Ex Parte Kaye

Board of Patent Appeals and Interferences

Jan 30, 2012

10525063 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALLAN KAYE
____________

Appeal 2009-010706
Application 10/525,063
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Allan Kaye (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 3-5, and
10 as unpatentable over Gilb (US 4,410,294, issued Oct. 18, 1983) and Fogg
(US 4,210,694, issued Jul. 1, 1980) and claims 1, 2, 4, 5, and 10 as
unpatentable over Gilb and Machida (US 4,784,920, issued Nov. 15, 1988).
Claims 6-9 have been withdrawn. Appellant’s representative presented oral
argument on Jan. 10, 2012. We have jurisdiction over this appeal under 35
U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a method of making a bracket from a
composite material including providing a cut blank of composite material,
bending the blank about at least one folding line, and curing the bent blank
of composite material. Spec. 2, ll. 21-30 and figs. 5 and 6.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of forming a bracket including the steps of:
(i) cutting out a blank from a sheet of composite material,
the blank having a central portion including at least one fold
line defining first and second regions of the blank, the fold line
extending only partially across the blank and creating non-
folding portions of said blank at each end of the fold line,
and then, using a forming tool
(ii) undertaking a bending operation to bend the central
portion of said blank about the fold line only to create a
predetermined angle between said first and second regions to
form the required three-dimensional shape,
(iii) curing the bracket.

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SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The Examiner found that Gilb discloses a bracket cut from a blank
having:
… a central portion including at least one fold line
(12, 21, 45 or 46) defining first and second regions
of the blank, the fold line extending only partially
across the blank and creating non-folding portions
of the blank at each end of the fold line.
Ans. 3.
The Examiner further found that the blank of Gilb is not made from a
composite material by a process that includes bending before (as per claim
3) or concurrent (as per claim 2) with curing. Ans. 4. The Examiner then
turned to the disclosure of Fogg to show a bracket made from a composite
material formed by a process that includes bending before curing. Ans. 4-5.
Similarly, the Examiner showed that Machida discloses making a composite
plate in which bending and curing are concurrent process steps. Ans 5.
The Examiner concluded that it would have been obvious to make the
bracket of Gilb using the composite material and process of Fogg “in order
to create a structural fitting (bracket) that ‘has adequate strength to transfer
the necessary loads with a minimum weight… (with) low cost means of
fabricating.’” Ans. 5. Likewise, the Examiner found that it would have
been obvious to make the bracket of Gilb using the composite material and
process of Machida “in order to provide an element with ‘high accuracy …
good workability … (and) integrally hardened.’” Id.
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Appellant first argues that (1) Gilb fails to disclose a composite
material and the operation of bending before curing and (2) both Fogg and
Machida fail to disclose a composite material blank having non-folding
portions at each end of a fold line. App. Br. 6-8, 14, and 16. Specifically,
Appellant argues that the Examiner has failed to show that the metal shaping
techniques of Gilb could be used with the composite materials of either Fogg
or Machida. App. Br. 7-8. We are not persuaded by Appellant’s argument
because nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In this case, the Examiner is not proposing to use the metal shaping
techniques of Gilb with the composite materials of either Fogg or Machida,
as Appellant argues. Rather, the Examiner is proposing to make a bracket
shaped as that of Gilb using the composite material and shaping technique of
either Fogg or Machida. Furthermore, we note that the Examiner used the
disclosure of Gilb to show a material blank having non-folding portions at
each end of a fold line, as called for by claim 1. See Ans. 3.
Second, Appellant argues that because neither Fogg nor Machida
discloses “non-folding portions,” both Fogg and Machida teach away from
the features of Appellant’s independent claim 1. App. Br. 12-13, 15, and 17-
18. Reply Br. 6-7. Once more, Appellant appears to attack the references
individually. In this case, as we noted above, the Examiner used the
disclosure of Gilb to show a material blank having “non-folding portions.”
See Ans. 3. Further, we agree with the Examiner that at least fold line 12
extends only partially across Gilb’s blank and forms “non-folding portions”
47 at each end of the fold lines. Id. See also Gilb, fig. 6. Moreover, simply
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that there are differences between two references is insufficient to establish
that such references "teach away" from any combination thereof. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
Third, Appellant argues that the Examiner failed to articulate an
adequate reason with some rational underpinning to combine the disclosure
of Gilb (that deals with metal bending) with the disclosures of either Fogg or
Machida (which deal with composite technology). App. Br. 9-12, 15, and
17. Reply Br. 3-4 and 8-9.
We disagree. With respect to the combination of Gilb and Fogg, the
Examiner has provided a reason (creating a bracket having adequate
strength) with rational underpinnings (composite material provides for
minimum weight). See Ans. 5. See also, Fogg, col. 1, ll. 62-64. Similarly,
regarding the combination of Gilb and Machida, the Examiner has provided
a reason (creating an element) with rational underpinnings (composite
material provides for high accuracy, good workability, and integrally
hardened). See Ans. 5. See also, Machida, col. 2, ll. 15-17 and 27-28; In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Moreover, we note that Fogg specifically discloses processing composite
materials to form a structural fitting (bracket) rather than machining, casting,
or forging metals to a desired geometry (as disclosed by Gilb). Fogg, col. 1,
ll. 23-25 and 60-64. As such, Appellant has not persuasively argued that the
Examiner’s conclusion of obviousness lacks rational underpinning.
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Finally, pointing to Figure 5 of Appellant’s Drawings, Appellant notes
that “non-folding portions” are created at the left and right ends of fold line
52. Reply Br. 3. Appellant then argues that fold lines 12, 21, 45, or 46
likewise do not form “non-folding portions,” as called for independent claim
1. Reply Br. 3 and 4. Appellant further argues that neither Fogg nor
Machida disclose “non-folding portions,” as called for by independent claim
1. Reply Br. 3-4.
Once more, we note that the Examiner used the disclosure of Gilb to
show a material blank having “non-folding portions.” See Ans. 3.
Appellant’s representative stated, in the oral argument presented on Jan. 10,
2012, that it can be argued that Gilb’s Figure 6 shows folding line 12 and
“non-folding portion” 471, as called for by independent claim 1. We agree.
Claim 1 merely requires at least one fold line “extending only partially
across the blank and creating non-folding portions of said blank at each end
of the fold line.” App. Br., Claims Appendix. Hence, we agree with the
Examiner that at least fold line 12 extends only partially across Gilb’s blank
and forms “non-folding portions” 47 at each end of the fold lines. Id. See
also, Gilb, fig. 6.
In conclusion, for the foregoing reasons, the rejections under 35
U.S.C. § 103(a) of claims 1, 3-5, and 10 as unpatentable over Gilb and Fogg

1 “… but I think there's an argument that the upper fold line -- I think it
might be 12 -- and the part there in that metal bracket that's folded at 90
degrees -- you could argue that there are non-folding portions extending
beyond the end of the fold line. … I'm saying that it could be argued that
Gilb -- if you look at Figure 6, at the top portion, number 6, you have a fold
line there, and then you could argue that that extension that's labeled 47 is a
non-folded portion that extends beyond the fold line.” Record of Oral
Hearing, p. 10 and 11, Jan. 10, 2012.

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and of claims 1, 2, 4, 5, and 10 as unpatentable over Gilb and Machida are
sustained.

SUMMARY
The decision of the Examiner to reject claims 1-5 and 10 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)(1)(iv).

AFFIRMED

mls