Ex Parte Liggett et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11443327 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/443,327 05/30/2006 Paul E. Liggett LSG. P0075 4081
26360 7590 03/21/2012
RENNER KENNER GREIVE BOBAK TAYLOR & WEBER
FIRST NATIONAL TOWER, SUITE 400
106 SOUTH MAIN STREET
AKRON, OH 44308-1412
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
03/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PAUL E. LIGGETT and JAMES I. MASCOLINO
________________

Appeal 2011-005322
Application 11/443,327
Technology Center 1700
________________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1, 3, 4, 6, 8, 9, 19, 20, and 22-31
of Application 11/443,327 as obvious. Appellants sought review under 35
U.S.C. § 134. We have jurisdiction pursuant to 35 U.S.C. § 6(b). For the
reasons set forth below, we AFFIRM.
Background
The ’327 application discloses and claims improved laminates for use
in the construction of lighter-than-air vehicles.
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Figure 3 of the ’327 application illustrates one of the claimed
laminates and is reproduced below:

Figure 3, above, shows that the laminate has an interior surface 22 and an
exterior surface 24. Spec., 4. A straight ply monofilament yarn layer 25
forms the interior surface. Id. A high-modulus barrier film layer 45 is
adhered to the yarn layer 25 by means of an adhesive layer 40. Id. at 4. In
the embodiment shown in Figure 3, barrier film layer 45 has metal layer 50
adhered to its outer surface. Id. Reflectance enhancing layer 52 may be
adhered to metal layer 50. Optionally, a clear film cover layer 55 may be
adhered to metal coating layer 50 or to reflectance enhancing layer 52. Id. at
5.
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The yarn layer 25 may be comprised of a liquid crystal polymer. Id.
Barrier film 45, which serves to contain the helium or other gas used to fill
the lighter-than-air vessel, may be a polyimide film. Id. at 6. Clear film layer
55 may be any material that is resistant to ozone and ultraviolet radiation,
such as polyvinylidene fluoride (PVDF). Id. at 8.
Claim 1 is representative:
1. An untethered high-altitude lighter-than-air vehicle
constructed with a laminate material comprising:
an untethered high-altitude lighter-than-air vehicle having a
hull constructed from a laminate material having an interior
surface and an exterior surface;
said laminate material comprising:
at least one yarn layer forming said interior surface;
a high modulus film layer adjacent to said at least one
yarn layer;
an adhesive disposed between entire facing surfaces of
said yarn layer and said high modulus film layer;
a metallized coating disposed adjacent to said high
modulus film layer opposite said at least one yarn layer,
wherein one or more of said adhesive and said high
modulus film layer includes a reinforcing fiber or
inorganic filler selected from carbon nanotubes and
carbon nanofibers; and
a clear film cover layer adjacent to said metallized
coating forming said exterior surface, said clear film
cover layer acts as an emitter of solar radiation in the mid
to far infrared region and said metallized coating reflects
solar radiation in the ultraviolet, visible and near infrared
regions so as to minimize heat build-up in said laminate
material.
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(emphasis added).
The Examiner rejected claims 1, 3, 8, 9, and 23-26 of the ’327
application as obvious under 35 U.S.C. § 103(a) over the combination of
published U.S. Patent App. No. 2004/0180161 (“Lavan,” pub. Sept. 16,
2004), in view of U.S. Patent No. 4,836,128 (“Walker,” issued June 6,
1989), in further view of U.S. Patent No. 6,712,864 (“Horiuchi,” issued
March 30, 2004). Claims 4, 6, 19, 20, 22, and 27-31 were rejected as
obvious under 35 U.S.C. § 103(a) over the combination of Lavan, Walker,
and Horiuchi in further view of published U.S. Patent App. No.
2003/0091785 (“Howland,” pub. May 15, 2003). Final Office Action
(“FOA,” March 10. 2010).
Discussion
Appellants advance three arguments in their effort to overcome the
§ 103(a) rejections: (1) that there was no motivation to combine the
teachings of the cited references, (2) that a person of ordinary skill in the art
would not have had a reasonable expectation of success in creating the
claimed invention based on the teachings of the combined references, and
(3) that the cited references do not teach every limitation of the claimed
invention.
As discussed above, the Examiner asserted two different rejections
against separate sets of claims. FOA 2, 5. Appellants argue in favor of
patentability of claims 1 and 19, the ’327 application’s only independent
claims and advance a single set of three arguments against the combination
of the Lavan, Walker, and Horiuchi references that are common to both
rejections.
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We have reviewed Appellants’ arguments, the Examiner’s Answer,
and the references. Having done so, we sustain the Examiner’s rejections.
I. The Prior Art
The Lavan reference discloses a laminate for use in lighter-than-air
vessels. Figure 2 from Lavan is reproduced below.

Figure 2 above shows that the laminate is similar in structure to that
disclosed and claimed by Appellants. Lavan’s laminate 20 comprises an
inner surface 22 and an outer surface 24. Lavan, ¶ 18. The inner surface is
defined by a layer of woven polymer (such as a liquid crystal polymer) yarn
26. Id., ¶ 19, 20. This layer is attached via adhesive layer 28 to a barrier film
(such as a polyimide film) 30 that serves to contain the gas used to fill the
lighter-than-air vessel. Id., ¶ 19. The polyimide layer is attached via
adhesive layer 32 to a PVDF layer 34 that serves primarily to protect the
laminate from ozone and ultraviolet radiation. Id.
As can be seen, Lavan differs from Applicants’ claims in that it does
not have the metallized film layer and neither the adhesive nor the barrier
film layer have carbon nanotubes or carbon fiber filler. The Examiner relies
on Walker and Horiuchi to remedy these deficiencies. Walker teaches that a
balloon that may be deployed to indicate the position of a lost or stranded
individual should include a metallized material so that the balloon is radar
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reflective. Col. 3, ll. 54-68. Walker further teaches that a clear overcoat can
be applied to a reflective metallic layer such as a metallized plastic material
to protect it from the environment. Id. Horiuchi teaches that it is well known
in the aerospace field to use carbon fibers and/or carbon nanotubes as filler
material in films and adhesives to impart toughness to light weight material.
Col. 1, ll. 22-32; col. 3, l. 60-col., 4, l. 8; col. 27, ll. 45-62.
II. The Examiner Correctly Determined That There is a Motivation
to Combine Lavan, Walker, and Horiuchi.
Appellants argue that there is no motivation to combine Lavan with
either Walker or Horiuchi. Br. at 11-13. In particular, they argue that a
person of ordinary skill would not have thought to look to Walker for two
reasons: First, Lavan allegedly teaches away from using radar reflective
materials. Second, Walker deals with tethered balloons rather than
untethered lighter-than-air vessels. Furthermore, Lavan allegedly teaches
away from using filler materials like those taught in Horiuchi. We address
these issues seriatim.
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
There are “three possible sources for a motivation to combine references: the
nature of the problem to be solved, the teachings of the prior art, and the
knowledge of persons of ordinary skill in the art.” In re Rouffet, 149 F.3d
1350, 1358-59 (Fed. Cir. 1998). The existence of a motivation to combine
references, however, is not a rigidly applied test. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).
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Our review of the record convinces us that a person of ordinary skill
would have been motivated to modify the teachings of Lavan in view of
Walker and Horiuchi.
First, Lavan, read as a whole, does not teach away from the use of
metallized layers in every application of its laminate. While Lavan does
teach that radar invisibility can be desirable for some uses, Lavan, ¶ 3, it also
teaches that lighter-than-air vehicles are often used at low altitudes over
urban areas for advertising purposes, or as high-altitude weather balloons, id.
at ¶ 2. In such applications, a person of ordinary skill in the art would have
known from common sense that radar reflectance is a useful attribute. A
person of ordinary skill would have been motivated to add a metallized
layer, such as that disclosed in Walker, to Lavan’s laminate in order to
increase radar visibility for such applications. The ’327 application teaches
that the metallized layer was not added to increase the radar signature of the
lighter-than-air vehicle, but to reflect solar radiation, dissipate static charge
build up, reduce helium permeability, and reduce damage from lightning
strikes. Spec., 7. This disclosure, however, is irrelevant. KSR, 550 U.S. at
419 (patentee's motivation for doing something does not control); In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation to
combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness”).
Second, while it is true that Walker deals with tethered low altitude
lighter-than-air balloons and Lavan primarily addresses untethered high-
altitude lighter-than-air vehicles, Appellants have not convinced us that
Walker is non-analogous art from Lavan or the current application. In
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selecting references for combination, skilled artisans can be expected to look
to references that address the problems they are attempting to solve. In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). See also KSR, 550 U.S. at
417 (“When a work is available in one field or endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one.”).
Finally, Appellants argue that a skilled artisan would not have been
motivated to combine Horiuchi with Lavan and Walker because of concerns
about additional weight being added to the laminate. This argument is
unpersuasive for two reasons. First, Horiuchi teaches that the use of carbon
nanotubes and fiber as filler in materials used in the aerospace industry was
well known. Col. 1, ll. 22-32; col. 3, l. 60-col., 4, l. 8; col. 27, ll. 45-62.
Weight/strength tradeoffs are a common problem faced by persons of skill in
this art. Second, as the Examiner points out, Ans. 10, Appellants have not, in
fact, demonstrated that the use of carbon fiber and/or nanotubes as filler
actually adds weight to the materials in which they are used. It is possible
that the use of carbon fibers and/or nanotubes actually reduces the weight of
the material into which they are incorporated.
III. The Person of Ordinary Skill in the Art Would Have Had a
Reasonable Expectation of Success
Appellants argue that there is no reasonable expectation of success in
combining the teachings of Lavan, Walker, and Horiuchi. Br. 14.
A combination of references renders a claimed invention obvious if
the skilled artisan would have had a reasonable expectation that the
combination would work for its intended purpose. Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007); In re Rinehart, 531 F.3d 1048,
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1053-54 (CCPA 1976). “[O]nly a reasonable expectation of success, not a
guarantee, is needed.” Pfizer, 480 F.3d at 1364.
In this case there would have been a reasonable expectation that that
the asserted combination of Lavan, Walker, and Horiuchi would work for its
intended purpose. Appellants complain that “the hypothetical incorporation
of Walker’s metallized layer into Lavan’s reflective cover layer . . . would
reduce the life of the vehicle” and “would require the vehicle to use more
power to maintain a desired altitude.” Br. 14. These complaints, however,
are not sufficient to overcome the rejections for two reasons. First,
Appellants assume that the person of ordinary skill would use the white
cover layer taught for Lavan’s preferred embodiment rather than the clear
cover layer taught elsewhere in Lavan and in Walker. Thus, they are
complaining about a combination of teachings not relied upon by the
Examiner. As explained below, a person of ordinary skill in the art would
not combine the references in the manner asserted by Appellants. Second,
these complaints, at most, establish that the laminate created by combining
the references in the (disadvantageous) manner preferred by Appellants
would work in high altitude lighter-than-air vehicles, just not as well as
Appellants’ preferred embodiment. In sum, Appellants admit that the
references combined in a disadvantageous manner would work, just not as
well as their invention.
IV. The Combination of References Teach Every Limitation of the
Claims
Claims 1 and 19 each require the inclusion of “a clear film cover
layer” adjacent to the metallized layer. The clear film cover layer forms the
exterior surface of the laminate.
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Appellants argue that the combination of Lavan, Walker, and
Horiuchi (with respect to claim 1) or Lavan, Walker, Horiuchi, and Howland
(with respect to claim 19) do not teach this limitation. This contention is
incorrect, and we sustain the Examiner’s rejections over this argument.
First, Walker teaches the use of clear cover layer adjacent to a
metallized layer. Col. 3, ll. 61-68. Second, Lavan teaches the use of PVDF
as an exterior cover layer. ¶¶ 6-9. While the preferred embodiment described
in Lavan apparently did not use a clear PVDF layer, ¶ 21; Lavan Decl. ¶ 8
(describing use of titanium dioxide impregnated PVDF film), a person of
ordinary skill in the art would be aware that PVDF films are clear in the
absence of an added colorant. The skilled artisan would have been motivated
to use a PVDF film in a laminate intended for high altitude use to take
advantage of its ultraviolet and ozone resistance. Lavan, ¶¶ 19, 22.
Furthermore, the skilled artisan would have known to use clear PVDF to
avoid impeding the light reflecting properties of the metallized layer.
Appellants also rely on the Liggett Declaration filed December 2,
2009 as showing “improved properties of the claimed construction as
opposed to a white PVDF construction as taught by Lavan.” Br. 14. As
stated by the Examiner, however, the rejection “calls for the inclusion of a
metallized layer under the clear cover layer, as taught by Walker.” Ans. 11.
Thus, the “improved properties” over white PVDF is not germane to the
Examiner’s rejection. Moreover, the Examiner appears to have considered
the results discussed in the Liggett Declaration to be expected by a person of
ordinary skill in the art. Ans. 11. The Examiner’s view is justified because
Mr. Liggett did not assert that the “improved properties” would have been
considered truly unexpected by a person of ordinary skill in the art.
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Appellants argue that Walker’s teaching is irrelevant because the
particular materials identified in Walker (nylon and PVC) are not suitable
for use in laminates that will be used at high altitudes. Br. 16, 17. This
argument does not overcome the Examiner’s rejection for two reasons. First,
Appellants admit that a lighter-than-air vehicle constructed from a laminate
that incorporated these materials would work, although perhaps not for as
long as PVDF. Id. at 16. Second, another cited reference, Lavan, teaches the
use of a clear material that is better suited for use at high altitudes, and a
skilled artisan would have been capable of substituting clear PVDF for the
nylon or PVC taught in Walker.
For these reasons, we find that the cited prior art teaches every
limitation of claims 1 and 19 of the ’327 application.
* * *
For the foregoing reasons, we do not find Appellants’ arguments to be
persuasive. We sustain the Examiner’s rejection of all of the claims in the
’327 application.
Conclusion
We have reviewed Appellants’ arguments against the rejections of
claims 1, 3, 4, 6, 8, 9, 19, 20, and 22-31 under 35 U.S.C. § 103(a) and have
sustained the Examiner’s rejection. Therefore, we AFFIRM.

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) (2011).
AFFIRMED.

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