Ex Parte Gruenert et al

Patent Trial and Appeal Board

Aug 12, 2016

12712684 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121712,684 02/25/2010
7055 7590 08/16/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Jan GRUENERT
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.
P37667 3206
EXAMINER
AFTERGUT, JEFFRY H
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN GRUENER T and HANS-JUERGEN HEINRICH
Appeal2014-007148
Application 12/712,684
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 10, 12-14, and 21-25. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a method for producing a semi-
finished product of reinforcing fiber strands arranged between two layers of
thermoplastic material. Spec. i-f 17. The sole independent claim 10,
reproduced below, is illustrative of the claims on appeal.
1 Appellants identify the real party in interest as Karl Mayer Malimo
Textilmaschinenfabrik GmbH. Appeal Brief filed February 10, 2014 ("App.
Br."), 2.
2 Final Office Action mailed September 9, 2013 ("Final Act.").
Appeal2014-007148
Application 12/712,684
10. A method for producing a semi-finished product of
reinforcing fiber strands arranged between two layers of
thermoplastic material, comprising:
spreading out fiber strands transversely to their
longitudinal extension by drawing the fiber strands over an
arrangement of rods; and
inserting the spread out fiber strands between the layers as the
reinforcing fiber strands,
wherein the layers are joined to the reinforcing fiber strands so
that the reinforcing fiber strands between the layers are kept in
their positions and prevented from lateral movement.
REJECTIONS ON APPEAL
1. Claims 10, 12-14, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over JP 5-1621253 (published June 29, 1993,
hereinafter "JP '125") or JP 60-727074 (published April 24, 1985,
hereinafter "JP '707") in view of either JP 3-1467355 (published
June 21, 1991, hereinafter "JP '735") or JP 3-1467366 (published
June 21, 1991, hereinafter "JP '736");
2. Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over JP '707 in view of either JP '735 or JP '736;
3. Claims 21 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over JP '707 or JP '125 in view of either JP '735 or
3 We refer to the Figures of JP '125 as well as the Abstract and machine
translation of record of JP '125 as cited by the Examiner. See Ans. 2---6.
4 We refer to the Figures of JP '707 as well as the Abstract and human
translation of JP '707 as cited by the Examiner. See Ans. 2-3, 6.
5 We refer to the Figures of JP '735 as well as the Abstract and human
translation of JP '735 as cited by the Examiner. See Ans. 5---6.
6 We refer to the Figures of JP '736 as well as the Abstract and human
translation of JP '736 as cited by the Examiner. See Ans. 5---6.
2
Appeal2014-007148
Application 12/712,684
JP '736, further in view of Koba et al. (US 5,445,701, issued
August 29, 1995) (hereinafter "Koba");
4. Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over JP '125 in view of either JP '735 or JP '736, further in view
of JP '707· and·
' '
5. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over either JP '707 or JP '125 in view of either JP '735 or JP'736
further in view of either Kent et al. (US 5,380,477, issued
January 10, 1995) (hereinafter "Kent") or Marissen et al.
(US 5,190,809, issued March 2, 1993) (hereinafter "Marissen").
ANALYSIS
Appellants present separate arguments only as to claims 10, 21, 24,
and 25. We limit our discussion to those claims. Claims 12-14, 22, and 23
depend directly from claim 10, and will therefore stand or fall with claim 10.
Rejection 1 (JP '125 in view of JP '735 or JP '736)
JP '125 teaches preparing a prepreg using a plurality of carbon
fibers T arranged to form a fiber sheet N. JP '125 Abstract; Fig. 1. The
individual carbon fibers T are aligned and spaced in a parallel arrangement
(forming the fiber sheet N) using arraying equipment 14, which includes a
comb 30 that runs along the sheet in a transverse direction and a rocking
device 32. JP '125 i-fi-126-28; Fig. 6. Thermoplastic resin sheets S are
placed on both sides of the fiber sheet N and pressed from both sides to form
a laminated material Z. Id. at i120; Fig. 1. The fiber sheet N is preheated to
a temperature higher than the melting point of the thermoplastic resin to
adhere the thermoplastic sheets S to the fiber sheet N. Id. The laminated
3
Appeal2014-007148
Application 12/712,684
material Z is then heated to a temperature above the melting point of the
thermoplastic resin to form the prepreg. Id.
Claim 10
The Examiner finds that JP '125 teaches all the elements of claim 10,
including spreading out fibers strands using a comb 30 and rocker
assembly 32, but does not disclose spreading out fiber strands transversely to
their longitudinal extension by drawing the fiber strands over an
arrangement of rods. Examiner's Answer mailed April 10, 2014 ("Ans."),
3-5. The Examiner finds that either JP '735 or JP '736 teach or suggest an
alternative means for spreading out fibers by passing a plurality of carbon
fiber bundles over and under at least three bars (rods) in order to uniformly
spread the filaments of the bundles apart into a uniform band prior to
impregnation in the manufacture of a prepreg. JP '735, 5 and Fig. 1;
JP '736, 5 and Fig. 1. Both JP '735 and JP '736 teach in order to impregnate
the resin uniformly, to arrange single fibers uniformly, and to ultimately
obtain a prepreg of uniform physical properties, it is desirable if the
reinforcing fiber bundles arranged in sheet form are opened up (or spread
out) as much as possible prior to the resin impregnation. JP '735, 2; JP '736,
2-3. The Examiner determines that it would have been obvious for one of
ordinary skill in the art at the time the invention as made to replace JP '125's
array equipment with JP '735's or JP '736's arrangement of rods to spread
the fibers apart prior to impregnation and predictably provide better
impregnation and a more uniform prepreg. See Ans. 6.
Appellants acknowledge that both JP '735's and JP '736's teach
devices that spread out fiber strands transversely to their longitudinal
direction by drawing the fiber strands over an arrangement of rods. App.
4
Appeal2014-007148
Application 12/712,684
Br. 12. Appellants, however, contend that because JP '735's and JP '736's
device for spreading the fiber strands is different than JP' 125's spreading
device, it would not have been obvious to simply replace one for the other.
App. Br. 12-13. We are not persuaded by this argument. The fact that
JP '735 and JP '736 use a different device for spreading fibers than that
disclosed by JP '125, alone does not mean that one of ordinary skill in the
art would not have been prompted to replace one spreading device with
another. See KSR, 550 U.S. 398, 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.").
Appellants argue that JP '125 with JP '735 or JP '736 fail to teach or
suggest inserting spread out fiber strands between two layers of
thermoplastic material and joining the layers to the fiber strands so the
strands between the layers are kept in their positions and prevented from
lateral movement. App. Br. 17. This argument is not persuasive. As the
Examiner points out, JP '125 teaches that thermoplastic resin sheets S are
placed on both sides of a fiber sheet N and then the assembly is subjected to
heat and pressure to impregnate the fibers with the thermoplastic resin. See
Ans. 4. This operation of impregnation immobilizes the fibers and prevents
movement of the fibers laterally relative to one another. Id.
We are not persuaded by Appellants' argument that the prior art,
particularly JP '125, does not recognize the problem addressed by
Appellants' invention. App. Br. 14. "[T]he law does not require that the
references be combined for the reasons contemplated by the inventors." In
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). We are also not persuaded
by Appellants' argument that the Examiner has not identified a rationale as
5
Appeal2014-007148
Application 12/712,684
to why one skilled in the art would have sought to modify JP '125. App.
Br. 17. "Express suggestion to substitute one equipment for another need
not be present to render such substitution obvious." See In re Fout, 675 F.2d
297, 301(CCPA1982). Nevertheless, here the Examiner has provided a
specific reason for a person of ordinary skill in the art to make the
substitution proposed in the rejection-the better impregnation and a more
uniform prepreg provided by JP '735's or JP '736's rod arrangement.
Appellants have not explained why the Examiner's reasoning is erroneous.
For the reasons above, we sustain the Examiner's rejection of claim 10
over JP '735 in view of JP '735 or JP '736.
Rejection 1 (JP '707 in view of JP '735 or JP '736)
JP '707 describes a process of forming a prepreg in which sheet-like
carbon fiber bundles 1 and thermoplastic resin film 2 stretched parallel to
each other and laminated together through feed rolls 3. JP '707 Abstract,
2:5-11; Fig. 1. The laminated sheets 4 are compressed in heating rolls 5 so
that the resin 2 melts and impregnates the carbon fiber bundles 1, and is then
cooled and hardened. Id.
Claim 10
The Examiner finds that JP '707 teaches all the elements of claim 10,
except spreading out fibers strands transversely to their longitudinal
extension by drawing the fiber strands over an arrangement of rods. Ans. 5.
The Examiner finds that either JP '735 or JP '736 teach spreading out fibers
transversely to their longitudinal extension by passing a plurality of carbon
fiber bundles over and under at least three bars (rods) in order to uniformly
spread the filaments of the bundles apart into a uniform band prior to
impregnation in the manufacture of a prepreg. JP '735, 5 and Fig. 1;
6
Appeal2014-007148
Application 12/712,684
JP '736, 5 and Fig. 1. Both JP '735 and JP '736 teach in order to impregnate
the resin uniformly, to arrange single fibers uniformly, and to ultimately
obtain a prepreg of uniform physical properties, it is desirable if the
reinforcing fiber bundles arranged in sheet form are opened up (or spread
out) as much as possible prior to the resin impregnation. JP '735, 2; JP '736,
2-3. The Examiner determines that it would have been obvious for one of
ordinary skill in the art at the time the invention was made to modify
JP '707 and spread the fibers prior to impregnation using JP '735's or
JP '736's arrangement of rods, because spreading the fiber bundles out prior
to impregnation would have provided improved impregnation and a more
uniform prepreg. Ans. 5---6.
Appellants argue that JP '707 fails to teach or suggest spreading fiber
strands transversely to their longitudinal direction by drawing the fiber
strands over an arrangement of rods. App. Br. 19. We do not find this
argument to be persuasive because Appellants are attacking JP '707
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references."). The Examiner relies
on JP '735 or JP '736, not JP '707, for the argued limitation. Ans. 5. Both
JP '735 and JP '736 teach devices that spread out fiber strands transversely
to their longitudinal direction by drawing the fiber strands over an
arrangement of rods, which Appellants acknowledge (App. Br. 12). JP '735,
5 and Fig. 1; JP '736, 5 and Fig. 1.
Appellants argue that the Examiner has not articulated a reason for
modifying JP '707 with JP '735 or JP '736. App. Br. 19. The Examiner,
7
Appeal2014-007148
Application 12/712,684
however, has provided a reason why it would have been obvious to one of
ordinary skill in the art to modify JP '707 with JP '735 or JP '736-----one of
ordinary skill in the art would have used JP '735's or JP '736's arrangement
of rods to spread out JP '707's fiber bundles because spreading the fibers
apart prior to impregnation would have provided better impregnation and a
more uniform prepreg. Ans. 5---6; see also JP '735, 2; JP '736, 2-3.
Appellants do not address or identify an error in the Examiner's reasoning.
Appellants argue that the combination of JP '707 with JP '735 or
JP '736 fail to teach or suggest inserting spread out fiber strands between
two layers of thermoplastic material and joining the layers to the fiber
strands so the strands between the layers are kept in their positions and
prevented from lateral movement. App. Br. 19, 20. This argument is not
persuasive. As the Examiner points out, JP '707 teaches that thermoplastic
resin sheets are placed on both sides of a sheet of fibers and then the
assembly is subjected to heat and pressure to impregnate the fibers with the
thermoplastic resin. See Ans. 4. This operation of impregnation
immobilizes the fibers and prevents movement of the fibers laterally relative
to one another. Id.
We are also not persuaded by Appellants' argument that none of
JP '707, JP '735, or JP '736 recognize the problem addressed by Appellants'
invention, i.e., to positionally fix the spread out reinforcing fibers between
the thermoplastic layers to prevent tensile forces from contracting the width
and increasing the thickness of the fiber strip. App. Br. 22, 23. As noted
above, the references need not be combined for the reasons contemplated by
the inventors. Beattie, 974 F.2d at 1312. Moreover, the claims make no
8
Appeal2014-007148
Application 12/712,684
mention of width or thickness. Thus, Appellants are arguing limitations not
recited in the claims.
For the reasons above, we sustain the Examiner's rejection of claim 10
over JP '707 in view of JP '735 or JP '736.
Claim 25
Claim 25 depends from claim 10, and requires that "the fiber strands
are spread out in a spaced arrangement so the layers are joined to each other
between adjacent fiber strands."
Appellants argue that JP '735 or JP '736 do not teach or suggest "any
manner . . . to achieve an arrangement of fiber strands that are spread out in
a spaced arrangement so the layers are joined to each other between adjacent
fiber strands," as recited in claim 25. App. Br. 25-26. We are not
persuaded by this argument because Appellants are attacking the references
individually rather than the teachings of the prior art as a whole. See Keller,
642 F.2d at 426. JP '125 and JP '707 teach forming prepregs by melting
thermoplastic resin to impregnate the resin between fibers or fiber bundles.
JP '125 i-fi-f 14, 20, 63; Fig. 13-14; JP '707 Abstract, 2:5-11; Fig. 1. As
discussed above, JP '735 or JP '736 teaches spreading out fiber strands by
drawing the fibers over an arrangement of rods. JP '735, 5 and Fig. 1;
JP '736, 5 and Fig. 1. The Examiner provides a reasonable basis, which
Appellants do not challenge, for one of ordinary skill in the art to combine
the teachings of JP '735 or JP '736 with either JP '125 or JP '707 to arrive at
Appellants' claimed method. Ans. 5---6. When the thermoplastic layers in
the modified processes of JP '125 and JP '707 are melted, the layers would
melt and flow between the fibers so the layers are joined to each other
9
Appeal2014-007148
Application 12/712,684
between adjacent fiber strands. Accordingly, we sustain the rejection of
claim 25 over JP '125 or JP '707 in view of JP '735 or '736.
Rejection 3
Claim 21 depends from claim 10 and requires that the semi-finished
product have a maximum thickness of 0.2 mm.
Claim 24 depends from claim 10 and requires a shaping temperature
of the semi-finished product be in the range of 200 QC to 400 QC. The
shaping temperature is a function of the resin used to make the semi-finished
product. Spec. i-fi-18, 52.
Appellants argue that Koba does not address "the problem identified
by the inventors nor the solution addressed by the claimed embodiments."
App. Br. 27. Appellants also argue that Koba fails to teach or suggest a
structure in which fiber strands inserted between two thermoplastic layers
are prevented from lateral movement. App. Br. 28. Neither argument is
persuasive of reversible error in the Examiner's rejection of claims 21 and
24. First, as discussed above, the references do not need to be combined for
the reasons contemplated by the inventors. In addition, Appellants again are
not addressing the facts and reasoning relied upon by the Examiner. The
Examiner finds that JP '125 and JP '707 teach impregnating thermoplastic
resin between fibers using heat and pressure, and this process prevents the
fibers from lateral movement. Ans. 4. Moreover, the Examiner has
provided a reason why one of ordinary skill in the art would have used
JP '735's or JP '736's arrangement of rods as a means for spreading the
fibers apart prior to impregnation in JP '125 or JP '707. See Ans. 5---6.
10
Appeal2014-007148
Application 12/712,684
Appellants do not address or identify any error in the Examiner's finding or
reasonmg.
The Examiner finds the claimed thickness (claim 21) and shaping
temperature (claim 24) were well known in the art (Ans. 4--5, 7-8). Because
the Examiner's findings are reasonable and are not challenged by
Appellants, we accept them as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964). Therefore, we are not persuaded of reversible error in the
Examiner's rejection of claims 21 and 24, and sustain this rejection.
DECISION
For the above reasons, the Examiner's rejections of claims 10, 12-14,
and 21-25 are 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).
AFFIRMED
11