Thomas Corden

Patent Trials and Appeals Board

May 18, 2020

2018009243 (P.T.A.B. May. 18, 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.
13/810,867 04/09/2013 Thomas Corden 13011S-US-PCT 4044
8015 7590 05/18/2020
CYTEC INDUSTRIES INC.
1937 WEST MAIN STREET
STAMFORD, CT 06902
EXAMINER
SHAFI, LEITH S
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
Cheryle.Telesco@solvay.com
StamfordPatent@solvay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS CORDEN
____________________

Appeal 2018-009243
Application 13/810,867
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 21, 2017 decision finally rejecting claims 1, 5, 11, 12, 20, 27, and
39 (“Final Act.”). We have jurisdiction over the appeal 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 Cytec Industrial Materials (Derby)
Limited as the real party in interest (Appeal Br. 2).
Appeal 2018-009243
Application 13/810,867

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a mold tool 10 comprising a tool
body 12 having a plurality of tool body sections 14 (Abstract). At least two
of the tool body sections 14 comprise an inner polymer foam core 16 within
an outer skin 18 of resinous material (id.). The tool body sections 14 are
stacked one above the other, and there is a mold skin 20 extending over the
mold body 12 to provide a mold surface 22 on which moldable material can
be molded (id.). The general structure of the disclosed mold tool is shown in
FIGS 1 and 4, which are reproduced below.

Figs 1 and 4 are diagrammatic perspective views of a mold tool body as
described in the application on appeal.
Claim 1, which is representative of the claimed invention, is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A mould tool for moulding mouldable material, the tool
comprising a tool body comprising a plurality of layers of
elongate tool body sections in a stacked configuration, each tool
body section comprising an inner polymer foam core enclosed
along its length by an outer skin of fibre-reinforced resinous
material, and a fibre-reinforced mould skin surrounding the tool
body to provide a mould surface on which mouldable material
can be moulded,
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Application 13/810,867

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wherein the tool body sections in each layer extend side-
by-side in parallel and extend perpendicularly relative to the
tool body sections in an adjacent layer.

REJECTIONS
1. Claims 1, 11, 12, and 39 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Jacaruso2 in view of Tunis3 and Holmes.4
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacaruso, in view of Tunis and Holmes, and further in view of Lucas.5
3. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacaruso, in view of Tunis and Holmes, as evidenced by Yaws.6
4. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacaruso, in view of Tunis and Holmes, and further in view of Stenard.7
The Examiner withdrew the rejection of claims 11 and 12 under
35 U.S.C. § 112, second paragraph (Ans. 8–9). Accordingly, that rejection
is not before us.

DISCUSSION
Appellant does not make separate arguments regarding any of the
claims or rejections separately from claim 1 (Appeal Br. 8–9). Accordingly,

2 Jacaruso et al., US 5,340,423, issued August 23, 1994.
3 Tunis et al., WO 96/40488, published December 19, 1996.
4 Holmes, US 3,960,236, issued June 1, 1976.
5 Lucas et al., US 2010/0136292 A1, published June 3, 2010.
6 Yaws Critical Property Data for Chemical Engineers and Chemists,
Table 210 (Released July 16, 2012).
7 Stenard et al., US 2007/0261788 A1, published November 15, 2007.
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Application 13/810,867

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we focus our analysis on the rejection of claim 1 over Jacaruso in view of
Tunis and Holmes. The remaining claims stand or fall with claim 1.
The Examiner’s findings underlying the rejection are set forth at pages
4–5. The Examiner finds, inter alia, that Jacaruso discloses
a tool body (10, 14) comprising a plurality of elongated
tool body sections (14) (Figs. 1-2), each tool body section
comprising an inner polymer foam core (Col. 3 lines 45- 56)
enclosed along its length by an outer skin (Fig. 1 and Col. 3
lines 21- 35 teach headers 10 enclosing the cores 14 along the
core's length) and a mold skin (16) surrounding the tool body
(10, 14) (Figs. 2- 3 and Col. 4 lines 6- 10)
(Final Act. 4, original emphasis deleted, but shown emphasis added).
Jacaruso’s FIGS. 1 and 2 are reproduced below:

Jacaruso’s FIG. 1 is a perspective view of its support structure prior to
laying up of a layer of laminate. Jacaruso’s FIG. 2 is a perspective view
of a composite forming tool prior to dissolving the polystyrene foam.
Thus, the Examiner finds that headers 10 correspond to the claimed
“outer skin” as recited in the claim limitation “an inner polymer foam core
enclosed along its length by an outer skin.”
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Application 13/810,867

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Appellant argues that Jacaruso’s inner foam core is not “enclosed” by
headers 10 because the headers are only located between adjacent foam
cores, and do not cover the top of those cores, as shown in FIG. 1 (Appeal
Br. 4–5). The Examiner does not dispute Appellant’s explanation of the
form and positioning of Jacaruso’s headers, but argues that the broadest
reasonable interpretation of “enclosed” encompasses those headers:
The term “enclosed” is interpreted as surrounded or contained
under broadest reasonable interpretation. The claim limitation
requires an enclosure along the length of the cores. The
Appellant is unreasonably construing the term “enclosed” to
only mean surrounded on all sides. The Examiner submits that
Jacaruso clearly teaches the headers 10 containing a length of
the blocks 14 in Fig. 1 and Col. 3 lines 28- 44. Therefore,
Jacaruso teaches the outer skin enclosing a length of each core.
Furthermore, under broadest reasonable interpretation a
“length” of the core can be any area of the core which spans the
length of the core. Thus, interpreting the length as one of the
longitudinal faces of the core, Jacaruso clearly teaches a header
10 which encloses the longitudinal face of the blocks 14 as
shown in Fig. 1. The Appellant is unreasonably construing the
term “length” to only mean the entire longitudinal periphery of
the core.
(Ans. 9–10, emphasis omitted). Thus, a dispositive issue of this appeal is
whether Jacaruso’s headers “enclose” the foam cores within the meaning of
claim 1.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). In this instance, the
word “enclosed” is not specifically defined in the Specification. The
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Application 13/810,867

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broadest dictionary definition found at dictionary.com of “enclose” is “to
shut or hem in; close in on all sides” (emphasis added).8 However, the
Specification makes clear that the ends of the inner polymer foam cores need
not be covered by the outer skin, though they can be (Spec. 10). Thus, the
broadest reasonable interpretation of “enclosed” which is consistent with the
Specification would be a foam core surrounded on all sides but the ends by
the outer skin. There is no dispute that, using the foregoing construction,
Jacaruso’s foam cores are not “enclosed” by its headers.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). In the absence of a proper prima facie case of obviousness, an
applicant who complies with the other statutory requirements is entitled to a
patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On the record before us, the
preponderance of the evidence does not support a finding that Jacaruso
teaches or suggests a foam core which is enclosed by an outer skin, as set
forth in claim 1. Nor has the Examiner made findings which would establish
that this structure would have been otherwise obvious in view of Jacaruso,
Tunis and Holmes. Accordingly, we reverse the rejection of claim 1.

8 https://www.dictionary.com/browse/enclose?s=t, last accessed on May 1, 2020.
Appeal 2018-009243
Application 13/810,867

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Because the remaining claims on appeal depend from claim 1, we also
reverse the rejections of those claims.
In summary:

Claims
Rejected
35 U.S.C.
§ References(s)/Basis Affirmed Reversed
1, 11, 12, 39 103(a) Jacaruso, Tunis, Holmes
1, 11, 12,
39
5 103(a) Jacaruso, Tunis, Holmes, Lucas 5
20 103(a) Jacaruso, Tunis, Holmes, Yaws 20
27 103(a) Jacaruso, Tunis, Holmes, Stenard 27

Overall
Outcome
1, 5, 11,
12, 20, 27,
39

REVERSED