Goodrich Corporation

Patent Trials and Appeals Board

May 4, 2021

2020003838 (P.T.A.B. May. 4, 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.
15/348,136 11/10/2016 Bari M. Southard 95641US01-
1510801.659US1
5658
61654 7590 05/04/2021
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARI M. SOUTHARD,
MATTHEW J. EAST, DANIEL E. DUNN, and
KRAMER HARRISON
____________

Appeal 2020-003838
Application 15/348,136
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. McGEE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the non-final2 rejection
of claims 1–5 and 8–11. We have jurisdiction over the appeal. 35 U.S.C.
§ 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Goodrich Corporation as the real party in interest (Appeal Br. 3).
2 We note that Appellant properly appeals from the Examiner’s non-final
rejection of April 12, 2019, because at least one of the claims on appeal has
been twice rejected. See 35 U.S.C. § 134(a) (“[a]n applicant for a patent,
any of whose claims has been twice rejected, may appeal from the decision
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Application 15/348,136

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We AFFIRM.
STATEMENT OF THE CASE
Appellant’s invention is directed to additively manufacturing optics
from low expansion glass (Spec. 1:6). Conventional lightweight glass
mirror substrates are generated by subtractive manufacturing, such as
milling, grinding, polishing, or etching away material from a large glass
boule (id. at 1:9–10). Glass, however, is fragile, which makes it challenging
to manufacture many small and intricate features with conventional
processes (id. at 1:11–13). According to the Specification, the invention
addresses the need for improved manufacturing of lightweight glass optics
having intricate features, such as mirror substrates (id. at 1:12–13, 1:15–16).
Claim 1 is representative of the subject matter on appeal (emphasis
added):
1. A method of forming an optical component comprising:
depositing slurry including glass powder material onto a
facesheet;
fusing the glass powder material to the facesheet to form
a first core material layer on the facesheet; and
successively depositing and fusing glass powder material
in at least one additional core material layer to build a core
material structure on the facesheet, further comprising
positioning the facesheet on a mandrel prior to fusing glass
powder material to the facesheet, wherein fusing glass powder
material to a facesheet includes fusing glass powder material to
a facesheet that is contoured along a non-linear curvature for
optical properties wherein the mandrel is contoured along the
non-linear curvature to match the facesheet, and wherein the

of the primary examiner to the Patent Trial and Appeal Board”); see also
Appeal Br. 9.
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Application 15/348,136

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contoured facesheet serves as a build plate and becomes part of
a finished product.
Appeal Br. 13 (Claims App.).
The Examiner maintains the rejection of claims 1–5 and 8–11 under
35 U.S.C. § 103 as unpatentable over Southard (US 2015/0056415 A1,
published Feb. 26, 2015), in view of DeMuth et al. (US 2017/0120332 A1,
published May 4, 2017, “DeMuth”), Barrett et al. (US 2003/0226377 A1,
published Dec. 11, 2003, “Barrett”), and further in view of Nelson et al. (US
5,249,785, issued Oct. 5, 1993, “Nelson”) (Non-Final Act. 3–6).
Appellant argues claims 1–5 and 8–11 as a group (see generally
Appeal Br. 9–11; Reply Br. 2–3). We select claim 1 as representative. 37
C.F.R. § 41.37(c)(1)(iv). Accordingly, claims 2–5 and 8–11 will stand or
fall with our analysis of independent claim 1.
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C.
§ 103. We add the following for emphasis.
With respect to claim 1, the Examiner’s findings and conclusions
regarding Southard, DeMuth, Barrett, and Nelson are located on pages 3
through 6 of the Non-Final Office Action.
The Examiner finds that Southard’s method of forming an optical
component using DeMuth’s glass powdered slurry teaches each step and
limitation of the method recited in independent claim 1, except that modified
Southard does not disclose: (i) positioning a facesheet on a mandrel or (ii) a
mandrel contoured along a non-linear curvature to match the facesheet
(Non-Final Act. 3–5).
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With respect to missing element (i), the Examiner finds that Barrett
teaches the use of a workholder comprising a mandrel, upon which optical
components can be produced (Non-Final Act. 4; Ans. 4 (citing Barrett Title;
Abstract; Figs. 1–4; https://www.merriam-webster.com/dictionary/mandrel,
last visited Feb. 19, 2020)). The Examiner determines that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
hold Southard’s contoured substrate or facesheet with a workholder
comprising a mandrel because Barrett teaches the predictable and suitable
use of such a workholder during glass powder deposition and fusing steps
(Non-Final Act. 5; Ans. 5).
Regarding missing element (ii), the Examiner finds Nelson teaches
that contouring a holding surface improves the holding surface by holding a
workpiece’s substrate rigidly during a manufacturing process (Non-Final
Act. 5; Ans. 5–6 (each citing Nelson 1:9–27)). Based on Nelson’s teaching,
the Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of the invention to incorporate Nelson’s contoured
workholder into Southard’s workholder comprising a mandrel, as modified
by Barrett, to match the contour of the non-linear curvature of Southard’s
facesheet during processing (Non-Final Act. 5; Ans. 5–6).
Appellant argues that the rejection of claim 1 is based on
impermissible hindsight (Appeal Br. 9). Appellant argues that Southard,
DeMuth, Barrett, and Nelson cannot properly be combined to teach the
limitations missing from Southard’s method (id.). In particular, Appellant
argues that the Examiner’s relied-upon references are deficient for failing to
show a curved or contoured mandrel (Reply Br. 2). Regarding Barrett,
Appellant contends the reference “clearly does not show a contoured
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mandrel” (id. at 3). According to Appellant, Nelson is “entirely silent to all
of ‘wherein the mandrel is contoured along the non-linear curvature to match
the facesheet, and wherein the contoured facesheet serves as a build plate
and becomes part of a finished product,’ as recited in claim 1” (id.).
We are not persuaded by these arguments.
Appellant’s arguments are directed to attacking the individual
secondary references rather than the combined teaching of the references.
Appellant’s criticisms of Barrett and Nelson individually do not establish
nonobviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.”). We discern no reversible error in the
Examiner’s findings that Southard, in combination with Barrett and Nelson,
would have rendered obvious the limitations regarding: (i) positioning a
facesheet on a mandrel or (ii) a mandrel contoured along a non-linear
curvature to match the facesheet (Final Act. 3-5). Furthermore, the
Examiner finds that Southard, not Nelson, teaches a contoured facesheet,
which serves as a build plate and becomes part of a finished product (Non-
Final Act. 4 (citing Southard Abstract)).
Contrary to Appellant’s arguments, we find that the Examiner
provides a reasonable basis for the findings and conclusions regarding the
combined teachings of Southard, DeMuth, Barrett, and Nelson.
Appellant also argues that Nelson is non-analogous art because it is
not in the same field of endeavor and not reasonably pertinent to Appellant’s
problem (Appeal Br. 10; see also Reply Br. 2). With respect to whether
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Nelson is reasonably pertinent, Appellant argues that “[o]ne of ordinary skill
in the art would not look to aluminum aircraft skin techniques to solve
problems related to printing glass optics” (Appeal Br. 10).
In response, the Examiner finds that Nelson is reasonably pertinent to
the particular problem with which Appellant was concerned because Nelson
pertains to a technique for holding a substrate with a non-linear curvature
during processing (Ans. 7).
The scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
‘familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”).
A reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard).
In this instance, Appellant’s analysis does not explain why Nelson is
not reasonably pertinent to the problem faced by Appellant, namely, how to
hold a substrate with a non-linear curvature during manufacturing steps. As
explained by the Examiner, Nelson teaches that contouring a holding surface
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improves the holding surface by holding a workpiece’s substrate rigidly
during a manufacturing process (Ans. 5–6 (citing Nelson 1:9–27)).3 In our
view, Nelson would have logically commended itself to a person of ordinary
skill in the art when considering how best to use a holding fixture for
manufacturing lightweight glass optics having “many small, intricate
features” (Spec. 1:11; see also id. at 7:12–14). Indeed, Nelson’s holding
fixture is not limited to use with aircraft skins, but is open to being used with
“a number of different contoured workpieces” (Nelson 1:5–8, 1:59–61).
Accordingly, we find that Nelson is reasonably pertinent to Appellant’s
problem, and thus is analogous art.
Therefore, Appellant’s arguments are insufficient to convince us of
reversible error in the Examiner’s rejection of claim 1.
On this record, we sustain the Examiner’s § 103 rejection as to claims
1–5 and 8–11.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–11 103 Southard, DeMuth,
Barrett, Nelson
1–5, 8–11

3 Likewise, the Specification describes that the instant mandrel is contoured
to match the facesheet’s contour and that the shape-matched facesheet is
positioned on the mandrel prior to successive manufacturing steps (See Spec.
2:6–3:15, 4:6–9, 5:10–19, Fig. 1; Appeal Br. 13 (Claims App.)).
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Application 15/348,136

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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