Paul Dunnwald

Patent Trials and Appeals Board

Sep 17, 2019

13576472 - (D) (P.T.A.B. Sep. 17, 2019)

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.
13/576,472 08/01/2012 Paul Dunnwald 23048-US (500-0015US) 9503
149749 7590 09/17/2019
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
FRANK, RODNEY T
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL DUNNWALD
____________________

Appeal 2018-009238
Application 13/576,472
Technology Center 2800
____________________

Before KAREN M. HASTINGS, MERRELL C. CASHION, JR, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3, 7–10, 17, 20, and 21 under 35
U.S.C. § 103(a) over the combined prior art of Pawloski et al. (US
3,425,950, issued Feb. 4, 1969) and Martin (US 6,311,538 B1, issued Nov.
6, 2001), with claims 4, 6, 11–17 and 22–25 rejected over Pawloski, Martin,
and Kelvin et al. (FR 1,287,266, published Mar. 9, 1962).
We have jurisdiction over the appeal 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 real party in interest as Illinois Tool
Works Inc. (Appeal Br. 4).
Appeal 2018-009238
Application 13/576,472

2

All of the independent claims are directed to a test panel. Independent
claims 1 and 4 are illustrative of the subject matter on appeal (emphasis
added to highlight key limitations in dispute):
1. A fluid penetrant inspection test panel comprising:
an uncoated substrate having a first surface and an
opposing second surface,
the first surface configured to receive a dye penetrant
thereon; and
a plurality of sensitivity indicators formed as blind holes
by removing material in the first surface, the plurality of
sensitivity indicators having a cross-sectional profile defined by
a continuous edge, wherein at least two of the plurality of
sensitivity indicators differ in one or both of diameter and depth.

4. A fluid penetrant inspection test panel comprising:
a substrate having a first surface and an opposing second
surface, the first surface configured to receive a dye penetrant
thereon; and
a plurality of sensitivity indicators formed by removing
material in the first surface, the plurality of sensitivity indicators
having a cross-sectional profile defined by a continuous edge,
wherein at least one of the plurality of sensitivity
indicators has a non-circular cross-sectional profile.
ANALYSIS
We review the appealed § 103(a) rejection for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf. 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 having
Appeal 2018-009238
Application 13/576,472

3
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is well settled that a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992).
Appellant’s arguments are unavailing because, as pointed out by the
Examiner, they address the references individually but do not address
sufficiently the Examiner’s obviousness position (e.g., Ans. 4; see generally
Appeal Br. and Reply Br.).
The Examiner aptly points out that merely stating that Martin has a
brittle coating does not address the Examiner’s position that it would have
been obvious to use holes of varying sizes as exemplified in Martin’s test
panel in the test panel of Pawloski. Indeed, Appellant’s Specification
describes that the use of varying sizes of starburst shapes were known to be
used in test panels to indicate different levels of sensitivity (Spec. ¶ 4).2

2 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
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Application 13/576,472

4
One of ordinary skill would have readily inferred from the applied
prior art the use of holes of varying sizes in Pawloski’s test panel. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“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 the references would have suggested to those of
ordinary skill in the art”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures”).
Further, as we “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ,” we find a person of
ordinary skill in the art would have, within their level of skill, made the
holes of various shapes and sizes, including a noncircular shape (claim 4, as
exemplified by the grooves of Kelvin’s Figures 1–4A), and would have used
a triangular substrate (claims 11–14, as exemplified by the triangular
substrate of Kelvin’s Figures 1, 3, and 4) based on the combined teachings
of the applied prior art for reasons articulated by the Examiner (see
generally Ans.3). KSR Int’l, 550 U.S. at 418; see also id. at 421 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d

patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”) and In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).

3 The Examiner did not, however, need to repeat all of Appellant’s
arguments made in the Appeal Brief at length as was done in this Answer.
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Application 13/576,472

5
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of “the inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ)).
Accordingly, we affirm the Examiner’s prior art rejections under 35
U.S.C. § 103(a) for the reasons given above and presented by the Examiner.

DECISION

Claims
Rejected
Basis Affirmed Reversed
1, 3, 7–10, 17, 20 and
21
35 U.S.C. § 103(a)
Pawloski, Martin
1, 3, 7–10, 17, 20
and 21

4, 6, 11–17 and 22–25 § 103(a) Pawloski,
Martin, Kelvin,
Hughes
4, 6, 11–17 and
22–25

Overall Outcome 1, 3, 4, 6–17 and
20–25

The Examiner’s § 103(a) rejection is affirmed.

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)(1).
AFFIRMED