14243959 - (D) (P.T.A.B. Nov. 2, 2020)

The Boeing Company

Patent Trials and Appeals BoardNov 2, 2020

14243959 - (D) (P.T.A.B. Nov. 2, 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. 14/243,959 04/03/2014 Michael W. Evens 13-0865-US-NP BOCO/0110US 8250 120226 7590 11/02/2020 Patterson & Sheridan - The Boeing Company c/o Patterson & Sheridan, LLP 24 GREENWAY PLAZA, SUITE 1600 Houston, TX 77046 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 11/02/2020 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): PAIR_eofficeaction@pattersonsheridan.com PSDocketing@pattersonsheridan.com PatentAdmin@boeing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL W. EVENS, MEGAN N. WATSON, JOEL P. BALDWIN, and MARCUS A. BELCHER Appeal 2020-000332 Application 14/243,959 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and MICHAEL G. McMANUS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–6 and 20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as The Boeing Company (Appeal Br. 2). Appeal 2020-000332 Application 14/243,959 2 CLAIMED SUBJECT MATTER The claims are directed to a primer-saturated carrier medium assembly. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A primer saturated carrier medium assembly comprising: a carrier medium having a first face and an opposing second face; an uncured primer saturating the carrier medium between the first face and the opposing second face; and a first removable film impenetrable to the primer directly contacting the first face of the primer saturated carrier medium; and a second removable film impenetrable to the primer directly contacting the opposing second face of the primer saturated carrier medium. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ebneth US 4,522,889 June 11, 1985 Smith US 5,166,007 Nov. 24, 1992 Johnson US 2010/0062250 A1 Mar. 11, 2010 Technical Data Sheet MIL-PRF-23377H Type 1, Class C Polyamide Epoxy Primer – Aircraft Undated REJECTIONS The claims stand rejected as follows: claims 1 and 2 under 35 U.S.C. § 102(a)(1) over Smith; claims 1, 2, and 20 under 35 U.S.C. § 103 over Smith; claims 3 and 4 under 35 U.S.C. § 103 over Smith in view of Appeal 2020-000332 Application 14/243,959 3 Ebneth; claim 5 under 35 U.S.C. § 103 over Smith in view of Technical Data Sheet; and claim 6 under 35 U.S.C. § 103 over Smith in view of Johnson.2 OPINION Rejections under 35 U.S.C. §§ 102(a)(1) and 103 over Smith “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989). Smith discloses “a patch or repair assembly for repairing vehicles, installations, parts, and the like which comprises at least one photocurable prepreg fabric, a UV transparent release film on top of the prepreg fabric, and a UV blocking film at least covering the UV transparent release film” (col. 2, ll. 8–13). “The patch system utilizes a fiberglass fabric or mat which is impregnated with a photocurable unsaturated polyester, acrylic or vinyl ester resin” (col. 2, ll. 30–33).3 “The same resin composition utilized in forming the prepregs can be used to form the photocurable molding composition which is utilized as a plug for holes, cracks, or the like in a damaged surface being repaired” (col. 8, ll. 12–15). The Appellant’s claims require a primer. That term is not defined in the Appellant’s Specification. Thus, the Appellant’s Specification indicates that the Appellant gives “primer” its ordinary meaning. The relevant 2 The Examiner’s reliance upon Yao (US 2008/0254698) (Ans. 10) is improper because that reference is not included in the statement of a rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Therefore, we do not consider that reference. 3 The monomers used to make the polyester resin can include one or more epoxy compounds (col. 6, ll. 12–17, 26–28). Appeal 2020-000332 Application 14/243,959 4 ordinary meaning of “primer” is “[a]n undercoat of paint or size applied to prepare a surface, as for painting.”4 The Examiner finds that “since the claims and Appellants’ specification do not actually require 1) the primer to be cured and 2) another adhesive or paint actually applied to the primer, it appears that the recitation of an uncured resin being a primer is indistinguishable from an uncured resin which is not a primer,” such as Smith’s photocurable unsaturated polyester, acrylic, or vinyl ester resin (col. 2, ll. 30–33) (Ans. 9), and that “reliance on the definition as necessarily distinguishing a material which is recited as a primer as claimed versus a resin, such as taught by Smith, does not actually distinguish the claimed primer and the resin taught by Smith, absent evidence that the resin of Smith is incapable of adhering to any other adhesive or coating” (Id.). The Examiner also finds (Ans. 9–10): [B]ased on Appellants’ arguments that a “primer” requires another material to thereafter be deposited on the primer, it is reasonable for one of ordinary skill to expect that after impregnating the fabric or mat with a photocurable unsaturated polyester, acrylic or vinyl ester resin, that further unsaturated polyester, acrylic or vinyl ester resin could then be deposited on the resin to act as an adhesive. Therefore, even based on Appellants’ recited definition, the photocurable resin of Smith would reasonably behave as a primer. “‘[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). 4 thefreedictionary.com/primer. Appeal 2020-000332 Application 14/243,959 5 The Examiner does not establish that even if, like a primer, Smith’s uncured resin (and any other uncured layer such as a topcoat), after being cured, can have an adhesive or paint adhered to it and, therefore, in that respect can behave as a primer, it is “[a]n undercoat of paint or size applied to prepare a surface, as for painting”5 such that it has the characteristics of a primer required for it to fall within the broadest reasonable interpretation of “primer” consistent with the Appellant’s Specification. Nor does the Examiner establish that Smith would have suggested a primer to one of ordinary skill in the art. Rejection of Claim 5 under 35 U.S.C. § 103 over Smith in view of Technical Data Sheet Technical Data Sheet discloses a two component, corrosion inhibiting, strontium chromate-containing, polyamide epoxy primer that offers excellent corrosion and chemical resistance over properly prepared aluminum and steel substrates. The Examiner concludes that it would have been prima facie obvious to one of ordinary skill in the art to modify Smith’s photocurable unsaturated polyester, acrylic, or vinyl ester resin such that it “includes chromate, as taught by the Technical Data Sheet, motivated by the desire to form a conventional assembly comprising a polyamide epoxy primer known in the art as advantageously providing corrosion and chemical resistance” (Final Rej. 5). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason 5 thefreedictionary.com/primer. Appeal 2020-000332 Application 14/243,959 6 to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner does not establish that in view of Technical Data Sheet’s disclosure that the strontium chromate-containing, polyamide epoxy primer offers excellent corrosion and chemical resistance over properly prepared aluminum and steel substrates, adding Technical Data Sheet’s strontium chromate to the photocurable unsaturated polyester, acrylic, or vinyl ester resin in Smith’s prepreg fabric would have been apparent to one of ordinary skill in the art or would have produced a primer as that term is most broadly reasonably interpreted consistently with the Appellant’s Specification. Rejections under 35 U.S.C. § 103 of claims 3 and 4 under over Smith in view of Ebneth and claim 6 over Smith in view of Johnson The Examiner does not rely upon Ebneth or Johnson for any disclosure that remedies the deficiency in claim 1 from which claims 3, 4, and 6 depend (Final Rej. 3–6). CONCLUSION Thus, the Examiner has not established a prima facie case of anticipation or obviousness of the Appellant’s claimed invention. Accordingly, we reverse the Examiner’s rejections. Appeal 2020-000332 Application 14/243,959 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 102(a)(1) Smith 1, 2 1, 2, 20 103 Smith 1, 2, 20 3, 4 103 Smith, Ebneth 3, 4 5 103 Smith, Technical Data Sheet 5 6 103 Smith, Johnson 6 Overall Outcome 1–6, 20 REVERSED