Ex Parte Turanski et al

Patent Trial and Appeal Board

Feb 16, 2018

13456549 (P.T.A.B. Feb. 16, 2018)

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.
13/456,549 04/26/2012 Peter Turanski AIRBUS 3.9-396 CON 9039
530 7590 02/21/2018
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
SHOSHO, CALLIEE
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
eOfficeAction @ ldlkm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER TURANSKI, HEINZ-PETER BUSCH,
BEREND SCHOKE, and WILKO OSTEREICH
Appeal 2017-005833
Application 13/456,5491
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner’s rejection of claims 1, 4—7, 15, and 16 under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify Airbus Operations GmbH as the real party in interest.
App. Br. 1.
Appeal 2017-005833
Application 13/456,549
SUBJECT MATTER
The subject matter on appeal relates to plastic materials containing a
barrier layer comprising mica. Spec. 1:8—9. The inventive materials may be
used, for example, as aircraft components, and may exhibit desirable
properties when exposed to fire. Id. at 2:6—8.
Sole independent claim 1 is illustrative of the subject matter on
appeal, and is copied below:
1. A plastics material component for an aircraft, comprising
(i) a fiber-reinforced composite material as a substrate,
comprising a polymer matrix comprising one or more
thermosetting plastics materials selected from an epoxy resin,
phenolic resin, a polyester resin, a triazine resin, a biopolymer
resin formed from renewable organic starting materials or a
mixture of said resins, and
(ii) one or more layers applied to the substrate, at least
one layer comprising mica,
wherein the composite material further comprises reinforcing
fibers provided in the polymer matrix.
App. Br. 10 (emphasis added).
STATEMENT OF THE CASE
In rejecting claims 1, 4—7, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Mormont2 and Schafer,3 as evidenced by Stengle, Jr.,4 the
Examiner finds that Mormont describes the plastics material component of
claim 1, except for the requirement that the polymer matrix material
comprises one of the recited resins (i.e., “thermosetting plastics materials”).
2 Daniel Mormont, et al., US 2003/0170418 Al, published Sept. 11, 2013.
3 Werner Schafer, et al., US 5,595,817, issued Jan. 21, 1997.
4 Edward J. Stengle, Jr., US 4,110,095, issued Aug. 29, 1978.
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Application 13/456,549
Final Act. 3. Specifically, instead of disclosing one of the recited resins, the
Examiner finds that Mormont teaches the use of a phenylmethyl silicone
resin. Id. To resolve this difference, the Examiner relies on the teachings of
Schafer which evinces that several of the recited resins (i.e.,
phenol/formaldehyde and polyester imide resins), along with silicone resin,
were generally known at the time of the invention and were well-known
alternatives useful in the preparation of a composite containing mica. Id. at
3^4. The Examiner concludes from these findings that a person of ordinary
skill in the art would have achieved predictable results by substituting “the
known polyesters or phenolics [of Schafer] for the known silicon resin [of
Mormont]” because doing so is “an example of simple substitution of one
known element for another.” Id. at 4.
OPINION
We have considered Appellants’ arguments (App. Br. 3—6) and are
unpersuaded that Appellants have identified any reversible error in the
Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011).
Therefore, we sustain the obviousness rejection before us based on the
findings of fact, conclusions of law, and rebuttals to arguments well-
expressed by the Examiner in the Final Action and in the Answer. We add
the following.
Appellants argue that none of the cited references “discloses or
suggests a polymer matrix comprising one or more thermosetting plastics
materials and at least one mica layer.” App. Br. 3. This argument is
technically erroneous and is, therefore, unpersuasive. Example 1 of
Mormont expressly discloses phenylmethyl silicone resin D.C. 805 (i.e., a
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“thermosettable organopolysiloxane” (Stengle, Jr. 12:64—13:2)) in a matrix
with glass fibers, with a layer of mica paper positioned directly thereon.
Mormont || 39—50. The only apparent difference between the recited
component and that exemplified in Mormont is the type of thermoset resin
used in the polymer matrix.
Appellants contend further that there are structural differences
between the mica-containing laminates of Mormont and Schafer. App. Br.
4—5. This argument, however, does not identify error in the rejection
because the Examiner acknowledges as much (Final Act. 8), and correctly
notes that
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Final Act. 7, citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, resins such as phenol/formaldehyde, polyester imide, and
silicon function as “latently adhesive binding agents” in the preparation of
composites containing mica. Schafer 3:21—32. See also Mormont || 33—34
(establishing that silicone resin was known to function as a binder in the
preparation of mica-containing composites).
Based on the combined teachings of the references, we agree with the
Examiner’s determination (Final Act. 4) that the skilled artisan would have
recognized these resins as well-known alternatives useful in the preparation
of a composite containing mica, and that substituting one such resin for
another would have yielded predictable results. “[W]hen a patent claims a
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structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 50—51
(1966). Appellants’ contention (App. Br. 6) that “Schafer does not describe
or suggest that these resins may be used as substitutes of one another for
impregnating a glass fiber fabric of Mormonf ’ is without merit because the
“[ejxpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Font, 675 F.2d 297, 301
(CCPA 1982).
Appellants separately argue that the rejection of claim 15 is erroneous.
App. Br. 7—8. Claim 15 depends from claim 1 and further requires that,
post-cure, “the plastic material takes the form of a rigid polymeric material
which can no longer be deformed or melted.” Id. at 10. The Examiner finds
that the recited property would be inherent in the plastic as suggested by the
combined references. Final Act. 5.
Appellants contend that the Examiner’s rejection is erroneous because
Mormont exemplifies an embodiment where the finished product is “rolled
up” and, thus, cannot be “a rigid polymeric material which can no longer be
deformed.” App. Br. 7. This argument fails to persuade us of reversible
error for several reasons. First, it does not properly account for the teachings
of Schafer. In other words, because the rejection is based on the
combination of Mormont and Schafer, one cannot show error in the rejection
by merely pointing out a structural characteristic of one exemplified
embodiment in one of the references. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
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upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). “The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Further, Appellants’ argument does not properly rebut the Examiner’s
finding that the property would naturally follow when the references axe
combined. “[I]n order to rely on inherency to establish the existence of a
claim limitation in the prior art in an obviousness analysis[,] the limitation at
issue necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWI
Pharms, Inc., 773 F.3d 1186, 1195—96 (Fed. Cir. 2014). “[T]he Examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Once the Examiner so provides, the burden shifts
to the patent applicant to demonstrate otherwise. See In re Best, 562 F.2d
1252, 1255 (CCPA 1977). In the context of obviousness of a composition,
our reviewing court stated:
This court, in reconsidering this case in banc, reaffirms
that structural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed
compositions, creates aprima facie case of obviousness, and that
the burden (and opportunity) then falls on an applicant to rebut
that prima facie case. Such rebuttal or argument can consist of
a comparison of test data showing that the claimed compositions
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possess unexpectedly improved properties or properties that the
prior art does not have ....
In re Dillon, 919 F.2d 688, 692—693 (Fed. Cir. 1990) (en banc) (emphasis
added).
Applying these concepts to the instant case, the Examiner indeed
provides a sufficient basis in fact and technical reasoning to support the
finding that the recited property would naturally flow from following the
suggestion in the prior art. Final Act. 5—6. Specifically, the Examiner finds
that the combined references “describe a structure and composition that is
identical to that required by the claims, with identical fiber reinforcement,
thermoset resin, and mica layer, all in the required amounts.” Id. at 6.
Having so found, the burden of production then shifted to Appellants to
show that properties for the claimed product would have been considered
unexpectedly better compared to the properties of the closest prior art.
Consistent with the Examiner’s position, the rigidity of the composite would
reasonably be expected to depend upon the particular starting materials
selected, their relative amounts, degree of cure, and treatment conditions.
Where ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . [The]
fairness [of the burden-shifting] is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior
art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants’ argument,
which is based on one embodiment of one reference, fails to prove that the
closest prior art would not necessarily have the recited property or that the
claimed product would have unexpectedly better properties.
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SUMMARY
The Examiner’s final decision to reject claims 1, 4—7, 15, and 16 is
affirmed.
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).
AFFIRMED
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