Ex Parte Carberry et al

Patent Trial and Appeal Board

Aug 29, 2016

12847738 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/847,738 07/30/2010 John Carberry
27623 7590 08/29/2016
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, IOTH FLOOR
STAMFORD, CT 06901
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.
0006895USU/4610 4525
EXAMINER
FREEMAN, JOSHUA E
ART UNIT PAPER NUMBER
3641
MAILDATE DELIVERY MODE
08/29/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CARBERRY and KATHERINE LEIGHTON
Appeal2014-007404
Application 12/847,738
Technology Center 3600
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, John Carberry et al., 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 4-12, and 14-39. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants identify the real party in interest as Schott Corporation.
Appeal Br. 2.
2 Claims 2, 3, and 13 are cancelled. Appeal Br. 2.
Appeal2014-007404
Application 12/847,738
THE CLAIMED SUBJECT MATTER
The claims are directed to armor panels having strip-shaped protection
elements. Spec. i-f 1. Claims 1, 3 2, 3 5, 3 7, and 3 8 are independent. Appeal
Br. 4. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An armor panel having an impact face, comprising:
a rigid absorbing layer having a plurality of strip-shaped
protection elements adhered to one another along a plane
substantially orthogonal to the impact face; and
a high-tensile confining layer surrounding said rigid
absorbing layer,
wherein each of said plurality of strip-shaped protection
elements is rectangular,
wherein at least one of said plurality of strip-shaped
elements are glass-ceramic, and
wherein the armor panel has an x-axis, a y-axis, and a z-
axis, each perpendicular to one another, wherein the impact
face is a planar surface defined by said x-axis and said y-axis,
and
\vherein each of said plurality of strip-shaped protection
elements has a width along said x-axis, a length along said y-
axis, and a depth along said z-axis, and said width is smaller
than said length and said depth.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Wesch
Ghiorse
Foldager
Hunn
Neal
Fisher
Havens
us 3 ,454,94 7
US 2002/0178900 Al
US 2006/0225376 Al
US 2009/0126557 Al
US 2010/0031810 Al
US 2011/0036234 Al
WO 2010/039,321 A2
2
July 8, 1969
Dec. 5, 2002
Oct. 12, 2006
May 21, 2009
Feb. 11, 2010
Feb. 17, 2011
Apr. 8, 2010
Appeal2014-007404
Application 12/847,738
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 4--8, 10, 11, 14, 15, 17-21, 23, 26, and 31-38 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Hunn, Wesch,
and Havens. 3, 4
2. Claims 9, 22, 24, and 25 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Hunn, Wesch, Havens, and Foldager. 5
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hunn, Wesch, Havens, and Ghiorse.
4. Claims 16 and 27-30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hunn, Wesch, Havens, and Fisher.
5. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hunn, Wesch, Havens, and Neal. 6
3 The i\.ns\ver states that Rejection l includes claim 31 and addresses
the rejection of claim 31 at page 7. Ans. 2, 7; see also Final Act. 6-7. We
treat the Appeal Briefs re-listing of Rejection 1 that does not include claim
31 as a typographical error which appears to have originated with the
Examiner. Appeal Br. 2; Final Act. 3.
4 In the Advisory Action dated October 21, 2013, newly amended
claims were entered, and this prompted the Examiner to incorporate Havens
(along with Hunn and Wesch) as the basis for rejecting claims 1, 4--8, 10,
11, 1 7-21, 23, 26, and 31-3 8. See Final Act. 3. The Examiner already cited
Havens (along with Hunn and Wesch) in the final rejection of claims 14 and
15. Final Act. 11.
5 In the Answer, Rejection 2 addresses claims 9, 22, 24, and 25, but not
claims 32-34. Ans. 10, 13. The Appeal Brief states that claims 32-34 were
mistakenly included in this Rejection in the Final Action. Appeal Br. 2.
Thus, both the Examiner and Appellants agree that claims 32-34 are not part
of Rejection 2.
6 We treat the Answer's statement that Fisher is part of Rejection 5 as a
typographical error. Ans. 12. The Final Rejection, the Appeal Brief, and the
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Application 12/847,738
Appellants seek our review of these rejections.
ANALYSIS
Rejection 1: Claims 1, 4--8, 10, 11, 14, 15, 17-21, 23, 26, and31-38
Appellants argue claims 1, 4--8, 10, 11, 14, 15, 17-21, 23, 26, and 31-
38 as a group. Appeal Br. 6-10. We select claim 1 as the representative
claim,andclaims4-8, 10, 11, 14, 15, 17-21,23,26,and31-38standorfall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Hunn discloses all of the limitations of claim
1 except that Hunn does not disclose ( 1) protection elements having a width
along the x-axis smaller than the length and the depth along the y-axis and z-
axis, respectively, which are disclosed by Wesch, and (2) strip-shaped
protection elements comprised of "glass-ceramic," which are disclosed by
Havens. Ans. 2--4.
First, Appellants argue that "none of the cited references disclose or
suggest a rectangular and glass-ceramic strip element, as required in claims
1 and 37." Appeal Br. 7. However, Appellants' argument does not address
the Examiner's finding that these limitation are taught by the combination of
Hunn, Wesch and Havens, not by the individual references (Adv. Act. 2
(Oct. 21, 2013); Ans. 2--4; see also Final Act. 3--4; Adv. Act. 2 (Nov. 11,
2013)), and, thus, is not responsive to the rejection as articulated by the
Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
Answer address Neal, not Fisher. See Final Act. 13, Appeal Br. 3, and Ans.
12-13.
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Application 12/847,738
combination of references."). Appellants' argument does not apprise us of
error by the Examiner.
Second, Appellants argue that the "rectangular" strip element
limitation recited in claim 1 is not disclosed by the references. Appeal Br. 7.
With respect to the rectangular element limitation, the Examiner states that
Hunn discloses armor sheets including ceramic rods (protection
elements) that are rectangular (Hunn: See Fig. 4 and 9; Par.
0044; "right, rectangular, cylindrical shapes"). Hunn further
discloses that the armor elements may take on many different
forms depending on their purpose and that particular elements
of the armor as well as the armor itself may exhibit different
size and geometrical relationships (see Par. 0045).
Ans. 13-14; see also Ans. 2-3. Figure 4 of Hunn discloses that the cross
section of the rod is rectangular.
In response, Appellants argue that Hunn discloses "rods that are
square in cross-section (Fig. 9, [0044])." Appeal Br. 7. Appellants also
argue that:
Paragraph [0044] of Hunn may state that the rods have "right,
rectangular cylindrical shapes", but this refers to the overall
length of the rods. As is clearly shown in Fig. 9, the cross-
section of ceramic rods 901 is square. . . . By definition, a
square cannot have one side or dimension that is smaller than
all other sides or definitions [sic].
Reply Br. 2-3. Thus, we understand that Appellants assert that a rectangle
has one side or dimension that is smaller than all other sides or dimensions.
Appellants offer no support for their definition in the Specification.
The Specification does not use the terms "rectangular" or "rectangle."
According to the plain and ordinary meaning of "rectangle" in one
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Application 12/847,738
dictionary, a rectangle is "a parallelogram all of whose angles are right
angles." MERRIAM-WEBSTER, http://www.merriam-webster.com/
dictionary/rectangle (last visited August 24, 2016). Under this definition, a
square is a type of rectangle. Thus, one of ordinary skill in the art would
understand that Hunn discloses a rectangular protection element as recited in
claim 1. Furthermore, because claim 1 does not state which side of the rod
(i.e., protection element) must be rectangular, the cross sections of rod 203
in Figure 4 and rod 901 in Figure 9 in Hunn disclose a "rectangular"
protection element. Appellants' arguments do not identify error by the
Examiner.
Third, Appellants argue that the "glass ceramic" strip element
limitation recited in claim 1 is not disclosed by the references. With respect
to the "glass ceramic" protection elements limitation, the Examiner finds
that
Havens teaches strip-shaped protection elements 203, 205, 207,
209 comprising glass ceramic (Page[] 7, lines 3-6). Applicant
should note that the ceramic rods of [Hunn] are being modified
by the glass ceramics Havens. . . . Furthermore, "when a patent
claims a structure already known in the prior art that is altered
by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable
result." KSR at 1395 (citing United States v. Adams, 383 US
39, 50-51 (1966)).
It would have been obvious to one of ordinary skill in the
art at the time of invention to have modified the combination of
Hunn in view of Wesch such that the protection elements were
glass ceramic, in view Havens, because the substitution of one
known ceramic material for another would have yielded
predictable results to one of ordinary skill in the art at the time
of invention.
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Ans. 14--15; see also Adv. Act. 2 (dated November 22, 2013) ("It would
have been obvious to one of ordinary skill in the art at the time of invention
to have modified the combination of Hunn in view of Wesch such that the
protection elements were glass ceramic, in view [of] Havens, because the
substitution of one known rod material for another would have yielded
predictable results to one of ordinary skill in the art at the time of
invention.") (Emphasis added); Final Act. 12 (it would have been obvious to
have modified Hunn's ceramic material in view of the teachings of Havens'
glass ceramic materials "to obtain a degree of transparency. Furthermore, all
claimed elements were known in the prior art and one skilled in the art could
have combined the elements as claimed by known methods with no change
in their respective functions, and the combination would have yielded
predictable results to a skilled artisan at the time the invention was made.").
In response to the Examiner's findings, Appellants argue that
The only disclosed materials for the rods of Hunn are ceramics,
and the only specific suitable compounds that Hunn discloses
are ceramics (e.g., aluminum oxide, [0039]). Accordingly, there
would be no reason why one of ordinary skill in the art would
substitute the glass-ceramics of [Havens] ... for the ceramics of
Hunn. To do so would change the teachings of Hunn.
Reply Br. 2. Appellants also argue that "a glass-ceramic rectangular strip
element was not 'familiar' or 'known' in any of the cited references."
Appeal Br. 8.
Appellants' arguments, however, mischaracterize the Examiner's
findings regarding Havens. Appellants do not address and, thus, do not
identify any error in the Examiner's findings that substitution of one known
material (i.e., glass ceramic strip elements) for another (i.e., ceramic strip
elements) would yield predictable results to a person skilled in the art. Both
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Application 12/847,738
Havens and Hunn disclose armor panels made of different layers, and
protection strip elements. In Hunn, layers are made of ceramic strip
elements having circular, hexagon, rectangular, or cylindrical cross sections.
In Havens, layers are made of strip elements having prismatic, tessellated
shapes. Havens discloses several acceptable materials commonly used by
persons skilled in the art to make the protection strip element in the armor
panel layers:
Core 103 comprises a plurality of layers 107 and 109 of
tessellated, prismatic elements 203, 205, 207, and 209.
Prismatic elements 203, 205, 207, and 209 may comprise
various different ceramic, glass, glass-ceramic, or glass-like
materials, even within the same armor 101. Thus, prismatic
elements 203, 205, 207, and 209 ... may be opaque,
translucent, semi-transparent, generally transparent,
substantially transparent, transparent, and so forth.
Havens 7:3-7 (emphasis added). Havens does not disclose any problems
using either ceramic or glass ceramic materials to make protection strip
elements. 7 Appellants do not explain why one skilled in the art would not
recognize that commonly-used materials such as ceramic and glass ceramic
are acceptable materials for the protection strip elements, and that
substituting a known glass ceramic for a known ceramic would not yield
predictable results. Thus, Appellants do not identify error by the Examiner.
7 We also note that other references of record disclose that armor plates
are commonly made from ceramic, glass ceramics, or both. See Fisher i-f 4
("Also known is armor that employs light-weight materials such as ...
alumina oxide ceramic, boron carbide ceramic, silicon carbide ceramic, glass
ceramic and metal-matrix ceramics, ... "); Neal i-f 8 (ballistic resistant armor
have been made of "glass-ceramics" and "ceramics").
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Application 12/847,738
Appellants also assert that Havens (1) "does not appreciate or predict
the benefits provided by the glass-ceramic strip elements of claims 1 and 37.
There is certainly no appreciation of how glass-ceramic actually functions or
performs when hit by a ballistic", and (2) does not discuss the results
achieved by claims 1 and 3 7 and described in the Specification are
"predictable." Appeal Br. 8. However, limitations or benefits not appearing
in the claim cannot be relied upon for patentability. In re Self, 671 1344,
1348 (CCPA 1982). Appellants do not identify error by the Examiner.
Finally, Appellants argue that Wesch is non-analogous art and cannot
be used to reject the claims. The analogous art inquiry has developed as a
mechanism to define the scope and content of prior art properly considered
in an obviousness analysis.
To qualify as prior art for an obviousness analysis, a reference
must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same
field of endeavor; or (2) the reference must be reasonably
pertinent to the particular problem with which the inventor is
involved.
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012)
(citation omitted). This test for analogous art requires the Examiner to
determine the appropriate field of endeavor by reference to explanations of
the invention's subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention. In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004).
In addressing whether Wesch is non-analogous art, the Examiner's
finds that:
As previously stated in the final office action filed 16 July
2013, Wesch discloses "a structural member also capable of
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Application 12/847,738
absorbing electromagnetic energy to avoid detection by radar
and having sufficient strength to resist shelling" (Col[.] 1, lines
15-19). Shelling is commonly known as the heavy fire of
artillery (projectiles) to saturate an area rather than hit a specific
target (The American Heritage® Dictionary of the English
Language, Fourth Edition copyright ©2000 by Houghton
Mifflin Company. Updated in 2009. Published by Houghton
Mifflin Company). Wesch also discloses that "the building
material according to the invention maybe used in the
construction of armored vehicles" (Col. 8, lines 43-45) and that
If higher demands are made on the perforating strength of
material (i.e. from shelling) a second layer may be used where
the rods of the first and second layer are crosswire to each other
(Col. 8, lines 4-12). The applicant's argument that Wesch is not
concerned with stopping projectiles is erroneous.
Ans. 15-16.
In support of their argument, Appellants state
[Wesch's] structure is best suited to absorb electromagnetic
energy, and therefore protect a structure from detection by radar
(col. 1, [11.] 16-21). Although Wesch states that the structure
can "resist" shelling (col. 1; 1. 19) or is "suitable" for use in
vehicles (col. 4. 1. 55-62), this is a different field or application
than directly stopping ballistics, as the armor of the present
claims is designed to do ([0056]). Wesch mentions that the
materials disclosed therein should have "good mechanical
characteristics" (col. 1, 1. 40). This and similar disclosures do
not mean that Wesch is in the field of directly stopping
ballistics, as in the present application. Accordingly, Wesch
fails the first prong of Bigio.
Wesch is also not "reasonably pertinent" to the present
claims under the second prong of Bigio . ... Wesch does not
discuss how the materials disclosed therein would stop or
absorb the energy of projectiles, and thus fails the second prong
of the Bigio test.
Appeal Br. 9-10.
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Contrary to Appellants' arguments, Wesch clearly states it is directed
to a "structural member also capable of absorbing electromagnetic energy to
avoid detection by radar and having sufficient strength to resist shelling.
These results are obtained by using cooperating layers operative to give
absorption and physical strength." Wesch, Abstract (emphasis added).
Wesch does not disclose any problems achieving these results, and
Appellants do not identify any. Appellants do not explain why Wesch does
not address stopping or resisting shelling, i.e., artillery projectiles. We also
note that, like Wesch, the Specification's "Description of Related Art" states
that armor plates have been used "to protect buildings, vehicles, and people
from projectiles." Spec. i-f 2. Appellants' arguments do not identify any
error in the Examiner's finding that Wesch and the Specification are
analogous art under either prong of the non-analogous art test.
For the above reasons, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) in view of Hunn, Wesch, and Havens. Claims 4--8,
10, 11, 14, 15, 17-21,23,26,and31-38fallwithclaiml. 37C.F.R.
§ 41.37(c)(l)(iv).
Rejections 2-5: Claims 9, 12, 16, 22, 24, 25, 27-30, and 39
Claims 9, 12, 16, 22, 24, 25, and 27-30 depend from claim 1. Claim
39 depends from claim 32. Appellants argue that these claims are patentable
because "Foldager, Ghiorse, Fisher, and Neal fail to cure the above-
described deficiencies of Hunn, Wesch, and Havens, and are not relied on to
do so." Appeal Br. 10. As discussed above, we sustain the Examiner's
rejection of claims 1 and 32 under 35 U.S.C. § 103(a) in view of Hunn,
Wesch, and Havens. Because Appellants do not allege any other patentable
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distinctions for claims 9, 12, 16, 22, 24, 25, 27-30, and 39, we likewise
sustain the Examiner's rejections of these claims under 35 U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1, 4--8, 10,
11, 14, 15, 17-21, 23, 26, and 31-38 under 35 U.S.C. § 103(a) as being
unpatentable over Hunn, Wesch, and Havens is AFFIRMED.
The Examiner's rejection of claims 9, 22, 24, and 25 under 35 U.S.C
§ 103(a) as being unpatentable over Hunn, Wesch, Havens, and Foldager is
AFFIRMED.
The Examiner's rejection of claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Hunn, Wesch, and Ghiorse is AFFIRMED.
The Examiner's rejection of claims 16 and 27-30 under 35 U.S.C.
§ 103(a) as being unpatentable over Hunn, Wesch, Havens, and Fisher is
AFFIRMED.
The Examiner's rejection of claim 39 under 35 U.S.C. § 103(a) as
being unpatentable over Hunn, Wesch, Havens, and Neal 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)(l)(iv) (2015).
AFFIRMED
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