Ex Parte Johnson et al

Patent Trial and Appeal Board

Dec 21, 2018

13298625 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/298,625 11/17/2011 David C. Johnson
26360 7590 12/21/2018
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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.
MAL.P.31 4558
EXAMINER
KING, BRADLEY T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
12/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. JOHNSON and TOBY HUTTON
Appeal2018-002687
Application 13/298,625
Technology Center 3600
Before JOHN C. KERINS, MICHELLE R. OSINSKI, and LISA M. GUIJT,
Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David C. Johnson and Toby Hutton ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 26 and
27. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Meggitt Aerospace Ltd.
Appeal Br. 2.
2 Claims 1-25 and 28-30 have been cancelled. Amendment Under 37
C.F.R. § 41.37, 2 (July 7, 2017).
Appeal2018-002687
Application 13/298,625
THE CLAIMED SUBJECT MATTER
Claim 26, the sole independent claim on appeal, is reproduced below.
26. An aircraft brake disc comprising:
layers of carbon fabric;
high-heat-capacity materials within the layers of fabric~
wherein such high-heat-capacity materials are present in an
amount dependent upon their contribution to the structural
integrity of the brake disc such that when contributing to the
stn1ctural integrity of said brake disc, the high-heat-capacity
materials comprise as much as 60%) by weight of the total of said
carbon fabric and high-heat-capacity materials, and when such
high-heat-capacity materials are not contributing to the structural
integrity of said brake disc, they comprise less than 30%) by
weight of the total of said carbon fabric and high-heat-capacity
materials: and
wherein said layers of carbon fabric and high-heat-
capacity materials are densified to fi.nn1 the aircraft brake disc
and wherein a positioning of the high-heat-capacity materials
within said lavers of fabric establishes whether or not thev
~ d
contribute to structural integrity of the brake disc.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lau US 2004/0058154 Al
THE REJECTIONS
Mar. 25, 2004
I. Claims 26 and 27 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2-3.
II. Claims 26 and 27 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly and
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Application 13/298,625
distinctly claim the subject matter which the applicant regards as
the invention. Id. at 3--4.
III. Claims 26 and 27 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lau. Id. at 5.
OPINION
Rejection I
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ari ad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "This inquiry ... is a question of fact," and "the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology." Id. "[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
The Examiner finds that the disclosure of the present application fails
to provide adequate written description support for the recited limitation that
it is the ''positioning of the high-heat-capacity materials within said layers of
fabric [that] establishes whether or not the[] [materials] contribute to [the]
structural integrity of the brake disc." Final Act. 2 (emphasis added). In
particular, the Examiner takes the position that the disclosure describes only
that the proportion of the high-heat-capacity [HHC] materials changes
depending upon whether they are performing a structural function, such that
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Application 13/298,625
"it appears that the material provides the structural function, not the
positioning within layers of fabric." Id. at 2-3 ( citing Spec. ,r 65).
Appellants argue that one of ordinary skill in the art would understand
that in a first instance,
the disc is basically a skeletal C-C structure with distributed
discrete regions ofHHC material positioned such that the critical
load path from an ultimate strength perspective is through the
C-C skeleton, with the HHC material neither contributing to nor
taking from the torsional strength of the disc. Both the powder-
impregnated version and the insert version of Fig. 3 comport with
this discussion. . . . The necessity to maintain a structurally
viable C-C skeletal structure requires that the HHC material
loading will be limited to less than 30% (Appeal Br. 13)
and in a second instance,
the HHC material may be distributed both inside and outside of
the critical load path, such as permeating the layers of carbon
fabric of the disc both inside and outside of the critical load path.
In such case, the HHC material contributes to both the heat sink
and the torque transfer functionality of the disc. Since the HHC
material can be distributed throughout the entire disc volume,
higher loadings of HHC materials are possible-up to 60% (id.
at 13-14).
Appellants, however, have not pointed out where there is a written
description of the claim limitation in the Specification. That is, Appellants
have not identified where the Specification expressly, implicitly, or
inherently supports the limitation that the position of the HHC materials
establishes whether or not they contribute to the structural integrity of the
brake disc ( e.g., the HHC materials being distributed only in discrete regions
in a first instance such that the critical load path extends only through the C-
C skeleton, as opposed to the HHC materials being distributed more broadly
in a second instance such that the critical load path extends through those
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Application 13/298,625
areas incorporating HHC material). See Ans. 5 ("[NJ one of the discussed
torque transfer and critical load path features find basis in the instant
disclosure.").
Thus, we do not find that the Examiner erred in finding that the
disclosure of the present invention fails to reasonably convey to those skilled
in the art that Appellants had possession of the subject matter of claim 26.
Accordingly, we sustain the rejection of claim 26, and claim 27 depending
therefrom, under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Rejection II
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e)).
Claim 26 recites, in relevant part, "wherein such high-heat-capacity
materials are present in an amount dependent upon their contribution to the
structural integrity of the brake disc." Appeal Br. 17 (Claims App.). The
Examiner states that "[i]t is not clear if the contribution to integrity is a
feature of the material, or how the material is used." Final Act. 3. The
Examiner also states that "[i]t would seem that inclusion of any material
would have a structural impact" and "[i]t is not clear what degree of impact
constitutes a contribution to the structural integrity." Id. at 3--4.
Evan assuming arguendo that it is clear that the contribution to
integrity is a feature of how the materials are used (e.g., positioned) in that
the claim explicitly further specifies that it is the "positioning of the [HHC]
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Application 13/298,625
materials within said layers of fabric [that] establishes whether or not they
contribute to [the] structural integrity of the brake disc" (Appeal Br. 17
(Claims App.)), we agree with the Examiner that inclusion of any material in
any position would appear to "have a structural impact (Final Act. 3)" and it
is not clear when the inclusion of materials would be considered to be
"contributing to the structural integrity of [the] brake disc" or "not
contributing to the structural integrity of [the] brake disc" as further recited
in claim 26. In other words, it is not clear what distinguishes between HHC
materials that contribute to the structural integrity of the brake disc and HHC
materials that do not. The Specification and claims do not provide an
objective standard that would allow one of ordinary skill in the art to
determine when particular positioning of HHC materials would constitute
HHC materials that contribute to the structural integrity of the brake disc
( and thus, can comprise up to 60% by weight of the total of carbon fabric
and HHC materials) and when particular positioning of HHC materials
would constitute HHC materials that do not contribute to the structural
integrity of the brake disc (and thus can comprise only up to 30% by weight
of the total of carbon fabric and HHC materials).
Moreover, Appellants' arguments regarding the "various
embodiments [that] were presented" (Appeal Br. 14) do not clarify how the
positioning of HHC materials relates to whether or not they provide
structural integrity. In particular, Appellants assert, on the one hand, that
"whether the HHC materials are interposed for thermal purposes only, or for
both thermal and structural purposes, is a function of their positioning within
the disc," and "is the reason that various embodiments were presented, one
covering full impregnation of HHC material in a powder form during the
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Application 13/298,625
manufacturing process, and the other by the insertion of inserts 30 in the
finished form." Appeal Br. 14. This assertion seems to suggest that
impregnation in a powder form during the manufacturing process, as
opposed to the use of inserts in the finished form, has a different effect with
respect to the structural integrity of the disc. On the other hand, Appellants
assert that "[b ]oth the powder-impregnated version and the insert version of
Fig. 3 comport with this discussion [ of a first instance in which the HHC
material added to the brake disc composite does not contribute to the
structural torque transfer characteristics]." Id. at 13. This assertion seems to
suggest that impregnation in a powder form during the manufacturing
process, and the use of inserts in the finished form, both fail to contribute to
the structural integrity of the disc. Thus, it remains unclear what positioning
of HHC materials distinguishes between HHC materials that contribute to
the structural integrity of the brake disc, and HHC materials that do not.
As such, whether HHC materials within the layers of fabric are
present in an amount so as to contribute to the structural integrity of the
brake disc or not, would not be readily apparent to one of ordinary skill in
the art. In light of the above, claim 26 is "unclear in describing and defining
the claimed invention." Packard, 751 F.3d at 1311. Accordingly, we
sustain the rejection of claim 26, and claim 27 depending therefrom, under
35 U.S.C. § 112, second paragraph, as indefinite.
Normally, when substantial confusion exists as to the interpretation of
a claim, and no reasonably definite meaning can be ascribed to the terms in a
claim, a determination as to compliance with 35 U.S.C. § 102 is not made.
See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the
Board erred in affirming an anticipation rejection of indefinite claims).
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However, in this instance, we consider it to be desirable to address the
rejection under 35 U.S.C. § 102 to avoid the inefficiency of piecemeal
appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App.
1984) (expressing the view that, where a claim is subject to more than one
interpretation, one of which would render the claims unpatentable over the
prior art, the USPTO should enter simultaneous rejections under 35 U.S.C.
§ 112, second paragraph, and under 35 U.S.C. § 102 or 103, to avoid
piecemeal appellate review). As discussed in more detail below, we need
not speculate about the meaning of the indefinite language to consider the
merits of the disputed aspects of the rejection. Therefore, we make a
determination below as to patentability under 35 U.S.C. § 102(b) of the
appealed claims in the interest of administrative economy.
Rejection III
Appellants argue claims 26 and 27 as a group. Appeal Br. 15. We
select claim 26 as the representative claim, and claim 27 stands or falls
therewith. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that:
[Lau] discloses all the limitations of the instant claims
including; layers of carbon fabric [0084][0088]; a high-heat-
capacity material [0085] in powdered form permeating the layers
of fabric [0086]; and wherein said permeated layers of carbon
fabric are densified to a level suitable for use on a brake disc
[0087]. [Lau] further disclose high-heat-capacity materials B4C
of 25 %[,] which falls within the range of as much as 60% and
less than 3 0%. Thus, the content of [Lau] meets the claim
requirements regardless of whether or not they contribute to
structural integrity.
Final Act. 5.
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Application 13/298,625
Appellants argue that "La[ u] is totally silent as to any relationship or
correlation between the quantity of HHC material and its location within the
disc and consequent contribution to structural integrity." Appeal Br. 15.
The Examiner responds that "La[u] teaches the inclusion (uniform
positioning throughout the material [ (0048)] of B4C which prevents large
SiC crystals from forming [0047] so the material can also be considered as
contributing to structural integrity." Ans. 6. The Examiner maintains that
"[i]t is not clear ... what specific structural feature is lacking." Id.
We agree with the Examiner that Appellants have not refuted the
Examiner's findings that Lau discloses all of the limitations of independent
claim 26. Appellants' argument appears to focus on whether Lau explicitly
describes selecting a particular quantity/location of HHC materials to
achieve a certain contribution to structural integrity based on recognition of
a relationship or correlation between quantity/location and its effect on
structural integrity. The relevant inquiry, however, is whether Lau
necessarily has the quantity/location of HHC materials to achieve the effect
on structural integrity, not whether Lau acknowledges this. See, e.g., Toro
Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004) ("[T]he fact that a
characteristic is a necessary feature or result of a prior-art embodiment (that
is itself sufficient described and enabled) is enough for inherent anticipation,
even if that fact was unknown at the time of the prior invention."). In short,
Appellants' argument does not persuasively refute the Examiner's findings
that the structure of Lau has the claimed quantity/location of HHC materials
and their corresponding relationship with structural integrity of the brake
disc.
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Application 13/298,625
Appellants also argue that "La[u] does not teach a 25% ratio of HHC
material to the aggregate total of carbon fiber and HHC material as claimed,
but only to the total composition that includes and requires as much silicon
as B4C." Appeal Br. 15. The Examiner responds that the "CVD-C and S[i]
... form the carbon fabric material and can therefore be considered the
carbon fabric" and that "[a]lternatively, the fiber and carbon coating [CVD-
C] of the last example in [0089] appear to yield ratios in the specified
range." Ans. 5. Even assuming arguendo that the CVD-C and Si cannot be
considered the carbon fabric, Appellants do not rebut the Examiner's
alternative finding regarding the last example in paragraph 89 and we are not
apprised of error in this alternative finding.
Appellants further argue that the Examiner is "disregard[ing] the
claim limitation that it is the 'positioning of the high-heat-capacity materials
within said layers of fabric that establishes whether or not they contribute to
structural integrity of the brake disc."' Appeal Br. 15. The Examiner
responds that the claims "merely set maximum values" and Lau's disclosed
value is less than both maximum values set forth in the claims (i.e., both
when the HHC materials are contributing to the structural integrity and when
the HHC materials are not contributing to the structural integrity). Ans. 5.
In this way, we agree with the Examiner that Lau "meets the claim
requirements regardless of whether or not the[] [HHC materials] contribute
to structural integrity." Id. Thus, we need not speculate regarding whether
the HHC materials in Lau are, or are not, positioned so as to contribute to the
structural integrity of the brake disc in considering the merits of the rejection
because the disclosed value is less than the maximum value under either
instance.
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Application 13/298,625
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's determination that Lau anticipates claim 26. Accordingly, we
sustain the rejection of claim 26, and claim 27 falling therewith, under
35 U.S.C. § 102(b) as anticipated by Lau.
DECISION
The Examiner's decision to reject claims 26 and 27 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is affirmed.
The Examiner's decision to reject claims 26 and 27 under 35 U.S.C.
§ 112, second paragraph, as indefinite is affirmed.
The Examiner's decision to reject claims 26 and 27 under 35 U.S.C.
§ 102(b) as anticipated by Lau is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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