Ex Parte Rubin et al

Patent Trial and Appeal Board

Jun 6, 2016

12711401 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121711,401 02/24/2010
63759 7590 06/08/2016
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Alexander M. Rubin
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.
09-0898-US-NP 1679
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
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 ALEXANDER M. RUBIN, JAMES R. FOX, and
RANDALL D. WILKERSON
Appeal2014-006488
Application 12/711,401
Technology Center 1700
Before CHUNG K. PAK, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1, 2,
4--8, 10-14, 16, 18-22, 24--27, 31, and 32.2 We have jurisdiction under 35
U.S.C. § 6(b ).
1 The Appellants state that the Real Party in Interest is "The Boeing
Company of Chicago, Illinois" (Appeal Brief filed December 24, 2013,
hereinafter "Appeal Br.," 2).
2 Appeal Br. 1; Notice of Appeal filed November 1, 2013; Final Office
Action entered July 1, 2013, hereinafter "Final Act. 1," Item 7 ("Disposition
of Claims").
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Application 12/711,401
We affirm. Our dec1s10n below, however, relies on a key new factual
finding and rationale not previously raised to the Appellants. Therefore, we
designate our affirmance as including a new ground of rejection pursuant to
3 7 C.F .R. § 41.50(b) in order to preserve the Appellants' procedural
safeguards. See, e.g., In re Leithem, 661F.3d1316, 1319 (Fed. Cir. 2011)
("Mere reliance on the same statutory basis and the same prior art
references, alone, is insufficient to avoid making a new ground of rejection
when the Board relies on new facts and rationales not previously raised to
the applicant by the examiner").
BACKGROUND
The subject matter on appeal relates to a method for fabricating a
thermoplastic composite part (Specification, hereinafter "Spec.," i-f 2).
Representative claim 1 is reproduced from page 25 of the Appeal Brief
(Claims App.) as follows:
1. A method of fabricating a composite part,
compnsmg:
supplying a laminate, the laminate comprising a
consolidated, integrated thermoplastic composite laminate;
feeding the laminate substantially continuously between a
mandrel and at least one set of tool dies in a plurality of sets of
tool dies, the mandrel comprising a bar;
heating the laminate to a temperature sufficient to allow
forming of the laminate but below melting temperature of the
laminate; and
incrementally forming a cross sectional feature into the
laminate as the laminate is fed between the mandrel and the at
least one set of tool dies in the plurality of sets of tool dies, to
form a contoured laminate.
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Application 12/711,401
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 2, 4--8, 25, and 27 as unpatentable over Suzuki et al.
("Suzuki"), 3 U meda, 4 and Frey; 5
II. Claims 10-16, 18-22, and 26 as unpatentable over Suzuki,
Umeda, Frey, and Goad et al. ("Goad"); 6
III. Claim 24 as unpatentable over Suzuki, Umeda, Frey, Goad, and
Mccarville et al. ("Mccarville"); 7
IV. Claim 31 as unpatentable over Suzuki, Umeda, Frey, Goad, and
Peters; 8 and
V. Claim 32 as unpatentable over Suzuki, Umeda, Frey, and Goad.
(Examiner's Answer entered March 10, 2014, hereinafter "Ans.," 2; Final
Act. 2-24.)
DISCUSSION
I
For Rejection I, the Appellants provide arguments under several
headings, each identified by certain claim( s }-namely: ( 1) claim 1; 9 (2)
claims 2, 4, and 5; and (3) claim 6 (Appeal Br. 6-18). Therefore, we confine
3 EP 1 995 040 Al published November 26, 2008.
4 US 5,043,128 issued August 27, 1991.
5 US 4,759,815 issued July 26, 1988.
6 US 4, 151,031 issued April 24, 1979.
7 US 4,913,910 issued April 3, 1990.
8 Handbook of Composites 576-77 (S.T. Peters, ed., 1998).
9 According to the Appellants (Appeal Br. 9), "[ c ]laim 1 is representative of
claims 1, 5, 7-8, 25, and 27 ."
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Application 12/711,401
our discussion to claims 1, 2, and 6. All other claims subject to Rejection I
stand or fall with either claim 1 or claim 2. 37 C.F.R. § 41.37(c)(l)(iv).
1. Claim 1
The Examiner found that Suzuki describes a method of fabricating a
composite part (Final Act. 2). The Examiner, however, acknowledged three
differences between Suzuki's method and the subject matter recited in claim
1 (id. at 3-5).
First, the Examiner found that "Suzuki does not teach feeding the
laminate between the set of tool dies and a mandrel, the mandrel comprising
a bar, and forming the cross-sectional features as the laminate is fed between
the mandrel and the set of tool dies" (id. at 3). Relying on Umeda, however,
the Examiner concluded that "[i]t would have been obvious to one of
ordinary skill in the art ... to have modified the method taught by Suzuki"
in the manner claimed by the Appellants "for the benefit of fabricating a
composite part with a closed cross-section" (id.).
Second, the Examiner found that "Suzuki, as modified by Umeda,
does not teach that the composite laminate is a consolidated, integrated
thermoplastic laminate" (id. at 4). But relying on Frey, the Examiner
determined that "[i]t would have been obvious to one of ordinary skill in the
art ... to have modified the method taught by Suzuki, as modified by
Umeda," in the manner claimed by the Appellants in order to obtain "the
benefit of producing a shaped composite part with the many desirable
properties of thermoplastic composite laminates" (id.).
Third, the Examiner found that "Suzuki, as modified by Umeda and
Frey, does not explicitly teach that the laminate is heated to a temperature
sufficient to allow forming of the laminate but below the melting
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Application 12/711,401
temperature of the laminate" (id.). Relying further on Goad, the Examiner
determined that "[i]t would have been obvious to one of ordinary skill in the
art ... to have heated the thermoplastic composite laminate to the glass
transition temperature of the thermoplastic polymer, and thus below its
melting temperature, as taught by Goad, for the benefit of allowing ready
shaping of the laminate" (id. at 4--5).
The Appellants argue that "combining the method of Frey with the
method of Suzuki would necessitate changing the principle of operation of
either Frey or Suzuki" (id. at 11) and urge that "Suzuki teaches against
having a thermoplastic material that is completely bonded" (id. at 12). In
addition, the Appellants contend that the combination ofUmeda with Suzuki
requires changing the principle of operation of at least one of these
references (id. at 12-13). Furthermore, the Appellants contend that none of
the prior art references disclose "incrementally forming a cross sectional
feature into the laminate as the laminate is fed between the mandrel and the
at least one set of tool dies in the plurality of sets of tool dies, to form a
contoured laminate," as recited in claim 1 (id. at 14--16).
We disagree with the Appellants on all points. Regarding the
combination of Suzuki and Frey, Suzuki teaches that the use of "entirely
bonded" sheets may cause problems during molding (i-f 153) ("[I]f the sheets
are entirely bonded, the sheets are unlikely to slip each other, and when a
bent portion is molded, the laminate is likely to be wrinkled."); (i-f 161) ("[I]f
the laminate as a whole was bonded with a resin, the sheets did not shift, not
allowing the laminate to be molded well"). Thus, the Appellants are correct
in pointing out that "Suzuki ... teaches that the sheets of material could not
be completely bonded to each other or else the material would be wrinkled
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as the sheets are unlikely to slip each other" (Appeal Br. 10). For this
reason, Suzuki discloses a preference for partial bonding (i-f 153). 10
But the mere fact that Suzuki discloses a problem with complete
bonding, which Suzuki proposes to solve by partial bonding (i-f 153), would
not have discouraged or dissuaded a person having ordinary skill in the art to
consider other alternative solutions disclosed in the prior art. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed").
Here, the Examiner found that Frey teaches the claim limitations at
issue by disclosing a method of fabricating a composite part comprising
supplying a laminate in the form of a consolidated, integrated thermoplastic
laminate (id.) (citing Frey, col. 1, 11. 9--11; col. 2, 1. 67---col. 3, 1. 7; col. 4, 1.
51---col. 5, 1. 58; col. 6, 11. 5-10; col. 5, 1. 46---col. 6, 1. 44). Significantly,
Frey addresses the same problem discussed in Suzuki in different ways.
Specifically, Frey teaches that consolidated laminates have many desirable
qualities but "a major drawback associated with thermoplastic laminates is
10 In response to the Appellants' "teaching away" argument, the Examiner
stated (Ans. 3):
the configuration of the dies (e.g. orientation of the dies relative
to each other) would have to be modified to accommodate the
stiff thermoplastic composite material, but the apparatus as a
whole would still be suitable for its intended purpose by simply
exchanging dies, as would be required for any change in
geometry for the articles being formed.
But the Examiner's assertion lacks evidentiary support and is, in any event,
insufficient to rebut the Appellants' argument.
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the considerable difficulty that is encountered in forming the laminates into
the shapes necessary for them to function as major structural members"
because "[ s ]ubsequent curving or bending of the laminate requires that the
plies slip relative to one another" (col. 1, 11. 9-23). Frey teaches that "this
can be achieved only if the laminate is heated to the softening temperature at
which ply slippage can occur" (col. 1, 11. 23-25). This softening temperature
heating solution discussed in Frey is indistinguishable from the solution
discussed in the current Specification for the invention recited in claim 1
(Spec. i-fi-130, 36). 11 Furthermore, as found by the Examiner (Final Act. 25),
Frey proposes another solution to the problem disclosed in Suzuki-namely,
using "localized heating of the laminates only in the areas that are being bent
so that the heat requirements are minimized and the ply slippage occurs only
in the areas that are being bent" (col. 1, 11. 43-57). That alternative approach
also falls within the broad scope of claim 1.
The Appellants' argument (Appeal Br. 11) that "contrary to Suzuki,
Frey does not disclose forming a continuous length" of material does not
alter our analysis. Consistent with the Examiner's position (Final Act. 26),
the Appellants' attack against Frey individually fails to take account of what
the collective teachings of both Suzuki and Frey would have suggested to a
person of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA
1981 ), and, therefore, fails to explain why the argued difference would have
dissuaded a person having ordinary skill in the art to combine the references
in the manner claimed.
11 The Examiner did not rely on Frey's teaching regarding heating to the
softening temperature at which ply slippage can occur and the current
Specification's similar description (i-fi-130, 36).
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For these reasons, we conclude that a person of ordinary skill in the
art would not have been discouraged or dissuaded in combining Suzuki, as
modified by Umeda, with Frey.
Turning to the combination of Suzuki and Umeda, the Appellants
point out some differences between Suzuki and Umeda (e.g., Umeda's
thermosetting materials versus Suzuki's thermoplastic materials) and argue
that "combining the process ofUmeda and Suzuki would necessarily change
the principle of operation of one of the two references" (Appeal Br. 12). As
pointed out by the Examiner, however, "[b ]oth Suzuki and Umeda teach
bending of composite materials using matching dies" and "[t]he rejection
proposes modifying Suzuki by incorporating an internal mandrel into the die
configuration, as suggested by Umeda" (Ans. 3) (citing Umeda col. 5, 11. 36-
51 ). Indeed, Umeda teaches "a method of forming a plastic composite
material, and more particularly to a method of forming to shape plastic
products by composite material combining fiber reinforced plastic material
with a thermosetting resin" (col. 1, 11. 10-14 ). Suzuki discloses a similar
method of forming reinforced fiber moldings including thermosetting resin
(i-fi-f l---6). Therefore, the Appellants' argument fails to identify any
reversible error in the Examiner's analysis.
With respect to the Appellants' argument (Appeal Br. 14, 16) that the
references do not teach the "incrementally forming" step of claim 1, the
current Specification describes a forming zone 38 including forming tool
dies 38a-38g, which mold at least a portion of a feature into the pre-
consolidated laminate 32 (Fig. 2; i128). The Appellants' argument fails to
explain how "incrementally forming a cross sectional feature," as recited in
claim 1 (taking account of the description in the Drawings and
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Application 12/711,401
Specification), differs from Suzuki's molding method as described in
Figures 1-3 and i-fi-160-65. Therefore, we find no merit in the Appellants'
argument.
Because none of the arguments in support of claim 1 are persuasive,
we uphold the Examiner's rejection of claim 1.
2. Claims 2, 4, and 5
We limit our discussion to claim 2, which we select as representative.
See 37 C.F.R. § 41.37(c)(l)(iv). Claim 2 recites (Appeal Br. 25): "The
method of claim 1, further comprising: cooling the contoured laminate at a
temperature and rate configured to maintain structural properties."
The Examiner stated (Final Act. 5):
Since Frey teaches that only enough localized heat sufficient for
shaping should be applied to the laminate, it would have been
obvious to one of ordinary skill in the art at the time of the
invention to configure the heating and cooling to maintain
structural properties for the benefit of preventing thermal
degradation of the resin during processing.
The Appellants argue that none of the references disclose "cooling the
contoured laminate at a temperature and rate configured to maintain
structural properties," as recited in claim 2 (Appeal. Br. 16). According to
the Appellants (id. at 17), "a person having ordinary skill in the art would
understand that the temperatures necessary for thermal degradation of the
resin would necessarily be higher than the melting temperature of the
thermoplastic." In addition, the Appellants contend that "Frey does not
disclose controlling the heating such that the crystallinity of the material is
substantially the same after processing" (id.).
Again, we find no merit in the Appellants' arguments. Consistent
with the Examiner's position (Ans. 7), we point out that the Appellants do
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Application 12/711,401
not direct us to any evidence that "structural properties," as recited in the
claim, should be interpreted narrowly to mean any particular structural
property or any degree of crystallinity. In addition, we agree fully with the
Examiner's analysis on pages 7-8 of the Answer, which we adopt as our
own. In this regard, the current Specification describes heating to a
temperature "sufficiently high to cause softening of the laminate ... so that
it may be subsequently formed" (Spec. i-f 30) and "maintaining the
temperature of the laminate ... below its melting point throughout the
molding process" in order to maintain "favorable performance and/or
structural properties" (id. i-f 37). The Appellants fail to explain how such
heating and cooling, as broadly recited in claim 2 and described in the
Specification, distinguishes over Frey's "heat[ing] to the softening
temperature at which ply slippage can occur" (col. 1, 11. 21-25) and
subsequent cooling.
Therefore, we uphold the rejection of claim 2.
3. Claim 6
Claim 6 recites (Appeal Br. 26): "The method of claim 1, wherein
incrementally forming the cross sectional feature into the laminate includes
forming a portion of the laminate over the mandrel."
In addition to the arguments offered in support of claim 1, which we
found unpersuasive, the Appellants argue that neither Suzuki nor Umeda
discloses "forming a portion of the laminate over the mandrel," as recited in
claim 6 (Appeal. Br. 18). As found by the Examiner, Umeda teaches
forming at least a portion of the laminate over a mandrel (Final Act. 6). We
find no reversible error in that finding. Specifically, Umeda teaches forming
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Application 12/711,401
closed sectional shapes by using a combination of an inflatable mandrel and
a heating die (col. 5, 11. 36-40; Figs. 3(a) and 3(b)).
For these reasons, we uphold the rejection of claim 6.
II
For Rejection II, the Appellants again provide various arguments
identified by claim headings in addition to arguments offered against
Rejection I, which we found unpersuasive (Appeal Br. 19--21). We address
any additional arguments in the order they are presented in the Appeal Brief.
1. Claim 10
The Appellants state that claim 10 is representative of claims 10, 12,
14--16, 18, 20-22, and 26 (Appeal Br. 19). Therefore, we limit our
discussion of these claims to claim 10. Claims 12, 14--16, 18, 20-22, and 26
stand or fall with claim 10.
The Appellants contend that none of the references disclose a
"continuous compression molding machine," as recited in claim 10 (Appeal
Br. 19, 26-27). According to the Appellants, the term "continuous
compression molding machine" has an art-recognized meaning that refers to
"a specific family of apparatuses first developed in the early 1990's" (id. at
20).
As pointed out by the Examiner (Ans. 6), the Appellants fail to direct
us to evidence demonstrating that the term "continuous compression
molding machine" would not be interpreted to include the type of apparatus
disclosed in Suzuki. As explained by the Examiner (id.), the apparatus as
described in the current Specification (i1i128-29) is indistinguishable from
Suzuki's apparatus (col. 14, 1. 57---col. 19, 1. 4, i1i159--82; Fig. 1).
Therefore, we uphold the rejection of claim 10.
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2. Claims 11, 13, and 19
The Appellants rely on the same arguments we found unpersuasive
above (Appeal Br. 21). Therefore, we sustain the rejection of these claims
for the same reasons given above.
III
Regarding Rejection III (claim 24), the Appellants rely on many of the
same arguments proffered in connection with Rejections I and II we found
unpersuasive (Appeal Br. 21-22). In addition, the Appellants contend that
neither Suzuki nor Umeda discloses using "a plurality of sets of tool dies ...
to mold the heated laminate over a mandrel," as recited in claim 24 (Appeal
Br. 22, 29). After pointing out certain differences between Suzuki and
Umeda, the Appellants argue that "a mandrel comprising a bar could not be
used in the plurality of molds of Suzuki" because a mandrel would restrict
movement of the material between molding devices IA and IB as shown in
Suzuki's Figure 1 (Appeal Br. 22).
We find these arguments unpersuasive. Consistent with the
Examiner's position (Ans. 6-7), the Appellants fail to direct us to evidence
indicating that a mandrel cannot be implemented in Suzuki. The Appellants'
speculative arguments amount to mere conjecture, which is entitled to little
or no probative weight. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
IV
For Rejection IV (claim 31 ), the Appellants rely on the same
arguments offered in support of claim 10 from which claim 31 depends
(Appeal Br. 23). Therefore, we uphold Rejection IV for the same reasons
discussed above with respect to claim 10.
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v
For Rejection V (claim 32), the Appellants rely on the same
arguments offered in support of claim 1 from which claim 32 depends
(Appeal Br. 23). Therefore, we uphold Rejection V for the same reasons
discussed above with respect to claim 1.
SUMMARY
Rejections I-V are affirmed. Because our affirmance of claim 1 relies
on new facts not previously raised to the Appellants, we designate our
affirmance of Rejections I-V as including a new ground of rejection.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
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 ).
AFFIRMED; 37 C.F.R. § 41.50(b)
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