Ex Parte Gans et al

Patent Trial and Appeal Board

Apr 25, 2017

12048941 (P.T.A.B. Apr. 25, 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.
12/048,941 03/14/2008 Adam Gans 007095.00005 5856
22908 7590 04/27/2017
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
CHEVALIER, ALICIA ANN
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
eofficeaction @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM GANS and JEROME LE CORVEC
Appeal 2016-005580
Application 12/048,941
Technology Center 1700
Before PETER F. KRATZ, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
13, 15—17, 23, 26, 27, and 29—33.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Appellants’ claimed invention is generally directed to a composite
article comprising a foam core wrapped with a tape for use as a hockey stick
1 Claims 1—12 and 18—21 stand withdrawn from consideration. Final Office
Action entered April 22, 2015 (“Final Act.”), 2.
Appeal 2016-005580
Application 12/048,941
blade. App. Br. 2—3. Claims 13 and 27 illustrate the subject matter on
appeal and are reproduced below:
13. A composite article comprising a foam core wrapped
with a tape for use as a hockey blade of a hockey stick, the
article fabricated by the following steps:
heating a first plurality of unexpanded thermoplastic
microspheres from an unexpanded state to a partially expanded
state to create a plurality of partially expanded microspheres;
mixing the plurality of partially expanded microspheres
with an epoxy resin, aramid pulp, and a second plurality of
unexpanded thermoplastic microspheres to create an epoxy
mixture;
forming the mixture to create a bottom and heel section
of the hockey blade and placing a foam having a lower density
than the mixture along a top or a toe to form the top or toe
sections of the hockey blade thereby creating a preform for the
hockey blade;
wrapping the preform with fiber tape to create a wrapped
preform;
placing the wrapped preform in a mold;
wherein the plurality of partially expanded microspheres
and the second plurality of unexpanded microspheres are
configured to be expanded during a heating process to compress
the fiber tape, and to bond to the epoxy resin and the foam; and
wherein the epoxy mixture is a viscous material such that
it provides enough pressure to compress and consolidate the
fiber tape.
27. A composite article comprising a core wrapped with a
tape, the article fabricated by the following steps:
heating a first plurality of unexpanded thermoplastic
microspheres from an unexpanded state to a partially expanded
state to create a plurality of partially expanded microspheres;
mixing the plurality of partially expanded microspheres
with an epoxy resin, an aramid pulp, chopped fiber glass, and a
second plurality of unexpanded thermoplastic microspheres to
create an epoxy mixture;
forming the mixture in a shape;
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Application 12/048,941
wrapping the preform with fiber tape to create a wrapped
preform for a hockey stick blade;
placing the wrapped preform in a mold; and
wherein the plurality of partially expanded microspheres
and the second plurality of unexpanded microspheres are
configured to be expanded during a heating process to compress
the fiber tape.
App. Br. 17—18 (Claims Appendix).
Appellants request review of the following final rejections2, which the
Examiner maintains in the Answer entered March 10,2016 (“Ans.”):
Claims 13,15,26,27, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Quigley (US 6,062,996, issued May 16, 2000), Harford (GB 2,259,667
A, published March 24, 1993), and Czaplicki (US 2002/0187305 Al,
published December 12, 2002);
Claims 16, 17, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable
over Quigley, Harford, Czaplicki, and McGrath (US 7,963,868 B2, issued
June 21, 2011);
Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Quigley,
Harford, Czaplicki, and Zion (US 4,025,686, issued May 24, 1977); and
Claims 32 and 33 under 35 U.S.C. § 103(a) as unpatentable over
Quigley, Harford, Czaplicki, and Morehouse (US 3,615,972, issued October
26, 1971).
2 The Examiner indicates in the Final Office Action entered April 22, 2015
that the pending claims are rejected “for the reasons set forth in the Office
Action mailed September 17, 2014.” Final Act. 8—9. We accordingly refer
to the non-final Office Action entered September 17, 2014 (“Office Act.”)
when discussing the Examiner’s rejections.
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Application 12/048,941
DISCUSSION
Upon consideration of the relied-upon evidence and the respective
positions of Appellants and the Examiner, we affirm the rejections of claims
27 and 29-31 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action and the Answer, but reverse the rejections of claims 13, 15—17, 23,
26, 32, and 33 under 35 U.S.C. § 103(a) for the reasons set forth in the
Appeal Brief. We add the following discussion primarily for emphasis.
Appellants argue all of the pending claims as a group. See generally
App. Br. 4—13. Nevertheless, for the purposes of this appeal, we divide the
claims into two groups, and address each group separately. The first group
includes claim 27 and the claims depending therefrom (claims 27 and 29—
31), and the second group includes claim 13 and the claims depending
therefrom (claims 13, 15—17, 23, 26, 32, and 33).
Claims 27 and 29—31
We select claim 27 as representative of claims 27 and 29—31 and
decide the propriety of the rejections of these claims under 35 U.S.C.
§ 103(a) based on claim 27 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Quigley discloses a hockey blade comprising fibrous face sheets
surrounding a core. Quigley col. 1,11. 9-10; col. 3,11. 5—11. Quigley
discloses that the fibrous face sheets enhance the structural integrity of the
blade. Quigley col. 3,11. 11—13; col. 5,11. 1—2. Quigley discloses including
microspheres anywhere in the blade structure (including the core) to create
regions of lower density, and discloses including reinforcing fibers such as
glass and aramid in the core. Quigley col. 6,1. 62—col. 7,1. 11; col. 7,11. 32—
36. Quigley discloses impregnating all of the components of the hockey
blade with a polymer resin, preferably epoxy, and discloses placing the blade
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into a heated mold cavity to partially cure the resin. Quigley col. 3,1. 65-
col. 4,1. 3; col. 4,11. 63-66; col. 7,1. 67-col. 8,1. 11; col. 8,11. 20-24.
The Examiner finds that Quigley “is silent regarding whether or not
the mircospheres are expanded or unexpanded,” and regarding a wrapped
preform, and the Examiner relies on Harford for suggesting these features.
Office Act. 9—10; Ans. 3—4, 9. Harford discloses an integral molded article
comprising a foam filling enveloped within a cured pre-preg material.
Harford 111; 2 1 5—3 12. Harford discloses that the integral molded article
has improved structural integrity as compared to an article made of two or
more separate parts that are joined after their production. Harford 313.
Harford discloses that the pre-preg material provides structural
reinforcement to the article and can be in the form of one or more layers of a
unidirectional tape of reinforcing fibers impregnated with a thermosetting or
thermoplastic resin. Harford 112; 5 14. Harford discloses that the filling
material preferably comprises unexpanded microspheres, and discloses that
the unexpanded microspheres may be combined with expanded
microspheres to change the mechanical properties of the foam. Harford 4
12; 5,12.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to substitute the
enveloping pre-preg tape disclosed in Harford for the two fibrous face sheets
disclosed in Quigley to improve the structural integrity of Quigley’s hockey
blade in view of Harford’s disclosure that an article produced by enveloping
a foam filling within a cured pre-preg material has improved structural
integrity relative to an article made of two or more parts that are joined in a
separaOte process. Final Act. 7; Ans. 3^4. The Examiner further concludes
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that it would have been obvious to one of ordinary skill in the art at the time
of Appellants’ invention to substitute the combination of unexpanded and
expanded microspheres disclosed in Harford for the microspheres disclosed
in Quigley to change the mechanical properties of the foam, as taught by
Harford. Ans. 9.
Appellants argue that one of ordinary skill in the art would not have
had a reason to replace the fibrous face sheets disclosed in Quigley with a
pre-preg as disclosed in Harford, and contend that “the rationale offered by
the Examiner for combining the reference teachings is [therefore]
misplaced.” App. Br. 9. Specifically, Appellants argue that the enveloping
pre-preg layers disclosed in Harford are used “for the express purpose of
containing the molding pressures that develop” during production of the
molded article. Id. (emphasis omitted). Appellants contend that Quigley
does not suggest “any need to contain pressure” and actually teaches away
from doing so “because Quigley teaches the opposite—pressuring the mold
externally to impregnate the fibrous sheet elements” with a resin. Id.
However, the weight of the evidence supports the Examiner’s
conclusion that it would have been obvious to one of ordinary skill in the art
at the time of Appellants’ invention to substitute the enveloping pre-preg
tape disclosed in Harford for the fibrous face sheets disclosed in Quigley.
One of ordinary skill in the art would have understood that the enveloping
pre-preg disclosed in Harford and the face sheets disclosed in Quigley both
serve the purpose of providing structural reinforcement to a molded article,
and would also have recognized that both materials are made of resin-
impregnated fibers. Accordingly, because Harford’s pre-preg tape and
Quigley’s face sheets are made of the same materials and serve the same
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purpose, it would have been obvious to one of ordinary skill in the art to
substitute the two separate face sheets disclosed in Quigley for the pre-preg
tape disclosed in Harford to realize the advantage of improved structural
integrity as disclosed in Harford.
Appellants’ argument that Harford’s enveloping pre-preg tape is used
to contain molding pressures, and contention that Quigley teaches away
from containing molding pressures by disclosing application of pressure to a
mold to impregnate the fibrous sheets with resin, do not take into
consideration the explicit disclosures in both references upon which the
Examiner’s rationale for the proposed modification is based. In other words,
Appellants’ arguments do not address Harford and Quigley’s indication that
the pre-preg tape disclosed in Harford and the face sheets disclosed in
Quigley are made of the same materials and serve the same purpose, and are
thus interchangeable equivalents. KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“[W]hen 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.”); In re Font, 675 F.2d 291, 301 (CCPA 1982) (“Express suggestion
to substitute one equivalent for another need not be present to render such
substitution obvious.”). Appellants’ arguments are therefore unpersuasive of
reversible error.
Appellants argue that the Examiner’s assertion that both Quigley and
Harford desire strong but lightweight filed molded products cannot be the
basis for their proposed combination. App. Br. 10 (citing Office Act. 10).
However, the Examiner is simply pointing out that Quigley and Harford
have similar aims. As discussed above, the Examiner’s rationale for the
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proposed substitution of the face sheets of Quigley’s hockey blade with the
enveloping pre-preg tape disclosed in Harford is to realize the advantage of
improved structural integrity as disclosed in Harford. Appellants’ arguments
are therefore unpersuasive of reversible error.
Appellants further argue that because Quigley discloses that the face
sheets enhance the structural integrity of the hockey blade, one of ordinary
skill in the art would not have had a reason to substitute Harford’s pre-preg
for Quigley’s face sheets because “Quigley itself already teaches the
enhancement of the structural integrity of the blade structure.” App. Br. 10.
However, as discussed above, Harford and Quigley indicate that the
pre-preg tape and face sheets are interchangeable equivalents. Therefore,
substitution of one for the other would have been obvious to one of ordinary
skill in the art at the time of Appellants’ invention. KSR, 550 U.S. at 416;
Font, 675 F.2d at 301. Moreover, as also discussed above, Harford teaches
that forming an integral molded article with an enveloping pre-preg tape
provides improved structural integrity as compared to forming an article
from two or more separate parts that are subsequently joined, which is the
case for Quigley’s face sheets. Accordingly, one of ordinary skill in the art
would have been led to utilize Harford’s enveloping pre-preg tape rather
than Quigley’s face sheets to achieve greater structural integrity.
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further argue that the article resulting from the proposed
combination of Quigley and Harford would not result in the claimed
composite article formed by wrapping a preform with fiber tape because the
proposed article would include holes plugged with fiber-reinforced resin as
taught by Quigley. App. Br. 5—7.
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Application 12/048,941
However, Quigley discloses that fiber-reinforced, resin-impregnated
holes can optionally be utilized in the core of the hockey blade as rivets to
tie the face sheet elements together. Quigley col. 6,1. 62—col. 7,1. 5. As
discussed above, the Examiner’s proposed modification involves
substitution of Quigley’s separate face sheets with Harford’s enveloping pre-
preg tape, which would render rivets that tie the face sheets together
unnecessary. Accordingly, contrary to Appellants’ arguments, holes would
not be required in the article resulting from the proposed substitution.
Appellants further argue that Harford does not disclose or suggest a
wrapped preform, and Appellants contend that the process disclosed in
Harford for manufacturing the integral molded article would not produce a
wrapped preform. Rep. Br. 5—6.
However, as the Examiner explains,
[t]he rejections of record do not rely on incorporating Harford’s
molding process into the process of Quigley or carrying out
Harford’s pressurized molding process on the structure of
Quigley. To the contrary, the rejections were based on the simple
substitution of one known element for another to provide
predictable results.
Ans. 10. In addition, as discussed above, Harford discloses that the integral
molded article comprises a foam filling enveloped within a cured pre-preg
tape. One of ordinary skill in the art would have understood that the word
“envelop” means to wrap up, cover, or surround completely.3 Accordingly,
contrary to Appellants’ arguments, Harford’s disclosure of a pre-preg tape
that envelops a foam filling reasonably would have suggested that a pre-preg
3 Envelop - definition of envelop in English Oxford Dictionaries, Oxford
Living Dictionary (Apr. 24, 2017),
https: //en. oxforddictionaries. com/ definition/envelop.
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Application 12/048,941
tape could wrap around a filling. KSR Int 7 Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (explaining that prior art references must be read in context,
taking into account “the background knowledge possessed by a person
having ordinary skill in the art” and “the inferences and creative steps that a
person of ordinary skill in the art would employ.”); In re Preda, 401 F. 2d
825, 826 (CCPA 1968) (“it is proper to take into account not only specific
teachings of the [applied prior art] reference but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom.”).
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further argue that Harford’s pressurized molding process is
“wholly incompatible” with Quigley’s express purpose of providing a
relatively simple and low-cost method for fabricating a composite hockey
stick blade that can readily be formed to a desired shape. App. Br. 11—12.
Appellants contend that the proposed combination of Quigley and Harford
would therefore “render Quigley unsatisfactory for its intended purpose.”
Id. at 11.
However, as discussed above, the Examiner does not propose
incorporating Harford’s molding process into Quigley’s process and does
not propose carrying out Harford’s pressurized molding process on
Quigley’s structure. Rather, the Examiner proposes substituting the
enveloping pre-preg tape disclosed in Harford for the two fibrous face sheets
disclosed in Quigley to improve the structural integrity of Quigley’s hockey
blade. Final Act. 7; Ans. 3^4. Contrary to Appellants’ arguments, the
proposed substitution would therefore not render Quigley’s hockey blade
unsatisfactory for its intended purpose.
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Appellants’ arguments4 are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claims 27 and 29—31
under 35 U.S.C. § 103(a).
Claims 13, 15—17, 23, 26, 32, and 33
We select claim 13, the broadest of claims 13, 15—17, 23, 26, 32, and
33, as representative, and decide the propriety of the rejections of these
claims under 35 U.S.C. § 103(a) based on claim 13 alone.
The Examiner bears the burden of establishing a prima facie case of
obviousness with respect to the subject matter recited in the claims on
appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he [patent]
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.”).
As set forth above, claim 13 is a product-by-process claim, and “even
though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself.” In re Thorpe,
111 F.2d 695, 697 (Fed. Cir. 1985). However, if process steps in a product-
by-process claim would be expected to impart distinctive structural
characteristics to the final product, such process steps should be construed as
structural limitations. In re Garnero, 412 F.2d 276, 279 (CCPA 1979)
(holding “interbonded by interfusion” to limit structure of the claimed
composite and noting that terms such as “welded,” “intermixed,” “ground in
place,” “press fitted,” and “etched” are capable of construction as structural
limitations.)
4 Appellants’ remaining arguments are directed to the subject matter of claim
13, which we address separately from claim 27 below.
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The Examiner construes claim 13 to require the recited microsphere
mixture5 to be present in the bottom and heel sections of the recited hockey
blade, but also interprets claim 13 to not exclude the microsphere mixture
from also being present in the top or toe sections of the hockey blade.
Ans. 5. Similarly, the Examiner construes claim 13 to require the recited
lower density foam to be present in the top or toe sections of the hockey
blade, but also interprets claim 13 to not exclude the presence of the lower
density foam in the bottom and heel sections of the hockey blade. Id.
However, the Examiner’s construction of claim 13 is inconsistent with
the plain language of the claim. Claim 13 recites “[a] composite article
comprising a foam core wrapped with a tape for use as a hockey blade of a
hockey stick, the article fabricated by the following steps: heating . . .
forming . . . wrapping . . . placing ...” (emphasis added). Because claim 13
recites that the article is “fabricated by the following steps,” and does not
recite a transitional phrase in connection with the process steps,6 we interpret
claim 13 to require the composite article to be produced by performance of
the recited process steps only, and to exclude the performance of additional,
unrecited steps.
Therefore, contrary to the Examiner’s erroneous claim interpretation,
the plain language of claim 13 as we have interpreted it excludes placing the
microsphere mixture in top or toe sections of the hockey blade, and excludes
5 Claim 13 recites a mixture of partially expanded microspheres, an epoxy
resin, aramid pulp, and unexpanded microspheres, which we refer to as the
“microsphere mixture”.
6 The Examiner appears to interpret claim 13 as though it recites that the
composite article is fabricated by a method comprising the recited steps.
Ans. 5. However, claim 13 contains no such “comprising” transitional
phrase.
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placing the lower density foam in bottom and heel sections of the hockey
blade. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)
(explaining that the broadest reasonable interpretation standard does not give
the Patent Office an unfettered license to interpret the words in a claim
without regard for the full claim language and the written description.); In re
Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148—50 (Fed. Cir. 2012)
(finding the Patent Office’s construction unreasonably broad because it was
“unreasonable and inconsistent with the language of the claims and the
specification”).
We further determine that the process steps recited in claim 13 of
“forming the mixture to create a bottom and heel section of the hockey
blade” and “placing a foam having a lower density than the mixture along a
top or a toe to form the top or toe sections of the hockey blade” would be
expected to impart distinctive structural characteristics to a composite article
produced by the performance of these steps. Garnero, 412 F.2d at 279. We
therefore construe these process steps as imparting structural limitations to
the claimed composite article of bottom and heel sections formed of a
mixture of partially expanded microspheres, an epoxy resin, aramid pulp,
and unexpanded microspheres (the “microsphere mixture”) and top or toe
sections formed of a foam having a lower density than the micro sphere
mixture.
The Examiner correctly finds that Quigley discloses creating regions
of modified density in core or face sheet elements of a hockey blade
structure by including foam strips in the core of the blade structure or
including thermoplastic microspheres anywhere within the blade structure.
Office Act. 7. Nevertheless, the Examiner does not establish that the
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combined disclosures of Quigley and the remaining applied prior art would
have suggested a hockey blade having bottom and heel sections formed from
the microsphere mixture and top or toe sections formed from foam having a
lower density than the microsphere mixture, as required by claim 13 as we
have interpreted it. On this record, the Examiner does not identify any
disclosure in the applied prior art, or point to any other evidence, that would
have suggested the particular arrangement and configuration of a
microsphere mixture as recited in claim 13 and a lower density foam in a
hockey blade that results from producing the blade according to the process
steps recited in claim 13. Accordingly, the Examiner does not proffer
sufficient evidence to show why one of ordinary skill in the art seeking to
produce a composite article comprising a foam core wrapped with a tape for
use as a hockey blade would have created bottom and heel sections with a
mixture of partially expanded microspheres, an epoxy resin, aramid pulp,
and unexpanded microspheres, and would have formed top or toe sections
with a foam having a lower density that the microsphere mixture, as required
by claim 13.
Therefore, the Examiner’s evidence and explanation are insufficient to
establish a prima facie case of obviousness for the subject matter recited in
claim 13, and we accordingly do not sustain the rejections of claims 13, 15—
17, 23, 26, 27, and 29-33 under 35 U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the rejection of claims 27 and 29-31 under 35 U.S.C.
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§ 103(a), but reverse the rejection of claims 13, 15—17, 23, 26, 32, and 33
under 35 U.S.C. § 103(a).
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).
AFFIRMED-IN-PART
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