Ex Parte Weber

Patent Trial and Appeal Board

Jan 29, 2018

14316794 (P.T.A.B. Jan. 29, 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.
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):
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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.
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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
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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
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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
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