Ex Parte Wilkerson et al

Patent Trial and Appeal Board

Apr 25, 2017

13934884 (P.T.A.B. Apr. 25, 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.
13/934,884 07/03/2013 Randall D. Wilkerson 06-0960-US-DIV 4991
63759 7590 04/27/2017
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. BELL, WILLIAM P
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
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 RANDALL D. WILKERSON, JAMES R. FOX,
and ALEXANDER M. RUBIN
Appeal 2016-006141
Application 13/934,8841
Technology Center 1700
Before MARKNAGUMO, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Final Action of
claims 1—20, 28, 29, 31, 32, and 35. We have jurisdiction under 35 U.S.C.
§6.
We AFFIRM.
1 The real party in interest is identified as The Boeing Company of Chicago,
Illinois. App. Br. 2.
Appeal 2016-006141
Application 13/934,884
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. Tooling used in a continuous process for forming
laminated thermoplastic parts using a layup of laminate plies,
comprising:
a body having first and second ends,
the body including a recessed area,
the first and second ends of the body extending beyond
the recessed area; and
wherein a first length of the second end is greater than or
equal to a second length of a consolidation station through
which the tooling is configured to pass during operation of a
continuous compression molding line.
Appellants request review of the Examiner’s rejection of claims 1—20,
28, 29, 31, 32, and 35 rejected under 35 U.S.C. § 102(b) as anticipated by
Suriano (US 2006/0011289 Al, published January 19, 2006). Final Act. 2;
App. Br. 5.
Appellants argue independent claims 1,11, and 28 together and do not
present separate arguments for dependent claims 6, 9, 19, 29, and 35. See
Appeal Brief, generally. Appellants, however, present separate arguments
for claims 2—5, 7, 8, 10, 12—18, 20, 31, and 32. Id. Accordingly, we select
claim 1 as representative of the subject matter before us on appeal.
37 C.F.R. § 41.37(c)(l)(iv) (2014). Claims 6, 9, 11, 19, 28, 29, and 35 stand
or fall with claim 1. Claims argued separately will be addressed separately.
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Appeal 2016-006141
Application 13/934,884
OPINION
Prior Art Rejection under 35 U.S.C. § 102(b)
Claim 1
After review of Appellants’ and the Examiner’s respective positions,
we AFFIRM the Examiner’s rejection of representative claim 1 for the
reasons presented by the Examiner. We add the following for emphasis.
Both the Examiner and Appellants acknowledge claim 1 is directed to
tooling for use in forming laminated thermoplastic parts from a layup of
laminate plies placed on the tooling. Ans. 2; App. Br. 3.
The Examiner found Suriano’s tooling FI anticipates the subject
matter of claim 1 because it has a structure comprising a rigid body having
first and second ends, the body including a recessed area and the first and
second ends of the rigid body extending beyond the recessed area. Final
Act. 2; Suriano Figures 3,5. The Examiner determined Suriano’s tooling is
structurally capable of use as claimed and that the recitation of intended use
in the claim does not differentiate the claimed tooling from Suriano’s
tooling.2 Final Act. 2.
Appellants argue Suriano does not disclose a first length of the second
end of the claimed tooling is greater than or equal to a second length of a
consolidation station—a separate apparatus—through which the tooling is
configured to pass during operation of a continuous compression molding
line. App. Br. 7. That is, Appellants argue that Suriano does not disclose
2 We note Appellants agree that an apparatus claim containing a recitation of
intended must be directed to an apparatus that is structurally distinct from
the prior art. App. Br. 6.
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Appeal 2016-006141
Application 13/934,884
the relative relationship between the length of the second end and the length
of the consolidation station. Id. at 7—8.
We find these arguments unavailing for the reasons provided by the
Examiner. As noted by the Examiner, claim 1 is directed to a tooling. Ans.
2—3. The Examiner also notes that the consolidation station recited in the
claim is not a part of the claimed tooling. Id. at 3. Instead, the claim
language reciting the relationship of the tooling to a consolidation station
represents a statement of intended use of the tooling which does not limit the
claim because it merely defines a context in which the tooling is used.3
Final Act. 2—3; Ans. 4; see Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates.”).
The Examiner found that Suriano’s tooling FI meets the structure of
the claimed tooling. Final Act. 2; Ans. 3; Suriano Figures 3, 5. Appellants
have not adequately explained how the length relationship recited in claim 1
3 The claim language reciting the relationship between the length of the
tooling’s second end and the length of the consolidation statement was
added by amendment for business reasons unrelated to patentability. See
Amendment and Remarks dated May 6, 2015. According to page 7 of the
Remarks, paragraphs 27—30 of the Specification provide support for the
amendments. The Remarks, however, do not explain how these portions of
the Specification support the added language reciting the relationship
between the length of the tooling’s second end and the length of the
consolidation station in claim 1 as well as the lengths relationships described
in claims 11, 28, 31, and 32. This lack of explanation could raise an issue of
whether there is adequate written descriptive support under 35 U.S.C. § 112,
first paragraph for the added claim language.
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Appeal 2016-006141
Application 13/934,884
structurally distinguishes the claimed tooling from Suriano’s tooling. Thus,
Appellants have not shown error in the Examiner’s finding of anticipation.
Claims 2-5, 7, 8, 10, 12-18, 20, 31, 32
Appellants present multiple arguments that Suriano does not disclose
the subject matter of each of claims 2—5, 7, 8, 10, 12—18, 20, 31, and 32,
with each claim comprising further limitations in conjunction with the
structure described by claim 1. App. Br. 8—11. Appellants’arguments
merely recite the limitations of these claims and assert that the Examiner
erred in characterizing the limitation as intended use. Id. We rejected
Appellant’s arguments regarding intended use supra, and do so again here.
We have considered these arguments and are unpersuaded. To the extent
that Appellants rely on the arguments presented with respect to claim 1, we
refer to our discussion above addressing those issues. To the extent the
arguments merely point out the features of these claims, these arguments are
considered to be nothing more than a general allegation of patentability and
are not considered a separate patentability argument. See 37 C.F.R. §
41.37(c)(l)(iv (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Accordingly we affirm the Examiner’s rejection of claims 1—20, 28,
29, 31, 32, and 35 under 35 U.S.C. § 102 (b) for the reasons presented by the
Examiner and given above.
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Appeal 2016-006141
Application 13/934,884
ORDER
The Examiner’s prior art rejection of claims 1—20, 28, 29, 31, 32, and
35 under 35 U.S.C. § 102(b) is affirmed.
TIME PERIOD
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).
AFFIRMED
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