Orbital ATK, Inc.

Patent Trials and Appeals Board

Jun 4, 2020

2019004479 (P.T.A.B. Jun. 4, 2020)

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.
15/342,998 11/03/2016 Vernon M. Benson 2507-12455.1(22579-
US-02)
7046
60794 7590 06/04/2020
TRASKBRITT, P.C./ NGIS
P.O. BOX 2550
SALT LAKE CITY, UT 84110
EXAMINER
DODDS, SCOTT
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VERNON M. BENSON, DAVID R. MACHAC, and
BRYAN J. LOVELESS

Appeal 2019-004479
Application 15/342,998
Technology Center 1700
____________

Before DONNA M. PRAISS, MONTÉ T. SQUIRE, BRIAN D. RANGE,
Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5 and 7–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Nov. 3, 2016 (“Spec.”),
the Final Office Action dated Sept. 13, 2018 (“Final Act.”), the Appeal Brief
filed Feb. 19, 2019 (“Appeal Br.”), the Examiner’s Answer dated Mar. 27,
2019 (“Ans.”), and the Reply Brief filed May 20, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Northrop Grumman Innovation
Systems, Inc. as the real party in interest. Appeal Br. 2.
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Application 15/342,998

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STATEMENT OF THE CASE
The invention relates to composite products made from plies of
pre-impregnated (pre-preg) material, and, more particularly, to a method of
consolidating pre-preg material ply layers to form a composite product.
Spec. ¶¶ 2, 7. Claims 1 and 18, reproduced below, are illustrative of the
subject matter on appeal (disputed limitations italicized).
1. A method of consolidating composite material ply
layers, the method comprising:
laying-up at least one first composite material ply layer
over at least one second composite material ply layer on a
contoured surface of a forming tool;
inductively heating an area of at least one of fibers or
matrix in the at least one first composite material ply layer to
soften the matrix in the heated area with an induction heater
positioned within a compaction member;
compacting the heated area of the at least one first
composite material ply layer during the lay-up of the at least
one first composite material ply layer over the at least one
second composite material ply layer;
while compacting the heated area, extracting heat energy
from the at least one first composite material ply layer and the
at least one second composite material ply layer with an active
cooling member that is part of the compaction member and that
is separate from the induction heater;
actively cooling the compaction member with the active
cooling member while compacting the heated area to extract the
heat energy; and
joining the at least one first composite material ply layer
and the at least one second composite material ply layer in a
compact state.
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18. A method of consolidating material, the method
comprising:
laying-up a material over a surface of a forming tool;
laying-up another material comprising fibers and matrix
over the material and the forming tool;
inductively heating a portion of the another material with
an induction heater of a compaction member; and
compacting the heated area of the another material solely
with the compaction member while actively extracting heat
from the another material with an active cooling member within
the compaction member.
Appeal Br. 21, 25 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner maintains the following rejections:3

3 The Examiner’s rejections of claim 8 under 35 U.S.C. § 112 have been
withdrawn. Ans. 11.
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Claim(s)
Rejected 35 U.S.C. § References/Basis
1–4, 7–10, 18, 19 103(a) Schmidt,4 Sandusky,5 Arp6
5 103(a) Schmidt, Sandusky, Arp, Kouno7
11–19 103(a) Schmidt, Murphy8
8, 12, 14, 16, 17, 20 103(a) Schmidt, Sandusky, Arp, Murphy

Rejection of Claims 1–4, 7–10, 18, and 19 over Schmidt, Sandusky, and Arp
Appellant argues claims 1–4 and 7–10 subject to the rejection as a
group and claims 18 and 199 as a group. Appeal Br. 12–16. Therefore,
claims 2–4 and 7–10 stand or fall with independent claim 1 and claim 19
stands or falls with independent claim 18, from which it depends. 37 C.F.R.
§ 41.37(c)(1)(iv). We separately address claims 1 and 18 below.
Claim 1
Appellant contends the Examiner erred in rejecting claim 1 because
Schmidt does not teach “extracting heat energy . . . with an active cooling
member” and “actively cooling the compaction member . . . to extract the
heat energy” as recited in the claim. Appeal Br. 13. Specifically, Appellant
contends Schmidt’s passing cooling water through coil portion 27 of
induction coil 26 in order to cool coil 26 is not an active cooling mechanism

4 US 4,978,825, issued Dec. 18, 1990.
5 US 5,587,041, issued Dec. 24, 1996.
6 US 2012/0057018 A1, published Mar. 8, 2012.
7 US 5,832,354, issued Nov. 3, 1998.
8 US 4,410,385, issued Oct. 18, 1983.
9 We understand Appellant’s heading “Claims 18 and 20” to be a
typographical error because claim 20 is not subject to this rejection. Appeal
Br. 15.
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that can be applied to the compaction member. Id. Appellant also contends
that Schmidt’s cooling feature is not separate from the induction coil
because induction coil 26 itself acts as the cooling assembly. Id. at 14.
Appellant argues that the combination of Schmidt with Sandusky’s lone
internal cooling member is based on improper hindsight because Sandusky’s
embodiment that also includes a heater with a cooling member externally
locates both the heater and the cooling member external. Id. at 14–15.
The Examiner regards Appellant’s arguments as asserting no single
reference specifically discloses a cooling device with an internal heater.
Ans. 13. The Examiner finds that, although Schmidt does not disclose direct
cooling of the pressing surface, Schmidt teaches that it is desirable to keep
the pressing surface cool in order to prevent sticking of the heated
thermoplastic composite to the pressing surface. Id. (citing Schmidt
1:23–32). Based on Schmidt’s teaching, the Examiner determines it would
have been obvious to a person having ordinary skill in the art to cool
Schmidt’s roller surface with Sandusky’s active cooling of the pressing
surface for the purpose taught by both Schmidt and Sandusky, namely to
cool the surface of the pressing member to prevent sticking. Id. at 14.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over the teachings of
Schmidt as modified by Sandusky and Arp.
Appellant’s argument that none of the cited references teach precisely
the active cooling member that is part of the compaction member and
separate from the induction heater as claimed is not persuasive because the
rejection is based on the references’ combined teachings. An obviousness
analysis “need not seek out precise teachings directed to the specific subject
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matter of the challenged claim.” KSR Int’l Co. v. Teleflex, Inc., 440 U.S.
398, 418 (2007). Appellant does not dispute the Examiner’s finding (Final
Act. 10) that Schmidt teaches induction heating of thermoplastic composite
materials to form a continuous bonded joint. Nor does Appellant dispute the
Examiner’s finding (Final Act. 12) that Schmidt teaches it is undesirable for
the pressing surface of a compaction roller to become heated causing
sticking to the material being pressed. The Examiner’s findings are
supported by the record. Schmidt Abstract, 1:24–30, 2:5–15. Based on these
teachings, the Examiner reasonably determines (Final Act. 12) any method
of actively cooling Schmidt’s compacting surface would have predictably
been suitable to prevent sticking. Therefore, the Examiner’s modification of
Schmidt’s cooling system by either adding to or replacing Schmidt’s system
with the active cooling systems disclosed by Sandusky and Arp would have
been predictably suitable to prevent sticking because Schmidt teaches a
benefit to preventing the pressing surface from becoming heated.
Appellant’s argument (Appeal Br. 14–15) that modifying Schmidt
with the secondary references would not result in a device that can perform
claim 1’s method because Sandusky’s embodiment with an internal cooling
member does not also include an internal heater member is not persuasive of
error because Appellant does not adequately explain why one skilled in the
art would understand Sandusky’s teaching alternative active cooling system
locations in a composite prepreg application device to be limited by
Sandusky’s disclosed heater design. In a determination of obviousness, a
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
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multitude of effective combinations does not render any particular
formulation less obvious.”). Moreover, “a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972) (citation omitted). Thus, we are not persuaded that a person
having ordinary skill in the art would understand Sandusky’s alternative
embodiments to be limited to only those devices.
The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Schmidt’s method that uses an induction
heater located within a compaction member and the separate active cooling
systems internally located within a compaction member taught by Sandusky
and Arps. Accordingly, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) over for the above reasons and those provided by the
Examiner.
Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 2–4 and 7–10 for the same
reasons.
Claim 18
Appellant contends the Examiner erred in rejecting claim 18 because
neither Schmidt nor Sandusky discloses compacting “solely with the
compaction member” and with a cooling member positioned within the
compaction member as required by claim 18. Appeal Br. 15. According to
Appellant, Schmidt does not teach actively cooling the material being
compacted and Sandusky discloses a separate shoe for compacting. Id.
Appellant asserts the Examiner ignores without reason Sandusky’s teaching
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of a separate shoe combined with Sandusky’s internal active cooling system.
Id.
We agree with the Examiner there is no reason Sandusky’s shoe needs
to be imparted to Schmidt’s device when performing internal cooling, which
cooling the Examiner equates to the recited “extracting heat.” Ans. 15–16.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see KSR, 550 U.S. at 417 (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
Accordingly, we affirm the Examiner’s rejection of claim 18 under
35 U.S.C. § 103(a). Because we find Appellant’s arguments unpersuasive of
error in the Examiner’s rejection of claim 18 for the reasons discussed
above, we likewise affirm the Examiner’s rejection of claim 19 for the same
reasons.
Rejection of Claim 5 over Schmidt, Sandusky, Arp, and Kouno
Appellant contends that the Examiner erred in rejecting claim 5 for
the same reasons presented with respect to claim 1. Appeal Br. 16. Because
we find Appellant’s arguments with respect to claim 1 unpersuasive for the
reasons discussed above, we likewise affirm the Examiner’s rejection of
claim 5 for the same reasons.
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Rejection of Claims 11–19 over Schmidt and Murphy
Appellant argues claims 11 and 13–17 subject to the rejection as a
group and claims 18 and 19 as a group. Appeal Br. 17–18. Therefore, claims
13–17 stand or fall with claim 11 and claim 19 stands or falls with claim 18.
37 C.F.R. § 41.37(c)(1)(iv). We separately address claims 11, 12, and 18
below.
Claim 11
Independent claim 11 is directed to a method of consolidating
composite material similar to claim 1, but, instead of requiring active
cooling, claim 11 requires that inductive heating is “with an induction heater
of a compaction foot,” compacting is “with a stamp member of the
compaction foot,” and “extracting heat energy . . . with a cooling member of
the compaction foot.” Appeal Br. 23 (Claims Appendix).
Appellant contends the Examiner erred in rejecting claim 11 because,
even though Murphy is relied upon for disclosing a platen for compacting,
Schmidt and Murphy do not disclose a compaction foot including a stamp
member, an induction heater, and a cooling member as required by claim 11.
Appeal Br. 17.
The Examiner finds any platen-type press is a compression foot
wherein the pressing surface of the platen-type press is a stamp member.
Ans. 17. The Examiner further finds converting Schmidt’s roller to a platen-
type press would have been within the level of skill and an obvious
modification to a skilled artisan. Id. The Examiner also finds Schmidt’s
active cooling of its induction coil will at least indirectly extract heat from
the composite since more heat would be present without such cooling. Id.
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In the Reply Brief, Appellant asserts “Schmidt is entirely silent to
actually cooling the material being compacted with the already present
cooling system.” Reply Br. 2.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 11 over the cited prior art references.
Appellant does not dispute the Examiner’s finding that it would have been
within the level of skill of a person having ordinary skill in the art to modify
Schmidt’s roller type press with Murphy’s platen-type press. Nor does
Appellant adequately rebut the Examiner’s reasoning that Schmidt’s cooling
system extracts heat from the material being compacted because more heat
would be expected in the absence of Schmidt’s cooling system.
Accordingly, we affirm the Examiner’s rejection of claim 11 over the
combination of Schmidt and Murphy for these reasons and those the
Examiner provides in the Final Office Action and Answer. Because we find
Appellant’s arguments unpersuasive of error in the Examiner’s rejection of
claim 11 over the combination of Schmidt and Murphy for the reasons
discussed above, we likewise affirm the Examiner’s rejection of claims 13–
17 for the same reasons.
Claim 12
Claim 12 depends from claim 11 and recites “cooling the stamp
member of the compaction foot with the cooling member positioned within
the compaction foot.” Appeal Br. 24 (Claims Appendix). Appellant contends
the Examiner erred in rejecting claim 12 because Schmidt and Murphy do
not disclose methods including such a compaction foot. Id. at 18.
The Examiner responds “the reasons for including the heater and
cooler internal to the pressing member are the same as for the roller,” thus
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there is no practical reason to change the general organization of the
pressing member when using a roller or a platen. Ans. 18.
We do not find Appellant’s arguments persuasive of error because
Appellant does not adequately rebut the Examiner’s finding that it would
have been within the level of skill of a person having ordinary skill in the art
to make the necessary modifications to Schmidt’s device to change a roller
with a platen-type compaction member. Accordingly, we affirm the rejection
of claim 12 over the combination of Schmidt and Murphy.
Claim 18
Appellant contends the Examiner erred in rejecting independent claim
18 because, even though Murphy generally describes the use of a platen
member, it does not remedy the deficiency of Schmidt with respect to
teaching an active cooling member. Appeal Br. 18.
We do not find Appellant’s argument persuasive of error. As the
Examiner finds (Ans. 18) and Appellant does not adequately rebut, flat type
presses and roller-type presses are obvious alternative pressing mechanisms
for applying heat and pressure to thermoplastic laminate stacked plies. Nor
does Appellant adequately rebut the Examiner’s reasoning that Schmidt’s
cooling system extracts heat from the material being compacted because
more heat would be expected in the absence of Schmidt’s cooling system.
Accordingly, we affirm the rejection of claim 18 over the combination of
Schmidt and Murphy for the above reason and those provided by the
Examiner in the Final Office Action and Answer. We likewise affirm the
rejection of claim 19 for the same reasons.

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Rejection of Claims 8, 12, 14, 16, 17, and 20 over
Schmidt, Sandusky, Arp, and Murphy
Appellant contends that the Examiner erred in rejecting claims 8, 12,
14, 16, 17, and 20 over Schmidt, Sandusky, Arp, and Murphy because
Murphy does not satisfy the deficiencies of Schmidt, Sandusky, and Arp as
discussed in connection with claim 1. Appeal Br. 19. Appellant additionally
argues that the cited references fail to teach a compaction foot as required by
claim 20, which recites “the cooling member positioned within the
compaction foot” and “the induction heater that is positioned within the
compaction foot.” Id.
We agree with the Examiner that Appellant does not raise any new
arguments in connection with the rejection of claims 8, 12, 14, 16, 17, and
20. As discussed above in connection with claim 1, the preponderance of the
evidence cited in this appeal record supports the Examiner’s determination
that the claimed subject matter would have been obvious in view of
Schmidt’s device comprising an induction heater located within a
compaction member and the separate active cooling systems internally
located within a compaction member taught by Sandusky and Arps.
Accordingly, we affirm the Examiner’s rejection of claims 8, 12, 14,
16, 17, and 20 for the reasons provided in the Final Office Action, Answer,
and discussed above in connection with claim 1.
CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–5 and 7–20 under 35 U.S.C. § 103(a) as
obvious over the cited prior art.

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13
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–4, 7–10,
18, 19 103(a)
Schmidt,
Sandusky, Arp
1–4, 7–10,
18, 19
5 103(a)
Schmidt,
Sandusky, Arp,
Kouno
5
11–19 103(a) Schmidt, Murphy 11–19
8, 12, 14, 16,
17, 20 103(a)
Schmidt,
Sandusky, Arp,
Murphy
8, 12, 14, 16,
17, 20
Overall
Outcome 1–5, 7–20

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)(1)(iv).

AFFIRMED