David BONGIOVANNI et al.

Patent Trials and Appeals Board

Apr 19, 2021

2020001877 (P.T.A.B. Apr. 19, 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. 13/479,528 05/24/2012 David BONGIOVANNI 150049 9593 26285 7590 04/19/2021 K&L GATES LLP-Pittsburgh 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 EXAMINER ALLEN, JEFFREY R ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 04/19/2021 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID BONGIOVANNI, MICHAEL WISEMAN, ADAM JANICKI, and ERIC FORSTER ____________________ Appeal 2020-001877 Application 13/479,528 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-4, 8, 12-29, and 35-37.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Hutchinson S.A. as the real party in interest. Appeal Br. 3. 2 Claims 5, 6, and 9-11 are cancelled, and claims 7, 18, and 30-34 are withdrawn. Appeal Br. 24-26, 28, and 29 (Claims App.). Appeal 2020-001877 Application 13/479,528 2 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. A system, comprising: a liquid container, wherein the liquid container comprises a metal material; a plurality of discrete, pre-fabricated, multi-layer self- sealing panels connected to the liquid container, wherein the plurality of discrete, multi-layer self-sealing panels are field mountable to and substantially cover an exterior surface of the liquid container, and wherein at least one of the plurality of discrete, pre-fabricated, multi-layer self-sealing panels comprises: a first self-sealing layer comprising an elastomeric self-sealing material; a first barrier layer portion comprising a polyurethane material, wherein the first barrier layer is connected to the liquid container; a first fabric layer between the first self-sealing layer and the first barrier layer portion, wherein the first fabric layer comprises an ultra-high molecular weight polyethylene material; a second barrier layer portion; a second self-sealing layer between the second barrier layer portion and the first self-sealing layer; and a second fabric layer between the second barrier layer portion and the second[ ] self[-]sealing layer; and a cap member connected to at least two of the plurality of discrete, multi-layer self-sealing panels, wherein the cap member covers at least one of the following: one or more portions of the exterior surface of the liquid container; and an exterior surface of each of the at least two of the plurality of discrete, multilayer self-sealing panels. Appeal 2020-001877 Application 13/479,528 3 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Name Reference Date Howald US 2,601,525 June 24, 1952 Underwood US 3,509,016 April 28, 1970 Villemain US 4,368,086 Jan. 11, 1983 Fu US 2003/0114064 A1 June 19, 2003 Heifetz US 6,586,080 B1 July 1, 2003 THE REJECTIONS I. Claims 1-4, 8, 12-17, 19-29, and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Underwood, Villemain, Howald, and Fu.3 Final Act. 2-5. II. Claims 35 and 36 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Underwood, Villemain, Howald, Fu, and Heifetz. Id. at 6. 3 Dependent claim 3 recites that “the at least one of the plurality of discrete, multi-layer self-sealing panels is a flexible self-sealing panel.” Appeal Br. 24 (Claims App.). Even though the Examiner failed to explicitly refer to claim 3 in the heading and body for this rejection (Final Act. 2-5), the Examiner makes reference to the language of claim 3 within the body of this rejection. See id. at 2 (emphasis added) (“Underwood discloses a system, comprising: a . . . multi-layer self-sealing panel (Fig. 13) with a flexible self- sealing panel (col. 1, lines 14-20).”). We consider the Examiner’s oversight in the heading and body to be a typographical error, and therefore, we list claim 3 as being subject to this ground of rejection. Appellant appears to concur by also listing claim 3 under this rejection in Appellant’s listing of the grounds for rejection on appeal. Appeal Br. 11. Appeal 2020-001877 Application 13/479,528 4 OPINION Rejection I Claims 1-4, 8, 12, 13, 23-29, 37 The Examiner finds that Underwood teaches many of the limitations of independent claim 1, including, among other things, a self-sealing panel comprising: a first self-sealing layer (7) comprising an elastomeric self- sealing material (col. 3, lines 15-18); a first barrier layer portion (6) comprising a polyurethane material, wherein the first barrier layer is connected to the liquid container (all the layers are connected); a first fabric layer (8) between the first self-sealing layer and the first barrier layer portion, wherein the first fabric layer is adjacent the first barrier layer; a second barrier layer portion (9); a second self-sealing layer (7) between the second barrier layer portion and the first self-sealing layer; and a second fabric layer (8) between the second barrier layer portion and the second self-sealing layer. Final Act. 2. The Examiner acknowledges that Underwood fails to teach that the self-sealing panel is a “plurality of discrete, pre-fabricated . . . panels [that] are field mountable.” Id. at 3. The Examiner finds that Villemain teaches “a plurality of discrete, encapsulated multilayer sealing panels (16) connected to [a] liquid container” and “wherein the plurality of self-sealing panels substantially cover an exterior surface of a liquid container.” Id. at 4 (citing Villemain 1:30-39, Figs. 4, 5, 8). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to have manufactured the sealing panels of Underwood in the form as taught by Villemain “so that the panels could be arranged in different tank configurations.” Id.; see also Ans. 9 (the Examiner explaining that “it would have been obvious . . . to have manufactured the layers of Underwood in panel form as taught by Villemain” and “[o]ne of ordinary skill in the art Appeal 2020-001877 Application 13/479,528 5 would appreciate that the structure [of] Underwood could be manufactured in panel form, as taught by Villemain”). The Examiner also acknowledges that Underwood fails to teach that “the first fabric layer comprises an ultra-high molecular weight polyethylene material.” Final Act. 3. The Examiner finds that “Fu teaches that it is known in the art to manufacture ballistic panels with a fabric layer manufactured out of ultra-high molecular weight polyethylene.” Id. (citing Fu ¶ 8). The Examiner concludes it would have been obvious to a skilled artisan to have made Underwood’s fabric layer out of an ultra-high molecular weight polyethyelene material “in order to adjust the durability of the device” and because it is a matter of design choice to select a material known to be suitable for use in a ballistic panel. Id. at 4 (citing Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945)). The Examiner further acknowledges that Underwood fails to teach the claimed cap member. Final Act. 3. The Examiner finds that “Howald discloses a cap member connected to and covering a sealing panel ([F]ig. 1, peripheral edges of the tank)” and that “[t]his configuration encloses a fuel tank and its self-sealing layers so as to help maintain the tank’s structure.” Id. at 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify Underwood with: a cap member, as taught by Howald, in order to provide the system with enhanced structural rigidity.” Id. Appellant argues that the Examiner relies on a “tortured interpretation” in identifying various layers depicted in Underwood’s Figure 13 as corresponding to the claimed layers. Appeal Br. 16. More particularly, Appellant first takes issue with the Examiner identifying the Appeal 2020-001877 Application 13/479,528 6 layer closest to the metal tank wall as the second barrier layer, rather than the first barrier layer, and identifying the layer farthest from the metal tank wall as the first barrier layer, rather than the second barrier layer. Id. Similarly, Appellant takes issue with the Examiner identifying the “first instances” of sealing and fabric layers relative to the metal tank as the second sealing and fabric layers and identifying the “second instances” of sealing and fabric layers relative to the metal tank as the first sealing and fabric layers. Id. Appellant further takes issue with the Examiner’s “determin[ation] that the ‘outer layer 9 of cast in place polyurethane’ - the last layer applied - is connected to the metal tank wall 5.” Appeal Br. 16 (emphasis modified). That is, Appellant disagrees with the Examiner’s determination that because “all the individual layers of Underwood are connected,” the outermost layer 9 “is thus connected to the metal tank wall 5.” Id. Appellant asserts that “[b]y this logic, all things in the universe are connected to one another, thereby rendering the phrase ‘connected to’ meaningless.” Id. The Examiner responds that “Appellant has not claimed that the first barrier layer is adjacent to the container or that the first barrier layer is directly connected to the container.” Ans. 8. The Examiner further responds that “[a]ll of the layers of Underwood are laminated together and then connected to the container wall.” Id. We do not find Appellant’s argument relating to the Examiner’s identification of various layers in Underwood to be persuasive of error by the Examiner. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well established that limitations not appearing in the claim cannot be relied Appeal 2020-001877 Application 13/479,528 7 upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In our view, the claim does not preclude an outermost layer from being characterized as the first layer or otherwise dictate a specific order for the first and second barrier layers relative to the liquid container. The only requirements in the claim are that (i) the first fabric layer is between the first self-sealing layer and the first barrier layer; (ii) the second self-sealing layer is between the second barrier layer and the first self-sealing layer; and (iii) the second fabric layer is between the second barrier layer and the second self-sealing layer. Appeal Br. 23 (Claims App.). Appellant does not identify any deficiency in the Examiner’s findings relating to these claim requirements. Moreover, although claim 1 recites that “the first barrier layer is connected to the liquid container,” the claim does not require that the first barrier layer is immediately adjacent the container or makes contact with the container or is connected directly to the container. In our view, the claim does not preclude an indirect connection between the first barrier layer and the liquid container. See Genentech, Inc. v. Chiron Corp. 112 F.3d 495, 501 (Fed. Cir. 1997) (“To be joined or connected does not necessitate a direct joining or connection.”). Given that the Examiner finds that that the Examiner-identified first barrier layer 6 of Underwood is laminated with all of the other layers as a unit and connected to the container wall (Ans. 8), we are not apprised of a deficiency in the Examiner’s finding that Underwood’s first barrier layer 6 is connected to the liquid container. Appellant next argues that the Examiner’s articulated rejection is that it would have been obvious to a skilled artisan “to have manufactured the sealing layer 7 of Underwood as panels, as taught by Villemain,” but Appeal 2020-001877 Application 13/479,528 8 even if the sealing layer 7 of Underwood was manufactured as the panels 16 of Villemain, there still is no teaching or suggestion that the other layers of the self-sealing system of Underwood (e.g., the layer 6 of polyurethane, the tear-resistant fabric layer 8 and the outer layer 9 of polyurethane) which cover the metal wall 5 of the fuel tank are a part of a discrete, field mountable, multi-layer self-sealing panel. Appeal Br. 17-18. We are not persuaded by Appellant’s argument. We do not understand the Examiner’s rejection to be limited to incorporation of Underwood’s sealing layer 7 into the discrete, field-mountable panels of Villemain, but rather incorporation of Underwood’s multi-layer structure into discrete, field-mountable panels. See Ans. 9 (“Villemain teaches that the outer walls of a self-sealing fuel tank can be manufactured in panel form. Underwood teaches layers that can be used when manufacturing an outer wall for a self-sealing fuel tank.”). Appellant next argues that “given Underwood’s lack of self-sealing panels whatsoever, the only place to find motivation to modify Underwood to incorporate Villemain’s panels 16 into Underwood’s sealing layer 7 is in the Subject Application if one engages in impermissible hindsight-based reconstruction.” Appeal Br. 18. We are not persuaded that the Examiner engaged in impermissible hindsight. Appellant does not identify any flaw in the Examiner’s stated reasoning for incorporating Underwood’s multi-layer structure into discrete, pre-fabricated panels that are field mountable as taught by Villemain-i.e., in order to arrange the panels in various tank configurations (Final Act. 4)-or explain why this reasoning lacks rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) (explaining that the Court requires that we look to whether the Examiner has Appeal 2020-001877 Application 13/479,528 9 provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Moreover, Appellant does not specifically point to any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). Appellant next argues that [g]iven that the structural panels of Fu are rigid (not flexible) and are for use in the interior walls, floors and doors in aircraft (not on the exterior of a fuel tank), the only place to find a motivation to modify Underwood to incorporate Fu’s fabric layers 22 into Underwood’s fabric layers 8 in the Subject Application is if one engages in impermissible hindsight-based reconstruction. Appeal Br. 19-20. Significantly, in this case, although Fu’s lightweight ballistic resistant panel may be rigid, the “panel is made up of a panel core including a plurality of sheets of flexible, high-tensile strength fabric” interleaved with and/or adhered to additional layers, and the “flexible, high- tensile strength fabric” may be made of “ultra-high molecular weight polyethylene fiber.” Fu ¶¶ 7, 8 (emphasis added). Underwood discloses a wall designed “to close bullet holes or other punctures in tanks,” with the wall comprising a multi-layer structure including “a tear-resistant fabric layer 8 of nylon or other suitable material.” Underwood 1:26-27, 3:13-14. Appeal 2020-001877 Application 13/479,528 10 The Examiner reasons that a person of ordinary skill in the art would have been led to utilize Fu’s ultra-high molecular weight polyethylene material as a suitable material for the tear-resistant fabric of Underwood “in order to adjust durability of the device” (Final Act. 4) considering that both Fu and Underwood “are drawn to ballistics resistant wall structures” (Ans. 10). Appellant does not persuasively explain why the Examiner’s articulated reasoning lacks rational underpinnings, nor does Appellant specifically point to any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. Appellant next argues that “Underwood, Villemain and Howald were each available to the public for over 28 years and yet no one thought to disclose the invention claimed the Subject Application and/or incorporate the claimed invention into a commercial product other than Appellant.” Appeal Br. 20. Appellant asserts that the Federal Circuit has “held that the time between the relevant prior art and the Subject Application’s filing date can evince that an invention claimed in the Subject Application was not obvious to try.” Id. (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1356-57 (Fed. Cir. 2013). Here, however, the Examiner’s articulated rationale is not based on being “obvious to try”-i.e., choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, and consequently, the instant case is distinguishable from Leo. Moreover, “[t]he mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references the art tried and failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Appellant Appeal 2020-001877 Application 13/479,528 11 has provided no objective evidence in the record before us that establishes the duration and extent of a problem in the self-sealing containment system industry that has remained unsolved despite attempts to solve such a problem. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984). For the foregoing reasons, we have not been apprised that the Examiner erred in concluding that the combination of Underwood, Villemain, Howald, and Fu renders obvious the subject matter of independent claim 1. We sustain the Examiner’s rejection of claim 1, and claims 2-4, 8, 12, 13, 23-29, and 37 for which Appellant relies on the same arguments and reasoning we found unpersuasive in connection with claim 1 (Appeal Br. 20-21), under 35 U.S.C. § 103 as unpatentable over Underwood, Villemain, Howald, and Fu. Claims 14-17 and 19-22 Dependent claim 14 recites that “the cap member is a self-sealing cap member.” Appeal Br. 25 (Claims App.). Dependent claim 15 recites that “the cap member comprises a laminate structure.” Id. Dependent claims 16, 17, and 19-22 depend directly or indirectly from claim 15 and further define the laminate structure as including at least one self-sealing layer. Id. at 25-26. With respect to these dependent claims, the Examiner finds that Howald’s “cap member has both flexible and rigid properties” and because “the cap is made in the same manner as the walls of the tank . . . [,] it is self- sealing.” Final Act. 5 (citing Howald 4:45-47, 51-70). Although Appellant concedes that “the reinforcing strips of Howald arguably teach the features of the cap member as recited in [i]ndependent [c]laim 1 of the Subject Application,” Appellant explicitly asserts that “the Appeal 2020-001877 Application 13/479,528 12 reinforcing strips fail to teach or suggest other features of the cap member as recited in certain of the dependent claims.” Appeal Br. 19. In particular, Appellant argues that “[t]here is nothing in Howald which teaches or suggests the reinforcing strips of Howald being self-sealing as recited in [c]laim 14, or the reinforcing strips of Howald as comprising a laminate structure as recited in any of [c]laims 15-17 and 19-22.” Id. at 21. The Examiner responds that “Howald teaches that a cap member and structures of a bullet proof tank can have the same layer structure” and “Appellant has not argued against this teaching that reads on the claims.” Ans. 11 (citing Howald 4:45-47). Although the Examiner points to Howald’s teaching at column 4, lines 45-47 that “cover 11 may be made in the same manner as the walls of the tank,” we note that “cover 11” refers to “a cover 11 bolted on the mouth of the tank.” Howald 4:44-45, Fig. I. However, when identifying a “cap member connected to and covering a sealing panel” in connection with claim 1, the Examiner refers to “[F]ig. 1, peripheral edges of the tank,” rather than the illustrated circular cover 11 covering the mouth of the tank. Final Act. 4; Howald Fig. 1. The Examiner has not explained adequately how Howald’s cover 11 bolted on the mouth of the tank can reasonably be considered the claimed cap member required to be connected to at least two panels. The Examiner also points to column 4, lines 51-70 of Howald (Final Act. 5) in articulating the rejection of the dependent claims, and this portion of Howald states that “[a]dditional reinforcing strips may be cemented along the corners of the tank.” Howald 4:51-70. When read in the context of the entirety of this paragraph, we are persuaded that the “[a]dditional reinforcing strips” are comprised of “superimposed layers of a textile fabric cemented Appeal 2020-001877 Application 13/479,528 13 together.” Id. at 4:42-44, 51-52. Consequently, the Examiner has sufficiently supported a finding that the additional reinforcing strips, conceded by Appellant to be the claimed cap member (Appeal Br. 19), comprise a laminate structure as required by dependent claim 15 in that they are made up of layers of fabric superimposed and cemented together. For the foregoing reasons, we have not been apprised that the Examiner erred in concluding that the combination of Underwood, Villemain, Howald, and Fu renders obvious the subject matter of dependent claim 15. We sustain the Examiner’s rejection of dependent claim 15. The Examiner, however, has not sufficiently supported a finding that the additional reinforcing strips are self-sealing (claim 14) or comprise at least one self-sealing layer (claims 16 and 19-22). In particular, there is insufficient indication in Howald that the “self-sealing liner” referred to in the paragraph subsequent to the discussion of “reinforcing strips” (Howald 4:54-60) is part of the reinforcing strips. In other words, Howald adequately supports that the “reinforcing strips . . . cemented along the corners of the tank” comprise “successive layers of . . . textile fabric,” but not that they comprise “inner layers 12, 13, and 14” with “[t]he intermediate layer 13 . . . made of soft rubber, which swells wherever the gasoline reaches it.” Howald 4:42-60. Consequently, the Examiner’s conclusion of obviousness with respect to a cap member that is self-sealing or has a self-sealing layer is based on an insufficiently supported finding as to the scope and content of Howald. For the foregoing reasons, we have been apprised that the Examiner erred in concluding that the combination of Underwood, Villemain, Howald, and Fu renders obvious the subject matter of dependent claims 14, 16, 17, Appeal 2020-001877 Application 13/479,528 14 and 19-22. We do not sustain the Examiner’s rejection of claims 14, 16, 17, and 19-22 under 35 U.S.C. § 103 as unpatentable over Underwood, Villemain, Howald, and Fu. Rejection II Appellant relies on the same arguments and reasoning we found unpersuasive in connection with independent claim 1 as the basis for seeking reversal of the rejection of dependent claims 35 and 36. Appeal Br. 21. Accordingly, for the same reasons discussed above in connection with the rejection of claim 1, we also sustain the rejection of claims 35 and 36 under 35 U.S.C. § 103 as unpatentable over Underwood, Villemain, Howald, Fu, and Heifetz. DECISION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 8, 12-17, 19-29, 37 103(a) Underwood, Villemain, Howald, Fu 1-4, 8, 12, 13, 15, 23-29, 37 14, 16, 17, 19-22 35, 36 103(a) Underwood, Villemain, Howald, Fu, Heifetz 35, 36 Overall Outcome 1-4, 8, 12, 13, 15, 23-29, 35-37 14, 16, 17, 19-22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART