Ex Parte Hucker et al

Patent Trial and Appeal Board

Mar 15, 2016

13002938 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/002,938 01/06/2011
24222 7590 03/17/2016
Maine Cernota & Rardin
547 Amherst Street
3rd Floor
Nashua, NH 03063
FIRST NAMED INVENTOR
Martyn John Rucker
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.
XA3211-US 5277
EXAMINER
SAWYER, STEVEN T
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
patents@mcr-ip.com
dcolby@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTYN JOHN RUCKER, SAJAD HAQ, and
MICHAEL DUNLEA VY1
Appeal2014-003309
Application 13/002,938
Technology Center 2800
Before JEAN R. HOMERE, ERIC S. FRAHM, and JASON J. CHUNG,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 6-8, and 16-24. Claims 4, 5, and 9-15 have
been canceled. App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
1 BAE Sytems PLC is the real party in interest. App. Br. 2.
2 The oral hearing for this appeal previously scheduled to be held on March
8, 2016, was waived by Appellants via facsimile on March 7, 2016.
Appeal2014-003309
Application 13/002,938
We reverse all of the Examiner's obviousness rejections, and enter a
new ground of rejection for claims 1 and 16.
REJECTIONS
(1) The Examiner rejected claims 1-3, 6, and 16-19 under 35 U.S.C.
§ 103(a) as unpatentable over Dow (US 2003/0104182 Al; published Jun. 5,
2003) and Wiener (US 5,524,679; issued June 11, 1996). Final Act. 2-7;
Ans. 2-5.
(2) The Examiner rejected claims 7 and 8 under§ 103(a) as
unpatentable over Dow, Wiener, and Ross '565 (US 3,479,565; issued Nov.
18, 1969). Final Act. 7-8; Ans. 5.
(3) The Examiner rejected claims 19 and 20 under§ 103(a) as
unpatentable over Dow, Wiener, and Lebby (US 5,906,004; issued May 25,
1999). Final Act. 8-9; Ans. 5---6.
(4) The Examiner rejected claims 21, 22, and 24 under§ 103(a) as
unpatentable over Dow, Wiener, and Ross '250 (US 3,371,250; issued Feb.
27, 1968). Final Act. 10-11; Ans. 6-7.
(5) The Examiner rejected claim 23 under§ 103(a) as unpatentable
over Dow, Wiener, Ross '250, and Carlson (US 4,115,185; issued Sept. 19,
1978). Final Act. 12; Ans. 7-8.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to the arguments. As
reflected below, the dispositive issue is whether the Examiner erred in
finding that Dow's electrically conductive copper wire is encompassed by
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Application 13/002,938
the recitation in the claims of the terms "metallised fibres" (see claims 1 and
16). In light of (i) the disclosed invention best exemplified by Appellants'
Specification pages 1-3; (ii) the plain and ordinary meaning of "metallised
fibre;" and (iii) Appellants' extrinsic evidence showing that metallized fibre
materials made of synthetic fibre that are electrically conductive and have a
metal coating were well-known at the time of Appellants' priority date (App.
Br. 6 and Reply Br. 1 citing Imhof (US 6,558,839 B2; issued May 6, 2003)),
we agree with Appellants the Examiner erred.
"In the patentability context, claims are to be given their broadest
reasonable interpretations. Moreover, limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written
description."). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
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Application 13/002,938
In the instant case on appeal, Appellants do not provide a specific
definition for the terms "metallised fibre" which is recited in claims 1 and
16. And, the plain and ordinary meaning of "metallised fibre" is a fibre
(whether synthetic or metal, e.g., carbon fiber, polymer, or copper) which is
then metallised (i.e., coated with metal).
Here, we find Appellants' extrinsic evidence consisting of the Imhof
reference to be determinative. One of ordinary skill in the art at the time of
Appellants' invention would understand that a reasonable interpretation of a
metallised fibre is a fibre (whether synthetic or metallic) that is then
metallised (i.e., coated with metal by any or a combination of mechanical,
thermal, or chemical treatments). As such, the Examiner erred in relying
upon Dow's solid, uncoated copper wire as teaching or suggesting the
"metallised fibre" recited in claims 1 and 16.
Accordingly, we are constrained by the record before us to reverse all
of the Examiner's obviousness rejections relying on the base combination of
Dow and Wiener, and specifically Dow, to teach or suggest Appellants' fibre
composite material having a hybrid material comprising electrically
conducting fibers which are metallised fibres.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103(a) for claims 1 and 16.
Claims 1 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dow, Imhof, and Wiener.
As to the teachings and suggestions of Dow and Wiener and the
motivation to combine these references, we refer to the Examiner's
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Application 13/002,938
discussion of Dow and Wiener in the Final Rejection (Final Act. 2---6) and in
the Answer (Ans. 2, 3, and 4), with the exception that we do not agree with
the Examiner that Dow's copper wire constitutes a metallised fibre. We
agree with the Examiner that the combination of Dow and Wiener teaches or
suggests, among other things, a rigid sheet form of fibre composite material
including (i) a hybrid material having electrically insulating fibres and
electrically conducting fibres such as metallised fibres, and (ii) a matrix
material, as set forth in claims 1 and 16 (Ans. 7). However, as stated above,
Dow's uncoated, solid copper wire fails to teach a metallised fibre.
We agree with Appellants (App. Br. 6; Reply Br. 1) that Imhof
teaches that metallised fibres are old and well-known in the art, and that
such fibres have been disclosed as being synthetic fibres which are later
coated with metal. Imhof discloses metallized fibres made of synthetic fibre
that are electrically conductive and have a metal coating (e.g., coated with
metal by any or a combination of mechanical, thermal, or chemical
treatments). Abs., last sentence; col. 1, 1. 22; col. 5, 11. 65---67; col. 6, 11. 24--
27; claims 1-3 (e.g., col. 7, 11. 54--56; col. 8, 11. 15-17 and 39--41).
It would have been obvious to one of ordinary skill in the art at the
time of Appellants' invention to modify the Dow/Wiener combination by
using a metallised fibre as taught by Imhof. Dow makes a strong suggestion
that "[t]he electrically conductive strand(s) employed in step 110 can be any
suitable conductive strand including, but not limited to, a copper wire, gold
wire, aluminum wire, an electrically conductive polymer wire or a
combination thereof' (Dow i-f 25) (emphases added). Put another way,
Dow's copper wire can be combined with (i.e., metallised with) another
metal such as gold, aluminum, etc. Dow i-f 25. We conclude that it would
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Application 13/002,938
have been obvious to use a metallised fibre such as that taught by Imhof in
the fibre composite material taught by Dow as modified by Wiener. The
motivation to make the combination would be to improve the performance
of the electrically conductive synthetic fibre and/or copper wire found in
Dow (i-f 25) as taught and suggested by Imhof (col. 1, 11. 56-67) to overcome
difficulties and inadequacies in the electrical performance and/ or properties
of any subsequent fibre structure.
Remaining Claims
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a rejection above under 37
C.F.R. § 41.50(b) for independent claims 1 and 16. However, we have not
reviewed the remaining claims to the extent necessary to determine whether
these claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the
instant Examiner to determine the appropriateness of any further rejections
based thereon.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 13/002,938
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
CONCLUSION
Appellants have established that the Examiner erred in rejecting
claims 1-3, 6-8, and 16-24 as being unpatentable under 35 U.S.C. § 103(a)
over the base combination of Dow and Wiener.
DECISION
For the foregoing reasons, the Examiner's decision rejecting claims 1-
3, 6-8, and 16-24 is reversed.
REVERSED
37 C.F.R. § 41.50(b)
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