Ex Parte MARX et al

Patent Trial and Appeal Board

Mar 7, 2016

13325212 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/325,212 12/14/2011
32692 7590 03/09/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
RyanE.MARX
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.
63528US008 8351
EXAMINER
BENEDIK, JUSTIN M
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RY AN E. MARX, BRYAN C. FEISEL, and
DOUGLAS E. WEISS
Appeal2014-001165
Application 13/325,212
Technology Center 3600
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and PAUL J.
KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants Ryan E. Marx et al. appeal under 35 U.S.C. § 134 from a
rejection of claims 1-12 and 19-22. Claims 13-18 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-001165
Application 13/325,212
CLAIMED SUBJECT MATTER
The claims are directed to erosion resistant films for use on heated
aerodynamic surfaces. Claims 1 and 19 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
An erosion resistant construction comprising:
a) an element of an aircraft comprising: i) an aircraft skin
segment having an external surface, and ii) a deicing
mechanism associated with said aircraft skin segment capable
of heating said external surface to temperatures in excess of
65°C·
'
b) a tape comprising: i) at least one layer comprising a
crosslinked polymer, selected from the group consisting of
crosslinked polyurethane, crosslinked polyurea, and crosslinked
mixed polyurethane/polyurea polymer, and ii) an adhesive
layer;
wherein the tape is bonded to the external surface of the
aircraft skin segment by the adhesive layer.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Bergstedt
Rutherford
Fisher
US 2,964,422 Dec. 13, 1960
US 6,330,986 Bl Dec. 18, 2001
US 2005/0147783 Al Jul. 7, 2005
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rutherford and Fisher.
2. Claims 19-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rutherford, Fisher, and Bergstedt.
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Appeal2014-001165
Application 13/325,212
Appellants seek our review of the two rejections.
OPINION
Appellants argue claims 1-12 as a group. Appeal Br. 4. We select
claim 1 as the representative claim, and claims 2-12 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants also argue claims 19-22 as a
group. Appeal Br. 5. We select claim 19 as the representative claim, and
claims 20-22 stand or fall with claim 19. 37 C.F.R. § 41.37(c)(l)(iv).
Because Appellants present the identical arguments for the rejections of
claims 1-12 and 19-22, we treat their arguments together.
In the rejections of the claims, the Examiner finds, in part, that
"Rutherford teaches an aircraft skin segment having an external surface, a
de-icing mechanism associated with the skin segment capable of heating a
surface to 65°C, having a single layer heat-conducting tape made from
polyurethane bonded to the external surface of the skin segment by an
adhesive layer." Final Action 2, 4 (citations omitted). In response,
Appellants merely state that "in contrast [to Rutherford's heat-conducting
tape], the present invention relates to a construction wherein an erosion
resistant tape is applied to an aircraft skin segment already having an
associated deicing mechanism." Appeal Br. 4--6. Appellants' argument is
not responsive to the rejections as articulated by the Examiner. As the
Examiner correctly explained: "Structurally as claimed, there are no
distinguishing features that separate a heating-conducting tape from an
'erosion resistant tape."' Ans. 3. Rutherford "clearly teaches the structure
and the result would be an erosion resistant tape. Due to its physical
property, the [Rutherford tape] as modified by Fisher would resist erosion.
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Appeal2014-001165
Application 13/325,212
Further most tapes applied to a structure would provide additional erosion
resistant properties to that structure." Ans. 4. Additionally, Rutherford also
discloses that, like the recited claim, heat-conducting tape 22 is made of
polyurethane and is "durable and abrasion resistant." Rutherford 10:39-41.
Appellants fail to apprise us of error in the Examiner's findings. As
indicated supra, Appellants contend that Rutherford lacks the recited claim
limitation by seeking to distinguish between Rutherford's tape and that
which is claimed. Appeal Br. 4--6. Appellants' arguments are
unconvincing. See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(37 C.F.R. § 41.37 requires "more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."); see generally Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843 (BP AI 2009)
(informative) ("[W]e find that the Examiner has made extensive specific fact
finding ... with respect to each of the argued claims. Appellants' argument .
. . repeatedly restates elements of the claim language and simply argues the
elements are missing from the reference. However, Appellants do not
present any arguments to explain why the Examiner's explicit fact finding is
in error.").
In their Appeal Brief, Appellants also state that "it cannot be said that
[Rutherford's] expanded graphite foil layer 20 is a part of leading edge
section of an aluminum wing 30, nor is heat-conducting outer layer 22
bonded to leading edge section of an aluminum wing 30 by an adhesive
layer." Appeal Br. 5-6. However, Rutherford discloses that the heat
conducting outer layer tape 22 may be bonded to the external surface of
composite skin segment (graphite foil layer 22 and aircraft structure) with an
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Appeal2014-001165
Application 13/325,212
adhesive. Rutherford 9:33--41. Again, Appellants' conclusory argument does
not apprise us of error, and is not persuasive.
In their Reply, Appellants subsequently raise a new argument that
"column 3, lines 24--39" of Rutherford "does not teach that 'the outer layer
tape 22' is bound to 'the deicing element 20' by adhesive." Reply 2.
Because this argument could have been presented in the Appeal Brief to
rebut the rejections in the Final Office Action, thus affording the Examiner
an opportunity to consider and respond to it, the argument is untimely. See
37 C.F.R. § 41.37(c)(vii)(second sentence); In re Hyatt, 211F.3d1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal); Ex part Borden, 93 USPQ2d 14 73, 14 77 (BP AI
2010) (informative) (The Board is not required "to take up a belated
argument that has not been addressed by the Examiner, absent a showing of
good cause."). Nevertheless, we exercise our discretion to consider the
argument. As discussed supra, Rutherford (see, e.g., col. 10, 11. 39-41)
discloses that an adhesive may be used to bond the outer heat-conducting
layer to the aircraft surface. Appellants' belated argument is unconvincing.
Appellants have not shown how the Examiner erred, and their
arguments are not persuasive. We sustain the Examiner's rejections of claim
1under35 U.S.C. § 103(a) in view of Rutherford and Fisher, and claim 19
under 35 U.S.C. § 103(a) in view of Rutherford, Fisher, and Bergstedt.
Because Appellants do not allege any other patentable distinctions for claims
2-12 and 20-22, we likewise sustain the Examiner's rejections of these
claims under 35 U.S.C. § 103(a).
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Appeal2014-001165
Application 13/325,212
DECISION
For the above reasons, we AFFIRM the Examiner's rejection of
claims 1-12 and 19-22.
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) (2009).
AFFIRMED
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