Ford Global Technologies, LLC

Patent Trials and Appeals Board

Oct 14, 2021

2021003423 (P.T.A.B. Oct. 14, 2021)

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.
15/625,295 06/16/2017 Jeffrey Scott Dahl 83823647 2734
143671 7590 10/14/2021
FGTL
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
docketing@burrisiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY SCOTT DAHL
and MICHAEL CACOVIC
__________

Appeal 2021-003423
Application 15/625,295
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims
1–20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Oral arguments were heard in this appeal on October 4, 2021.
We REVERSE.
Appellant’s invention is directed to a method of producing a
composite article (Spec. ¶ 2).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Ford Global Technologies, LLC
(Appeal Br. 3).
Appeal 2021-003423
Application 15/625,295

2
Claim 1 is illustrative:
1. A method of producing a composite article, the method
comprising:
generating composite plies from a low tack composite
prepreg material;
connecting, by an ultrasonic welding device, two or more
of the composite plies by increasing their tackiness to form a
composite stack; and
transferring the composite stack to a compression
molding device and forming a composite article from the
composite stack.

Appellant appeals the following rejections:
1. Claims 1–20 are rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the subject matter the
inventor or joint inventor regards as the invention.
2. Claims 1–3, 5, 6, 9, 10, 12, 13, 16, 17, and 19 are rejected under
35 U.S.C. § 103 as unpatentable over Trudeau (US 5,209,804,
issued May 11, 1993) in view of Roylance (US 2001/0011570
A1, published Aug. 9, 2001).
3. Claims 4, 11, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Trudeau in view of Roylance and Cramer
(US 8,168,029 B2, issued May 1, 2012).
4. Claims 7, 8, 14, 15, and 20 are rejected under 35 U.S.C. § 103
as unpatentable over Trudeau in view of Roylance and
McKague (US 5,954,898, issued Sept. 21, 1999).
FINDINGS OF FACT & ANALYSIS
We review the appealed rejection for reversible error based on
Appellant’s presentation of arguments and evidence. 37 C.F.R.
Appeal 2021-003423
Application 15/625,295

3
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)).
35 U.S.C. § 112(b) Rejection
The Examiner finds that claims 1, 9, and 16 use the term “low tack,”
the scope of which is not defined in the claims or the Specification (Final
Act. 2). The Examiner finds that the Specification does not provide a value
or number that defines what is meant by low tack (Ans. 10). The Examiner
finds the websites provided by Appellant in the Brief define “tack” but fail
to define what is meant by low, medium, or high tack levels (Ans. 10).
Appellant argues the Specification evinces that the term “low tack”
has a well-known and definite meaning to those skilled in the art (Appeal Br.
9 (citing Spec. ¶¶ 6, 24, 32, 34)). Appellant argues that low tack would have
been understood by one skilled in the art to mean a stickiness of a surface
between adjacent plies that allows the adjacent composite plies to be
repositioned (moved) after being brought into contact with another layer
(Appeal Br. 10).
To comply with the definiteness requirement of § 112, one of ordinary
skill in the art must understand what is being claimed when the claim is read
in light of the specification. Orthokinetics Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986). In this case, the Specification
describes that low tack means that “prepreg material can be readily separated
from each other with or without carrier films” (Spec. ¶ 6). The Specification
further describes that low tackiness means that the composite parts are not so
Appeal 2021-003423
Application 15/625,295

4
tacky that they would stick together and become almost inseparable (Spec.
¶ 24). Low tack is described in the Specification as not being unacceptably
tacky on either side of the prepreg pieces so that the pieces may be stacked
onto each other (Spec. ¶ 34).
The Examiner’s requirement of a number or value regarding what
constitutes low tack is not necessary to satisfy § 112(b) because the
Specification describes that the phrase “low tack” permits the layers to be
separated without using carrier films between them (¶ 6). Based on these
disclosures, we agree with Appellant that a person of ordinary skill in the art
would have understood what is meant by the phrase “low tack.” We reverse
the Examiner’s § 112(b) rejection of claims 1–20.
35 U.S.C. § 103: Trudeau in view of Roylance
The Examiner’s findings and conclusions regarding Trudeau and
Roylance are located on pages 3 to 4 of the Final Action. The Examiner
finds Trudeau discloses the subject matter of independent claims 1, 9, and 16
but fails to teach an ultrasonic welding device is used to form a composite
stack of the ply materials (Final Act. 3–4). The Examiner finds Roylance
teaches ultrasonic welding and compression bonding of a stacked set of
composite layers (Final Act. 4). The Examiner concludes it would have
been obvious to modify Trudeau such that the material is welded before
compression as taught by Roylance to prevent deconsolidation prior to the
cooling of the material during the compression step (Roylance ¶ 80) (Final
Act. 4). The Examiner determines that although Trudeau does not teach the
ply layers are stacked on top of each other, it would have been obvious in
light of Roylance to add multiple layers on top of each other to produce the
desired design (Final Act. 4). The Examiner further determines that
Appeal 2021-003423
Application 15/625,295

5
Roylance teaches that the layers are bonded together to cure the material
using an ultrasonic device (Final Act. 4). The Examiner concludes it would
have been obvious to use a curing ultrasonic welding device from Roylance
in Trudeau since Trudeau seeks to have the end product cured (Final Act. 4).
Appellant argues the Examiner erroneously finds that Trudeau’s
vacuum-activated inverter assembly 70 is a compression mold (Appeal Br.
12-13). Although the Examiner relied on Trudeau’s inverter assembly 70 as
the compression mold in the Final Action, the Examiner further finds in the
Answer that Trudeau teaches a vacuum pressure mold where a bladder
pushes against the prepregs (Ans. 11). Appellant provides no direct
response to this finding in the Reply Brief (Reply Br. 2). Appellant’s
argument regarding Trudeau’s failure to teach a compression mold is not
persuasive.
Appellant argues that the Examiner provides improper hindsight
reasoning to modify Trudeau with the teachings of Roylance (Appeal Br.
14). Appellant argues that Trudeau uses a ply transfer and effector (35) to
handle and place individual composite sheets onto a grid structure until a
desired stack is created on a stacking tray 42 (Appeal Br. 14). Appellant
contends that Trudeau provides a solution to handling and transferring a
composite stack such that there is no reason absent hindsight to combine
Roylance’s ultrasonic welding method with Trudeau (Appeal Br. 14).
The Examiner finds that Trudeau does not teach stacking the ply
layers (Final Act. 4). The Examiner finds that Roylance teaches stacking the
layers to create any shape of material that is desired by the user (Ans. 11).
The Examiner finds that stacking materials in Trudeau as taught by
Roylance would increase process efficiency by preventing slippage between
Appeal 2021-003423
Application 15/625,295

6
the layers (Ans. 11–12). The Examiner finds that Trudeau transfers the
layers from one section (stacking section and vacuum compression mold) to
another such that it would have been desirable to prevent slippage during
this process (Ans. 12).
The Examiner determines that it would have been obvious to stack
Trudeau’s plies as in Roylance to produce a desired design (Final Act. 4).
The Examiner, however, fails to explain adequately where in Trudeau’s
process the stacking and ultrasonic treatment would occur. The Examiner
appears to indicate that the stacking and ultrasonic treatment would occur
between the material unloading cell 30 and ply inversion system 60, and
another section (Ans. 12).
However, Trudeau teaches a placement operation that results in the
individual one-sided graphite plies GP being placed on individual stacking
trays 42 with the tacky surface of the one-sided graphite plies facing
upwardly with respect to the stacking tray (col. 18, ll. 57–61). Trudeau
teaches that a graphite ply GP is moved individually onto a stacking tray 42
using a ply transfer end effector 35 (col. 17, ll. 25–34). The stacking trays
are sent to a storage/transfer container 54A where magazine supports hold
the stacking tray 42 until removed from the storage container for further
processing of the graphite plies on the stacking tray by the ply inversion
system (col. 18, ll. 33–45; col. 19, ll. 26–46). Trudeau further discloses that
the tacky surface of individual one-sided plies needs to be disposed in facing
relation to the molding surface (col. 19, ll. 6–11). Trudeau teaches that the
ply transfer/layup subsystem 90 picks up individual one-sided graphite plies
GP from the interactive surface structure 72 for transfer to the mold (col. 23,
ll. 54–65).
Appeal 2021-003423
Application 15/625,295

7
In other words, Trudeau teaches the graphite plies are kept separate
(i.e., individual) up until transferring the graphite plies to the mold.2 At no
point does Trudeau teach stacking the graphite plies, and the Examiner finds
as much. Rather, Trudeau uses a system that maps the location of the
graphite plies during the transfer and layup process (col. 23, ll. 33–39, 54–
65).
In contrast, Roylance’s teachings in that regard are directed to
ultrasonically bonding the layers in a fiber reinforced composite structure
just prior to or simultaneous with pressing stacked layers using a shoe or
roller (¶¶ 78–80). Based on Trudeau’s disclosure we discern no reason,
absent hindsight, to use Roylance’s consolidation of stacked layers for
Trudeau’s graphite plies between the material unloading cell 30 and ply
inversion system 60, and another section. As discussed above, Trudeau’s
process maintains the graphite plies individual and separate until final
molding.
On this record, we find the Examiner’s reasoning is impermissibly
based on hindsight. We reverse the Examiner’s rejections (2) to (4) based
upon the combination of Trudeau and Roylance.

2 Trudeau does not teach expressly stacking the graphite layers in the mold.
Rather, Trudeau teaches the graphite plies are individually “layed-up” in the
mold, which seemingly implies some overlap to form a resulting cohesive
part (col. 25, ll. 1–11, 50–56).
Appeal 2021-003423
Application 15/625,295

8
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
1–3, 5, 6, 9,
10, 12, 13,
16, 17, 19
103 Trudeau, Roylance 1–3, 5, 6, 9,
10, 12, 13,
16, 17, 19
4, 11, 18 103 Trudeau, Roylance,
Cramer
4, 11, 18
7, 8, 14, 15,
20
103 Trudeau, Roylance,
McKague
7, 8, 14, 15,
20
Overall
Outcome
1–20

REVERSED