Lakshman Chandrasekaran et al.

Patent Trials and Appeals Board

Sep 4, 2020

11663938 - (D) (P.T.A.B. Sep. 4, 2020)

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.
11/663,938 03/27/2007 Lakshman Chandrasekaran 07-237 2073
20306 7590 09/04/2020
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
09/04/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAKSHMAN CHANDRASEKARAN
and ANDREW DAVID FOREMAN
____________

Appeal 2019-006280
Application 11/663,938
Technology Center 1700
____________
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 8–12, 14, 15, 19–23, and 25–32 of
Application 11/663,938. Final Act. (May 30, 2018). We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies QINETIQ LIMITED as the real party in
interest. Appeal Br. 1.
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Application 11/663,938
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I. BACKGROUND
The ’938 Application describes fiber reinforced polymer (FRP)
composites. Spec. 1. According to Appellant’s Specification, prior art FRP
composites comprise a thermoset or thermoplastic polymer matrix phase
which has a fibrous phase embedded therein. Id. Such FRP composites have
relatively poor resistance to impact damage due to the lack of plastic
deformation mechanisms for absorbing impact energy. Id. Prior to filing of
the ’938 Application, others proposed incorporating shape memory alloy
(SMA) wires in the FRP composite material to improve impact resistance.
Id.
According to Appellant, SMA-reinforced FRP composite materials
have not been produced on a commercial scale as of filing of the ’938
Application. Id. at 1–2. The ’938 Application’s Specification describes a
composite structure comprising a polymer matrix with reinforcing fibers and
SMA wires arranged in a manner that is said to be amenable to integration
with existing FRP composite manufacturing processes. Id. at 2–3.
Claims 1 and 14 are representative of the ’938 Application’s claims
and are reproduced below from the Claims Appendix of the Appeal Brief.
1. A load bearing composite structure comprising
at least one ply of a polymer matrix with reinforcing fibres and
shape memory alloy (SMA) wires embedded therein,
the SMA wires being of a composition and in a
proportion to substantially enhance the impact resistance
of the structure at a predetermined operating temperature
or range thereof,
wherein said alloy is of a type which exhibits
predominantly a stress-induced martensitic
twinning response at said operating temperature or
range,
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the composite structure comprising one or more integral woven
preforms,
wherein the one or more integral woven preforms
comprise reinforcing tows extending in the warp
direction and reinforcing tows extending in the weft
direction,
wherein
each of the reinforcing tows extending in the
warp direction include[s] at least one SMA
wire at a lateral edge of the tow and
each of the reinforcing tows extending in the
weft direction include[s] at least one SMA
wire at a lateral edge of the tow.
Appeal Br. 12 (paragraphing, indentation, and emphasis added).
14. A fabric comprising
shape memory alloy (SMA) wires woven together with
fibres of a different composition,
the SMA wires being of a composition and in a
proportion to substantially enhance the impact
resistance of the fabric at a predetermined
operating temperature or range thereof
wherein said alloy is of a type which
exhibits predominantly a stress-induced
martensitic twinning response at said
operating temperature or range[,]
the fabric comprising reinforcing tows extending in the warp
direction and reinforcing tows extending in the weft direction,
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wherein
each of the reinforcing tows extending in the warp
direction include[s] at least one SMA wire at a
lateral edge of the tow and
each of the reinforcing tows extending in the weft
direction include[s] at least one SMA wire at a
lateral edge of the tow.
Id. at 13 (paragraphing, indentation, and emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–4, 9–12, 14, 15, 20–23, 25, 27, and 29–32 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Paine2 and Prakash.3 Final Act. 2.
2. Claims 8 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Paine, Prakash, and
Benjamin.4 Final Act. 6.
3. Claims 26 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Paine, Prakash, Homma,5
and Cho.6

2 US 5,614,305, issued March 25, 1997.
3 US 2004/0242096 A1, published December 2, 2004.
4 US 6,852,261 B2, issued February 8, 2005.
5 US 5,396,932, issued March 14, 1995.
6 JP-2003-335876 A, published November 28, 2003. We rely upon the
English language abstract entered into the record on May 30, 2018.
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III. DISCUSSION
Appellant argues for reversal of the rejections of all pending claims
based upon the limitations found in independent claims 1, 14, and 26.
Appeal Br. 7–10. Appellant does not present separate arguments for the
patentability of any dependent claim. Id. Accordingly, we shall limit our
discussion to independent claims 1, 14, and 26. 37 C.F.R. § 41.37(c)(1)(iv).
Each dependent claim will stand or fall with its parent independent claim.
A. Rejection of claims 1–4, 9–12, 14, 15, 20–23, 25, 27, and 29–32
over the combination of Paine and Prakash
The Examiner rejected independent claims 1 and 14 as unpatentable
over the combination of Paine and Prakash. Final Act. 2–5.
Appellant argues that the Examiner has failed to show where each
element of independent claims 1 and 14 is found in the prior art. Appeal Br.
7.
In particular, independent claim 1 encompasses FRP composites
comprising one or more integral woven preforms. The preforms comprise
reinforcing tows extending in the warp direction and reinforcing tows
extending in the weft direction. Each reinforcing tow extending in either the
warp or weft direction includes at least one SMA wire at a lateral edge of the
tow.
Similarly, independent claim 14 encompasses a woven fabric
comprising reinforcing tows extending in the warp and weft directions. Each
reinforcing tow extending in either the warp or weft direction includes at
least one SMA wire at a lateral edge of the tow.
According to Appellant, the Examiner has not met the burden of
demonstrating that the prior art describes or suggests reinforcing tows
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including an SMA wire located at a reinforcing tow’s lateral edge. Appeal
Br. 8–10. In particular, Appellant argues that
Prakash discloses[,] in Figure 1, a net (20) made of wires (30,
32) oriented in two directions where wires (30, 32) can be
single strands or filaments or made of multiple strands or
filaments. (See Prakash at para[.] [0030]). Prakash further
discloses that the wires can be made of metal. Notably, Prakash
does not disclose (i) the use of SMA wires for any purpose; (ii)
any two component tow material; and (iii) a tow material with a
lateral edge component. In addition, the remaining cited prior
art references are silent about these independent claim features
as well. The Board should, therefore, reverse the examiner’s
obviousness rejection of all claims because the cited prior art
fails to disclose or suggest all features of each independent
claim 1, 14 and 26.
Id. at 10.
We begin by considering the proper interpretation of the claim term
“reinforcing tow.”
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997).
In this context, the ordinary meaning of the term “tow” is “a loose[,]
essentially untwisted strand of synthetic fibers.” Tow | Definition of Tow by
Merriam-Webster, Merriam-Webster.com (August 26, 2020)
https://www.merriam-webster.com/dictionary/tow; see also define: tow–
Google Search, Google.com (August 26, 2020) https://bit.ly/3lfWxwd (“a
bundle of untwisted natural or man-made fibers”). Moreover, it is apparent
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that a person of ordinary skill in the art at the time of the invention would
have understood that the term “fiber” is broad enough to include SMA wires.
See, e.g., Spec. 1. (“[T]o enhance the impact resistance of FRP composite
structures[,] it is been proposed to incorporate a proportion of shape memory
alloy (SMA) fibres (or wires—which term will be used for preference
herein) distributed within the material.”); Prakash ¶ 3 (“Common reinforcing
fibers include but are not limited to polyester, rayon, fiberglass, carbon,
nylon, silicon carbide, and wire by way of example.”).
Next, we turn to the effect of the adjective “reinforcing” on the
breadth of the definition of “tow.” In the context of the ’938 Application,
there are two possibilities: (1) “reinforcing” states the purpose of the tow,
i.e., it is a functional limitation, or (2) “reinforcing” limits the normal
composition of the tow to non-SMA wire reinforcing fibers such as the
carbon, glass, high modulus polyethylene, boron, or polyaramid fibers
described in the ’938 Application’s Specification. See Spec. 1, 4.
The Specification indicates that the term “reinforcing” is used in the
latter sense. The Specification repeatedly describes the non-SMA fiber
portion of the FRP composite as “reinforcing fiber” or “fibrous
reinforcement.” For example, the Specification states that
the invention accordingly resides in a composite structure
comprising a polymer matrix with reinforcing fibres and shape
memory alloy (SMA) wires embedded therein, the SMA wires
being of a composition and in a proportion to substantially
enhance the impact resistance of the structure at a
predetermined operating temperature or range thereof, and
wherein the SMA wires woven together with at least some of
the reinforcing fibres in one or more integral preforms.
By incorporating the SMA wires in an integrated woven
preform together with the usual fibrous reinforcement in the
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structure according to the invention[,] several advantages may
accrue.
Spec. 2. See also id. (“SMA wires can be incorporated with the fibrous
tows”; “SMA is already integrated with the fibrous reinforcement.”); id. at 3
(discussing incorporation of SMA wires into weave structure of fibrous
reinforcement); id. at 4 (“The fibrous reinforcement in the structure
according to the invention may be of any of the usual (non-SMA) types
employed in FRP composites but is preferably one of the group of advanced
fibres . . . including carbon (including graphite), glass, aramid (e.g.[,]
Kevlar ®), high modulus polyethylene or boron fibres.”).
The Specification does not contemplate use of SMA wires as the
material in the fibrous reinforcing tow. Indeed, the Specification explains
that such a structure would be undesirable: “The use of the woven
SMA/fibrous preform is also of advantage in terms of handleability.
Separate SMA wire meshes are difficult to handle because the wires tend to
slip over one another and this distorts the mesh shape.” Spec. 2.
For the reasons set forth above, we conclude that, at the time of the
invention, a person having ordinary skill in the art would understand the
term “reinforcing tow” to be an essentially untwisted bundle of non-SMA
fibers of the type normally used to reinforce FRP composites.
In view of this claim construction, we must reverse the rejection of
claims 1 and 14. The Examiner found that the combination of Paine and
Prakash suggests the claimed reinforcing tows within SMA wire located at a
lateral edge of the tow. Answer 10–11. In particular, the Examiner found
that Paine teaches the use of SMA wires and Prakash describes the use of
reinforcing material comprised of woven tows of wires. Id. Based on these
descriptions, the Examiner reasoned that “in each multi-filament tow of only
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SMA wires, the one wire at the lateral edge of the tow must be an SMA
wire.” Id. at 11.
This reasoning is insufficient to describe or suggest the claimed
reinforcing tows recited in claims 1 and 14. The Examiner has explained
how the prior art describes or suggests an FRP composite comprised of a
woven reinforcing material made of tows of SMA wires, which necessarily
have an SMA wire at the lateral edges of each of the tows. The Examiner,
however, has not explained how or why a person having ordinary skill in the
art at the time of the invention would have used an SMA wire at the lateral
edge of a tow of non-SMA reinforcing fibers. In other words, the Examiner
has not explained how the combination of Paine and Prakash describes or
suggests each element of independent claims 1 and 14.
We, therefore, reverse the rejection of claims 1 and 14.
B. Rejection of claims 8 and 19 over the combination of Paine,
Prakash, and Benjamin
Claims 8 and 19 depend from independent claims 1 and 14
respectively. Appellant does not present separate arguments for reversal of
the rejection of claims 8 and 19. Thus, these claims stand or fall with their
parent independent claim.
As discussed above, we have reversed the rejection of independent
claims 1 and 14. We, therefore, also reverse the rejection of claims 8 and 19.
C. Rejection of claims 26 and 28 over the combination of Paine,
Prakash, Homma, and Cho
Independent claim 26 is directed to an FRP composite having
reinforcing tows comprising flat carbon reinforcing fibers with SMA wires
located at an edge of the flat carbon reinforcing fiber.
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We conclude that the Examiner erred in rejecting claim 26 for the
reasons we have already discussed in our reversal of the rejection of claims 1
and 14. Thus, we reverse the rejection of claims 26 and 28.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–4, 9–12, 14, 15,
20–23, 25, 27, 29–
32
103(a) Paine, Prakash
1–4, 9–12, 14,
15, 20–23, 25,
27, 29–32
8, 19 103(a) Paine, Prakash, Benjamin 8, 19
26, 28 103(a) Paine, Prakash, Homma, Cho 26, 28
Overall Outcome
1–4, 8–12, 14,
15, 19–23,
25–32
REVERSED