Ex Parte Matsen et al

Patent Trial and Appeal Board

Dec 21, 2018

13937253 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/937,253 07/09/2013
63759 7590 12/26/2018
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Marc Rollo Matsen
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.
13-0545-US-NP 7638
EXAMINER
MCNALLY, DANIEL
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC ROLLO MATSEN and JEFFERY LEE MARCOE
Appeal2017-000305
Application 13/93 7,253
Technology Center 1700
Before MICHAEL P. COLAIANNI, GRACE KARAFFA OBERMANN,
and WESLEY B. DERRICK, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek relief from the Examiner's final rejection of
claims 1, 2, 5-11, and 21-30 under 35 U.S.C. § 103(a). Appeal Br. 6-15. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify The Boeing Company of Chicago, Illinois as the real
party-in-interest. Appeal Br. 2.
2 Appellants also refer to claim 3 (Appeal Br. 6), but claim 3 has been
cancelled.
Appeal2017-000305
Application 13/937,253
STATEMENT OF THE CASE
The invention relates to the formation of composite structures and, in
particular, to a method for consolidating a structure comprising a
thermoplastic material. Spec. ,r 2. According to the specification, a
composite material may include reinforcing materials bound in a polymer
resin matrix. Id. ,r 4. The resin may include thermoplastic or thermoset
resins. Id.
The specification indicates that the time required to create a structure
from thermoset materials may be undesirable. Id. ,r 27. The specification
also indicates that using resistive heating to cure thermoset materials may
further require several hours for heating and cooling. Id. ,r 29. Accordingly,
embodiments of the invention recognize and take into account that
consolidating a thermoplastic material may take significantly less time than
curing a thermoset material, and using inductive heating may reduce the
time required to consolidate a thermoplastic material. Id. ,r 30.
Claims 1 and 25 are independent. Claim 1 is representative, and is
reproduced below:
1. A method of forming a consolidated structure comprising:
placing a thermoplastic material onto a mandrel to form a
structure, wherein the mandrel comprises a first material that is
soluble and a metallic tube configured to generate heat in
response to the magnetic field;
positioning the structure within a tool, the tool having a
number of die liners configured to generate heat in response to
a magnetic field; and
consolidating the structure to form the consolidated
structure, consolidating comprising applying a magnetic field to
the number of die liners and the metallic tube to heat the
structure to a consolidation temperature.
2
Appeal2017-000305
Application 13/937,253
Claims 2, 5-11, and 21-24 depend from claim 1, and claims
26-30 depend from claim 25.
OPINION
Claims 1, 6, 9, 10, 21, and 22
Appellants argue the nonobviousness of claims 1, 6, 9, 10, 21, and 22
as a group. See Appeal Br. 6-12. We select claim 1 as representative of the
group. Claims 6, 9, 10, 21, and 22 stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner rejects claim 1 under 35 U.S.C. § I03(a) as obvious
over Petty-Galis, 3 Jones, 4 and Matsen. 5 Answer 2--4. Appellants argue that
the cited prior art does not disclose the limitation of claim 1 that requires
"consolidating the structure to form the consolidated structure, consolidating
comprising applying a magnetic field to the number of die liners and the
metallic tube to heat the structure to a consolidation temperature." Appeal
Br. 7-9.
We agree with the Examiner that Appellants improperly attack Petty-
Galis, Jones, and Matsen individually, without adequately addressing the
merits of the rejection in view of the combined disclosures of the references
(Answer 13). See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references."). For
3 US 4,946,526, issued Aug. 7, 1990 ("Galis").
4 US 2008/0302486 Al, published Dec. 11, 2008 ("Jones").
5 US 6,528,771 Bl, issued Mar. 4, 2003 ("Matsen").
3
Appeal2017-000305
Application 13/937,253
example, when arguing that the references do not disclose "applying a
magnetic field to the number of die liners and the metallic tube to heat the
structure to a consolidation temperature," Appellants consider Petty-Galis
and Jones individually ( each of which do not disclose heating in response to
a magnetic field) (Appeal Br. 7-8; Reply Br. 4) and Matsen in isolation
(which does not disclose a metallic tube) (Appeal Br. 9). As the Examiner
explains, however, the rejection is based on the combined disclosures of
Petty-Galis, Jones, and Matsen, which, taken together, suggest the claimed
invention. Appellants do not effectively address that combination, including
Jones's teaching of a metallic tube within a mandrel, and Matsen's teaching
of applying a magnetic field to a die cavity to generate heat. Answer 2-3, 13
(citing Jones ,r 16; and Matsen, 2:55---65, 4:62-5:10, 8:3-30).
Appellants also argue that the Examiner's rejection relies on improper
hindsight. Appeal Br. 9-12. The Examiner, however, provides reasons why
an ordinary artisan would have been led to the claimed combination based
on teachings within the prior art references themselves-specifically
explaining why one would have been led to obtain increased stiffness,
achieve a lower weight, and allow for the production of tools of greater
length by selecting steel for use in the Petty-Galis' s mandrel as taught by
Jones, and to efficiently apply heat to the modified mandrel, without
overheating or damaging the materials worked upon, by application of a
magnetic field as taught by Matsen. Answer 13-14 (citing Jones ,r 22;
Matsen, 9:49---67).
In the context of Appellants' hindsight argument, Appellants also
assert that the Examiner essentially finds the claim limitation-
"consolidating the structure to form the consolidated structure, consolidating
4
Appeal2017-000305
Application 13/937,253
comprising applying a magnetic field to the number of die liners and the
metallic tube to heat the structure to a consolidation temperature"-to be an
inherent feature of the applied prior art combination. Appeal Br. 11. The
Examiner, however, shows where these elements are disclosed in the prior
art, and explains why the combination of those elements would have resulted
in the process of claim 1. See Answer 2--4, 13-14. Further, Appellants
admit, "As pointed out by the Examiner, steel [as disclosed in Jones] does
indeed generate heat in response to a magnetic field [ as disclosed in
Matsen]." Appeal Br. 7. Accordingly, to the extent that the Examiner found
the limitation to be inherent as Appellants allege, the Examiner did not err.
See Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1194--96 (Fed.
Cir. 2014) ("[I]nherency may supply a missing claim limitation in an
obviousness analysis ... [when] the limitation at issue ... [is] the natural
result of the combination of elements explicitly disclosed by the prior art.").
Finally, Appellants argue that the Examiner's rejection is based on a
property of an apparatus that cannot be applied to the claimed method
without using hindsight. Reply Br. 2--4. In that regard, Appellants argue
that "applying a magnetic field to the number of die liners and the metallic
tube to heat the structure to a consolidation temperature" is a property that
was unknown in the cited prior art and, therefore, an ordinarily skilled
artisan would not have been led by the prior art to apply this property in the
context of a method claim. See id. We disagree. Claim 1 specifies a
consolidation step of "applying a magnetic field to the number of die liners
and the metallic tube to heat the structure to a consolidation temperature,"
which, as the Examiner points out, is a result shown to be obvious in view of
the disclosure of Matsen. See In re Tomlinson, 363 F.2d 928,934 (CCPA
5
Appeal2017-000305
Application 13/937,253
1966) (rejecting the argument that claims stating the result of an obvious
process of mixing two materials fell within the definition of a process as a
"new use" under 35 U.S.C. § 1 OO(b ), even though the prior art references did
not specifically recognize the result recited in the claims). The Examiner did
not err in rejecting claim 1 as obvious over Petty-Galis, Jones, and Matsen.
Claims 2, 5, 7, 8, 11, & 23-30
The Examiner sets forth separate grounds of rejections under
35 U.S.C. § 103(a) of claims 2, 5, 7, 8, 11, and 23-30 as obvious over Petty-
Galis, Jones, Matsen, and other references. Answer 5-12. Appellants argue
that the Examiner erred in these grounds of rejections for the same reasons
that the Examiner erred in rejecting claim 1. Appeal Br. 12-15. Because we
find that the Examiner did not err in rejecting claim 1, we sustain also the
Examiner's rejections as to the remaining claims.
ORDER
The Examiner's rejections of claims 1, 2, 5-11, and 21-30 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
6