Ex Parte Jacobsen et al

Patent Trial and Appeal Board

Oct 31, 2018

14181685 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/181,685 02/16/2014
96537 7590 11/02/2018
BEUS SE WOLTER SANKS & MAIRE
Mail Stop AG
390 N. ORANGE A VE, SUITE 2500
ORLANDO, FL 32801
FIRST NAMED INVENTOR
Peter Andreas Lund Jacobsen
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.
2012P08698US (058) 2244
EXAMINER
MRUK,BRIANP
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
USPTO@patentorlando.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER ANDREAS LUND JACOBSEN and PETER KYBELUND
Appeal2018-000246
Application 14/181, 685
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1-17 under 35 U.S.C. § 102(a)(l) as
1 In explaining our Decision, we cite to the Appeal Brief of May 3, 2017
(Appeal Br.), Examiner's Answer of August 10, 2017 (Ans.), and Reply
Brief of October 6, 2017 (Reply Br.).
2 Appellants identify the real party in interest as Siemens Aktiengesellschaft.
Appeal Br. 1.
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Application 14/181, 685
anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Jones. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
The claims are directed to a composite structure (see, e.g., claim 1)
and a blade comprising the composite structure (see, e.g., claim 7). Claim 1
is illustrative:
1. A composite structure comprising
a number of thermoset resin containing elements
and a number of thermoplastic elements and at least one
interface between the thermoset resin containing
elements and the thermoplastic elements,
wherein the thermoset resin containing elements
and the thermoplastic elements comprise functional
groups at the interface which bond to each other when
the composite structure is cured and the functional
groups are independently selected from amines,
carboxylic acids, acid anhydrides, oxiranes, and
derivatives thereof in their non-bonded condition.
Appeal Br. 18 (claims appendix).
Appellants' arguments raise issues for a number of different claims.
Appeal Br. 2-16. We have reviewed the issues for each of these claims.
Where the issues are sufficiently similar, we discuss them together.
3 Jones, US 2010/0261000 Al, published Oct. 14, 2010.
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Application 14/181, 685
OPINION
Claim 1
As a first matter, Appellants' arguments give rise to a question of
claim interpretation. Appeal Br. 7; Reply Br. 4. Appellants contend that
during an interview with the Examiner, the Examiner stated that "since
independent claim 1 does not require curing(' ... when the composite
structure is cured ... '), the prior art need not teach the language of the
dependent claims." Misc. Incoming Letter of March 9, 201 7 (interview
summary filed by Appellants). The Examiner does not dispute Appellants'
characterization of the interview. See Ans., generally.
The portion of claim 1 containing the conditional phrase "when the
composite structure is cured" reads "wherein the thermoset resin containing
elements and the thermoplastic elements comprise functional groups at the
interface which bond to each other when the composite structure is cured."
The "when" phrase recites an act that may be done, but that is not
required to be done, and, thus, the claim is not limited to the structure that
may result from completing the act of curing. See In re Nuijten, 500 F .3d
1346, 1356 (Fed. Cir. 2007) (holding that an article of manufacture is a
structure that exists in one point in time); In re Collier, 397 F.2d 1003, 1006
(CCPA 1968) (holding that limitations such as "when said ferrule-forming
member is crimped onto said shield means" could not be regarded as
structural limitations in a claim directed to structure). At best, the "when"
phrase requires the functional groups be capable of bonding to each other if
and when curing takes place. Claim 1 is directed to the structure arising
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before any step of curing, i.e., a structure including unreacted functional
groups at the interface capable of bonding to each other.
In another aspect, claim 1 is broader than argued by Appellants.
According to Appellants, claim 1 requires a composite structure
including the following:
(1) thermo set resin containing elements including functional
groups independently selected from amines, carboxylic acids,
acid anhydrides, oxiranes, and derivatives thereof;
(2) thermoplastic elements including functional groups
independently selected from amines, carboxylic acids, acid
anhydrides, oxiranes, and derivatives thereof; and
(3) the functional groups of (1) bond to the functional groups of
(2) at an interface of the thermoset resin containing elements
and thermoplastic elements when the composite structure is
cured.
Appeal Br. 2-3. But claim 1 does not recite such separate limitations, rather
it recites only that "the thermoset resin containing elements and the
thermoplastic elements comprise functional groups at the interface." At
best, this language may require one or the other of the elements include the
functional groups, it does not require each of the elements contain the
functional groups.
Jones teaches that the resin in outer layers 6, 8 (thermoset resin
containing elements) adheres to the central thermoplastic layer 4. Jones ,r,r
17, 61. As found by the Examiner, and not disputed by Appellants, Jones'
thermoset resin containing elements 6, 8 contain epoxy resin and, preferably
amines or anhydride as a curing agent. Ans. 2; Jones ,r,r 30-32. Jones
discloses sandwiching the thermoplastic foam core layer 4 between fiber-
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reinforced composite layers 6, 8 so the epoxy resin and hardener is absorbed
in the surface cavities of the thermoplastic foam core layer and bonds the
fiber-reinforced composite layers to the thermoplastic core when cured.
Jones ,r 61. It is the epoxy pre-preg and hardener that contain the required
functional groups. Because the epoxy and hardener are present at the
interface, the functional groups are present at the interface. Thus, claim 1
sweeps in the pre-preg composite structure described by Jones.
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Appellants are free to amend the claim to
narrow its scope to conform to what is argued.
Appellants further contend that the Examiner's obviousness analysis
is conclusory. Appeal Br. 16. Any error, however, was not a reversible
error because anticipation is the epitome of obviousness and Appellants have
not identified a reversible error in the Examiner's finding of anticipation. 4
Appellants argue that dependent claims 2-6, 10, 11, and 13-17 are
patentable based on the arguments presented for claim 1. Appeal Br. 6.
Appellants make separate, additional arguments for patentability of claims 4,
6, 10, 11, and 13-16. Id. at 6-14. We address the claims with additional
4 This statement holds true for all the claims we sustain on the basis of
anticipation.
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arguments below, and sustain the rejection of claims 2, 3, 5, 7, and 8 for the
reasons given with respect to claim 1.
Claims 4 and 13
Claims 4 and 13 are directed to the composite structure according to
claim 2. Claim 2 requires the thermoset resin containing element comprises
"a two or three component system having at least one resin component and
at least one hardener." As found by the Examiner, Jones teaches a thermoset
containing element that has a resin component ( epoxy resin) and at least one
hardener. Ans. 2; Jones ,r 105.
Claims 4 and 13 further require the thermoplastic element comprise
"functional groups reactive with the resin component or with the hardener"
(claim 4) or comprise "functional groups reactive with the resin component
and with the hardener" ( claim 13).
The Examiner finds that "Jones clearly discloses that their composite
laminated article contains an epoxy hardener that bonds the resin layer to
the thermoplastic layer (see paragraphs 33 and 105), and that the epoxy resin
is cured with amines and anhydrides (see paragraph 32), per the
requirements of the instant invention." Ans. 4 (emphasis added). But the
Examiner does not establish that the thermoplastic element "comprises
functional groups reactive with the resin component or with the hardener" as
required by claims 4 and 13.
Thus, we do not sustain the rejection of claims 4 and 13.
Claim 6
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Claim 6 requires that the thermoplastic element of claim 1 be
"arranged at the surface of a thermoset resin containing element."
Appellants contend that the Examiner did not address this limitation
and Jones teaches that resin is positioned between a surface of thermoplastic
layer 4 and a surface of outer resin layers 6, 8, thus, Jones fails to teach the
claimed arrangement. Appeal Br. 7.
Although the Examiner did not discuss claim 6 separately, the
Examiner's rejection cites portions of Jones that show that Jones describes
arranging the thermoplastic foam core layer 4 at the surface of the epoxy
thermoset resin containing elements 6, 8 as shown in Figure 1. Appellants
do not cite to any portion of Jones that discloses placing a separate resin
between core layer 4 and layers 6, 8, and we find none. Thus, Appellants
have not identified a reversible error in the Examiner's rejection of claim 6.
Claims 9 and 12
Claim 9 recites a blade according to claim 7. Claim 7 is directed to a
blade comprising a composite structure according to claim 1. Claim 9
further limits the thermoplastic element to a part of an aerodynamic
improving element of the blade. Claim 12 depends from claim 9.
Although the Examiner finds Jones teaches using the composite
structure in a wind turbine blade, as pointed out by Appellants, the Examiner
does not establish that Jones teaches that thermoplastic layer 4 of Jones is
part of an aerodynamic improving element of a blade, as required by
dependent claim 9.
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Appellants have identified a reversible error in the Examiner's
rejection of claims 9 and 12.
Claim 10
Claim 10 requires the functional groups at the interface of the
composite structure of claim 1 "bond to each other by covalent bonds
generated when the composite structure is cured." Like the "when" phrase
of claim 1, the "when" phrase of claim 10 requires merely that the functional
groups be capable of covalently bonding.
Appellants contend the Examiner did not address this limitation and
further contend Jones teaches that resin adheres the layers together rather
than covalently bonded functional groups. Appeal Br. 8.
This argument is not persuasive because claim 10 merely requires the
functional groups at the interface be capable of bonding to each other. The
Examiner cited to a portion of Jones indicating that Jones teaches epoxy
resin and curing agents/hardeners that contain functional groups capable of
covalently bonding as required by claim 10. Ans. 2. That is the nature of
the epoxy/curing agent system disclosed by Jones.
Claim 11
Claim 11 further requires "the one or more thermoplastic elements
comprise one or more sheets."
Appellants contend the Examiner did not address this limitation and
further contend Jones' "thermoplastic layer 4 includes cell foam 5 material
including a plurality of beads 18, where each bead 18 includes closed cells
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of a particular dimensional range" and, thus, "Jones fails to teach that the
thermoplastic layer 4 comprises one or more sheets." Appeal Br. 9.
The argument is not well taken because the Examiner cited Figure 1
of Jones, which shows thermoplastic foam core layer 4 in sheet form.
Claims 14-17
Claims 14 and 15 attempt to limit "the functional groups of the
thermoplastic elements at the interface" and claim 16 attempts to limit "the
functional groups of the thermoset resin containing elements at the
interface," but claim 1, from which claims 14--16 ultimately depend does not
provide clear antecedent basis for these limitations. Claim 1 merely requires
wherein "the thermoset resin containing elements and the thermoplastic
elements comprise functional groups at the interface." Because claim 1 does
not clearly indicate that the functional groups are present in both elements, it
does not provide antecedent basis for "the functional group" language of
claims 14--16.
We enter a new ground of rejection of claims 14--17 under 35 U.S.C.
§ 112(b) as indefinite due to the antecedent basis problem.
We summarily reverse the rejection of claims 14--17 as anticipated by
or obvious over Jones without reaching the merits. See Enzo Biochem, Inc.
v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) ("Ifa claim is
indefinite, the claim, by definition, cannot be construed. Without a
discemable claim construction, an anticipation analysis cannot be
performed."); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (reversing an
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obviousness rejection because it was based on considerable speculation as to
meaning of terms of claims and assumptions as to their scope).
CONCLUSION
In summary:
We sustain the rejection of claims 1-3, 5-8, 10, and 11 under
35 U.S.C. § 102(a)(l) under 35 U.S.C. § 102(a)(l) as anticipated by or, in
the alternative, under 35 U.S.C. § 103 as obvious over Jones.
We do not sustain the rejection of claims 4, 9, 12, and 13 under
35 U.S.C. § 102(a)(l) under 35 U.S.C. § 102(a)(l) as anticipated by or, in
the alternative, under 35 U.S.C. § 103 as obvious over Jones.
We do not sustain, but without reaching the merits, the rejection of
claims 14--17 under 35 U.S.C. § 102(a)(l) as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Jones.
We enter a new ground of rejection of claims 14--17 under 35 U.S.C.
§ 112(b) as indefinite.
DECISION
The Examiner's decision is affirmed-in-part and a new ground of
rejection entered.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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; 37 C.F.R. § 4I.50(b)
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