Ex Parte Blancaneaux et al

Patent Trial and Appeal Board

Sep 24, 2018

13123387 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/123,387 04/08/2011
25215 7590 09/26/2018
The Dobrusin Law Firm P.C.
29 W. Lawrence Street, Ste. 210
SUITE 210
PONTIAC, MI 48342
FIRST NAMED INVENTOR
John Blancaneaux
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1001-318 7189
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
rmasquelier@patentco.com
serla@patentco.com
dobrusin_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN BLANCANEAUX and FRANCIS MEYER 1
Appeal2018-000201
Application 13/123,387
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 10, 16, 21-24, and 29-40. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
1 L&L Products, Inc. is identified as the real party in interest (Br. 2).
Appeal2018-000201
Application 13/123,387
Appellants claim a process for attaching a component to a honeycomb
structure 7 that comprises placing an insert 1 having a threaded bore 2 into a
cavity 6 formed in the honeycomb structure, heat activating a dry non-tacky
adhesive 11 carried on an exterior surface of the insert in order to securely
bond the insert in the cavity, and attaching a component such as a stud to the
insert (independent claim 10; Figs. 1-7). The claimed process may include
the steps of covering insert 1 with a releasable cover 3 prior to heat
activating adhesive 11 and removing the releasable cover from the insert
after heat activation (remaining independent claim 22; Figs. 1-7).
A copy of representative claims 10 and 22, taken from the Claims
Appendix of the Appeal Brief, appears below.
Claim 10: A process for the attachment of a component to a
honeycomb structure comprising:
i. forming a cavity including an opening in the
honeycomb structure whereby the cavity is formed within one
or more honeycomb cells;
ii. placing an insert, including a base surface connected
to a vertical surface containing a threaded bore adapted to
enable the attachment of the component to the honeycomb
structure, within the cavity, wherein the base surface is parallel
to a plane extending across the opening of the cavity in the
honeycomb structure and the vertical surface extends
perpendicularly from the base surface, wherein the insert is
carrying a dry, not tacky to the touch at room temperature,
activatable adhesive, which is heat activated, upon an exterior
surface of the insert, wherein two sides of the activatable
adhesive in its preactivated state contact the insert at the base
surface and the vertical surface of the insert and expansion of
the activatable adhesive is not immediately upon
commencement of expansion inhibited by the insert in a
direction parallel to the vertical surface of the insert toward the
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Application 13/123,387
opening of the cavity of the honeycomb structure and in a
direction toward a side wall of the cavity of the honeycomb
structure, wherein the activatable adhesive is foamable, the
activatable adhesive includes:
a) one or more polymeric materials,
b) an epoxy resin, and
c) one or more blowing agents;
111. heating to activate the adhesive to securely bond the
insert to the interior walls of the cavity; and
iv. attaching the component to the insert wherein the
component is a hinge, a clip, a handle, a stud, a plug, a lock or
an identification tag to the article.
Claim 22: A process for the attachment of a component to a
honeycomb structure comprising:
i. forming a cavity including an opening in the
honeycomb structure whereby the cavity is formed within one
or more honeycomb cells by removing one or more honeycomb
cells;
ii. placing an insert, including a base surface connected
to a vertical surface containing a threaded bore adapted to
enable the attachment of the component to the honeycomb
structure, within the cavity, wherein the base surface is parallel
to a plane extending across the opening of the cavity in the
honeycomb structure and the vertical surface extends
perpendicularly from the base surface, wherein the insert is
carrying a dry, not tacky to the touch at room temperature,
activatable adhesive, which is heat activated, upon an exterior
surface of the insert, wherein two sides of the activatable
adhesive in its preactivated state contact the insert at the base
surface and the vertical surface of the insert and expansion of
the activatable adhesive is not immediately upon
commencement of expansion inhibited by the insert in a
direction parallel to the vertical surface of the insert toward the
opening of the cavity of the honeycomb structure and in a
direction toward a side wall of the cavity of the honeycomb
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Application 13/123,387
structure, wherein the activatable adhesive is foamable, the
activatable adhesive includes:
a) one or more polymeric materials,
b) an epoxy resin, and
c) one or more blowing agents;
111. covering the insert within the honeycomb structure
with a releasable cover extending beyond an upper end of the
insert so that it covers the interior of the insert;
iv. heating to activate the adhesive to securely bond the
insert to the interior walls of the cavity;
v. removing the releasable cover from the insert;
vi. removing any adhesive that extends beyond the upper
end of the insert post-activation; and
vii. attaching the component to the insert.
Appellants group the dependent claims on appeal with independent
claims 10 and 22 except for dependent claims 21 and 32 which Appellants
state "should be considered separately" (Br. 13). However, the only
arguments submitted for dependent claims 21 and 32 are reiterations of
arguments advanced regarding the independent claims (see id. at 28, 30-32).
Because Appellants have not presented separate arguments specifically
directed to these or any other dependent claims, all dependent claims will
stand or fall with their parent independent claims 10 and 22.
Under 35 U.S.C. § I03(a), the Examiner rejects all claims on appeal
as follows:
independent claim 10 over Lopez (US 3,485,282; Dec. 23, 1969) in
view of Kassa (US 2007/0090560 Al; Apr. 26, 2007) and Cole (US
3,579,942; May 25, 1971), and optionally further in view of Czaplicki (US
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Appeal2018-000201
Application 13/123,387
7,105,112 B2; Sept. 12, 2006) (Final Action 2-8), as well as various
dependent claims over these references alone or in combination with
additional prior art; and
independent claim 22 over Lopez, Kassa, and optionally Czaplicki in
view of either Phelan (US 3,392,225; July 9, 1968) or Fetterhoff (US
5,240,543; Aug. 31, 1993) (id. at 9-13), as well as various dependent claims
over these references alone or in combination with additional prior art.
We will sustain these rejections for the reasons given in the Final
Office Action, the Answer, and below.
Appellants argue that the Examiner has not made sufficient fact
findings for certain features of independent claims 10 and 22 (Br. 16-20,
24--25).
Appellants' argument is not convincing for the reasons detailed by the
Examiner (see, e.g., Final Action 2-13). For instance, the Examiner finds
that Appellants' Specification provides no reason for the gap (i.e., between
the top of the adhesive and the top of the insert as shown in Appellants'
Figure 7) which is responsible for the uninhibited vertical expansion feature
of the independent claims, thus, indicating that the gap results from a mere
change in shape and size of the pre-activated adhesive (id. at 4--5). Based on
this finding, the Examiner concludes that it would have been obvious to
change the shape and size of the pre-activated adhesive shown in Figure 4 of
Lopez so as to result in such a gap (id. at 5). In response, Appellants
"submit[] that this is not merely a change of shape" (Br. 1 7) but do not
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Application 13/123,387
dispute with any specificity the Examiner's underlying finding that the
Specification gives no reason for the gap that results from their adhesive
shape and size. Nor do Appellants explain what unexpected consequence or
advantage arises from the change in shape and size of the adhesive.
Moreover, we observe that some of the independent claim features
identified in Appellants' argument, such as the threaded bore and releasable
cover, are acknowledged by Appellants as known in the prior art (Spec. 14;
Figs. 1-5). Appellants cannot defeat an obviousness rejection by merely
asserting that the cited references fail to teach or suggest elements which are
acknowledged to be known in the prior art. See Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in
a patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.").
Appellants also contend that the Examiner has not provided requisite
motivation for combining the references applied in the rejections of the
independent claims (Br. 21-30).
Appellants' contention lacks persuasive merit. The motivations
articulated by the Examiner for combining the applied references are well
taken and supported by the references themselves (see Final Action 2-13).
For example, an artisan would have been motivated to use the dry non-tacky
adhesive of Kassa in the process of Lopez in order to obtain the benefit of its
established function as urged by the Examiner (id. at 4--5) and contrary to
Appellants' position (Br. 21-22). See KSR Int'! Co. v. Teleflex Inc., 550
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Application 13/123,387
U.S. 398, 417 (2007) (In assessing the obviousness of claims directed to a
combination of prior art elements, the question to be asked is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions."). Similarly, regarding the claimed expansion
feature resulting from the previously discussed gap, Appellants question
what would motivate one skilled in the art to use a smaller amount of
adhesive in Figure 4 of Lopez as proposed by the Examiner (Br. 23). In
response to this question, the applied references reflect that "[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton,"
(KSR, 550 U.S. at 421) and, therefore, would have been motivated to use a
smaller shape/amount of adhesive in order to reduce costs by using the least
amount necessary.
Furthermore, as we previously indicated, Appellants' contention that
an artisan would not have combined certain claim features is undermined by
their acknowledgment that such combined features are known in the prior
art. Appellants acknowledge, for example, that it was known in the prior art
to attach a component to a honeycomb structure using an insert having a
threaded bore and covering the insert with a releasable cover as required by
independent claim 10 and/or independent claim 22 (see Spec. 14; Figs. 1-5).
It is generally prima facie obvious to modify known features to adapt their
known functions to obtain predictable benefits.
CONCLUSION
For the above-stated reasons and those given by the Examiner, we
sustain the§ 103 rejections of claims 10, 16, 21-24, and 29-40.
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Application 13/123,387
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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