Ex Parte Toback

Board of Patent Appeals and Interferences

Dec 11, 2009

10745211 (B.P.A.I. Dec. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEX S. TOBACK
____________

Appeal 2009-000410
Application 10/745,211
Technology Center 3700
____________

Decided: December 11, 2009
____________

Before STEVEN D.A. MCCARTHY, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Alex S. Toback (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-46. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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The Invention
The claimed invention is an approach to light gauge steel construction
that provides an enhanced load bearing capacity by using both mechanical
fasteners and an adhesive. By using adhesive and mechanical fasteners, the
number of fasteners is decreased while the load bearing capacity and
durability of the connection is increased. Spec. 1:22-26.
Claims 1, 21, 37, and 41, reproduced below, are illustrative of the
subject matter on appeal.
1. A method for connecting a light gauge steel panel to a
structural support frame comprised of steel members
comprising:
applying an adhesive to at least one of said panel or
support frame, said adhesive being curable at room temperature
and able to adhere to steel;
placing said panel against said support frame;
driving a plurality of fasteners through the panel into said
support frame to provide an aggregate mechanical connection to
maintain said panel in position against said support frame when
said support frame is positioned in an upright orientation; and
allowing said adhesive to cure to form a bonding
interface between said panel and said frame,
so that said panel is joined to said frame along said
bonding interface in a connection wherein the shear connection
resistance to a shear load applied parallel to said panel is
substantially entirely provided by the bonding interface which
is significantly greater in load bearing capacity than the
aggregate mechanical connection provided by the fasteners.

21. A shear wall comprising:
a metal support frame comprising pairs of laterally
spaced metal studs;
a panel of oriented strand board mounted to said support
frame;
a plurality of mechanical fasteners connecting said panel
to said support frame wherein the mean distance between said
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fasteners is at least two inches and having an aggregate
mechanical load bearing capacity sufficient to retain the panel
to the support frame; and
a structural adhesive disposed between said support
frame and said panel and forming a bonding interface between
said panel and said studs,
so that said panel is joined to said frame in a connection
wherein the connection resistance to a shear load applied
parallel to said panel is substantially entirely provided by the
bonding interface which is significantly greater in load bearing
capacity than that of the aggregate mechanical load bearing
capacity of the fasteners.

37. A sub-assembly for a framework of a structure comprising:
a first metal member having a first longitudinally
extending planar strip;
a second metal member having a second longitudinally
extending planar strip;
a structural adhesive disposed between said first strip and
said second strip and forming a bonding interface between said
first strip and said second strip,
at least one mechanical fastener extending through said
strips; and
so that said first member is joined to said second member
in a connection wherein the connection resistance to a shear
load applied to said connector1 is substantially entirely provided
by the bonding interface which is significantly greater in load
bearing capacity than the load required to deform either the first
member or the second member.

41. A support column comprising:
a pair of elongated metal tubes disposed in parallel side-
by-side relationship;
a first C-shaped elongated metal stud having a first planar
surface mounted against a first side of each said tube and
connected thereto by a structural adhesive disposed between

1 The term “said connector” does not have antecedent basis. Further
prosecution before the Examiner should correct this error.
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said first planar surface and each said first side and a plurality
of longitudinally spaced fasteners fastening said first stud to
each said first side; and
a second C-shaped elongated stud having a second planar
surface mounted against a second side of each said tube, said
second side being opposite said first side and connected thereto
by a structural adhesive disposed between said second planar
surface and each said second side and a plurality of
longitudinally spaced fasteners fastening said second stud to
each said second side.

The Rejection
The following Examiner’s rejection is before us for review:
Claims 1-46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable given the Appellant’s Admitted Prior Art (APA) (Spec. 6:14-
19, and fig. 1A) and Orowan, (US 3,655,424, issued Apr. 11, 1972).

SUMMARY OF DECISION
We REVERSE.

OPINION
Issues
The issues before us are as follows:
Whether the content of the combination of APA and Orowan that
describes using mechanical fasteners in combination with an adhesive tape
having an insert embedded within (Orowan, col. 2, ll. 22-25 and 29-31),
renders obvious:
for claims 1-36: a bonding interface in a connection that joins
members such that the shear connection resistance to a shear
load applied parallel to the members having the bonding
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interface is substantially entirely provided by the bonding
interface which is significantly greater in load bearing capacity
than the aggregate mechanical connection provided by the
fasteners;
for claims 37-40: a connection wherein the connection resistance to a
shear load applied to the connection is substantially entirely
provided by the bonding interface which is significantly greater
in load bearing capacity than the load required to deform either
the first member or the second member;
for claims 41-44: a support column as claimed within these claims;
and
for claims 45 and 46: a sub-assembly for a structure as claimed within
these claims.

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Pertinent Facts
1. Appellant’s Admitted Prior Art (APA) is shown in Figure 1(a) and
described in Appellant’s Specification on page 6, lines 14-19.
Appellant’s Figure 1(a) is reproduced below:

Appellant’s Figure 1(a) depicts that the APA consists of using
mechanical fasteners 20 to connect a steel stiffening strap 12 to the
gusset plates 14 in a shear wall application 13. Spec. 6:14-19.
Appellant’s Specification at page 6, lines 14-19 is reproduced below:
The invention is schematically illustrated by Figures l(a)
and l(b) [sic. 1(b) and 1(c)] which contrast the
conventional design (Figure l(a)) with the
adhesive/fastener design of the present invention (Figure
l(b) [and 1(c)]). With reference to Figure l(a), a
conventional stiffening strap 12 is illustrated in a shear
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wall 13 application with gusset plates 14. Numerous
fasteners 20 are required.
2. Orowan describes that, in the prior art, it was known to use
adhesive bonding for joining metallic parts, particularly in
aircraft manufacturing. However, aircraft designers were
reluctant to entrust the bond of adhesive alone when joining
structurally important parts because the presence of debris may
cause local weakening of the bond that cannot be recognized by
nondestructive testing. Accordingly, it is desirable to use
adhesives with rivets or pins, i.e., mechanical fasteners, to
entrust the joining of structurally important parts with adhesive.
The technique of hot riveting the fastener to steel structures
prevents the sliding of the joined parts up to the load at which
the rivet used would suffer shear fracture. Cold riveted joints
of light alloy structures are not fully immobilized and cyclic
loading causes the joint abutting surfaces and rivet to fret which
results eventually in fatigue cracks. The practice thus has been
to introduce a thin layer of adhesive material between the plates
of a lap joint. This practice contributes to relieving the load on
the rivets to a relatively small extent and gives some protection
against fretting between the parts joined. However, this
practice does not prevent fretting at the rivet holes because the
adhesive has a very low shear modulus compared to the metals
joined in this manner and therefore cannot immobilize the joint
sufficiently to prevent rubbing at the rivet holes. The relative
motion of the joined parts can be reduced by making the
adhesive layer very thin. However, the advantage of
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distributing the load over the bonded surface by means of the
highly elastic adhesive layer is lost and the adhesive joint is
weak relative to its surface area. Scarfing remedies this well
known problem of lap joints. However, scarfing in aircraft
construction is not practical and it would be difficult to make
the adhesive layer thin enough to provide a lap joint of high
shear rigidity. Col. 1, ll. 8-45, and figs. 1-2.
3. To remedy the deficiencies with the prior art systems, Orowan
discloses an adhesive tape 1 having an embedded core strip 4,
preferably made from the same material as the structural parts
that the tape would join. The core strip 4 has a Young’s
modulus at least a substantial fraction of the Young’s modulus
of the structural parts to be joined by the tape 1. Disposed on
each major surface of core strip 4 is adhesive 8. Col. 2, ll. 22-
30 and fig. 3.
4. Orowan discloses the tape 1 is used in conjunction with rivets 9
when securing plates 2 and 3 together in a lap joint. Col. 2, ll.
30-31.
5. Orowan discloses that if the adhesive layer were uniform across
the entire surface area that constitutes the joint, the joint would
suffer a large uniform shear strain which would impose
pressures higher on the rivets and holes than would occur
without any adhesive present. Col. 2, ll. 67-70. Hence,
Orowan discloses the core strip 4 has a cross section that
diminishes in thickness from a central portion 5 towards the
margins 6 and 7. Col. 2, ll. 22-25 and col. 3, ll. 39-45.
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Principles of Law
“All words in a claim must be considered in judging the patentability
of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). It should be noted that a patent applicant is free to recite
features of an apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing
intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims.”)
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007)(“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
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obvious. The Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained with 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). See also
KSR, 550 U.S. at 418.
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 51-52 (1966)).
A prima facie case of obviousness can be rebutted by a showing that
the prior art relied upon teaches away, in any material respect, from the
claimed invention. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In
re Malagri, 499 F.2d 1297, 1303 (CCPA 1974). A reference teaches away
from a claimed invention ... when a person of ordinary skill, upon reading
the reference, would be led in a direction divergent from the path that was
taken by the applicant. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
(design case); Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360
(Fed. Cir. 1999) (utility case). What the prior art teaches and whether it
teaches toward or away from the claimed invention is a determination of
fact. In re Bell, 991 F.2d 781, 784 (Fed. Cir. 1993); Para-Ordnance Mfg.,
Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
A prior art reference must be considered in its entirety, i.e., as a
whole, including portions that would lead away from the claimed invention.
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See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.
Cir. 1983). “When a piece of prior art ‘suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant’ the piece of prior art is said to ‘teach away’
from the claimed invention.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)).
Analysis
Claims 1-36
Each of these claims require that when the members are connected by
a combination of adhesive and fasteners, that the shear connection resistance
to a shear load applied parallel to the joined members is substantially
entirely provided by the bonding interface of the adhesive which is
significantly greater in load bearing capacity than the aggregate mechanical
connection provided by the fasteners. In this case, Appellant has limited the
adhesive by its ability to withstand a shear load relative to the shear load of
the fasteners.
APA does not describe using an adhesive in combination with the
fasteners 20. Fact 1. Orowan describes that it was known to use adhesive in
metal fabrication. Fact 2. Further, Orowan describes that metal fabricators
were uncomfortable with just using adhesive on structurally important parts.
Id. As such, fabricators desired to use mechanical fasteners in combination
with an adhesive to offset the problems with using adhesive alone, and the
problems of using mechanical fasteners by themselves with hot and cold
riveting techniques. Id. Accordingly, Orowan describes the prior art as
using a thin layer of adhesive between the plates of a lap joint that is
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connected by a mechanical fastener. Id. While this practice relieved the
load on the rivets to a relatively small extent and provided some protection
against fretting, this practice did not prevent all fretting at the joint. Id. The
reason given by Orowan is that the adhesive used has a very low shear
modulus compared to the metals, i.e. the rivets, used to joint the parts in
such a manner and thus cannot immobilize the joint sufficiently to prevent
rubbing at the rivet holes. Id.
Orowan’s proposed solutions entailed applying the adhesive layer
very thinly and scarfing the lap joints. Id. However, the former solution
causes a weak adhesive joint and a loss of shear rigidity, while the latter
solution is not practical in metal fabrication that would desire the use of
adhesive with a mechanical fastener. Id. To remedy the deficiencies within
the prior art systems, Orowan discloses using an adhesive tape having an
embedded core strip with an adhesive disposed on each major surface of the
strip. Fact 3.
When applying this tape to a lap joint, Orowan discloses using a
mechanical fastener. Fact 4. Orowan further discloses that the reason the
core has a tapered cross-sectional profile with the thickness greater in the
central portion is that if the adhesive layer were uniform in cross section the
joint would suffer a large uniform shear strain that would impose higher
pressures on the mechanical fasteners than the mechanical fasteners would
experience without the adhesive present. Fact 5.
Orowan does not disclose explicitly or implicitly that the bonding
interface of the adhesive used in the connection of the members provides the
shear connection resistance substantially entirely, which is significantly
greater in load bearing capacity than the aggregate mechanical connection
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provided by the fasteners as these claims require. See Facts 2-5. Further,
the Examiner does not cogently explain how the content of the combination
of APA and Orowan would lead to a bonding interface of the adhesive used
in the connection of the members which provides the shear connection
resistance substantially entirely, and which is significantly greater in load
bearing capacity than the aggregate mechanical connection provided by the
fasteners. Moreover, the Examiner’s statement in the Answer on page 3 that
Appellant should note that Orowan’s connection is significantly enhanced in
load bearing capacity with a citation to column 1, lines 24-29 of Orowan is a
mischaracterization of the disclosure of Orowan. That portion of Orowan
describes that the prior art system relieves load to a relatively small extent.
See Fact 2.
Orowan teaches away from using the combination of a conventional,
relatively weak adhesive bond with a mechanical fastener for the reasons
Orowan describes with respect to the prior art systems. In view of the
foregoing, the content of the combination of APA and Orowan renders
obvious the application of an adhesive tape having an adhesive surrounding
a tapered core with a mechanical fastener. Further, the content of the
combination of APA and Orowan fails to explicitly or implicitly describe,
and the Examiner has not articulated how, the content of the combination of
APA and Orowan would lead to a bonding interface of the adhesive used in
the connection of the members which provides the shear connection
resistance substantially entirely, and which is significantly greater in load
bearing capacity than the aggregate mechanical connection provided by the
fasteners.
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Accordingly, we will not sustain the Examiner’s rejection of claims 1-
36.
Claims 37-40
These claims require that the bonding interface of the adhesive joining
the members have a connection resistance to a shear load applied to the
connection that is substantially entirely provided by the bonding interface
which is significantly greater in load bearing capacity than the load required
to deform either member. Similar to claims 1-36, Appellant has limited the
adhesive by its ability to withstand a shear load relative to the shear load of
the members themselves being joined by the adhesive.
APA does not disclose using an adhesive in combination with the
fasteners 20. Fact 1. Orowan does not describe explicitly or implicitly an
adhesive where, when applied to join two members, the bonding interface of
the adhesive joining the members has a connection resistance to a shear load
applied to the connection which is substantially entirely provided by the
bonding interface, and which is significantly greater in load bearing capacity
than the load required to deform either member. Facts 2-5. The Examiner
has not cogently explained how the content of the combination of APA and
Orowan would lead to applying an adhesive, where when the adhesive was
applied to join two members, the bonding interface of the adhesive would
have a connection resistance to a shear load applied to the connection that is
substantially entirely provided by the bonding interface which is
significantly greater in load bearing capacity than the load required to
deform either member. In view of the foregoing, the content of the
combination of APA and Orowan fails to render obvious the bonding
interface of the adhesive joining the members that has a connection
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resistance to a shear load applied to the connection which is substantially
entirely provided by the bonding interface, and which is significantly greater
in load bearing capacity than the load required to deform either member.
Accordingly, we will not sustain the Examiner’s rejection of claims
37-40.
Claims 41-44
The Appellant argues that the Examiner has not fully addressed the
context of the claims, namely, that the claims relate to improvements in the
light gauge steel construction industry. For example, claims 41-44 require a
support column having a pair of elongated metal tubes disposed in a parallel
side-by-side relationship and a pair of C-shaped elongated metal studs, each
having a planar surface. These claims further require that the planar
members of the studs mount against sides of tubes and the studs and tubes
are connected together by a structural adhesive disposed between the planar
surface and the tube side and longitudinally spaced fasteners. Neither APA
nor Orowan describes explicitly or implicitly the claimed support column.
Facts 1-5. The Examiner has not cogently explained how the content of the
combination of APA and Orowan would lead to this claimed structure. In
view of the foregoing, the content of the combination of APA and Orowan
fails to render obvious this claimed structure.
Accordingly, we will not sustain the Examiner’s rejection of claims
41-44.
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Claims 45 and 46
These claims require a sub-assembly structure comprising a pair of
steel tubes abutting each other, a metal plate abutting aligned planar surfaces
of the tubes, a structural adhesive disposed between the plate and each
aligned planar surface of the tubes, and a fastener extending between a
respective plate and tube. Neither APA nor Orowan describes explicitly or
implicitly the claimed subassembly. Facts 1-5. The Examiner has not
cogently explained how the content of the combination of APA and Orowan
would lead to this claimed structure. In view of the foregoing, the content of
the combination of APA and Orowan fails to render obvious this claimed
structure.
Accordingly, we will not sustain the Examiner’s rejection of claims
45 and 46.

CONCLUSIONS
The content of the combination of APA and Orowan that describes
using mechanical fasteners in combination with an adhesive having an insert
embedded within fails to render obvious:
for claims 1-36: a bonding interface in a connection that joins
members such that the shear connection resistance to a shear
load applied parallel to the members having the bonding
interface is substantially entirely provided by the bonding
interface which is significantly greater in load bearing capacity
than the aggregate mechanical connection provided by the
fasteners;
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for claims 37-40: a connection wherein the connection resistance to a
shear load applied to the connection is substantially entirely
provided by the bonding interface which is significantly greater
in load bearing capacity than the load required to deform either
the first member or the second member;
for claims 41-44: a support column as claimed within these claims;
and
for claims 45 and 46: a sub-assembly for a structure as claimed within
these claims.

DECISION
The decision of the Examiner to reject claims 1-46 as being obvious
over the combination of APA and Orowan is reversed.

REVERSED

mls

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