Ex Parte Blancaneaux et alDownload PDFPatent Trial and Appeal BoardSep 24, 201813123387 (P.T.A.B. Sep. 24, 2018) Copy Citation 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 2 Appeal2018-000201 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 3 Appeal2018-000201 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 4 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 5 Appeal2018-000201 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 6 Appeal2018-000201 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. 7 Appeal2018-000201 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 8 Copy with citationCopy as parenthetical citation