Ex Parte Deobald et al

Patent Trial and Appeal Board

Oct 31, 2017

13928760 (P.T.A.B. Oct. 31, 2017)

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.
13/928,760 06/27/2013 Lyle R. Deobald 07-1127-US-DIV 3049
63759 7590 11/02/2017
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. HANDVILLE, BRIAN
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYLE R. DEOBALD, JOHN D. MORRIS,
KARL B. LEE, JEFFREY L. MARCOE, MARK C. IDEN, and
CHRISTOPHER G. HARRIS
Appeal 2016-003042
Application 13/928,760
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—7, 10, 13—15, 25, and 26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellant is Applicant, the Boeing Company, which according to the
Appeal Brief is also the real party in interest. Appeal Br. 2.
Appeal 2016-003042
Application 13/928,760
STATEMENT OF THE CASE
The subject matter on appeal relates to reinforced multi-piece
composite stiffeners having improved pull-off strength and useful to
strengthen features in aircrafts, such as wings and fuselage sections. Spec.
1,2, and 4. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A composite stiffener, comprising:
first, second and third members formed from laminated
composite tape, the first and second members defining a web and
a pair of flanges extending from the web, the third member being
joined to the flanges and extending generally transverse to the
web, the first, second and third composite members intersecting
to form a void, at least the first and second members comprising
unidirectional fibers;
a filler disposed in and substantially filling the void, the
filler comprising a composite laminate;
at least one layer of composite fabric disposed across the
first member and the second member in the area of the filler, the
layer of composite fabric comprising woven or knitted fibers
having at least one orientation that extends traverse to an
orientation of fibers in at least one of the first member or the
second member; and,
a layer of adhesive wrapped around and surrounding the
filler and joining the filler to the composite fabric.
Response to Non-Compliant Appeal Brief (“Response”), dated July 6, 2015,
5 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claim 10 stands rejected under 35 U.S.C § 112(b) as
indefinite for failing to particularly point out and distinctly
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Application 13/928,760
claim the subject matter which the applicant regards as the
invention. Final Act. 2.
B. Claims 1—3, 5, and 6 stand rejected under 35 U.S.C
§103 (a) as unpatentable over Suzuki2 and further in view
of George.3 Id. at 3^4.
C. Claim 4 stands rejected under 35 U.S.C § 103(a) as
unpatentable over Suzuki in view of George and further in
view of Hamm.4 Id. at 8.
D. Claims 7, and 13—15 stand rejected under 35 U.S.C
§103 (a) as unpatentable over Suzuki and further in view
of McCarville.5 Id. at 10.
E. Claim 10 stands rejected under 35 U.S.C §103(a) as
unpatentable over Suzuki in view of McCarville and
further in view of Hamm. Id. at 17.
F. Claims 25 and 26 stand rejected under 35 U.S.C § 103(a)
as unpatentable over Suzuki and further in view of George.
Id. at 18.
Appellant requests our reversal of Rejections A—F. See generally
Appeal Br. Appellant presents separate arguments for claims 1 (Rejection
B), 7 (Rejection D), 10 (Rejection E), 25 (Rejection F), and 10 (Rejection A)
and does not separately argue the remaining claims. Because our basis for
reversing the rejection of claim 1—i.e., the lack of at least one layer of
2 Suzuki et al., WO 2007/119371, published October 25, 2007 and
corresponding to US 7,905,975 B2, issued March 15, 2011 (English
translation) (“Suzuki”)
3 George et al., US 6,709,538 B2, issued March 23, 2004 (“George”).
4 Robert A. Hamm, US 4,331,723, issued May 25, 1982 (“Hamm”).
5 McCarville et al., US 5,833,786, issued November 10, 1998
(“McCarville”).
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Application 13/928,760
composite fabric in Suzuki—is common to independent claims 7 and 25,6 as
well as the dependent claims (Rejections B—F), we focus our discussion
below on claim 1. We also address Rejection A, claim 10, below.
OPINION
Rejection A — Indefiniteness (claim 10)
The Examiner rejects claim 10 as indefinite. Final Act. 2.
Specifically, the Examiner concludes that claim 10 lacks antecedent basis for
the limitation “wherein the bidirectional reinforcing fibers are graphite”
because claim 7, from which claim 10 depends, does not recite “a
bidirectional reinforcing fiber” but rather “a bidirectional reinforcing tape.”
Id.', see also Response 6—7 (Claims App’x).
Appellant does not identify the requisite support in claim 7 for the
“bidirectional reinforcing fibers” language of claim 10. Instead Appellant,
in the Appeal Brief, amends claim 10 to recite “bidirectional reinforcing
tape” “so as to obviate any indefmiteness under section 112.” Appeal Br. 7—
8. Appellant also urges that the person skilled in the art would understand
the metes and bounds of the claim and therefore, it is not indefinite. Reply
Br. 3.
We note that the proposed amendment to claim 10, referred to by
Appellant, was not entered (See, Notice of Non-Compliant Appeal Brief
mailed June 3, 2015). Thus, we agree with the Examiner’s conclusion,
which Appellant does not contest, that there is no antecedent basis for the
6 Claim 1 requires “at least one layer of composite fabric” where claim 25
requires a first and second layer of composite fabric and claim 7 requires a
first, second, and third layer of composite fabric. Compare Response 5
(Claims App’x) with id. at 6, and id. at 8.
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Application 13/928,760
phrase “bidirectional reinforcing fibers” recited in claim 10. Final Act. 2;
see also Ans. 23—24. Therefore, Appellant does not identify reversible error
in the Examiner’s rejection.
Rejection B—F— Obviousness (claims 1—7, 10, 13—15, 25 and 25)
The Examiner rejects claim 1, among others, as obvious over Suzuki
in view of George. Final Act. 3—A. The Examiner finds Suzuki teaches a
composite stiffener having nearly all the structural elements as claimed. Id.
at 4—7. The Examiner acknowledges however that Suzuki does not teach
that the filler comprises a composite laminate. Id at 7. But, the Examiner
finds that George teaches a filler for use in composite stiffener structures
that comprises a laminate composite. Id. The Examiner reasons that one
skilled in the art would have modified Suzuki to include the filler of George
“to increase absolute strength, to increase specific strength, or to reduce cost
by reducing cracking and distortion in the radius of a composite assembly.”
Id. 7-8.
Appellant argues that Suzuki fails to teach a layer of composite fabric
disposed across the first and second flanges (of the first and second
members). Appeal Br. 12—13. Appellant also contends that the composite
material of the instant invention is “separate from other structures, such as
the filler and the flanges” and is a continuous layer as illustrated in Figure 9.
Id. at 13. According to Appellant, Suzuki only teaches the flanges and not
an additional structure that crosses the first and second flange of the first and
second members. Id. at 14—15. Appellant explains that the Examiner’s error
is in “cit[ing] an element corresponding to a first member and a second
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Application 13/928,760
member as if it were an entirely separate element that crosses and contacts
each of the first member and the second member.” Id. at 15.
The Examiner explains that “the ‘at least one layer of composite
fabric’ is not described in at least claim 1 in such a manner which requires
such a composite fabric to be separate and distinct.” Ans. 26. The Examiner
further states that it is the outermost layer of each of members 81a, 81b, and
81c that the Examiner identifies as the composite fabric that reads on the
identified limitation. Id.
We do not find the Examiner’s reasoning persuasive. Claim 1
requires “first, second and third members formed from laminated composite
tape” and “at least one layer of composite fabric disposed across the first and
the second member” suggesting that the members are separate from the layer
of composite fabric. Response 5. This understanding is consistent with the
Specification. For example, the Specification describes a stiffener 20 that
“comprises a pair of C-shaped channels 22, 24 arranged in back-to-back
relationship, a cap 26 and a base 28” where the channels and cap/base are
made of unidirectional fiber tape. Spec. 8—9 and 11. The Specification
continues to explain that “the pull-off strength of the stiffener 20 may be
increased by employing a layer of composite fabric 48 in the area of the
radius filler zone 37” and that the layer of composite fabric is made of
bidirectional woven or knitted fibers. Id. at 11. Thus, the layer of composite
fabric is separate and provides benefits in addition to those provided by
stiffener 20.
Furthermore, where a claim lists elements separately, “the clear
implication of the claim language” is that those elements are “distinct
components]” of the patented invention. Becton, Dickinson and Co. v. Tyco
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Application 13/928,760
Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v.
Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v.
Lochformer Co., 96 F.3d 1398, 1404—05 (Fed. Cir. 1996) (concluding that
where a claim provides for two separate elements, a “second portion” and a
“return portion,” these two elements “logically cannot be one and the
same”)). Accordingly, to meet the limitation of “at least one layer of
composite fabric,” Suzuki must comprise first, second, and third members in
addition to “at least one composite fabric.”
Appellant asserts “that there is no reasonable manner of interpreting
these claim elements, arranged as they are in the claims, except that the ‘at
least one layer of composite fabric’ is a separate feature from the other
features” and that the Examiner commits error in identifying a single layer
of the first member of Suzuki as the “at least one layer of composite fabric.”
Reply Br. 7.
We agree with Appellant (Appeal Br. 15) that Suzuki teaches only the
first, second, and third members and “nowhere discloses the placing [of] a
layer of composite” fabric material on the radius portion of each of the
channels. Suzuki makes clear the multi-layered strips making up the first,
second, and third members are “heat[ed] and/or press[ed] and maintain[ed]
in a shaped state, thereby producing a . . . preliminary shaped body” which
are then united to form a preform. Suzuki col. 3,11. 11—29 and col. 4,11. 1—
12.
“[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. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Accordingly, because the Examiner’s finding that Suzuki describes “at least
one layer of composite fabric” as recited in claim 1 is not supported by the
record, we conclude that the Examiner has not presented a prima facie case
of unpatentability and therefore, cannot sustain the Examiner’s rejection of
claim 1.
CONCLUSION
Appellant has failed to identify reversible error in the Examiner’s
rejection of claim 10 under 35 U.S.C §112(b) as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
Appellant has identified a reversible error in the Examiner’s rejection
of claims 1—7, 10, 13—15, 25, and 26 under 35 U.S.C § 103(a) as
unpatentable over Suzuki and further in view of George.
DECISION
For the above reasons, the Examiner’s rejection of claim 10 is
affirmed and the Examiner’s rejection of claims 1—7, 13—15, 25, and 26 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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