Goodrich Corporation

Patent Trials and Appeals Board

Aug 24, 2021

2020003928 (P.T.A.B. Aug. 24, 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.
15/348,194 11/10/2016 Kramer Harrison 95639US01-
1510801.657US1
2785
61654 7590 08/24/2021
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/24/2021 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 KRAMER HARRISON,
MATTHEW J. EAST, DANIEL E. DUNN,
and BARI M. SOUTHARD
____________

Appeal 2020-003928
Application 15/348,194
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 May 10, 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
of the primary examiner to the Patent Trial and Appeal Board”); see also
Appeal Br. 5.
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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 1:8–9). 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:
fusing glass powder material to a facesheet to form a first
core material layer on the facesheet; and
successively fusing glass powder material in a plurality
of additional core material layers 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
contoured facesheet serves as a build plate and becomes part of
a finished product.
Appeal Br. 13 (Claims App.).
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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 Barrett et al. (US 2003/0226377 A1,
published Dec. 11, 2003, “Barrett”), Nelson et al. (US 5,249,785, issued Oct.
5, 1993, “Nelson”), and further in view of Myers et al. (US 4,620,890,
issued Nov. 4, 1986, “Myers”) (Non-Final Act. 3–6).
Appellant argues claims 1–5 and 8–11 as a group (see generally
Appeal Br. 9–12; 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.
We note that Appellant does not address the provisional obviousness-
type double patenting rejection of claims 1–5 and 8–11 as unpatentable over
claims 1–20 of co-pending Application 15/348,136 (Appeal Br. 5; Non-Final
Act. 7). Because Application 15/348,136 was abandoned on July 23, 2021,
the Examiner’s obviousness-type double patenting rejection is moot.
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 for the reasons provided by the Examiner in the Non-Final Action and
the Answer. We add the following for emphasis.
With respect to claim 1, the Examiner’s findings and conclusions
regarding Southard, Barrett, Nelson, and Myers are located on pages 3
through 5 of the Non-Final Office Action.
The Examiner finds that Southard’s method of forming an optical
component teaches each step and limitation of the method recited in
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independent claim 1, except that 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. 3–4).
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. 5–6 (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. 4; Ans. 6).
Regarding missing element (ii), the Examiner finds Nelson and Myers
both teach that contouring a holding surface to correspond with the contour
of the facesheet improves the manufacturing process (Non-Final Act. 4–5;
Ans. 3 (noting that the relied-upon disclosure of Myers “is superfluous and
the rejection stands solely on the teachings of” Southard, Barrett, and
Nelson.)). Specifically, 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. 4; Ans. 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
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match the contour of the non-linear curvature of Southard’s facesheet during
processing (Non-Final Act. 5; Ans. 6–7).
Appellant argues that the rejection of claim 1 is based on
impermissible hindsight (Appeal Br. 10–11). Appellant argues that
Southard, Barrett, Nelson, and Myers 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
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 are persuaded by the Examiner that Southard, in combination with
Barrett and Nelson, either with or without Myers, would have rendered
obvious the limitations regarding: (i) positioning a facesheet on a mandrel
and (ii) a mandrel contoured along a non-linear curvature to match the
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facesheet (Non-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 (id. at 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, Barrett, and Nelson, either with or without
Myers.
Appellant also argues that Nelson and Myers are non-analogous art
because each of these references are not in the same field of endeavor as the
claimed subject matter and are not reasonably pertinent to Appellant’s
problem (Appeal Br. 9–10; see also Reply Br. 2–3).
However, Appellant’s assertion that Myers is non-analogous art is
moot. Under the Examiner’s proposed combination of references, Myers is
not necessary to render claim 1 obvious (Ans. 3). In other words, the
combined teachings of Southard, Barrett, and Nelson alone are a sufficient
basis for the rejection (id.).
With respect to whether 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. 7–8).
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
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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).”)
(internal citation omitted).
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)) (internal
citations and quotation marks omitted); 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
improves the holding surface by holding a workpiece’s substrate rigidly
during a manufacturing process (Ans. 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

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’x)).
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manufacturing lightweight glass optics having “many small, intricate
features” (Spec. 1:12; see also id. at 7:5–8). 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:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
1–5, 8–11 103 Southard, Barrett,
Nelson, Myers
1–5, 8–11
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