. 3. Moreover, the
Specification helps define what claim 1 means by reciting a “consumable
precursor configured to be consumed ... wherein the consumable core is
integrated with the composite precursor” and what claim 8 means by reciting
a “consumable core configured to convert into an infiltrant during a
manufacturing process and infiltrate the composite precursor.” In the
context of the Specification, both claims require that the consumable core be
cable of being absorbed into the composite precursor. See also Spec. § 23
(using the word “integrating” in a manner equivalent to infiltrating).
We assess the Examiner’s rejection and Appellants’ arguments with
this claim construction in mind. The Examiner equates the low temperature
alloy 24 of Basso, Jr. to the recited “consumable core” of claims 1 and 8 and
equates the prepreg cloth 28 (i.e., a combination of resin and fibers / resin
impregnated cloth) along with the shrink tape 30 of Basso, Jr. to the recited
“composite precursor” of claims 1 and 8. Ans. 4—5. As Appellants argue,
the evidence does not support that the low temperature alloy 24 is capable of
being absorbed into the prepreg cloth 28 or shrink tape 30 of Basso, Jr.
Appeal Br. 6. Rather than the low temperature alloy 24 absorbing into a
composite precursor, the prepreg cloth 28 is cured to a permanent solid state
and then the low temperature alloy is melted and drains out of drain
passageway 18. Id.\ Basso, Jr. 5:4—16.
The Examiner maintains claim 1 and claim 8’s language regarding the
consumable core’s behavior during a manufacturing process are directed to
intended use and are not entitled to patentable weight. Ans. 9. We do not
agree. The language at issue is functional because it recites how the
consumable core will behave under certain conditions. In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (“It is well settled that there is nothing
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Application 13/586,930
intrinsically wrong in defining something by what it does rather than by
what it is.”). Where functional characteristics are described or suggested in
the prior art, the burden shifts to the applicant to demonstrate that the prior
art does not possess the claimed functionality. Id.; see also In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that where there is reason to
believe that prior art structure is inherently capable of performing a recited
function, burden shifts to applicant to show that recited function patentably
distinguishes the prior art structure). The Examiner, however, must establish
that the functional characteristic is described or suggested in the prior art in
the first instance. As explained below, the Examiner has not done that here.
The Examiner finds that the melted low temperature alloy 24 in the
presence of heat will interact with the internal surface of prepreg composite
cloth 28 resulting in diffusion, integration, and infiltration. Ans. 10. The
Examiner, however, cites no evidence to support this point. Rather, Basso,
Jr. teaches that the low temperature alloy will “liquefy and drain out the
drain passageway 18, shown in FIG. 8.” Basso, Jr. 5:10—16; see also Reply
Br. 3^4. The Examiner also finds that Basso, Jr.’s discussion of epoxy
bonding with certain fibers supports a tendency of the epoxy resin material
of the prepreg cloth 28 to interact with or bond with low temperature alloys
24. Ans. 10-11. The cited portion of Basso, Jr. relating to bonding,
however, refers to bonding between an epoxy and fiber to form prepreg cloth
28. The Examiner has not identified where Basso, Jr. suggests bonding or
interaction between the low temperature alloy 24 and the prepreg cloth 28.
While some de minimus interaction might be expected when any two
materials are adjacent and heated, we construe claims 1 and 8 as requiring
integration/infiltration that is significant in the context of the process at
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Application 13/586,930
hand. The Examiner has not established that Basso, Jr. teaches this
limitation.
The Examiner’s further reliance on Lee does not cure the error
addressed above. Ans. 6—7. Accordingly we do not sustain the Examiner’s
rejection of claims 1 and 8 and do not sustain the Examiner’s rejection of
claims 2, 4, 5, 7, 9, 11—14, and 21 because each of those claims depends
from claim 1 or claim 8.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1,2,4, 5,7-9, 11-14, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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