Ex Parte GOERING et alDownload PDFPatent Trial and Appeal BoardNov 5, 201812909582 (P.T.A.B. Nov. 5, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/909,582 10/21/2010 141216 7590 11/07/2018 McCarter & English, LLP / Albany International Worldwide Plaza, 825 Eighth Ave., 31st Floor New York, NY 10019 FIRST NAMED INVENTOR Jonathan GOERING 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 127504-01702 6192 EXAMINER THOMPSON, CAMIE S ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 11/07/2018 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): NY docket@mccarter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN GOERING and STEVE BIDDLE Appeal2017-009431 Application 12/909,582 Technology Center 1700 Before JEFFREY T. SMITH, WESLEY B. DERRICK, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to reject claims 1, 2, 5-17, and 35. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). 1 Appellants identify Albany Engineered Composites, Inc. as the real party in interest. Appeal Brief filed January 25, 2017 ("App. Br."), 2. 2 Claims 18, 19, and 22-34 stand withdrawn from consideration. Although the Examiner indicates that claim 35 also stands withdrawn from consideration at page 1 of the Non-Final Office Action entered October 26, 2016 (the action appealed from), the Examiner includes this claim in the rejection under 35 U.S.C. § 103(a) set forth at page 3 of the Office Action. Claim 3 5 was included in the group of claims Appellants elected for prosecution in response to the restriction requirement entered December 7, 2012. Response filed January 7, 2013, pg. 7. We therefore consider the Examiner's indication that claim 35 is withdrawn from consideration to be a typographical error. Appeal2017-009431 Application 12/909,582 We AFFIRM-IN-PART. STATEMENT OF THE CASE Appellants' invention is generally directed to a woven preform used in fiber-reinforced composite structures. Spec. 1, 11. 9--12. Independent claims 1 and 3 5 illustrate the subject matter on appeal and are reproduced below with contested language italicized: 1. An axisymmetric preform for use in a fiber-reinforced composite, the preform comprising: a seamless tubular woven structure having a central axis formed from two or more layers of warp yam interwoven with one or more weft yams having two or more diameters along a length thereof, wherein a first portion of the preform having a larger diameter is folded onto a second portion of the preform having a smaller diameter along the central axis. 35. A fiber-reinforced composite comprising: a plurality of warp yams interwoven with a single weft yam, thereby forming a seamless tubular woven structure having a central axis. App. Br. 7, 10 (Claims Appendix) (emphasis added). The Examiner sets forth the rejection of claims 1, 2, 5-17, and 3 5 under 35 U.S.C. § 103(a) as unpatentable over Rose et al. (US 2009/0202763 Al, published August 13, 2009) ("Rose") in view of Horovitz (US 6,086,968, issued July 11, 2000) in the Non-Final Office Action entered October 26, 2016 ("Office Act.")3, and maintains the rejection in the Examiner's Answer entered May 19, 2017 ("Ans."). 3 Although the heading for the rejection indicates that claims 1-17 and 35 are rejected, claims 3 and 4 were cancelled, as reflected on the first page of 2 Appeal2017-009431 Application 12/909,582 DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we affirm the Examiner's rejection of claim 35 under 35 U.S.C. § 103(a) for the reasons set forth in the Office Action, the Answer, and below, and reverse the Examiner's rejection of claims 1, 2, and 5-17 under 35 U.S.C. § 103(a) for the reasons set forth in the Appeal Brief and below. Claims 1, 2, and 5-17 The Examiner finds that Rose discloses an axisymmetric woven preform that includes one or more layers of warp yams interwoven with one or more layers of weft yams. Ans. 5; Rose ,r,r 2, 21, 24, 53. The Examiner finds that Rose discloses forming the axisymmetric preform using contour weaving, and discloses that the preform can include cylindrical, annular, and/or conical portions. Ans. 5; Rose ,r,r 53, 54, 65. The Examiner finds de facto that Rose thus discloses that the axisymmetric woven preform disclosed in Rose is tubular. Ans. 5 ("Rose is relied upon for a tubular structure."). The Examiner finds that Rose discloses that the preform is used to form a composite structure for producing aircraft window frames. Office Act. 3; Rose ,r,r 21, 22, 59. The Examiner finds that Rose does not disclose that the axisymmetric tubular woven preform described in the reference is seamless, and the Examiner relies on Horvitz for suggesting this feature. Ans. 5---6. The Examiner finds that Horovitz discloses a seamless, tubular woven structure (preform) having a tapered end. Ans. 6; Horovitz col. 4, 1. 66-col. 5, 1. 1, the Office Action, and the body of the rejection, which does not address claims 3 and 4. 3 Appeal2017-009431 Application 12/909,582 Figs. 2 and 3. The Examiner finds that Horovitz discloses impregnating the structure with a matrix material to form a lightweight, flexible, and strong structural support useful in aerospace and aircraft applications. Office Act. 4; Horovitz col. 4, 11. 44--45; col. 6, 11. 13-29. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellants' invention to use Horovitz's tapered, seamless, tubular woven structure as Rose's axisymmetric tubular woven preform due to the light weight, flexibility, and strength of Horovitz's structure. Ans. 5---6. The Examiner finds that Rose discloses that the width of the tubular axisymmetric woven preform described in the reference can change along the length of the structure. Office Act. 3 (citing Rose ,r 33). The Examiner finds that Rose discloses that the preform can include cylindrical, annular, and/or conical portions, and can be "folded into shape." Office Act. 3--4 (citing Rose ,r,r 35, 54). The Examiner determines that the "combination of the cylindrical, annular, and conical portions will have at least three portions with varying width, ... and [with] the fabric being folded, a first portion having a larger diameter is folded onto a second portion having a smaller diameter." Office Act. 3--4. The Examiner, however, does not provide a persuasive, reasoned explanation, supported by objective evidence, for why one of ordinary skill in the art would have been led to fold a first portion of the seamless tubular axisymmetric woven preform suggested by the combined disclosures of Rose and Horovitz onto a second portion of the preform having a smaller diameter, as required by claim 1. The Examiner does not identify any disclosure in Rose or Horovitz of folding a preform in this particular manner. Nor does the Examiner point to any disclosure in Rose or Horovitz, 4 Appeal2017-009431 Application 12/909,582 or provide any other evidence, that would have suggested folding a preform in this way. Consequently, the Examiner has failed to articulate the requisite reasoning having rational underpinning for why one of ordinary skill in the art seeking to produce an axisymmetric preform used to form a composite structure would have folded a first portion of the preform having a larger diameter onto a second portion having a smaller diameter, as recited in claim I. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Accordingly, the Examiner fails to establish that the combined disclosures of Rose and Horovitz would have suggested a seamless tubular woven structure having two or more diameters along its length in which a first portion having a larger diameter is folded onto a second portion having a smaller diameter, as required by claim 1. It follows that the Examiner fails to establish a prima facie case of obviousness of the subject matter recited in claim 1 within the meaning of 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability") We accordingly do not sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a), and also of claims 2, and 5-17, which each depend from claim 1. 5 Appeal2017-009431 Application 12/909,582 Claim 35 We previously addressed the rejection of claim 35 4 under 35 U.S.C. § 103(a) as unpatentable over Rose in view of Horovitz in an earlier appeal for the present application (Decision entered August 23, 2016 for Appeal 2015-003537). We sustain the rejection of claim 35 in the present appeal for the same reasons provided in the earlier appeal. DECISION We affirm the Examiner's rejection of claim 35 under 35 U.S.C. § 103(a), and reverse the Examiner's rejection of claims 1, 2, and 5-17 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 4 Appellants have not amended claim 35 since the earlier appeal. 6 Copy with citationCopy as parenthetical citation