10357162 (B.P.A.I. Jan. 30, 2012)

Ex Parte Mead et al

Board of Patent Appeals and InterferencesJan 30, 2012

10357162 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/357,162 02/03/2003 William T. Mead NORT-54171 4585 67766 7590 01/30/2012 PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI, LLP ONE OXFORD CENTRE, 38TH FLOOR 301 GRANT STREET PITTSBURGH, PA 15219-6404 EXAMINER SIMONE, CATHERINE A ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 01/30/2012 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 WILLIAM T. MEAD and JOHN POTTER ____________________ Appeal 2010-004953 Application 10/357,162 Technology Center 1700 ____________________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004953 Application 10/357,162 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 23-28, 33, 34, and 36-40. On appeal, the Examiner maintains a rejection of claims 23 and 24 under 35 U.S.C. §102(b) as anticipated by Flonc1. The Examiner further maintains a rejection of claims 23, 24, 33, 34, and 36-40 under 35 U.S.C. § 103(a) as unpatentable over Loyd2 and a rejection of claims 25-28 under 35 U.S.C. § 103(a) as unpatentable over Loyd in view of Von Derau3.4 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims are directed to adhesive fillets and stiffened panels formed including adhesive fillets (see, e.g., Claims 23 and 33). For each rejection, claim 23 is illustrative for resolving the issue on appeal. Claim 23 reads as follows: 23. A formed adhesive fillet comprising multiple stacked and consolidated adhesive layers, wherein the consolidated adhesive layers consist essentially of epoxy adhesive and do not include fibers. OPINION All of the claims exclude fibers from the consolidated adhesive layers of an adhesive fillet. 1 Flonc et al., US 5,217,766, patented Jun. 8, 1993. 2 Loyd, US 4,113,910, patented Sep. 12, 1978. 3 Von Derau et al., US 4,778,545, patented Oct. 18, 1988. 4 The Examiner has withdrawn the rejection made under 35 U.S.C. §112, ¶ 1 (Ans. 2). Appeal 2010-004953 Application 10/357,162 3 With respect to the rejection of claims 23 and 24 as anticipated by Flonc, the Examiner finds that Flonc describes multiple stacked and consolidated adhesive layers 4 as shown in Figure 1 (Ans. 3). The Examiner acknowledges that the stack of layers shown in Figure 1 includes fiber layers 1 (Ans. 9). However, the Examiner determines that claim 23 does not exclude those fiber layers (id.). We disagree. Claim 23 requires that no fibers be included in the “consolidated” adhesive layers. The stack of layers Flonc illustrates in Figure 1 is a stack of fiber layers 1 sprinkled or sprayed with resin 4 (Flonc, col. 2, ll. 43-45 and col. 3, ll. 15-16). The layers 1 and resin 4 are heated to melt the solid resin and then cooled to bond the layers together (Flonc, col. 3, ll. 20-23). The earliest point at which there is “consolidation” is at the point at which the stacked layers and resin of Flonc are united and bonded together. But Flonc’s consolidated product contains fibers. It is not a fillet of “consolidated adhesive layers” not including fibers as claimed. With regard to the rejections over Loyd and Loyd in view of Von Derau, the Examiner acknowledges that the Loyd does not teach omitting fibers from the adhesive fillet of that reference (Ans. 4, relying upon reference numeral 180 in Fig. 12 as the adhesive fillet). The Examiner, however, finds that Loyd teaches “that any suitable composite material can be used (col. 3, lines 32-33), which could include an epoxy adhesive without fibers, if desired.” (Id.) Based on this finding, the Examiner concludes that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the epoxy adhesive layers in Loyd to not include fibers, since it has been held that a change in the material would Appeal 2010-004953 Application 10/357,162 4 be an unpatentable modification in absence of showing unexpected results and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” (Id.) The Examiner’s conclusion lacks sufficient evidentiary support. Loyd’s element 180 is a reinforcement member that is made of a composite material (Loyd, col. 7, ll. 41-42 as informed by col. 3, ll. 27-32). Loyd’s only examples of this composite material are materials of fibers in a resin matrix (Loyd, col. 3, ll. 32-38). There is no suggestion of using a non-fiber reinforced resin for element 180. Nor has the Examiner provided a rational reason why the ordinary artisan would remove the fibers, which appear to be necessary for strengthening the structural joints in the intended uses described by Loyd (Br. 6; Loyd, col. 1, ll. 7-15). The Examiner’s use of Von Derau does not remedy the above described deficiency. CONCLUSION We do not sustain the Examiner’s rejections. DECISION The Examiner’s decision is reversed. REVERSED cam