Ex Parte Carstensen et al

Patent Trial and Appeal Board

Mar 21, 2013

11627491 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte THOMAS A. CARSTENSEN,
DAVID M. COURNOYER, AND DAN URSENBACH
________________

Appeal 2010-011434
Application 11/627,491
Technology Center 3600
________________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011434
Application 11/627,491

2

STATEMENT OF THE CASE1
Thomas A. Carstensen et al. (Appellants) seek our review under
35 U.S.C § 134 of the Examiner’s final decision rejecting claims 1-15 and
19-29. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellants’ claimed invention relates to an aircraft floor system, and
more particularly to a lightweight floor panel with a sandwich core structure
with a mechanical interlock. Spec. para. [0003].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A composite panel comprising:
a core layer having a multiple of pins;
an inboard interlock layer having at least one ply
mechanically interlocked with said multiple of pins;
an inboard layer bonded to said inboard interlock layer
said inboard layer having a first number of plies;
an outboard interlock layer having at least one ply
mechanically interlocked with said multiple of pins; and
an outboard layer bonded to said outboard interlock
layer, said outboard layer having a second number of plies of a
first type and a second type, said first type different than said
second type, said second number of plies greater than said first
number of plies.
The Examiner relies upon the following evidence:
Letterman US 4,622,091 Nov. 11, 1986
Childress US 5,935,680 Aug. 10, 1999

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Mar. 22, 2010) and Reply Brief (“Reply Br.,” filed Jul. 26, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 25, 2010).
Appeal 2010-011434
Application 11/627,491

3
Kunkel US 6,291,049 B1 Sep. 18, 2001
Buzzi US 6,544,619 B1 Apr. 8, 2003
Cournoyer US 2003/0098520 A1 May 29, 2003
Claims 1-5 and 19-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kunkel and Buzzi.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kunkel, Buzzi, and Cournoyer.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kunkel, Buzzi, Cournoyer, and Letterman.
Claims 1, 4, and 9-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Childress and Buzzi.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Obviousness over Kunkel and Buzzi
Claims 1 and 19
Appellants argue claims 1 and 19 as a group (App. Br. 6-12). We
select claim 1 as the representative claim for this group, and claim 19 stands
or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ assertion that Buzzi does not
disclose the use of more reinforcing plies on one side of a core than on the
Appeal 2010-011434
Application 11/627,491

4
other. App. Br. 9. First, Appellants’ argument is not commensurate with the
scope of claim 1, which does not require that the greater number of plies on
one side of a core than on the other be reinforcing plies. Second, as the
Examiner found, in addition to disclosing a composite panel with a greater
number of plies on one side of a core than on the other, Buzzi further
discloses the use of a plurality of plies of reinforcing material on one side of
a core and at least one ply of reinforcing material on the other side of the
core. See Ans. 12; Buzzi Col. 3 ll. 29-43. Thus, while Buzzi does not
require the use of more reinforcing plies on one side of a core than on the
other, it expressly discloses such use.
We are also not persuaded by Appellants’ assertion that Kunkel does
not acknowledge an outboard or an inboard side, but instead refers to a “top
face sheet” and a “bottom face sheet.” App. Br. 10. It is well settled that a
claim directed to a structure, i.e., directed to an apparatus, machine or article
of manufacture, must be patentably distinguished from the prior art in terms
of structure. See In re Casey, 370 F.2d 576, 580 (CCPA 1967) (“The
manner or method in which such machine is to be utilized is not germane to
the issue of patentability of the machine itself”); In re Gardiner, 171 F.2d
313, 315-16 (CCPA 1948) (“It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof.”). Appellants have not shown that the
claimed invention is structurally distinguishable from Kunkel merely by
calling layers above and below the core “outboard side” and “inboard side”
layers respectively, rather than “top” and “bottom” layers. We are further
not persuaded by Appellants’ assertion that the Examiner’s reasoning for
combining the references to add the additional plies of Buzzi to the outboard
Appeal 2010-011434
Application 11/627,491

5
of Kunkel was insufficient. To the contrary, we conclude that the
Examiner’s reasoning to combine the teachings of Kunkel and Buzzi “to
provide reinforcements” articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, as it would
have been self-evident to one of ordinary skill that adding additional plies
would provide reinforcement. See Ans. 4.
Claims 2, 3, 22-25, and 27
Claims 2 and 3 depend from independent claim 1 and claims 22-25
and 27 depend from independent claim 19. Inasmuch as Appellants do not
argue these dependent claims separately, we sustain the rejection of claims
2, 3, 22-25, and 27 for the same reasons as independent claims 1 and 19.
Claims 4 and 5
We are not persuaded by Appellants’ argument that Kunkel fails to
disclose vertical pins. Kunkel expressly discloses the use of vertical pins
(106). Kunkel Col. 6, ll. 46-47 and Figure 8. We are also not persuaded by
Appellants contention that Kunkel may be distinguished because the vertical
pins (106) of Kunkel Figure 8 are depicted as comprising both a vertical
segment and horizontal segments at either end. Claims 4 and 5 are directed
to a panel comprising, in part, vertical pins, which does not preclude
horizontal segments at either end. We also disagree with Appellants’
assertion that the Examiner may not rely on more than one embodiment
disclosed by a reference and that the asserted combination of Kunkel and
Buzzi fails to meet the “arranged or combined in the same way as in the
claim” test. App. Br. 13 and 16. The rejections at issue here are for
obviousness and a “reference may be read for all that it teaches, including
Appeal 2010-011434
Application 11/627,491

6
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-21
(2007); see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
982, 991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent
to each other in a prior art patent does not require a leap of inventiveness.”);
compare Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548
(Fed.Cir.1983) (to anticipate under 35 U.S.C. § 102, the prior art reference
must not only disclose all elements of the claim within the four corners of
the document, but must also disclose those elements “arranged as in the
claim.”).
With regard to claim 5, we are not persuaded by Appellants’ assertion
that Kunkel fails to disclose vertical pins that “define a length generally
equal to a thickness of said core layer.” See App. Br. 14. The Specification
does not provide a standard for measuring the degree of the length of a pin to
determine whether it is “generally” equal to the thickness of the core, stating
only that the vertical pins claimed are “generally equal or slightly shorter
than the thickness of the core layer.” Spec. para. [00046]. Appellants’
argument that the vertical pins of Kunkel extend beyond their respective
core layers is not commensurate with the scope of the claim, which only
requires that the pins have a length generally equal to the thickness of the
core layer. The vertical pins (106) disclosed by Kunkel Figure 8 may extend
beyond the core layer, but still “define a length generally equal to a
thickness of said core layer” as required by claim 5.

Appeal 2010-011434
Application 11/627,491

7
Claim 20
Claim 20 requires that the outboard layer of the composite floor panel
of claim 19 be comprised of at least certain numbers of three types of plies.
The Examiner determined that Kunkel did not expressly provide the number
of plies claimed, but reasoned:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to duplicate the outboard ply
and inboard ply of Buzzi for added reinforcement. Further, it
has been held that mere duplication of the essential working
parts of a device involves only routine skill in the art.
Ans. 6. On the issue of duplication of claimed elements, the Court in St.
Regis Paper Co. v. Bemis Co., Inc., stated:
[T]he Lokey bag is only entitled to a patent if the fusion of the
old elements that comprised the Poppe patent and the old
element of multiple layering created a synergistic combination.
We hold that it did not do so. While the addition of multiple
plies to the concept of the Poppe bag undoubtedly made it
stronger and even may have been necessary to make this type of
bag commercially feasible, it is not the type of innovation for
which a patent monopoly is to be granted. It is difficult to
conceive of a more obvious method of strengthening a certain
type of bag than putting one bag inside of another.
549 F.2d 833, 838-39 (Fed. Cir. 1977). Likewise, in the instant case,
Appellants have not demonstrated a synergistic combination regarding the
combination of plies as claimed and adding plies to strengthen a composite
panel is no less obvious than adding layers to strengthen a bag.
Furthermore, as the court stated in KSR Int'l Co. v. Teleflex Inc.:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
Appeal 2010-011434
Application 11/627,491

8
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
550 U.S. 398, 421 (2007).
We also are not persuaded by Appellants’ assertion that the features of
claim 20 are critical. Appellants have not provided sufficient evidence
relating the specific number of plies claimed to either any critical result or to
results that yield anything but precisely what would be predicted. See KSR
Int’l Co. at 416 (2007) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”)
Claims 21, 26, 28, and 29
Claims 21, 26, 28 and 29 each require that the inboard layer has only
one ply. Appellants do not dispute that Kunkel layer (92) is one ply, but
instead assert that the Examiner has used hindsight to pick and choose
features from Kunkel and Buzzi. App. Br. 18. We do not agree that the
Examiner’s rejection is an improper hindsight reconstruction as it does not
include knowledge gleaned only from the Appellants’ disclosure, but rather
takes into account the teachings of Kunkel and Buzzi; i.e., knowledge which
was within the level of ordinary skill at the time the claimed invention was
made. See In re McLaughlin 443 F.2d 1392, 1395 (CCPA 1971) (“Any
judgment on obviousness is in a sense necessarily a reconstruction based
on hindsight reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill in the art at the time the claimed
invention was made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.”).
Appeal 2010-011434
Application 11/627,491

9
Obviousness over Kunkel, Buzzi, and Cournoyer
Claim 6
We do not find persuasive Appellants’ argument that Cournoyer does
not disclose vertical pins, and therefore cannot teach rebating a
reinforcement area as claimed. See App. Br. 21. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We conclude that
Appellants have not addressed the combination of prior art references as a
whole but simply improperly argue the individual merits of Cournoyer and
Kunkel. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not . . . that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Kunkel discloses a core layer with a multiple of closely spaced
vertical pins (Kunkel Figure 8) and Cournoyer discloses a core layer that is
at least partially rebated with a ramped edge (Cournoyer Figure 4A).
Although Cournoyer may not label a region of the composite panel as a
“reinforcement area,” Cournoyer para. [0023] expressly states that “the
pattern of the pins and the number thereof may be tailored to accommodate
various core strengths and stiffness requirements.” Appellants’
identification of an area as a “reinforcement area” does not support
patentability where, as here, Appellants have not shown that the claimed
structure, itself, was not disclosed by the cited references. See In re Casey,
370 F.2d 576, 580 (CCPA 1967). Thus we conclude that Appellants have
Appeal 2010-011434
Application 11/627,491

10
not overcome the Examiner’s determination that Kunkel, Buzzi, and
Cournoyer disclose the claim elements at issue and may be combined as an
obvious way to reinforce a rebated area with pins. See Ans. 18.
Obviousness over Kunkel, Buzzi, Cournoyer, and Letterman
Claims 7 and 8
With regard to claims 7 and 8, Appellants assert that:
the Examiner has not found a reinforcement area formed by a
multiple of vertical pins, the references have not provided a
rebated area consistent with the claims, and thus it would not
have been obvious to add doubler plies to this non-existent
rebated area.

App. Br. 22. We are not persuaded by Appellants’ argument for the same
reasons discussed above with respect to claim 6.
Obviousness over Childress and Buzzi
Claim 1
Appellants challenge the asserted combination of Childress and Buzzi
on the same grounds Appellants asserted against the combination of Kunkel
and Buzzi. App. Br. 23-25. Accordingly, we uphold the rejection of claim 1
as obvious over Childress and Buzzi for the same reasons we upheld the
rejection of claim 1 as obvious over Kunkel and Buzzi, as discussed above.

Claim 9
We do not find persuasive Appellants’ contention that in Childress the
vertical pins (20) do not form a reinforcement area defined adjacent an edge
of the composite panel. See App. Br. 26. Childress Figure 1 shows a
reinforcement area expressly described as a “pin-reinforced foam core
Appeal 2010-011434
Application 11/627,491

11
sandwich.” Childress Col. 3, ll. 51-52. Childress further discloses the use of
pins for reinforcement around bolt holes (Col. 3, ll. 63-66). An edge of the
composite panel is inherently formed around any bolt hole. Accordingly,
Childress discloses the features of closely spaced vertical pins and a
reinforcement area adjacent an edge of a composite panel as claimed.
Claims 4 and 10-15
Claims 4 and 10-15 depend from independent claim 1. Inasmuch as
Appellants do not argue these dependent claims separately, we sustain the
rejection of claims 4 and 10-15 for the same reasons as independent claim 1.
CONCLUSIONS OF LAW
We conclude that Appellants have not overcome the Examiner’s
rejection of claims 1-5 and 19-29 under 35 U.S.C. § 103(a) as being
unpatentable over Kunkel and Buzzi.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Kunkel, Buzzi, and Cournoyer.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as being
unpatentable over Kunkel, Buzzi, Cournoyer, and Letterman.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claims 1, 4, and 9-15 under 35 U.S.C. § 103(a) as
being unpatentable over Childress and Buzzi.
Appeal 2010-011434
Application 11/627,491

12
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-15 and
19-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

JRG