Ex Parte Pridie

Patent Trial and Appeal Board

Mar 27, 2017

12733443 (P.T.A.B. Mar. 27, 2017)

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.
12/733,443 03/02/2010 Jago Pridie SCS-5065-71 2850
23117 7590 03/29/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KENNEDY, TIMOTHY J
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAGO PRIDIE
Appeal 2015-007477
Application 12/733,443
Technology Center 1700
Before CATHERINE Q. TIMM, MARKNAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 2—7 and
9—11. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
July 14, 2014 (“Final Act.”); the Appeal Brief dated December 23, 2014
(“App. Br.”); the Examiner’s Answer to the Appeal Brief dated July 9, 2015
(“Ans.”); and the Reply Brief dated August 13, 2015 (“Reply Br.”).
2 Appellant identifies Airbus Operations Limited as the real party in interest.
App. Br. 3.
Appeal 2015-007477
Application 12/733,443
The Claimed Invention
Appellant’s disclosure relates to a method of molding a charge during
the manufacture of a composite part. Abstract. Independent claim 2 is
illustrative of the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 20):
2. A method of moulding a charge during the manufacture of
a composite part, the method comprising:
placing the charge, a support membrane, and a diaphragm
on a male tool having at least one convex comer between a top
of said mold and at least one side of said mold, the support
membrane and diaphragm being positioned on opposite sides of
the charge, the charge having a first part which is positioned
above said top of the male tool and a second part which projects
to said at least one side of the male tool;
supporting the weight of the second part of the charge with
the support membrane; and
progressively deforming the support membrane and the
second part of the charge against said at least one side of the
male tool by applying a pressure difference across the
diaphragm and stretching the diaphragm over the male tool as
the pressure difference is applied, wherein the diaphragm has a
stiffness in the plane of the diaphragm which is higher than the
stiffness of the support membrane in the plane of the support
membrane.
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
The References
Nathoo
Olson
Gutowski et al.,
(hereinafter “Gutowski”)
Anderson et al.,
(hereinafter “Anderson”)
Straub et al.,
US 4,946,640
US 5,037,599
US 5,648,109
US 2006/0038320 Al Feb. 23, 2006
US 2005/0102814 Al May 19, 2005
Aug. 7, 1990
Aug. 6, 1991
July 15, 1997
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Application 12/733,443
(hereinafter “Straub”)
Summersgill et al., EP 0410599 A2 Jan. 30, 1991
(hereinafter “Summersgill”)
Croall et al., The Mechanical Stability of Polyimide Films at High pH,
NASA Technical Memorandum 102726 (October 1990) (hereinafter
“Croall”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 2—5 and 7—11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Summersgill, Nathoo, Straub, and Gutowski, and as
evidenced by Croall. Ans. 2; Final Act. 2.
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summersgill, Nathoo, Straub, and Gutowski, and in
further view of Anderson. Ans. 6; Final Act. 6.
3. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Summersgill, Nathoo, Straub, and Gutowski, and in
further view of Olson. Ans. 7; Final Act. 7.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
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Application 12/733,443
Rejection 1
Appellant does not present arguments for the separate patentability of
the claims subject to this rejection. We, therefore, select claim 2 as
representative and claims 3—5 and 7—11 stand or fall with claim 2. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that the combination of Summersgill, Nathoo,
Straub, and Gutowski suggests a charge molding method satisfying all of the
limitations of claim 2 and concludes that the combination would have
rendered claim 2 obvious. Ans. 2—5.
The Examiner finds that the combination of Summersgill, Nathoo, and
Straub suggests the majority of the limitations of claim 2, except that the
combination is silent regarding disclosure of “a male tool having at least one
convex comer between a top of said mold and at least one side of said
mold,” as recited in the claim. Ans. 4. The Examiner, however, relies on
Gutowski for disclosing this limitation. Id. at 4. In particular, the Examiner
finds that Gutowski teaches that male tools can have at least one convex
comer between a top and side. Id. at 4 (citing Gutowksi, Fig. 1, “forming
tool 12”).
Based on the above findings, the Examiner concludes that:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to use the tool
shape of Gutowski in the molding process/apparatus of
Summersgill, Nathoo, and Straub, since Summersgill, Nathoo,
and Straub already make obvious the use of a male tool in such
processes, and the shape of a tool is obvious absent new or
unexpected results, particularly in a well-known art. Further,
Summersgill teaches two convex comers but in terms of a
female tool, and as previously discussed Straub makes obvious
a skilled artisan switching between female and male tools in
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Application 12/733,443
such a well-known process. Since Straub shows the
interchangeability of male and female molds for the desired
shape, and Gutowski teaches using a male mold in a very
similar process to that of Summersgill, then a skilled artisan
would see the use of a male tool as obvious.
Ans. 4—5.
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner has failed to make a prima facie case and has not
identified sufficient evidence in the record to adequately rebut or dispute
Appellant’s testimonial evidence provided in the Griffiths Declaration.3
App. Br. 8, 9; Reply Br. 1, 2.
In particular, relying principally on the Griffiths Declaration,
Appellant argues that: (1) the Examiner’s findings regarding the use of a
stiff diaphragm in conjunction with a male mold and a female mold are
conclusory and unsupported by sufficient evidence (App. Br. 11); (2) the
Examiner’s finding that the combination of Summersgill, Nathoo, and
Straub teaches the “progressively deforming the support membrane”
limitation is conclusory and “clearly erroneous” {id. at 13); and (3) the
Examiner’s findings regarding switching between female and male tools
being well-known in the art are conclusory and erroneous {id. at 14).
Appellant further argues that the Examiner has failed to identify that
the prior art teaches all the limitations of claim 2, namely “the charge having
a first part which is positioned above a top of the male tool”; “a second part
which projects to one side of the male tool”; and the “placing,”
3 Rule 132 Declaration of Gwillym Robert Griffiths, dated March 21, 2014
(“Griffiths Declaration”) provided by Appellant in the Evidence Appendix to
the Appeal Brief.
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Application 12/733,443
“progressively deforming,” or “stretching” steps, as recited in the claim.
App. Br. 14, 15.
Appellant also argues that the Examiner has failed to provide the
required KSR analysis explaining why one of ordinary skill in the art would
pick and choose features from the five different references and then combine
them in the manner of Appellant’s independent claim 2. App. Br. 17.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s findings and analysis. On the record before us, we find
that a preponderance of the evidence and sound technical reasoning support
the Examiner’s determination (Ans. 2—5) that the combination of
Summersgill, Nathoo, Straub, and Gutowski suggests all of the limitations of
claim 2 and would have rendered the claim obvious. Summersgill, Fig. 1, p.
4,11. 39-48, Example 1, Example 3; Nathoo, Fig. 1, Straub 124; Gutowksi,
Fig. 1; Croall, Fig. 7.
Appellant’s assertions that the prior art does not teach all of the
limitations of claim 2 (App. Br. 14, 15) are conclusory and, without more,
insufficient to establish reversible error in the Examiner’s factual findings in
this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, we find that the Examiner provides a reasoned basis and
identifies sufficient evidence in the record to evince why one of ordinary
skill would have combined the teachings of Summersgill, Nathoo, Straub,
and Gutowski to arrive at Appellant’s claimed invention. Ans. 4—5
(explaining that one of ordinary skill would have had reason to use the tool
shape of Gutowski in the molding process/apparatus of modified
Summersgill because the tool shape was well-known in the art and the prior
art teaches the interchangeable use of male and female molds for obtaining
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the desired shape); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed).
Appellant fails to direct us to adequate evidence or provide a
persuasive technical explanation to show why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant’s contention that one of ordinary skill in the art would have
to pick and choose features from five different references (App. Br. 17) and
arguments regarding what each reference discloses (App. Br. 9—11; Reply
Br. 2—8) are not persuasive because they are premised on what Appellant
contends each reference teaches individually, and not the combined
teachings of the cited references as a whole and what the combined
teachings would have suggested to one of ordinary skill in the art. One
cannot show non-obviousness by attacking references individually where the
rejection is based on a combination of references. See In re Keller, 642 F.2d
413,425 (CCPA1981).
Appellant’s arguments regarding the Griffiths Declaration (App. Br.
10—14; Reply Br. 1, 2) are not persuasive of reversible error in the
Examiner’s analysis and findings because they are themselves conclusory
and unsupported by sufficient evidence in the record. De Blauwe, 736 F.2d
at 705. The portions of the Griffiths Declaration that Appellant relies on as
support for these arguments (Griffiths Decl. 7—14, 18, 19, 24—28, Ex. 2)
lack adequate factual support and rest solely on Mr. Griffiths’
uncorroborated opinion testimony. See, e.g., Ashland Oil, Inc. v. Delta
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Application 12/733,443
Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of
factual support for expert opinion going to factual determinations ... may
render the testimony of little probative value in a validity determination.”);
Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”) (citations omitted).
Moreover, Appellant’s arguments in this regard are misplaced
because, as the Examiner notes (Ans. 7, 8), the figures at page 2 of the
Griffiths Declaration do not accurately reflect or take in to account all the
limitations of the claimed invention and the combined teachings of the prior
art. For example, as the Examiner points out (Ans. 7, 8), the figures do not
show the charge placed in-between a support membrane and a diaphragm as
claimed or as taught by both Summersgill and Nathoo (Summersgill, Fig. 1,
p. 4,11. 39-48; Nathoo, Fig. 1). As the Examiner finds (Ans. 8), the figures
at page 2 of the Griffiths Declaration and Appellant’s arguments regarding
the figures also fail to take into account SummersgilFs explicit teaching
regarding use of vacuum suction in the mold and the consequent elimination
of trapped air in a female mold (Summersgill, Fig. 1, p. 4,11. 45, 46, p. 5,11.
3-6).
Accordingly, we affirm the Examiner’s rejection of claims 2—5 and 7—
11 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Summersgill, Nathoo, Straub, and Gutowski.
Rejections 2 and 3
Appellant does not present any additional substantive arguments in
the Appeal briefing in response to the Examiner’s Rejections 2 and 3, stated
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Application 12/733,443
above. Rather, Appellant relies on the same arguments previously discussed
above regarding claim 2 and in response to Rejection 1. See Reply Br. 8
(arguing that because the claims “depend either directly or indirectly from
independent claim 2 . . . [they] would not have been obvious over the cited
references”).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner’s Rejection 2 and Rejection 3.
DECISION
The Examiner’s rejections of claims 2—7 and 9—11 are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
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