11535623 (B.P.A.I. Jul. 24, 2012)

Ex Parte Bradford

Board of Patent Appeals and InterferencesJul 24, 2012

11535623 (B.P.A.I. Jul. 24, 2012)

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. 11/535,623 09/27/2006 Judson A. Bradford BRP-258 7856 26875 7590 07/24/2012 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER BELL, WILLIAM P ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 07/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JUDSON A. BRADFORD __________ Appeal 2010-007221 Application 11/535,623 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007221 Application 11/535,623 2 A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1-24 under 35 U.S.C. § 103(a) as unpatentable over the combination of Pflug1 and Rule.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal is directed to a process of making a honeycomb product comprising, inter alia, the steps of plastically deforming portions of a web of material to form a plurality of corrugations and removing material from the web in selected locations to produce a product having a relatively high strength-to- weight ratio. See Spec. 4, ll. 10-19. Claims 1, 5, 10, 15, and 20 are the independent claims on appeal. The primary difference between each of the independent claims on appeal is the order in which corrugations are formed and material is removed from the web. See claims 1, 15 (material is removed followed by forming corrugations); claims 5, 20 (corrugations are formed followed by removal of material); claim 10 (material is removed and corrugations are formed simultaneously). App. Br., Claims Appendix.3 Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A process of making a honeycomb product comprising: providing a web of material; removing material from the web in selected locations; 1 US 6,726,974 B1 issued April 27, 2004. 2 US 4,197,341 issued April 8, 1980. 3 Appeal Brief dated November 11, 2009. Appeal 2010-007221 Application 11/535,623 3 plastically deforming portions of the web of material so the web has a plurality of corrugations extending in a first direction and a plurality of flats extending in a second direction perpendicular the first direction; folding the deformed web. App. Br., Claims Appendix. The § 103(a) rejection is affirmed for the reasons well-stated in the Examiner’s Answer dated April 8, 2010 (“Ans.”). We add the following for emphasis. B. DISCUSSION The Examiner finds Pflug discloses a process for making a honeycomb product comprising the steps of plastically deforming a web of material to form a plurality of corrugations and flats and folding the deformed web. The Examiner finds Pflug does not disclose that material is removed from the web in selected locations as recited in the claims on appeal. However, the Examiner finds Rule teaches a process for making a honeycomb product wherein material is removed from a web in selected locations to reduce the weight of the product.4 See Rule, col. 3, ll. 51-61. Based on this teaching in Rule, the Examiner concludes it would have been obvious to one of ordinary skill in the art to remove material from the web in Pflug. Ans. 3-4. The Appellant argues Pflug teaches away from removing material from select locations of a web. See, e.g., App. Br. 6. For support, the Appellant directs us to a portion of Pflug which discloses that an object of the invention is “to be 4 Rule discloses a continuous process wherein a flat material is fed into a progressive die for cutting, blanking, and forming into a three-dimensional continuous article. Rule, col. 2, ll. 49-62; Rule Fig. 1. Appeal 2010-007221 Application 11/535,623 4 able to produce folded honeycombs with a good attachment to the covering layers without the introduction of cuts.” See, e.g., App. Br. 6 quoting Pflug, col. 1, ll. 18- 20. The cuts referred to in Pflug are said to have been employed by the prior art to facilitate folding of the web. See Pflug, col. 1, ll. 8-17. The Examiner agrees Pflug teaches away from forming cuts which facilitate folding but finds the holes formed in Rule are distinct from the cuts which Pflug seeks to avoid. Ans. 12. The Examiner explains: One of skill in the art would appreciate that [the] holes [disclosed in Rule] are not required for proper folding of the web into a honeycomb structure and would not significantly weaken the structure because they do not produce sections of the web which can move independently of the remainder of the web. Therefore, one of skill in the art would recognize that the cuts which Pflug teaches away from are separate and distinct in both their function and their effect from the cutting of holes taught by Rule. Thus, Pflug does not teach away from the combination with Rule, and Rule provides motivation for the combination. Ans. 14.5 In this regard, we note that the holes formed in the Rule process are not positioned along a fold line. See, e.g., Rule Fig. 3 (depicting holes 63 positioned along a flat surface). In response, the Appellant argues that modifying the process of Pflug as proposed by the Examiner would require portions of the web to be cut away from the sides, as taught by Rule, to fold the web in the manner taught by Rule and thus destroy the objective of Pflug. See, e.g., Reply Br. 2-3. 5 We note the Examiner has provided a drawing in the Examiner’s Answer to illustrate this point. See Ans. 13. The Appellant argues the drawing is not prior art. See, e.g., Reply Brief dated April 14, 2010 (“Reply Br.”), at 3. We recognize as much and have accorded the drawing its proper weight in reaching our decision. Appeal 2010-007221 Application 11/535,623 5 This argument fails to consider the prior art as a whole. 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”). The Examiner merely relies on Rule to establish that it would have been obvious to one of ordinary skill in the art to form holes in the web of Pflug for the predictable result of reducing the weight of the honeycomb product while maintaining its strength. See Rule, col. 3, ll. 51-61. The Appellant also argues Pflug is concerned with forming a good attachment between the honeycomb product and a covering layer. The Appellant generally contends that the modification proposed by the Examiner would compromise such an attachment. See, e.g., Reply Br. 2. However, the Appellant does not provide any evidence or analysis to support this allegation. See Spec. 19, ll. 12-18 (disclosing that a skin or covering layer is attached to a honeycomb product produced according to the claimed invention). As for the sequence of the removing and deforming steps, the Appellant argues Rule does not teach or suggest removing material from a web after it has been deformed as recited in claim 5 or simultaneously removing material while deforming the web as recited in claim 10. App. Br. 8, 11-12. This argument is not persuasive of reversible error. The Examiner finds, and the Appellant does not dispute, that these two steps can only be performed in one of three possible sequences: (1) remove material then deform; (2) deform then remove material; and (3) remove material and deform simultaneously. The Examiner explains: Appeal 2010-007221 Application 11/535,623 6 Since the [removing] and [de]forming operations are well known in the prior art and are intended to produce different effects on the web (i.e., holes versus depressions), one of skill in the art would recognize that the operations are independent and the results of each separate operation are predictable, and further appreciate that there would be a high probability of success with any of the three orders. Thus, because . . . the number of possibilities is finite, the results are predictable, and the probability of success is high, all three possible orders would have been obvious to one of ordinary skill in the art at the time of the invention. One of skill in the art would also appreciate that, in choosing to conduct the cutting and forming operations simultaneously, the number of distinct process steps would be reduced and the amount of process equipment required would also be reduced, thereby reducing the overall cost of the operation.[6] Ans. 16. Significantly, the Appellant has not directed us to any evidence establishing that the Examiner’s position is erroneous. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (where a combination of prior art suggests the claimed process, reordering the steps is not patentable absent proof in the record that the order of performing the steps produces a new and unexpected result). C. DECISION Upon consideration of the record, the decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED ssl 6 See In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976) (economic factors alone can motivate one of ordinary skill in the art to modify the prior art).