Ex Parte La Forest et al

Patent Trials and Appeals Board

Jun 4, 2019

13550190 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/550, 190
89941 7590
HONEYWELL/S&S
Patent Services
115 Tabor Road
P.O.Box 377
FILING DATE
07/16/2012
06/06/2019
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Mark L. La Forest
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.
H0034947-1160 2869
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
patentservices-us@honeywell.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK L. LA FOREST and SLA WOMIR FRYSKA
Appeal2018-006954
Application 13/550, 190
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1, 3-9, 12, and 19-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "Honeywell International, Inc."
Appeal Brief of March 3, 2015 ("Br."), 3.
2 Final Office Action of October 4, 2017 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of April 19, 2018 ("Ans.") and the
Reply Brief of June 19, 2018 ("Reply Br.").
Appeal2018-006954
Application 131550, 190
CLAIMED SUBJECT MATTER
The claims are directed to a method of densifying a carbonized
perform to produce a carbon-carbon composite. Spec. 3. 3 Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for forming a carbon-carbon composite
component having a final density, the method comprising:
densifiying a carbonized preform via at least one of resin
transfer molding (R TM) or vacuum pitch infiltration (VPI);
subsequently densifying the carbonized preform via at
least one of chemical vapor infiltration (CVI) or chemical vapor
deposition (CVD) to an intermediate density of approximately
1. 75 grams per cubic centimeter (glee) to approximately 1.9 glee;
heat treating the densified preform having the intermediate
density of approximately 1.75 glee to approximately 1.9 glee to
open internal pores of the densified preform, wherein a duration
and temperature of the heat treatment is selected such that the
internal pores exhibit a pore size of less than about 10 microns
following the heat treatment;
infiltrating the opened internal pores of the densified
preform with low viscosity resin to increase the density of the
preform, wherein the low viscosity resin exhibits a viscosity less
than approximately 1500 centipoise at room temperature; and
following the infiltration of the opened internal pores with
the low viscosity resin, thermosetting the low viscosity resin
within the preform to form a final densified preform having the
final density that is greater than that of the intermediate density.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
La Forest ("EP 347")
Simpson
La Forest ("USP 070")
EP 2088347 Al
EP 1731292 A2
US 20101000070 Al
3 Application No. 131550,190 filed July 16, 2012.
2
12.08.2009
13.12.2006
Jan. 7,2010
Appeal2018-006954
Application 13/550, 190
Boutefeu ("USP 93 8") US 2008/0128938 Al Jun. 5, 2008
REJECTIONS
The Examiner rejects claims 1, 3, 4, 6-9, 12, and 19-25 under
pre-AIA 35 U.S.C. 103(a) as being unpatentable over USP 070, EP 347, and
USP 938. Final Act. 5.
The Examiner rejects claim 5 under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over USP 070, EP 347, USP 938, and Simpson. Final
Act. 11.
OPINION
Rejection of Claim 14
The Examiner finds that USP 070 describes a method for forming a
carbon-carbon composite which include the recited densifying steps and the
4 Appellants do not present separate arguments for claims 3, 4, 6-9, 12, and
19-22, 24, and 25. These claims stand or fall with claim 1. Br. 3-12; see
also 37 C.F.R. § 41.37(c)(l)(iv)(2013). Appellants argue claims 9 and 24
separately, for the first time, in the Reply Brief and assert that the new
argument for claims 9 and 24 is a response to a new rejection of claim 1 by
the Examiner. Reply Br. 13-14. An argument raised for the first time in a
Reply Brief can be considered waived if Appellants do not explain why it
could not have been raised previously. See Ex parte Nakashima, 93 USPQ2d
1834 (BP AI 2010) (informative) ( explaining that arguments and evidence
not timely presented in the principal Brief will not be considered when filed
in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause."). In this case, we do not agree that the Examiner has entered a new
rejection of claim 1. See Ans. 3-6 (rejecting claim 1 as was done in the Final
Action). What Appellants assert as the new rejection is the Examiner's
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Application 13/550, 190
heating step. Final Act. 5-6. The Examiner finds that USP 070 describes
impregnation of pitch resin into a carbon fiber perform followed by
carbonizing whereas EP 34 7 describes opening the internal pores of the
densified pores via heat treatment. Id. at 6 (citing EP 347 iJ 10), 7. The
Examiner finds that USP 938 describes a RTM process using a resin with an
overlapping range of viscosity and thermosetting the resin. Id. at 7-8. The
Examiner explains that a skilled artisan, based on the combined prior art
teaching, would have found claim 1 obvious. Id. at 6, 7 (providing an
explanation as to why the skilled artisan would have combined these
references, i.e., that the references are directed to composite material used in
the aviation industry); see USP 070 ,i 2, EP 347 iJ 1, USP 938 ,i 2; see also
Final Act. 4 (finding that USP 938 discloses improvements to RTM process
applicable in various industries including the aviation industry similar to the
applications described in the Specification at issue here).
Appellants do not dispute the prior art teachings but argue that the
Examiner reversibly erred in rejecting claim 1 because a skilled artisan
would not have combined USP 070 which relates to a carbon matrix
composite with USP 938 which relates to a polymer matrix composite. Br.
6-7. Appellants argue that USP 93 8 includes a final step of polymerizing a
resin to produce the polymer matrix composite instead of the carbon matrix
produced in USP 070. Id.
Appellants do not adequately explain why the difference in the prior
art products shows reversible error in the Examiner's finding that the skilled
response to the arguments raised in the Appeal Brief. Our decision is based
on the rejections in the Final Action. 35 U.S.C. § 134. We accordingly
decline to address the argument for claims 9 and 24 belatedly raised in the
Reply Brief.
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Appeal2018-006954
Application 13/550, 190
artisan - having ordinary creativity - would have implemented "a
predictable variation" of the prior art process steps. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can
implement a predictable variation [ of a known work], § 103 likely bars its
patentability."). Appellants' argument that the skilled artisan would not have
combined the process steps in the references unless the references were
directed to the same end product is not supported by case law or regulation.
Appellants have not argued or explained why the references are
nonanalogous or that there is unpredictability in combining the process
steps. We are therefore not persuaded that the Examiner reversibly erred
here.
Appellants also argue that the Examiner erred in failing to establish
that USP 93 8 describes an improvement over the conventional R TM process
described in USP 070. Br. 8, 10. From the outset, it is long established that
an obviousness analysis "do[es] not necessarily require explication in any
reference or expert opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1329 (Fed. Cir. 2009). Appellants acknowledge that the stated
objective of USP 93 8 is "to provide method of making composite material
parts with fiber reinforcement and a resin matrix, suitable for obtaining parts
that are thick, with low porosity, and without presenting the above-
mentioned drawbacks of prior art methods using pre-impregnated
reinforcement or a conventional RTM process." USP 938 ,-J 7. Appellants do
not provide a citation to the record supporting their argument that the
particular drawbacks mentioned in USP 938 are only applicable to polymer
matrix composition and not applicable to other compositions. USP 938 in
fact states that the invention is for "making thick parts out of composite
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Application 13/550, 190
material" and "is applicable to fabricating a wide variety of parts, whether
parts for rocket engines or airplane engines, or parts suitable for use more
generally in the fields of aviation and space, or in other fields." Id. ,i 2.
Appellants provide no factual evidence showing that a skilled artisan would
have understood USP 93 8 to be applicable only to a polymer matrix and
none other. Appellants' attorney argument, again premised on the difference
in the prior art products, does not identify reversible error in the Examiner's
finding that claim 1 is no more than the combination of known methods that
yields predictable results. See KSR, 550 U.S. at 416.
According to Appellants, the skilled artisan would have "avoided" the
Examiner's proposed combination which "would have resulted in a 'final'
composite material having a polymer within the perform rather than
converting the polymer carbon within the reinforcement fibers via
carbonization." Br. 7; see also id. at 10. Appellants, however, do not explain
why the skilled artisan would have ignored the teachings in the cited
references including USP 070 and EP 34 7 instead of "fit the teachings of
multiple patents together like pieces of a puzzle" to arrive at the method of
claim 1. KSR, 550 U.S. at 420 ("[I]n many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle."). In any event, Appellants' attorney argument is not supported by
factual evidence and is not persuasive of reversible error. Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is no
substitute for evidence.").
Rejection of Claim 23
Claim 22, from which claim 23 depends, depends from claim 1 and
additionally recites "wherein the intermediate density of the densified
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Application 131550, 190
preform is less than approximately 1. 8 grams per cubic centimeter." Claim
23 additionally recites "wherein the final density of the final densified
preform is greater than approximately 1. 85 grams per cubic centimeter."
The Examiner finds that EP 347 describes densifying a carbonized
perform by chemical vapor deposition to reach a density of 1.3 glee. Final
Act. 22 (citing EP 347 iJ 27). The Examiner finds that USP 070 describes
forming a carbon-carbon composite having a density of from 1.8 glee to 2.05
glee. Id. ( citing USP 070 ,i 42). Appellants do not dispute these findings but
argue that the Examiner reversibly erred in rejecting claim 23 because USP
070 describes reaching a final density from a density of 1.9 gglcc whereas
EP 347 describes a final density of 1.75 gglcc. Br. 12. Each reference cited
by the Examiner 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., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). The recited properties of claims 22 and 23
are undisputedly present in the prior art, and Appellants' argument attacks
the references individually, rather than considering what the combined
references would have suggested to the person of ordinary skill in the art. Id.
Because the Examiner's fact findings with regard to claims 22 and 23 are not
challenged, we accept them as facts. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964). The Examiner's rationale to combine USP 070 and EP
347 is also unchallenged. Compare Final Act. 6-7, with Br. 5-13. No
reversible error has been identified by Appellants and we sustain the
rejection of claims 22 and 23.
Rejection of Claim 5
Appellants do not make separate arguments for claim 5. Br. 13-14
(arguing that the additional reference cited for the rejection of claim 5 does
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Application 13/550, 190
not remedy the deficiencies of the references cited for the rejection of claim
1). We sustain the Examiner's rejection of claim 5. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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