SC Innovation, LLC

Patent Trials and Appeals Board

Apr 29, 2021

2020005109 (P.T.A.B. Apr. 29, 2021)

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.
15/337,971 10/28/2016 Martin Augustyniak WPMO.P0004US-11612488 8515
26271 7590 04/29/2021
NORTON ROSE FULBRIGHT US LLP
1301 MCKINNEY
SUITE 5100
HOUSTON, TX 77010-3095
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
hoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN AUGUSTYNIAK

Appeal 2020-005109
Application 15/337,971
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, and 6–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “SC
INNOVATION, LLC” and “WALTER P. MOORE AND ASSOCIATES,
INC.” Appeal Br. 2.
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BACKGROUND
The written “disclosure relates to composite materials,” including
“composite materials with sufficient strength for use as building materials.”
Spec. ¶ 2.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. An architectural apparatus, comprising:
a support carrier comprising one or more layers configured
to provide strength to the apparatus;
a first protection layer on a first side of the support carrier
configured to provide protection to the support carrier from
external forces, the first protection layer comprising a
substantially transparent layer, wherein the substantially
transparent layer of the first protection layer comprises a
fluorinated polymer comprising ETFE; and
a second protection layer on a second side of the support
carrier,
wherein the support carrier, the first protection layer, and
the second protection layer comprise a composite material
having a tensile strength of at least 60 megapascals at 5% strain.
Appeal Br. 12.
REJECTIONS
1. The Examiner rejects claims 1, 4, 6, and 17 under 35 U.S.C. § 103 as
unpatentable over Takanashi2 in view of Takayanagi.3
2. The Examiner rejects claims 7–11 under 35 U.S.C. § 103 as unpatentable
over Takanashi in view of Takayanagi and Cerny.4

2 Takanashi et al., US 2013/0327399 A1, pub. Dec. 12, 2013.
3 Takayanagi et al., US 4,228,218, iss. Oct. 14, 1980.
4 Cerny, US 2014/0146382 A1, pub. May 29, 2014.
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3. The Examiner rejects claim 12 under 35 U.S.C. § 103 as unpatentable
over Takanashi in view of Takayanagi and Hirmer.5
4. The Examiner rejects claims 13, 14 under 35 U.S.C. § 103 as
unpatentable over Takanashi in view of Takayanagi and Yamada.6
5. The Examiner rejects claims 15 and 16 under 35 U.S.C. § 103 as
unpatentable over Takanashi in view of Takayanagi and Lee.7
DISCUSSION
For the reasons discussed below, we are persuaded of reversible error
in the rejection of independent claim 1.
With respect to claim 1, the Examiner finds that Takanashi discloses a
protective sheet with a support carrier and first and second protection layers,
as claimed except that Takanashi does not disclose that the support carrier
and protection layers comprise a composite material with the tensile strength
claimed. Final Act. 3–4 (citing Takayanagi Fig. 3; ¶ 60). With respect to
the claimed tensile strength, the Examiner finds that Takayanagi discloses a
composite material with a tensile strength of at least 60 megapascals at 5%
strain, as recited in the claim. Id. at 4 (citing Takayanagi Fig. 1; abstract).
The Examiner determines:
Therefore, from the teaching of Takayanagi et al., it would have
been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention, to modify the
protective sheet assembly of Takanashi et al. to include a
composite material having a tensile strength of at least 60
megapascals at 5% strain, as taught by Takayanagi et al., in order

5 Hirmer, US 5,763,050, iss. June 9, 1998.
6 Yamada et al., US 6,335,479 B1, iss. Jan. 1, 2002.
7 Lee et al., US 2015/0029607 A1, pub. Jan. 29, 2015.
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to provide the optimal strength of the protective sheet to prevent
damage due to extreme weather conditions.
Id. The Examiner also determines:
Furthermore, it would have been obvious to one having
ordinary skill in the art before the effective filing date of the
claimed invention, to contrive any number of desirable ranges
wherein the composite material has a tensile strength of at least
60 megapascals at 5% strain, since it has been held that where
the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art. In re Aller, 105 USPQ 233. Further, it
has been held that by discovering an optimum value of a result,
the effective variable involves only routine skill in the art. In re
Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to
MPEP § 2144.05. Therefore, it would have been obvious to one
having ordinary skill in the art before the effective filing date of
the claimed invention to contrive any number of desirable ranges
wherein the composite material has a tensile strength of at least
60 megapascals at 5% strain, in order to discover a material that
has sufficient strength to prevent damage due to extreme weather
conditions.
Id. at 5.
We agree with Appellant to the extent it is argued that the Examiner
has failed to show how the proposed combination would result in the
claimed structure. See, e.g., Reply Br. 5. As noted above, the Examiner
appears to rely on a combination of Takanashi and Takayanagi to arrive at
the claimed apparatus. The Examiner also explains that “the combination is
proper since Takayanagi . . . teaches a composite material which has the
claimed tensile strength[, and t]hus Takayanagi is not simply changing a
single part or material, but rather the composite, which is what the claim
recites.” Final Act. 14. Yet, the Examiner also explains that “the ETFE
layer is already taught by the primary reference Takanashi . . . [and] this
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ETFE material does not have to also be taught by the secondary reference.”
Id. Thus, on the one hand, the Examiner relies on Takayanagi as teaching a
composite material with the required tensile strength and indicates that the
combination would change the composite structure based on Takayanagi.
On the other hand, the Examiner relies on Takanashi as teaching an ETFE
layer as claimed. The claim requires a support carrier, a first protection
layer including ETFE, and a second protection layer, and the claim requires
that all three layers “comprise a composite material.” Thus, the claim
requires that the composite includes the ETFE layer and it is not clear how
the resulting combination, which “is not simply changing a single part or
material, but rather the composite,” would result in an apparatus with an
ETFE layer and tensile strength as claimed. Id.
The Examiner appears to additionally rely on a “routine optimization”
rationale to show obviousness, either with or without the addition of
Takayanagi’s teaching. See Final Act. 4–5. We are also persuaded of error
to the extent the Examiner relies on this rationale.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). However,
even where “routine optimization” is relied upon, the Examiner must still
provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). In the context of a determination that obviousness is based on
routine optimization, the Examiner “must provide some rational
underpinning explaining why a person of ordinary skill in the art would have
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arrived at the claimed invention through routine optimization” and why a
skilled artisan would have had a reasonable expectation of success in doing
so. In re Stepan, 868 F.3d 1342, 1346 (Fed. Cir. 2017).
We find that the Examiner analysis and the evidence provided fall
short of adequately explaining why a person of ordinary skill would have
arrived at the invention through routine optimization. In the rejection, the
Examiner asserts, without explanation, that routine optimization would
result in the discovery of “a material that has sufficient strength to prevent
damage due to extreme weather conditions.” Final Act. 5. Yet, the
Examiner provides no evidence or further explanation as to why one of
ordinary skill in the art, seeking to prevent damage from extreme weather
conditions, would modify the tensile strength of Takanashi’s device or
would have had a reasonable expectation of success in doing so.
Further, in response to Appellant’s argument regarding this issue, the
Examiner explains that “[i]t is common knowledge that solar modules are
positioned outdoors and are therefore subject to a wide variety of weather
conditions.” Id. at 16; see also Ans. 4–5. Yet again, the Examiner does not
provide evidence showing that one of ordinary skill in the art would have
recognized a connection between weather conditions and tensile strength
such that they would have been motivated to optimize this property.
Finally, we note that Takanashi discloses that weatherability and
durability are desirable properties in solar cells in order for them to be
sustainable for long periods of time. Takanashi ¶ 3. However, Takanashi
does not indicate or describe tensile strength as a property that can determine
sustainability of solar cells, and the Examiner does not provide further
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explanation as to why one of ordinary skill in the art would have been
motivated to optimize tensile strength based on Takanashi’s disclosure.
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 1. Accordingly, we do not sustain the rejection of claim 1.
For the same reasons, and because the Examiner does not provide further
evidence or analysis that would cure the deficiency in the rejection of
claim 1, we also do not sustain the rejections of dependent claims 4 and 6–
17.
CONCLUSION
We REVERSE the rejections of claims 1, 4, and 6–17.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 6, 17 103 Takanashi,
Takayanagi
1, 4, 6,
17
7–11 103 Takanashi,
Takayanagi, Cerny
7–11
12 103 Takanashi,
Takayanagi,
Hirmer
12
13, 14 103 Takanashi,
Takayanagi,
Yamada
13, 14
15, 16 103 Takanashi,
Takayanagi, Lee
15, 16
Overall
Outcome
1, 4, 6–
17

REVERSED