The Boeing Company

Patent Trials and Appeals Board

Apr 29, 2021

2020000174 (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.
15/219,963 07/26/2016 Thomas K. Tsotsis 60070/15-2801-US-NP 4582
122219 7590 04/29/2021
von Briesen & Roper, s.c./ The Boeing Company
One North Franklin Street
Suite 2350
Chicago, IL 60606
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
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):
bmatthias@vonbriesen.com
patentadmin@boeing.com
ynunez@vonbriesen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS K. TSOTSIS and MARCUS A. BELCHER
Appeal 2020-000174
Application 15/219,963
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14, 21, and 22.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies The Boeing Company as the real party
in interest. Appeal Brief (“Appeal Br.”) filed June 3, 2019, 2.
2 Additional pending claims 15–18 have been withdrawn from consideration
and are not before us on appeal. Final Office Action (“Final Act.”) dated
January 8, 2019, 1–2; Appeal Br. 4.
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Application 15/219,963

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CLAIMED SUBJECT MATTER
The invention relates to a method of imparting electrical conductivity
to an interlayer material comprising at least one layer of a fabric of
thermoplastic fibers. Specification (“Spec.”) filed July 26, 2016 ¶ 3. The
method treats a surface of the interlayer material using an atmospheric-
pressure plasma to activate the surface and then deposits a layer of
conductive material onto the activated surface. Id. A plurality of such
electrically conductive interlayers may then be disposed alternately between
layers of reinforcing fibers, coupled together, and infused with a matrix
material, which is then cured to form an electrically conductive composite
material. Id. ¶ 4.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method of imparting electrical conductivity on an
interlayer material, the method comprising:
forming the interlayer material from at least one layer of
a fabric of thermoplastic fibers;
treating a surface of the interlayer material using an
atmospheric-pressure plasma such that the surface of the
interlayer undergoes a surface activation; and
depositing a layer of conductive material on the treated
surface of the interlayer material such that the layer of
conductive material increases a conductivity of the interlayer
material.
Independent claim 8 recites a method of manufacturing a composite
material comprising imparting electrical conductivity to a plurality of
interlayer materials as recited in claim 1, disposing these interlayers
alternately between layers of reinforcing fibers, coupling the interlayers and
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reinforcing layers together, infusing these coupled layers with a matrix
material, and curing the matrix material.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Urbain et al. (“Urbain”) US 8,404,072 B2 Mar. 26, 2013
Tam et al. (“Tam”) US 9,168,719 B2 Oct. 27, 2015
Tsotsis (“Tsotsis743”) US 2008/0289743 A1 Nov. 27, 2008
Tsotsis (“Tsotsis266”) US 2010/0264266 A1 Oct. 21, 2010
Price et al. (“Price”) US 2011/0159764 A1 June 30, 2011
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:
1. Claims 1–5 and 7 over Tsotsis266 in view of Urbain and
Tam;
2. Claims 6 and 8–14 as unpatentable over Tsotsis266 in view
of Urbain and Tam, and further in view of Price; and
3. Claims 21 and 22 as unpatentable over Tsotsis266 in view of
Urbain and Tam, and further in view of Tsotsis743.
OPINION
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
Appellant’s arguments and the evidence of record, we are not persuaded of
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reversible error in the stated rejections. Therefore, we affirm the Examiner’s
obviousness rejections based substantially on the fact findings, reasoning,
and conclusions set forth in the Final Office Action and the Examiner’s
Answer, which we adopt as our own. We offer the following for emphasis
only.
As to rejections 1 and 2, Appellant makes the same arguments in
support of patentability of claims 1 and 8, focusing on limitations common
to both claims. For convenience, our citations are to claim 1 only. As to
rejection 2, Appellant also argues dependent claims 6 and 13 as a separate
group. We select claim 6 as representative.
Claim 1
The Examiner finds that Tsotsis266 teaches a method for imparting
electrical conductivity on an interlayer material substantially as recited in
claim 1, except wherein the surface activation step is performed using
corona discharge rather than atmospheric-pressure plasma. Final Act. 3–4.
However, the Examiner finds that Urbain teaches a method for metallizing a
polymeric film by surface treating the film with plasma to increase adhesion
between a deposited metal layer and the polymer film. Id. at 4. The
Examiner also finds that Tam teaches a method of modifying fiber properties
by surface treatment using an atmospheric-pressure plasma. Id. The
Examiner concludes that it would have been obvious to have modified
Tsotsis266’s method to treat the interlayer material using an atmospheric-
pressure plasma in order to increase the adhesion between the interlayer and
a subsequently deposited metal coating. Id.
Appellant argues that Tsotsis266 fails to disclose or suggest that its
method imparts electrical conductivity. Appeal Br. 7. Appellant contends
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that nothing in Tsotsis266 infers that the applied metal coating imparts an
increased conductivity, particularly because many of Tsotsis266’s applied
metals are poor conductors, including titanium, aluminum, and titanium
alloys. Id. In this regard, Appellant asserts that one skilled in the art would
not have understood that applying a poor conductor metal corresponds to the
claimed deposition of a conductive layer, nor would the skilled artisan apply
just any metal merely having a higher conductivity than the interlayer
material for the purpose of imparting electrical conductivity thereto. Reply
Br. 2. Appellant also asserts that Tsotsis266 instead teaches that its metal
coating imparts strength to composite structures, rather than imparting
electrical conductivity. Appeal Br. 7. In addition, Appellant contends that
neither Urbain nor Tam remedy this deficiency of Tsotsis266. Id.
Appellant’s arguments are not persuasive of reversible error because
Appellant fails to show that Tsotsis266’s metals deposited on the interlayer
material would not inherently impart electrical conductivity thereto. As the
Examiner finds, even if Appellant is correct that Tsotsis266’s metals are
poor conductors, they are nonetheless more conductive than the interlayer
material. Ans. 3. Appellant does not dispute this finding. Where, as here, the
Examiner establishes a reasonable belief that a property or characteristic
recited in the claims would have been inherent in the prior art method, the
burden of proof shifts to Appellant to show that this characteristic or
property is not possessed by the prior art. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997). Appellant has not provided any evidence or
persuasive technical reasoning to refute the Examiner’s reasonable
determination that Tsotsis266’s deposited metal layer would necessarily
impart electrical conductivity to the underlying interlayer material. Indeed,
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as the Examiner notes (Ans. 3), Appellant concedes that Tsotsis266 deposits
a layer of conductive material on the interlayer surface. See Appeal Br. 10.
Appellant next argues that Tam fails to disclose treating a surface of
an interlayer material made of at least one layer of fabric of thermoplastic
fibers, but instead only teaches treating fibers. Appeal Br. 8. Appellant also
argues that there is no reason that would have led an ordinary artisan to
modify Tsotsis266’s method with Tam’s disclosure to arrive at the claimed
invention. Id. at 9–10. Appellant asserts that Tam teaches treating individual
fibers so that a resin may be applied thereto to increase physical strength of a
fabric formed from the fibers. Id. at 8. Appellant contends that because
treating an individual fiber is clearly distinguishable from treating a fabric,
Tam’s teachings cannot fairly be used to cure deficiencies in Tsotsis266 and
Urbain. Id. Also, Appellant asserts that Tam is silent on depositing a layer of
conductive material on the surface of an interlayer. Id. at 10.
Appellant’s arguments regarding Tam are not persuasive of reversible
error because they fail to address the manner in which Tam’s teaching is
combined with Tsotsis266’s and Urbain’s teachings.3 In particular, the
rejection relies on Tsotsis266’s method of forming a composite material by
first surface activating an interlayer material using corona discharge,

3 The Examiner also correctly notes (Ans. 3–4) that, to the extent that
Appellant is arguing that Tam fails to teach forming a conductive layer on an
interlayer material, such argument merely addresses Tam individually,
because Tsotsis266 already teaches these aspects of the claimed method.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based 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).
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followed by depositing a layer of metal on the interlayer material. We note
that Urbain teaches that corona discharge and plasma are known alternative
surface treatments of polymeric films to improve metal deposition. Urbain
2:3–8, 24; 9:38–43. Tam also teaches corona discharge and plasma are
known alternative surface treatments of polymeric fibers to improve surface
coating adhesion. Tam 1:22–24; 2:14–38. Tam further recognizes that
because corona discharge and plasma treatment are destructive of fiber
tenacity, such treatment may be performed in a less aggressive, non-vacuum
environment, i.e., atmospheric-pressure, which preserves fiber tenacity
without sacrificing coating bond enhancement. Id. at 2:40–44; 9:47–62.
Moreover, although Appellant attempts to distinguish Tam from
Tsotsis266 and the claimed method on the basis that Tam is limited to
plasma treatment of individual fibers, Tam discloses that the fibers may be
treated as part of a “fiber web,” suggesting that Tam considers fiber and
fiber web treatments to be interchangeable. Tam 2:14–39; 6:26–27; 8:5
(“[i]n a plasma treatment, the fibers, typically as a fiber web”). Therefore, a
preponderance of the evidence supports the Examiner’s rational
underpinning and reasoning in support of the modification of Tsotsis266’s
method to perform the surface treatment using atmospheric-pressure plasma
as a known alternative to the corona discharge in order to improve adhesion
of the metal layer while preserving fiber tenacity.
Appellant next argues that Urbain’s plasma treatment is size-limited
and uses specific conditions of maintained atmospheres and electrical
charges within an apparatus that are clearly distinguished from an
atmospheric-pressure treatment as claimed. Appeal Br. 10–11. This
argument is not persuasive because Urbain is not relied on to provide the
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conditions for the plasma treatment, but instead for its teaching that plasma
treatment of polymeric surfaces is a known alternative to corona discharge
taught by Tsotsis266 for improving adhesion to subsequently deposited
metal layers. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted) (“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.”).
Moreover, as the Examiner notes (Ans. 6), Appellant provides neither
persuasive technical reasoning nor evidentiary support for the assertion that
Urbain’s plasma treatment is size-limited. Nor does Appellant establish that
any feature of claim 1 excludes a size-limited process or includes any size
requirement.
For the above reasons, the Appellant has not identified reversible error
in the rejections of claims 1 and 8. Accordingly, we sustain the Examiner’s
obviousness rejections of claims 1–5 and 7 over a combination of
Tsotsis266, Urbain, and Tam, and claims 8–12 and 14 over the combination
of Tsotsis266, Urbain, Tam, and Price. In addition, because Appellant does
not separately argue the Examiner’s obviousness rejection of claims 21 and
22 over the combination of Tsotsis266, Urbain, Tam, and Tsotsis743, we
likewise sustain this rejection.
Claim 6
Claim 6 depends indirectly from claim 1, and further requires that the
conductive metal layer is deposited on the interlayer surface via chemical
vapor deposition performed at a temperature below the melting point of the
interlayer.
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The Examiner finds that although teaching that the metal layer is
deposited on the interlayer by chemical deposition, Tsotsis266 fails to teach
that such deposition is via chemical vapor deposition below the melting
point of the interlayer. Final Act. 5. However, the Examiner finds that Price
teaches forming a metal layer on a fabric of thermoplastic fibers via
chemical vapor deposition. Id. at 6. The Examiner concludes that it would
have been obvious to have deposited Tsotsis266’s metal layer by chemical
vapor deposition with a reasonable expectation of success because such
deposition was a known technique in the art for forming metal layers. Id.
Appellant argues that maintaining the chemical vapor deposition
temperature below the interlayer melting point is critical in order to maintain
the interlayer’s structural integrity. Appeal Br. 11. Appellant contends that
Price fails to teach the temperature of its deposition, but discloses melting a
resin to impregnate fibers to form a prepreg. Id. at 12. As such, Appellant
asserts that maintaining a deposition below the interlayer’s melting point is
of no consequence to Price. Id.; see also Reply Br. 5.
Appellant’s arguments as to claim 6 are not persuasive of reversible
error. Appellant fails to direct our attention to any evidence that the
temperature of the metal deposition yields unexpected results. The Examiner
finds that Price does not teach that the chemical vapor deposition of metal
onto the fabric surface melts or otherwise degrades the fabric or fibers.
Ans. 6. In addition, as the Examiner determines (id.), Appellant has not
shown that the determination of the optimum or workable conditions for
such deposition by routine experimentation would have been outside the
ordinary skill in the art, nor that the ordinary artisan would not have readily
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recognized that performing the deposition at a temperature below the melt
temperature of the interlayer would maintain its structural integrity.
Accordingly, a preponderance of the evidence supports the
Examiner’s conclusion that it would have been obvious to have modified
Tsotsis266’s method to deposit the metal layer by chemical vapor deposition
at a temperature below the melt temperature of the interlayer with a
reasonable expectation of success. We, therefore, sustain the Examiner’s
obviousness rejection of claims 6 and 13 over the combination of
Tsotsis266, Urbain, Tam, and Price.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Answer, the Examiner’s decision to
reject claims 1–14, 21, and 22 under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7 103 Tsotsis266,
Urbain, Tam
1–5, 7
6, 8–14 103 Tsotsis266,
Urbain, Tam, Price
6, 8–14
21, 22 103 Tsotsis266,
Urbain, Tam,
Tsotsis743
21, 22
Overall
Outcome
1–14, 21, 22

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Application 15/219,963

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED