Ex Parte WeberDownload PDFPatent Trial and Appeal BoardJan 29, 201814316794 (P.T.A.B. Jan. 29, 2018) Copy Citation 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. 14/316,794 06/27/2014 Gary Robert Weber 10-0121-US-CNT 4484 63759 7590 01/31/2018 DTTKFW YFF EXAMINER YEE & ASSOCIATES, P.C. TRAN, THAO T P.O. BOX 802333 DALLAS, TX 75380 ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/31/2018 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): ptonotifs @yeeiplaw.com mgamez @ yeeiplaw. com patentadmin @ boeing. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY ROBERT WEBER Appeal 2017-000548 Application 14/316,794 Technology Center 1700 Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 26—28, 30, and 34 under 35 U.S.C. § 102(b) as being anticipated by Goodman (US 5,997,622 issued Dec. 7, 1999,), and of claims 29, 31—33, and 35-45 under 35 U.S.C. § 103(a) as being unpatenable over Goodman with Murray (WO 97/00923 published Jan. 9, 1997). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appeal 2017-000548 Application 14/316,794 We AFFIRM. Claim 26 is representative (emphasis provided on the key disputed limitation): 26. A method of bonding two parts together, the method comprising: placing the parts together with a layer of an interpenetrating polymer network (IPN) adhesive between the parts, the IPN adhesive contacting both parts, the parts comprising a metal part and a composite part, the composite part comprising a fiber reinforced polymer matrix; attaching the parts to each other by curing a first polymer system of the IPN adhesive using radiation energy, wherein the first polymer system is cured to a stage that allows handling of the parts; and thermally curing a second polymer system of the IPN adhesive after the first polymer system has been cured. ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence favors the Examiner’s finding that the subject matter of Appellant’s claim 26 is anticipated by Goodman. Appellant does not separately argue any of the claims in each of the rejections. Accordingly, we affirm the Examiner’s rejection of the claims on appeal for the reasons set forth in the Answer, which we incorporate herein by reference. 2 Appeal 2017-000548 Application 14/316,794 We provide the following for emphasis only. Appellant’s only argument is that Goodman is not enabled (App. Br. 6—11; Reply Br. 2—7). We disagree. It is well settled that prior art under 35 U.S.C. § 102(b) must be “enabling”, i.e., it “must sufficiently describe the claimed invention to have placed the public in possession of it.” In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). “Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his own knowledge to make the claimed invention.” Id. A reference is presumed to be enabling and therefore, once the examiner establishes that the reference teaches each and every limitation of the claimed invention, the burden shifts to the applicants to prove the reference is not enabling. Enablement is a question of law based on underlying factual findings. In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). “[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” Id. at 1288. When the applicant challenges enablement, however, the Board must “thoroughly revie[w]” all evidence and applicant argument to determine if the prior art reference is enabling. Id. at 1292. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation. The standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under 35 U.S.C. § 112.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (internal citations omitted). While section 112 states that the specification must enable one 3 Appeal 2017-000548 Application 14/316,794 skilled in the art to ‘use’ the invention, “section 102 makes no such requirement as to an anticipatory disclosure .... Rather, anticipation only requires that those suggestions be enabled to one of skill in the art.” “Whether a prior art reference is enabling is a question of law based upon [the] underlying factual findings.” Id. (internal citations omitted.) It has also been held that “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” Impax Labs. Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006). “Rather, the proper issue is whether the . . . patent is enabling in the sense that it describes the claimed invention sufficiently to enable a person of ordinary skill in the art to carry out the invention.” Id. at 1383. In light of these guiding principles, we have reviewed Appellants’ argument regarding enablement of Goodman (App. Br. 6—12, Reply Br. 2— 7). We conclude that a preponderance of the evidence supports the Examiner’s position that Goodman has an enabling disclosure, contrary to Appellant’s position (see Ans. 6—8 for the Examiner’s analysis in support of enablement). Cf. In re Mors a, 713 F.3d 104, 109 (Fed. Cir. 2013) (the Examiner must address Appellant’s non-frivolous argument regarding non enablement). In this appeal, Appellant does not provide adequate factual evidence to support their arguments that Goodman is non-enabling (Briefs, generally). As pointed out by the Examiner, the evidence relied upon does not show that the adhesive described in Goodman would not function to secure a metal part to a fiber reinforced composite as described in Goodman. It also does not adequately show that one of ordinary skill in the art would have expected the adhesive of Goodman to fail to bond a metal part to a fiber reinforced component. Notably, claim 26 does not require any specific 4 Appeal 2017-000548 Application 14/316,794 weight and/or size of either of the two parts to be secured together, nor does it require any specific length of time the bond must last. Appellant’s proffered evidence is inadequate to show that the adhesive of Goodman would fail to function to bond, e.g., a small metal piece to a fiber reinforced composite for a short length of time (e.g., a few minutes). An attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Accordingly, the preponderance of the evidence supports the Examiner’s § 102(b) rejection. Appellant does not present any further arguments to rebut the Examiner’s § 103 rejection which relies upon Murray to exemplify an IPN adhesive containing components encompassed by the claims. Accordingly, Appellant has not shown any error in the Examiner’s §103 rejection. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED 5 Copy with citationCopy as parenthetical citation