Ex Parte Cavaliere et alDownload PDFPatent Trial and Appeal BoardAug 26, 201613139648 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/139,648 09/21/2011 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 08/30/2016 FIRST NAMED INVENTOR Frederick Cavaliere 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. 0561-1065 2589 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 08/30/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDERICK CAVALIERE and DANIEL ALIAGA1 Appeal2015-001741 Application 13/139,648 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and AVEL YN M. ROSS, Administrative Patent Judges. TIMM, Administrative Patent Judge. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision to reject claims 13-24, 32, and 33 under 35 U.S.C. § 103(a) as obvious over Prandy.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify the real party in interest as European Aeronautic Defence and Space Company Eads France. Appeal Br. 3. 2 In our opinion below, we reference the Specification filed Aug. 7, 2013 (Spec.), Final Office Action mailed November 7, 2013 (Final), the Appeal Brief filed June 9, 2014 (Appeal Br.), the Examiner's Answer mailed September 12, 2014 (Ans.), and the Reply Brief filed November 12, 2014 (Reply Br.). 3 Prandy et al., US 5,225,265, issued July 6, 1993. Appeal2015-001741 Application 13/139,648 We AFFIRM. The claims are directed to a part made of a composite, including a lightning protection device (see, e.g., claim 13), and the lightning protection device itself (see, e.g. claim 33). The lightning protection device includes a composite formed from a thermosetting resin and a continuous layer of a metal foil having perforations. See, e.g., claims 13 and 33. According to the Specification, such lightning protection devices are used in composite panels such as the panels that form the fuselage of aircraft to improve the conductivity of the panel so that when the aircraft is stuck by lightning the electrical current is dispersed over the surface of the aircraft part. Spec. 2: 15-30. In arguing against the sole ground of rejection, Appellants state that dependent claims 14, 18, and 19 stand apart from claim 13, and that independent claim 33 also stands apart. Appeal Br. 11. However, Appellants do not identify with sufficient specificity any reversible errors in the Examiner's findings and conclusions for the dependent claims or features within claim 33 that are patentably distinct from those of claim 13. Appeal Br. 11-19. Thus, the issue is the same for all the claims, and we select claim 13 as representative for addressing the issue. We reproduce claim 13 with the limitation at the heart of the issue highlighted: 13. A part made of a composite formed from a thermosetting resin, comprising: a lightning protection device, wherein said lightning protection device comprises, on an upper surface of said part liable to be exposed to lightning strikes, a continuous layer of a metal foil having perforations, each perforation having a surface area less than or equal to 20 2 Appeal2015-001741 Application 13/139,648 mm2, and with a degree of perforation between 0.005 % and 20 %. Claims Appendix, Appeal Br. 21. OPINION There is no dispute on this record that Prandy teaches a composite part formed from a thermosetting resin and with a metal screen that may be made of a perforated metal foil. Compare Final 2 with Appeal Br. 11-18; Reply Br. 2-8. The Examiner acknowledges that Prandy fails to teach the surface area of each perforation and the degree of perforation. Final 2. However, according to the Examiner, it would have been obvious to the ordinary artisan to perform routine experimentation to adjust the shape, surface area, and degree of the perforations to optimize the electrical properties and weight the metal foil. Final 3. Appellants do not dispute that one of ordinary skill in the art would have performed routine experimentation, but argue that only chance or hindsight leads to the claimed invention, because Prandy offers no guidance as the degree of perforation and surface area specifically recited in Appellants' claims. Reply Br. 2-3. Thus, the issue is: Have Appellants identified a reversible error in the Examiner's finding that the ordinary artisan would have been led, based on the teachings of Prandy, to select a perforated foil having the parameters required by claim 13? For the reasons expressed by the Examiner in the Answer, we determine a preponderance of the evidence and the law support the Examiner's conclusion of obviousness. We add the following for emphasis. 3 Appeal2015-001741 Application 13/139,648 Prandy, like Appellants, desires to form a lightning strike protection material for use in composite structures, particularly aircraft. Prandy, col. 1, 11. 8-11. Metal screens, prepared by several methods, have been used in lightning strike protective materials. Prandy, col. 1, 11. 59---68. For instance, they have been formed by slitting metal sheet in a geometric pattern followed by stretching, they have been formed by weaving metal filaments into a gauze-like structure, they have also been formed by chemically etching holes in metal foils, and by perforating metal foils using lasers or plasma beams. Id. Prandy teaches that "[b ]y whatever method the screen is formed, it must be of sufficient conductivity to dissipate electrical energy, but must be of sufficient lightness to avoid excessive weight." Prandy, col. 2, 11. 3---6. Prandy discloses that useful screens are commercially available from Delker and Astrostrike. Prandy, col. 4, 11. 55-57. First, we note that there is no convincing evidence on the record before us that the screens required by claim 13 are different from those that were commercially available at the time of the invention. Second, the perforated metal foil screens suggested for use by Prandy would have some amount of perforation surface area and degree of perforation by their very nature. Third, by specifying a wide range of screens including slit and stretched sheets, woven gauze-like structures, and foils perforated by lasers and plasma beams, Prandy implies that a wide range of metal screens are useful with a wide range of workable opening surface areas and degrees of perforation. 4 Appeal2015-001741 Application 13/139,648 Fourth, although there is no express disclosure in Prandy of a relationship between the perforation surface area and degree of perforation to the conductivity or weight of the metal foil, Prandy particularly specifies that the screens, however, they are made, must meet conductivity and weight requirements. Prandy col. 2, 11. 3---6. That the number, density, and size of the perforations affect conductivity and weight is so basic that it cannot be denied that those of ordinary skill in the art of forming lightning strike protective materials would understand the relationship. The more perforations and the bigger they are, the less the screen will weigh, but the less material there will be to conduct the electricity of the lightning. Prandy teaches the general conditions of placing a perforated metal foil into a composite to form a lightning protection device. One of ordinary skill in the art in the process of optimizing, or even just finding workable screens for the lightning protection device, would have performed routine experimentation leading to the selection of the perforated foil with optimized or workable conductivity and weight. It is reasonable to find that in performing this selection, the ordinary artisan would have arrived at a metal foil with the surface area and degree of perforation recited in claim 13. This is the type of situation in which Appellants are called upon to provide evidence that their ranges are critical for achieving an unexpected result. An improvement in the art is obvious if "it is likely the product not of innovation but of ordinary skill and common sense." KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 420 (2007); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation," but patentability may be imparted "if the particular ranges claimed produce a new and unexpected result."). 5 Appeal2015-001741 Application 13/139,648 With regard to Appellants' contention that they take into account evacuation of air, solvent vapors, and excess resin during the manufacture of the part in a male mold, and thus the values of the claims do not correspond to the values that optimize the electrical properties and weight of the metal foil, 4 the evidence of record is not sufficient to support a determination that the claimed ranges would be different than those the ordinary artisan following the teachings of Prandy would have found workable. This is so given the wide range of screens Prandy discloses as useful, and the similarities of Prandy' s composite layup process to Appellants' layup process. Compare Prandy, col. 3, 11. 10-20 with Spec. 1:18-2:14. In the absence of a showing of unexpected results or evidence that the recited ranges are outside those the ordinary artisan conventionally used, a preponderance of the evidence supports the Examiner's conclusion of obviousness. Appellants newly cite documents in the Reply Brief alleging to show that the prior art used metal foils with surface area and degree of perforation different than that of the claim, and which teach away from the ranges of the claim. Reply Br. 7-8. Appellants, however, provide no showing of good cause as to why this evidence was not relied upon in the Appeal Brief. Under the circumstances, we do not consider this evidence. 3 7 C.F .R. § 41.41(b)(2)(2013). CONCLUSION We sustain the Examiner's rejection. 4 Appeal Br. 17-18. 6 Appeal2015-001741 Application 13/139,648 DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation