Ex Parte Rassaian et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11237106 (B.P.A.I. Mar. 27, 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.
11/237,106 09/28/2005 Mostafa Rassaian 7784-000854 6167
65961 7590 03/28/2012
HARNESS DICKEY & PIERCE, PLC
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
03/28/2012 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 MOSTAFA RASSAIAN, JUNG-CHUAN LEE,
JOSHUA M. MONTGOMERY, SHAWN M. PARE,
and TERRY N. CHRISTENSON
____________

Appeal 2010-003828
Application 11/237,106
Technology Center 3600
____________

Before GAY ANN SPAHN, WILLIAM V. SAINDON, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003828
Application 11/237,106

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
9 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Applicant’s
Admitted Prior Art (AAPA) and Hornsey (US 5,965,853; iss. Oct. 12, 1999),
and the rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Hornsey, and Trpkovski (US 2003/0041557 A1;
iss. Mar. 6, 2003). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Claim 9 illustrates the claimed subject matter on appeal:
9. A window for an airborne mobile platform,
comprising:
a first inside layer of transparent material;
a second outside layer of transparent material parallel to
the first inside layer of transparent material, said second outside
layer of transparent material including an acrylic layer, a glass
layer and a viscous layer separating said acrylic and glass
layers;
said viscous layer having a damping loss factor of at least
about 1.0;
a one-piece rubber seal that secures peripheral edges of
the first inside layer of transparent material and said second
outside layer of transparent material to a depth within the
rubber seal, with said second outside layer of transparent
material being in contact with a greater portion of said one-
piece rubber seal than said first inside layer of transparent
material; and
a L-ring window frame having a perpendicularly
extending flange for assisting in mounting said L-ring window
frame within a structural portion of said airborne mobile
platform, and the L-ring window frame wrapping around the
rubber seal and encasing the rubber seal around an entire
perimeter of the rubber seal.

Appeal 2010-003828
Application 11/237,106

3
ISSUES
Does Hornsey disclose “a viscous layer” as recited in claim 9?
Does Hornsey disclose an outer layer including an acrylic layer and a
glass layer as called for in claim 17?
ANALYSIS
Claims 9 and 10 as obvious over AAPA and Hornsey
Appellants argue claims 9 and 10 as a group. App. Br. 6-8. We select
claim 9 as representative. See 37 C.F.R. 41.37(c)(1)(vii) (2011). Claim 10
stands or falls with claim 9. The Examiner found that Appellants’ Admitted
Prior Art (Fig. 3A) discloses a first inside layer 62, a second outside layer
66, a rubber seal 58, 60 that secures peripheral edges of the layers, and an L-
ring frame, but does not disclose a one-piece rubber seal or second outside
layer comprising an acrylic layer, a glass layer, and a viscous layer. Ans. 4.
The Examiner found that Hornsey discloses a one-piece rubber seal 33 for
aircraft windows and an exterior panel with a layer of polyvinyl butyral
(PVB) 36, which are inherently viscous, between two panes 34, 38 that may
be glass or a plastic such as acrylic. Ans. 4-5. The Examiner determined
that it would have been obvious to replace the pane assemblies of the AAPA
window with multi-layer pane assemblies 26, 28 of Hornsey to enhance the
vibration dampening and sound absorbing qualities of the window. Ans. 5.
Appellants argue that the Examiner erred in finding that Hornsey’s
interlayer 36, which is made of plasticized polyvinyl butyral (PVB), forms a
“viscous layer” as called for in claim 9 because Hornsey does not mention
any meaningful noise damping performance arising out of the use of a PVB
interlayer 36 between two panes 34, 36. App. Br. 7. Appellants also argue
that Hornsey asserts that noise damping performance comes from a sound
Appeal 2010-003828
Application 11/237,106

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damping material layer 44 that comprises a PVB base layer 46 on which a
polymer layer 48 (e.g., polyester) is adhered. App. Br. 7. Appellants further
argue that if the PVB interlayer 36 provided any tangible degree of noise
reduction, this beneficial feature would have been noted in Hornsey because
noise reduction is a highly valuable performance factor. App. Br. 7.
These arguments are largely speculative and therefore not persuasive.1
Moreover, they do not address the Examiner’s finding that Hornsey’s PVB
interlayer 36 is inherently viscous.2 Ans. 5. The Examiner had a sound
basis for this finding because Hornsey discloses PVB layers with damping
properties. For example, a PVB layer 46 contributes to vibration dampening
and sound absorption in the sound dampening layer 44. Col. 5, ll. 42-48.
Hornsey also discloses that PVB is a preferred material for the adhesive
interlayer 42 because it is fully compatible with sound damping material
layer 44 (which includes PVB layer 46) (col. 5, ll. 20-24) and that successful
sound dampening requires cooperation between sound damping layer 44 and
adhesive interlayer 42 and substrate 40 (col. 5, ll. 33-42). The Examiner
reasonably concluded that Hornsey’s PVB interlayer 36 corresponds to the
claimed viscous layer and Appellants have not persuaded us of error in the
Examiner’s finding or adequately explained why a PVB interlayer 36 does

1 Hornsey silence may be attributable to Hornsey’s disclosure that vibration
dampening and sound absorbing benefits of the PVB layer 46 and polyester
layer 48 have been realized but the mechanism by which the arrangement of
components of the present invention produce such vibration dampening and
sound absorbing benefits are not yet completely understood. Col. 6, ll. 1-10.
2 Appellants do not offer a definition for “viscous” or point to anything in
the Specification that defines this term except page 10, lines 19-20, which
discloses a viscous layer 168 that is 0.05” thick. See App. Br. 3. Appellants
attribute damping properties to the viscous layer. See App. Br. 6-8.
Appeal 2010-003828
Application 11/237,106

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not correspond to the claimed viscous layer. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (applicant can recite a feature structurally or
functionally but when an examiner believes that a functional feature is an
inherent characteristic of the prior art, applicant has the burden of showing
that the prior art does not possess that functionally defined feature); Ans. 13.
Appellants’ attorney argument regarding ASTM standards is not evidence3
and does not explain why PVB interlayer 36 does not provide damping. See
App. Br. 8, 13; see also 37 C.F.R. §§ 41.37(c)(1)(ix) and 41.33(c)(2).
Appellants also assert that the Examiner’s finding that an adhesive is
inherently viscous does not mean the adhesive would be “visco-elastic” as
defined in the Specification to be “‘a material that exhibits a high damping
loss factor, generally greater than one.’” App. Br. 8. This argument is not
commensurate with the scope of claim 9, which recites “a viscous layer” not
“a visco-elastic layer.” See Ans. 13. Appellants have not explained how the
properties of visco-elastic materials relate to the properties of the “viscous”
layer. Appellants treat these terms differently by arguing that even if
Hornsey’s PVB is inherently viscous, that does not mean that the material is
visco-elastic. App. Br. 8. Appellants make a similar distinction in their

3 See Becton Dickinson and Co. v. Tyco Healthcare Gp, LP, 616 F.3d 1249,
1260 (Fed. Cir. 2010) (“Unsupported attorney argument, presented for the
first time on appeal, is an inadequate substitute for record evidence.”);
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.Cir.2009)
(unsworn attorney argument is not evidence and cannot be used to rebut
record evidence); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir
1997) (attorney argument was not the kind of factual evidence required to
rebut a prima facie case of obviousness) and In re Pearson, 494 F.2d 1399,
1404-05 (CCPA 1974) (appellant’s attorney argument was not evidence that
negated Board’s conclusion that elimination of soil fungi would have been
obvious to a skilled artisan based on the widespread use of soil fungicides).
Appeal 2010-003828
Application 11/237,106

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Specification where the Summary of the Invention discloses that the exterior
layer has “a viscous noise-absorbing layer of transparent material” whereas
“a visco-elastic rubber” seal is placed around the perimeter of these layers to
provide a vibration and noise-absorbing frame. Spec. [0005].4
Appellants further argue that Hornsey is silent on whether the rubber
gasket 33 is a one piece gasket or a two piece gasket. App. Br. 8. We agree
with the Examiner that Hornsey discloses “a gasket 33” in the singular and
uses reference numeral 33 for the entire gasket. Ans. 14. Appellants have
not persuaded us of error in the Examiner’s findings.
Accordingly, we sustain the rejection of claims 9 and 10.
Claims 16 and 17 as obvious over AAPA, Hornsey, and Trpkovski
Appellants argue claims 16 and 17 as a group. App. Br. 6-8. We
select claim 17 as representative. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
Claim 16 stands or falls with claim 17. Appellants argue that Hornsey does
not disclose “‘an outer layer of transparent material including an acrylic
layer (item 162 in Figure 3E) and a glass layer (item 166 in Figure 3E)’” as
recited in claim 17. App. Br. 8-9 (emphasis omitted). Appellants also assert
that Hornsey mentions that the inboard pane of material 28 may be glass or
plastic but does not disclose using glass and acrylic layers of material on the
outer pane assembly 26. We agree with the Examiner that Hornsey discloses
an outboard pane 26 that includes two or more panes of glass or plastic and
that suitable plastic panes include acrylics (col. 3, ll. 43-54). Ans. 14. As
such, we sustain the rejection of claims 17 and 16.

4 Appellants disclose that the visco-elastic material used in the present
invention is a material that exhibits a high damping loss factor, generally
greater than one (“1.0”). Spec. [0036].
Appeal 2010-003828
Application 11/237,106

7
CONCLUSION
Hornsey discloses “a viscous layer” as recited in claim 9.
Hornsey discloses an outer layer including an acrylic layer and a glass
layer as called for in claim 17.

DECISION
The Examiner’s decision to reject claims 9 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Applicant’s Admitted Prior Art (AAPA)
and Hornsey is AFFIRMED.
The Examiner’s decision to reject claims 16 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Hornsey, and Trpkovski 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)(1)(iv).

AFFIRMED

MP