Ex Parte Kennedy et al

Board of Patent Appeals and Interferences

Oct 23, 2009

10322512 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES C. KENNEDY, CLYDE T. UYEHARA,
and JEFFREY G. THOMPSON
____________

Appeal 2009-002054
Application 10/322,512
Technology Center 2800
____________

Decided: October 23, 2009
____________

Before JOSEPH F. RUGGIERO, KARL D. EASTHOM, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 21-28 and 39, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
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We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed January 4, 2007) and the Answer
(mailed September 28, 2007) for the respective details. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to the verification of conductive paths in
a test part in which the conductive paths are tested for flaws by subjecting
the test part to a conductive current flow from one test part location to
another test part location. Test part sites which contain dislocations cause a
concentration of current around the dislocations resulting in increased ohmic
heating which can be detected with an infrared camera. (See generally Spec.
¶ ¶ [0016]-[0017]).

Claim 21 is illustrative of the invention and reads as follows:

21. A method of detecting structural anomalies in a composite part
having at least one conductive layer and at least one non-conductive layer,
the method comprising:
connecting a first contact to a first end of the part;
connecting a second contact to a second end of the part;
applying an electrical current from the first end to the second end of
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the part to cause ohmic heating of substantially an entirety of the part;
detecting a first type of flaw by detecting a first cooler region of the
part as compared to a first warmer region surrounding colder region;
discontinuing the application of electrical current through the part;
and
detecting a second type of flaw by detecting a second warmer region
as compared to a second cooler region surrounding the second warmer
region after discontinuance of the application of current.

The Examiner’s Rejection

The Examiner’s Answer cites the following prior art references:
Wells US 3,681,970 Aug. 8, 1972
Moriya (as translated) JP 01-282454 Nov. 14, 1989
Murakami US 4,967,276 Oct. 30, 1990
White US 5,709,469 Jan. 20, 1998

Appellants’ admitted prior art (AAPA) at page 9, paragraph [0032] of the
Specification.

Claims 21-23, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moriya in view of Wells and White.
Claims 24, 25, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moriya in view of Wells, White, and AAPA.1

1 The Examiner’s Answer, while including dependent claim 39, which
groups together the subject matter of dependent claims 24 and 25, in the
listing of rejected claims on appeal (Ans. 2), fails to include claim 39 in the
group of claims subject to this rejection (Ans. 6). Appellants have not
separately argued any of the appealed dependent claims, and we treat the
Examiner’s failure to include claim 39 as an inadvertent, harmless error.
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Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moriya in view of Wells, White, and Murakami.

ISSUE
The pivotal issue before us is whether Appellants have demonstrated
that the Examiner erred in determining the obviousness to the skilled artisan
of combining the particular flaw type detection teachings of Wells and
White with the workpiece entirety structural flaw detection teachings of
Moriya.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Moriya discloses (page 3, lines 1-4 and page 4, lines 1-8) a non-
destructive testing system for testing flaws in a structure made up of
composite material in which defects are detected based on a change in
temperature distribution resulting from heat generated by a current passing
through the structure.
2. Moriya further discloses (Fig. 1, page 5, lines 6-15) a testing
structure in which current is applied to a composite material structure 1
through electrodes 3 and 3’ attached to the ends of the structure 1.
3. Wells discloses (Figs. 1-3) a system for the detection of flaws
in a composite material part having a conductive layer and a non-conductive
layer.
4. Wells further discloses (col. 1, ll. 19-24, col. 1, l. 63-col. 2, l.
11, col. 2, l. 43-col. 3, l. 8, and col. 3, ll. 32-35) that an inductive heating coil
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is used to apply heat to the interior of the composite material part while a
thermal image of the composite part is displayed on a display device.
5. White discloses (Fig. 1, col. 1, ll. 56-62 and col. 5, ll. 36-48) a
system for detecting delaminations in a composite structural part by
applying heat to the part, discontinuing the heat application, and comparing
by thermographic imaging the cooler and warmer regions of the part after
discontinuing of the heat application.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
“‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”

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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Also, “‘[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.’” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161
(Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). “One of the ways in which
a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” KSR, 550 U.S. at
419-20.

ANALYSIS
With respect to the Examiner’s obviousness rejection of representative
independent claim 21 based on the combination of Moriya, Wells, and
White, Appellants’ arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since a proper basis for the
Examiner’s proposed combination of references has not been established.2
Appellants’ arguments focus on the contention that a skilled artisan would
not combine the cited references as proposed by the Examiner. According to
Appellants (App. Br. 10-11), both Wells and White merely disclose the
testing of small portions of a part such as the referenced “discrete volume”
in Wells (e.g., col. 3, ll. 4-5 and the patched surface area in White (e.g., col.

2 Appellant argues rejected claims 21-23, 26, and 27 together as a group
making particular reference solely to independent claim 21. See App. Br. 9-
12. Accordingly, we select claim 21 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).

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1, ll. 37-42). In Appellants’ view (id.), both Wells and White teach away
from both Appellants’ invention and Moriya’s teaching of testing the
entirety or a substantial entirety of a part.
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position. In support of their “teaching away”
argument, Appellants direct attention to the portion of the disclosure of
Wells (col. 1. ll. 43-55) which describes a “gross deformation” problem
associated with a prior art technique of radiantly heating a large portion of a
workpiece. According to Appellants (App. Br. 10-11), this teaching would
discourage a skilled artisan from applying the teachings of Wells to the
testing of a large object such as an airplane wing or fuselage such as in
Appellants’ invention. The invention described by Wells, however, does not
use radiant heating to apply heat to a workpiece surface but, rather, utilizes
an inductive heating coil to generate heat in an interior surface of a
workpiece in order to detect flaws. (See FF 4). We find no disclosure in
Wells that describes any “gross deformation” problem associated with
heating an entirety of a workpiece utilizing an inductive heating technique.
We also find to be without merit Appellants’ contention (App. Br. 11)
that, even if combined as proposed by the Examiner, the result achieved by
the combination of Moriya, Wells, and White would not arrive at the
claimed invention. It is apparent to us from the Examiner’s stated position
(Ans. 5, 6, and 9) that the Examiner is not suggesting the bodily
incorporation of the workpiece flaw testing structure of Wells and White
into the workpiece testing structure disclosed by Moriya. Rather, it is the
teachings of Wells and White of testing for particular types of flaws, i.e.,
cracks and delaminations, respectively, that is relied upon as a rationale for
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the proposed combination with Moriya’s disclosed structure which tests an
entirety of a workpiece. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference.... Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” See In re Keller, 642 F.2d 414, 425 (CCPA 1981) and In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973).
Lastly, we find, contrary to Appellants’ arguments (App. Br. 12), that
the Examiner (Ans. 5, 6, and 9) has set forth an articulated line of reasoning
which establishes that the flaw testing teachings of Wells and White would
have served as an obvious enhancement to the workpiece structural flaw
testing device of Moriya. According to the previously discussed KSR and
Leapfrog standards, when a combination of familiar elements according to
methods known to the skilled artisan achieves a predictable result, it is likely
to be obvious.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35 U.S.C.
§ 103(a) rejection of representative independent claim 21, as well as claims
22, 23, 26, and 27 not separately argued by Appellants, is sustained.
We also sustain the Examiner’s obviousness rejection of dependent
claims 24, 25, 28, and 39 in which the AAPA and Murakami references have
been separately added to the combination of Moriya, Wells and White to
address, respectively, the composite part material and thermographic
imaging features of these claims. Appellants have made no separate
arguments as to the patentability of these claims but, instead, have relied on
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arguments made against claim 21, which we found to be unpersuasive as
previously discussed.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting appealed
claims 21-28 and 39 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 21-28 and 39, all of the
appealed claims, under 35 U.S.C. § 103 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

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