Ex Parte Baumann

Patent Trial and Appeal Board

Nov 26, 2014

10698215 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN A. BAUMANN
____________

Appeal 2012-010089
Application 10/698,215
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 2, 3 and 62–67. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to an apparatus and methods
for clamping along a work piece.” Spec., p. 1, ll. 29–30. Independent claim
64, reproduced below, is illustrative of the claims on appeal:
Appeal 2012-010089
Application 10/698,215

2
64. A system for clamping aircraft skin having a
complex surface shape to an aircraft frame, the
system comprising:
a crib configured to support the aircraft
frame; and
a chain of interspersed coupling units and
force applying units, the chain stretching across the
surface of the skin, the coupling units allowing the
force-applying units to conform to the complex
shape of the skin, the force-applying units for
pressing the skin against the frame.

EVIDENCE RELIED ON BY THE EXAMINER
Dearman US 4,356,615 Issued Nov. 2, 1982
Trickett US 5,236,213 Issued Aug. 17, 1993
Sollmann GB 2,169,836 A Published July 23, 1986

REJECTIONS ON APPEAL
Claims 2 and 62–66 are rejected under 35 U.S.C. § 102(b) as
anticipated by Sollmann. Ans. 4–9.
Claims 64–65 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sollmann. Ans. 4, 9–10.
Claims 2, 62–63, and 66 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dearman. Ans. 4, 10–11.

ANALYSIS
The rejection of claims 2 and 62–66 under 35 U.S.C.
§ 102(b) as anticipated by Sollmann
Like Appellant and the Examiner, we first address independent claim
64. Appellant first asserts that Sollmann does not disclose a “crib” as recited
in claim 64 and that, in the Final Office Action, the Examiner “admits that
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Application 10/698,215

3
Sollmann does not show a crib in any of the figures.” Appeal Br. 7. The
Examiner responds that, based on the Specification, the term “crib” should
be broadly defined as “a means for supporting the work[piece]” because the
Specification “lack[ed] any other structural or narrative recitations to
exclude said broad definition.” Ans. 5.
We are not persuaded by Appellant’s arguments because they are not
commensurate with the grounds of rejection. In the Final Office Action, the
Examiner found the “crib” limitation met by the “not shown means, e.g.,
floor/ground or others supporting” the work piece. Final Act. 3 (mailed June
9, 2011). In the Appeal Brief, Appellant does not address the substance of
Examiner’s inherency argument from the Final Office Action. Appeal Br. 7.
And because Appellant did not file a Reply Brief, Appellant does not
address the restated inherency argument or the claim construction argument
from the Answer. Ans. 5. Accordingly, we see no error in the Examiner’s
finding that Sollmann satisfies the “crib” limitation.
Appellant next asserts that “Sollmann does not describe a chain of
interspersed coupling units and force applying units. Sollmann’s so-called
force-applying unit is a screw 19, which forces the repair piece 2 against the
body plate 1.” Appeal Br. 7. The Examiner responds that bars 10 and 12,
linkages 11, and legs 13 and 19 satisfy the recited “chain of interspersed
coupling units and force applying units.” Ans. 6. Further, the Examiner
relies on page 2, lines 70–86 of Sollmann as disclosing the possibility that
multiple legs can apply force to a work piece even though only one such leg
(19) is shown in Figure 1 of Sollmann. Id.
Figure 1 of Sollmann is reproduced below:
App
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Appeal 2012-010089
Application 10/698,215

5
that Sollmann discloses a “chain of interspersed coupling units and force
applying units.”
Appellant also asserts that, in Sollmann, “[t]he links 11 do not allow
the screws 7 to conform to the shape of the underlying work piece.” Appeal
Br. 7. With this, Appellant argues that Sollmann does not satisfy the
limitation “the coupling units allowing the force-applying units to conform
to the complex shape of the skin” recited in claim 64. The Examiner
responds that “Sollmann discloses . . . using legs that are adjustable to
conform to the shape of the body.” Ans. 6 (citing Sollmann, p. 1, ll. 103–
106).
We are not persuaded by Appellant’s arguments because they are not
commensurate with the grounds of rejection. In the Final Office Action, the
Examiner identified elements 7 and 13–20 in Sollmann as the “force-
applying units” that “conform to the complex shape of the skin.” Final Act.
3. In addition, the Examiner relied on the same discussion from Sollmann as
the Examiner now relies on in the Answer for the teaching that multiple legs
can be used. Compare Final Act. 3 (citing Sollmann, p. 1, ll. 105–07) with
Ans. 6 (citing Sollmann, p. 1, ll. 103–06). In the Appeal Brief, Appellant
does not address the substance of Examiner’s argument from the Final
Office Action. Appeal Br. 7. Instead, Appellant only addresses one of the
possible “force-applying units” identified by the Examiner—element 7. Id.
Because Appellant did not file a Reply Brief, Appellant does not address the
narrowed group of “force-applying units” identified by the Examiner in the
Answer. See Ans. 6 (identifying only “legs 19 and 13” as “force-applying
units”). Accordingly, we see no error in the Examiner’s finding that
Sollmann satisfies the limitation at issue.
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Application 10/698,215

6
For these reasons, we affirm the Examiner’s rejection of claim 64 as
anticipated by Sollmann.
We turn now to claim 62, which recites limitations generally similar
to those in claim 64, but with broader language. For example, where claim
64 recites an “aircraft frame” (or “frame”), claim 62 recites an “underlying
work piece.” And where claim 64 recites “aircraft skin” (or “skin”), claim
62 recites a “top work piece.” Appellant makes the same arguments
regarding claim 62 as for claim 64. Appeal Br. 9. For the same reasons
discussed above, we affirm the Examiner’s rejection of claim 62 as
anticipated by Sollmann. Because Appellant did not separately argue the
patentability of claim 63 (which depends from claim 62) or claim 2 (which
depends from claim 63) (id.), we also affirm the rejection of those claims as
anticipated by Sollmann.
We turn now to claim 65, which recites as follows:
65. The system of claim 64, further comprising
an aircraft frame supported by the crib; and aircraft
skin having a complex surface shape, the aircraft
skin pressed against the aircraft frame.

Appellant asserts that the rejection of this claim should be withdrawn
because “[t]he final office action admits that Sollmann does not expressly
describe aircraft skin or an aircraft frame” but rather “simply alleges that
Sollmann’s system is ‘capable of being applied to an aircraft skin/frame.’”
Appeal Br. 8. Further, Appellant argues that “the final office action does not
make a showing to support inherency.” Id. The Examiner responds that “a
recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the prior art. If the
Appeal 2012-010089
Application 10/698,215

7
prior art structure is capable of performing the intended use, then it meets
the claim.” Ans. 7.
We disagree with the Examiner’s position because it focuses only on
the language of the preamble to claim 65 (recited in claim 64) and ignores
the structure explicitly recited in claim 65. The Examiner relies on
guidelines relating to whether language in a claim preamble provides a
limitation. See, e.g., In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).
The preamble, however, is not at issue. Here, the body of claim 65 recites at
least two structural elements: “an aircraft frame” and “aircraft skin.” Even
if, as asserted by the Examiner, the system disclosed in Sollmann is capable
of being used on an aircraft frame and aircraft skin, the Examiner has not
demonstrated that Sollmann explicitly or inherently discloses those
structures, as required by dependent claim 65. Accordingly, we reverse the
rejection. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(reversing an anticipation rejection because the capability of performing the
same function does not necessarily satisfy the requirement of an express or
inherent disclosure of all recited limitations).
We turn now to claim 66. Appellant again asserts that Sollmann does
not disclose the recited “crib.” Appeal Br. 9. In addition, Appellant asserts
that Sollmann does not disclose a “chain of lockable coupling units and
force applying units” because “Sollmann shows only a single force-
applying unit (screw 19) . . . .” Id. at 10. In response to these arguments, the
Examiner relies on the earlier-stated positions. Ans. 8. For the same
reasons stated above, we are not persuaded by Appellant’s arguments.
Appellant also asserts as follows:
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Application 10/698,215

8
Sollmann does not describe lockable coupling
units that are (1) unlocked to make the chain
flexible and allow the force-applying units to
conform to the upper surface of the repair piece 2
and that are (2) locked to make the chain rigid and
allow the force-applying units to press the repair
panel 2 against the body plate 1. . . . The bars 10
and 12 might be lockable and unlockable (via
linkage 11), but those bars 10 and 12 are not
interspersed with the force applying unit (screw
19).

Appeal Br. 10. With this, Appellant appears to assert that Sollmann does not
satisfy the requirement for “coupling units interspersed with the force
applying units” from claim 66. The Examiner responds that Sollmann
satisfies the requirement if “interspersed” is “broadly defined as ‘placed at
intervals or among.’” Ans. 9.
We agree with the Examiner. As discussed above, Sollmann discloses
that more than one of the “force applying units” can be used. Sollmann,
p. 2, ll. 88–91. Because Sollmann teaches that more than one such “force
applying units” can be used, we find that Sollmann satisfies the limitation at
issue when applying the definition of “interspersed” proposed by the
Examiner. Appellant does not dispute that proposed definition.
Accordingly, we affirm the rejection of Claim 66 as anticipated by
Sollmann.
The rejection of claims 64 and 65 under 35 U.S.C.
§ 103(a) as unpatentable over Sollmann
In addition to rejecting claims 64 and 65 as anticipated by Sollmann,
as discussed above, the Examiner also rejects claims 64 and 65 as
unpatentable under 35 U.S.C. § 103(a) over Sollmann alone. Final Act. 5;
Appeal 2012-010089
Application 10/698,215

9
Ans. 9–10. In the Final Office Action, the Examiner provided the following
rationale:
[Sollmann] meets all of the limitations of the
indicated claims, as described above, except for
disclosing the application of the system to an
aircraft skin/frame. As indicated above the
preamble and the narrative language in claim 64 is
considered to fail in reading over the anticipation
rejection applied, however, in the alternative, it
would have been obvious to one of ordinary skill
in the art, at the time the invention was made, to
apply the invention of [Sollmann] to other
workpieces, e.g., in applying a skin to an aircraft
frame, since it would only require routine
experimentations with predictable results; and
since it would amount to applying a known
technique to a known device ready for
improvement to yield predictable results.

Final Act. 5.
Because we affirm the rejection of claim 64 as anticipated by
Sollmann, we do not address the obviousness rejection of that claim.
As to the obviousness rejection of claim 65, Appellant asserts that the
Final Office Action “provides no rational underpinnings or articulated
reasoning” for various alleged limitations recited, including “applying
Sollmann’s retaining tool to [an] aircraft skin and frame.” Appeal Br. 11.
Appellant asserts that the rationale provided by the Examiner amounts “to
little more than conclusory statements of obviousness.” Id. The Examiner
responds as follows:
Sollmann was further applied under obviousness
rejections to claims 64 and 65, since it does not
specifically discloses [sic] the use on an aircraft
skin, as such application would amount to applying
Appeal 2012-010089
Application 10/698,215

10
a known technique to a known device (e.g., prior
art device) ready for improvement to yield
predictable results. Gluing a repair skin to an
underlying body of aircraft skin utilizing the
coupling and force applying units as disclosed by
Sollmann is obvious to one of ordinary skill in the
art. . . . Application of such system to an aircraft
skin is obvious to one of ordinary skill in the art
and well within the requirements of KSR
reasoning.

Ans. 9–10.
“[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.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Rejections based on
obviousness must be supported by “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
We find that neither the statements in the Final Office Action nor
those in the Answer provide sufficient “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” See
Kahn, 441 F.3d at 988. Further, the Examiner has failed to make the
required factual findings to support the obviousness rationale selected by the
Examiner. See Manual of Patent Examining Procedure (MPEP) § 2143 D
(8th ed., Rev. 8, July 2010) (“Applying a Known Technique to a Known
Device (Method, or Product) Ready for Improvement To Yield Predictable
Results”). Accordingly, we reverse the rejection of claim 65 under 35
U.S.C. § 103(a) as unpatentable over Sollmann.
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10089
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10089
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s 34 can
f
Appeal 2012-010089
Application 10/698,215

13
adjustable pressure devices 34 bears down on either member 4 or member
94. See Dearman, Figs. 1, 3. Further, the Examiner has failed to explain
how “even bearing down on the workpiece meets the recitation as broadly
defined.” Ans. 10. Accordingly, we reverse the rejection of Claim 62 as
anticipated by Dearman. Further, because claim 63 depends from claim 62
and claim 2 depends from claim 63, we also reverse the rejection of those
claims as anticipated by Dearman.
We now turn to claim 66. That claim, among other limitations, recites
the following: “the coupling units being locked to make the chain rigid and
allow the force-applying units to press the top work piece against the
underlying work piece.” (emphasis added). Regarding the italicized
limitation, Appellant and the Examiner repeat the arguments made regarding
the similar limitation in claim 62. See Appeal Br. 15 (“The screws 35 of the
pressure devices 34 do not press a top work piece onto an underlying work
piece. They simply bear down on the end 5 of a pipe 4.”); Ans. 11
(“Examiner respectfully disagrees for the same reasons indicated above.”).
Accordingly, for the same reasons discussed above, we find that Dearman
does not explicitly or inherently disclose this limitation. We therefore
reverse the rejection of Claim 66 as anticipated by Dearman.

The rejection of claims 3 and 67 under 35 U.S.C.
§ 103(a) as unpatentable over Sollmann and Trickett
In the Final Office Action, the Examiner rejected claims 3 and 67
under 35 U.S.C. § 103(a) as unpatentable over Sollmann and Trickett. Final
Act. 5. Although the Examiner maintains the rejection (Ans. 4), Appellant
does not appeal it (Appeal Br. 1, 5). Appellant does not argue the
patentability of claims 3 or 67 in its Appeal Brief. Further, in both the
Appeal 2012-010089
Application 10/698,215

14
“Status of Claims” and the “Claim Appendix” in the Appeal Brief, Appellant
gives no indication that claims 3 or 67 are withdrawn or cancelled. Appeal
Br. 1 (listing claims 3 and 67 only as “rejected”); id. at 18, 21 (listing claims
3 and 67 as “Previously Presented” rather than “Withdrawn” or
“Cancelled”). Appellant has not submitted an amendment cancelling claims
3 and 67.
Under these facts, we must summarily affirm the rejection of claims 3
and 67. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (8th
ed., Rev. 8, July 2010) (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”); see also Ex parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential).

CONCLUSION
For the reasons set forth above, we AFFIRM the rejection of claims 2,
62–64, and 66 as anticipated by Sollmann, REVERSE the rejection of claim
65 as anticipated by Sollmann, REVERSE the rejection of claim 65 under 35
U.S.C § 103(a) as unpatentable over Sollmann, REVERSE the rejection of
claims 2, 62–63, and 66 as anticipated by Dearman, and summarily
AFFIRM the rejection of claims 3 and 67 under 35 U.S.C. § 103(a) as
unpatentable over Sollmann and Trickett.

AFFIRMED-IN-PART

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