Ex Parte Townsend et alDownload PDFPatent Trial and Appeal BoardApr 10, 201411735594 (P.T.A.B. Apr. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM A. TOWNSEND, THOMAS A. CARSTENSEN, and CONNIE E. BIRD ____________ Appeal 2012-004811 Application 11/735,594 Technology Center 3600 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004811 Application 11/735,594 2 STATEMENT OF THE CASE William A. Townsend et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1-9, 11-13, and 16-26. Claims 10, 14, and 15 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to “a lightweight armor panel system which is integrated into an airframe as [a] load bearing structure.” Spec. 1, para. [0002] and fig. 4A. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An armored panel comprising: a front face layer; a monolithic ceramic layer adjacent to said front face layer; a rear face Ceramic Matrix Composite (CMC) layer continuously bonded to a rear face of said monolithic ceramic layer to provide a close thermal expansion match of said monolithic ceramic layer and said Ceramic Matrix Composite (CMC) layer; and a backing layer adjacent to said rear face CMC layer, to at least partially encapsulate said monolithic ceramic layer and said rear face Ceramic Matrix Composite (CMC) layer between said front face layer and said backing layer. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 8, 9, 11-13, and 16-21 under 35 U.S.C. § 103(a) as unpatentable over Lucuta (WO 03/010484 Appeal 2012-004811 Application 11/735,594 3 A1, pub. Feb. 6, 2003) and Dagher (US 7,685,921 B2, iss. Mar. 30, 2010). II. The Examiner rejected claims 1-3, 6, 7, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Lucuta, Dagher, and Benitsch (US 2007/0116939 A1, pub. May 24, 2007). III. The Examiner rejected claims 4, 5, and 22-24 under 35 U.S.C. § 103(a) as unpatentable over Lucuta, Dagher, and Benitsch, and Palicka (US 7,077,306 B2, iss. Jul. 18, 2006). SUMMARY OF DECISION We REVERSE and ENTER NEW GROUNDS OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). ANALYSIS Rejection I The Examiner found that Lucuta discloses all the limitations of independent claims 8 and 16, but “fails to disclose that the backing layer encapsulates a portion of the monolithic ceramic layer and the CMC layer or that it forms a ‘flange edge structure’.” Ans. 5-6. However, the Examiner further found “Dagher discloses that it is known in a layered armor structure to allow a backing layer 20 to wrap around the other layers, including the edges.” Ans. 6 (citing to Dagher, fig. 2). Thus, according to the Examiner, “area 20B is considered to meet the limitation of a ‘flange edge structure’ since it is on the edge of the armor and it extends beyond the sides of the other layers.” Id. Appellants argue that area 20B in Dagher does not include a front face layer adjacent a backing layer that together form a flange, as called for by Appeal 2012-004811 Application 11/735,594 4 independent claims 8 and 16. App. Br. 10-11. In response, the Examiner opines that because area 20B wraps around the edges of an armor structure it forms a “flange” such that the backing layer is in contact with the front layer. Ans. 8. At the outset, we note that each of independent claims 8 and 16 recites, inter alia, “said front face layer is adjacent said backing layer along at least one edge to form a flange edge structure.” App. Br., Clms. App’x. We thus agree with Appellants that the claim language requires positioning the front face layer and the backing layer adjacent along an edge of the armored panel so as to form the claimed flange structure. See Reply Br. 4. However, in Dagher, the front layer and the backing layer of the armored panel are not adjacent along an edge of the armored panel to form a flange, as called for by independent claims 8 and 16. See Dagher, fig. 2. Accordingly, we agree with Appellants that Dagher fails to disclose the claimed flange structure. See App. Br. 11. We thus do not sustain the rejection of claims 8, 9, 11-13, and 16-21 under 35 U.S.C. § 103(a) as unpatentable over Lucuta and Dagher. Rejection II Each of claims 1, 25, and 26 requires, inter alia, a “Ceramic Matrix Composite (CMC) layer.” App. Br., Clms. App’x. The Examiner found that Lucuta discloses an armored panel including “a rear face ceramic matrix composite 1614 (CMC) bonded to a rear face of the monolithic ceramic layer [1110]” and “a front face CMC 1612 bonded to the monolithic ceramic layer.” Ans. 4 (citing Lucuta, fig. 16). Appeal 2012-004811 Application 11/735,594 5 Appellants argue that because Lucuta’s layer 1614 includes layers of glass or carbon fibers bound together with a polymer adhesive, layer 1614 constitutes a polymer matrix composite. App. Br. 5. In response, the Examiner takes the position that the plain meaning of the phrase “ceramic matrix composite” is a layer that “include[s] at least one ceramic material, [and] at least a second material different from the originally named ceramic.” Ans. 6. Thus, according to the Examiner, Lucuta’s layer 1614 constitutes a “ceramic matrix composite” because it includes a first ceramic material, namely, glass fibers, and at least a second material, namely “polymer adhesive, aramid fibers, carbon fibers, and polycarbonate.” Ans. 7. We are not persuaded by the Examiner’s position because “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention….” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In this case, the Examiner’s interpretation of the term “ceramic matrix composite” to include a first, ceramic material and a second, different material is unreasonably broad. We agree with Appellants that the Examiner’s interpretation “conflicts with the known accepted meaning of ‘CMC’,” which requires a “ceramic matrix.” Reply Br. 2. As such, because Lucuta’s layer 1614 has a polymeric matrix, Lucuta fails to disclose a “ceramic matrix composite,” as called for by claims 1, 25, and 26. See Lucuta, page 15, lines 10-12. Neither Dagher nor Benitsch remedy the deficiency of Lucuta as described supra. Appeal 2012-004811 Application 11/735,594 6 Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 1-3, 6, 7, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Lucuta, Dagher, and Benitsch1. Rejection III The Examiner’s use of the teachings of Palicka2 does not remedy the deficiencies of Lucuta, Dagher, and Benitsch, as described supra. See Ans. 5. Therefore, we likewise do not sustain the rejection of claims 4, 5, and 22- 24 under 35 U.S.C. § 103(a) as unpatentable over Lucuta, Dagher, Benitsch, and Palicka. NEW GROUND OF REJECTION We make the following new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Claims 1-7 and 23-26 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. The essence of the requirement under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is that the language of the claims 1 Because we have determined that the Examiner’s interpretation of the phrase “ceramic matrix composite” is unreasonably broad, we do not reach the evidence in the Declaration of John E. Holowczak and Connie E. Bird, filed as Exhibit B. See App. Br. 16. This Declaration was filed under 37 C.F.R. § 1.132, on May 4, 2010, in related case US 11/682,390 (Appeal No. 2012-000892; Decision rendered December 16, 2013). 2 The Examiner uses the teachings of Palicka to show that “it is known to encapsulate armor ceramic layers in metal, which places the ceramic layer in compression.” See Ans. 5 (citing Palicka, col. 5, ll. 6-20). Appeal 2012-004811 Application 11/735,594 7 must make it clear what subject matter the claims encompass. In re Hammack, 427 F.2d 1378 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Claims 1-7 and 23-26 recite “a close thermal expansion match” between the monolithic ceramic layer and the Ceramic Matrix Composite (CMC) layer. See App. Br., Clms. App’x. The term “close” is a term of degree. Appellants’ Specification does not provide a standard for measuring the degree of closeness for the claimed thermal expansion match. See Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Appellants’ Specification merely describes a “near perfect thermal expansion match” between the monolithic ceramic layer and the CMC layer. See Spec. 2, para. [0007] and Spec. 8, para. [0048]. Thus, Appellants’ Specification does not define what constitutes a “close thermal expansion match,” namely, the degree of closeness required. For the foregoing reasons, a person having ordinary skill in the art would be unable to determine the metes and bounds of the claimed invention. In light of the above, we conclude that claims 1-7 and 23-26 are indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point and distinctly claim the subject matter which Appellants regard as the invention. Appeal 2012-004811 Application 11/735,594 8 SUMMARY The decision of the Examiner to reject claims 1-9, 11-13, and 16-26 is reversed. We enter a new ground of rejection of claims 1-7 and 23-26 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b)(2007). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation