Rubin, Alexander M. et al.

Patent Trials and Appeals Board

Mar 27, 2020

12711401 - (D) (P.T.A.B. Mar. 27, 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.
12/711,401 02/24/2010 Alexander M. Rubin 09-0898-US-NP 1679
63759 7590 03/27/2020
DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
EXAMINER
TUCKER, PHILIP C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
patentadmin@boeing.com
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER M. RUBIN, JAMES R. FOX, and
RANDALL D. WILKERSON

Appeal 2019-003115
Application 12/711,401
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1, 2, 4–6, 8, 10, 11, 13, 14, 16, 18, 19,
21, 22, 24–27, 31, and 33.2 We have jurisdiction 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. The Appellant identifies “The Boeing Company of
Chicago, Illinois” as the real party in interest (Appeal Brief filed October 10,
2018 (“Appeal Br.”) at 2).
2 See Appeal Br. 7–16; Reply Brief filed March 11, 2019 (“Reply Br.”) at
1–7; Non-Final Office Action entered May 24, 2018 (“Non-Final Act.”) at
2–28; Examiner’s Answer entered January 11, 2019 (“Ans.”) at 3–5.
Appeal 2019-003115
Application 12/711,401

2
I. BACKGROUND
This application has previously undergone an appeal. In Appeal
2014-006488, this Board affirmed the Examiner’s decision to reject claims
1, 2, 4–8, 10–14, 16, 18–22, 24–27, 31, and 32 that were pending at the time
(Decision on Appeal entered June 8, 2016). This second appeal was filed
after further examination.
The subject matter on appeal relates to processes for fabricating
thermoplastic composite parts (TPC) in which a pre-consolidated laminate is
continuously post-formed into a desired part shape under controlled heat and
pressure (Specification filed February 24, 2010 (“Spec.”) ¶¶ 2, 5).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A method of fabricating a composite part, comprising:
placing a laminate on a tool base, the laminate comprising
a pre-consolidated, integrated thermoplastic composite laminate;
substantially continuously feeding the laminate between
a mandrel and the tool base and through a forming zone
comprising a linear series of a plurality of sets of tool dies,
wherein each set of tool dies comprises a pair of opposing,
laterally movable die halves, wherein each pair of die halves has
a progressively different shape relative to other pairs of die
halves in other sets of tool dies of the plurality of tool dies;
heating the laminate to a temperature sufficient to allow
forming of the laminate but below a melting temperature of the
laminate, wherein a heated laminate is formed; and
incrementally forming features into sections of the heated
laminate as the heated laminate is being fed through the forming
zone, and wherein incrementally forming features into sections
is further performed by laterally moving, with respect to the
mandrel and the tool base, the pairs of die halves of the
plurality of tool dies to compress lateral portions of the heated
laminate, thereby respectively molding portions of the features
into the heated laminate by shapes of plurality of sets of tool
Appeal 2019-003115
Application 12/711,401

3
dies sequentially forcing a same portion of the laminate to
incrementally fold over the mandrel as the laminate passes
sequentially through the plurality of tool dies of the forming
section, wherein a contoured laminate is formed.
(Appeal Br. 17 (emphases added)).
II. REJECTIONS ON APPEAL
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a), as
follows:
A. Claims 1, 2, 4–6, 8, 10, 11, 13, 14, 16, 18, 19, 21, 22, 25–27,
and 33 as unpatentable over Suzuki et al.3 (“Suzuki”), Umeda,4
Puechberty,5 Frey,6 and Goad et al.7 (“Goad”);
B. Claim 24 as unpatentable over Suzuki, Umeda, Puechberty, and
Goad; and
C. Claim 31 as unpatentable over Suzuki, Umeda, Puechberty,
Frey, Goad, and Handbook of Composites 576–77 (2d. ed.,
1998) (“Peters”).
(Ans. 3–5; Non-Final Act. 2–28).
III. DISCUSSION
The Appellant’s principal contention is that the Examiner’s articulated
reason for combining the two key references—namely, Suzuki and
Umeda—is flawed because “[t]he Examiner has not adequately explained

3 EP 1 995 040 A1, published November 26, 2008.
4 US 5,043,128, issued August 27, 1991.
5 FR 2 384 604, published October 20, 1978.
6 US 4,759,815, issued July 26, 1988.
7 US 4,151,031, issued April 24, 1979.
Appeal 2019-003115
Application 12/711,401

4
how Umeda’s rectangular mandrel could be included with Suzuki’s device
in a way that would maintain[] Suzuki’s intended purpose of forming bends
in a strip-like laminate” (Appeal Br. 13). We agree with the Appellant.
Suzuki describes a method for producing a reinforcing fiber molding
by molding a strip-like laminate that has at least two bent portions in the
sectional form perpendicular to the longitudinal direction of the strip-like
laminate, has a web portion formed between the ends of the adjacent bent
portions, and has at least two flange portions protruding from the web
portion via the bent portions (Suzuki ¶¶ 17–18; Figs. 1–3). Thus, although
Suzuki contemplates strip-like laminates having bent portions with flanges
(e.g., moldings with cross-sections that are C-shaped, Z-shaped, J-shaped,
and I or H-shaped) (id. ¶¶ 8, 27–33), it does not disclose or suggest moldings
that have closed cross-sections.
The Examiner relies on Umeda’s teachings as suggesting the
modification of Suzuki to include the use of a mandrel (Non-Final Act. 3–4).
Umeda teaches an inflatable mandrel and a heating die to form moldings that
have closed cross-sections (e.g., circular or square) (Umeda col. 5, ll. 36–40;
Fig. 3(b)). But such moldings having closed cross-sectional shapes are not
within Suzuki’s contemplation in which multiple dies are used to form a
strip-like laminate having bent portions with flanges. To the extent that a
person having ordinary skill in the art would have been prompted to make
moldings having closed cross-sections, it would appear that such a
hypothetical person would have used Umeda’s process—not a modified
form of Suzuki’s process as the Examiner proposes. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several
elements is not proved obvious merely by demonstrating that each of its
Appeal 2019-003115
Application 12/711,401

5
elements was, independently, known in the prior art.”). See also In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”).
Because the Examiner’s reason for combining the references lacks
any finding regarding some interrelatedness in the references that would
form the basis for their combination, we do not sustain the rejection as
maintained against claim 1 (and claims dependent thereon). As the other
independent claims also include limitations directed to the use of a mandrel
(Appeal Br. 18–19, 20–22), we also do not sustain the rejection of all other
claims on appeal.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 8, 10,
11, 13, 14, 16,
18, 19, 21, 22,
25–27, 33
103(a)  Suzuki, Umeda,
Puechberty, Frey,
Goad
1, 2, 4–6, 8,
10, 11, 13, 14,
16, 18, 19, 21,
22, 25–27, 33
24 103(a) Suzuki, Umeda,
Puechberty, Goad
24
31 103(a) Suzuki, Umeda,
Puechberty, Frey,
Goad, Peters
31
Overall
Outcome
1, 2, 4–6, 10,
11, 13, 14, 16,
18, 19, 21, 22,
24–27, 31, 33

REVERSED