Ex Parte Dods et al

Patent Trial and Appeal Board

Nov 19, 2012

11676254 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRYAN G. DODS, JOHN MACKE,
JAMES MORRISON, and ROBERT W. SCOTT
____________________

Appeal 2010-008906
Application 11/676,254
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and
BRADFORD E. KILE, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Bryan G. Dods et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from a final rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The invention is directed to a method for drilling holes at precise
locations in composite material structures. Spec., para. [0002].
Appellants’ Figures 1 and 6 are reproduced below:

Figure 1 is a pictorial view of a drilling template 100 including a
vacuum housing 102 that has rigid side skirts 108 and 110 and end skirts 112
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and 114. Spec., para. [0027]. A bottom surface (contact surface 116) of the
rigid side and end skirts is configured to conform to an outer molded surface
of a structure 120. Id. Alignment pins 140 are used to locate and orient the
template 100 upon the molded surface of the structure 120. Id. at para.
[0031]. One or more edge part locator(s) 142 are attached to the vacuum
housing 102 to fit against the edge of structure 120 at precise locations so
that drill template may be located precisely at a pre-defined location relative
to structure 120. Id. at para. [0032]. As shown in Figure 6, an operator 156
operably uses a drill support attachment 134 to assist in guiding a drill bit
132 through an accurately located bushing 130 in the vacuum housing 102.
Id. at paras. [0019], [0030] and [0038]. A hose fitting 128 is connected to
the template 100 to remove drilling fines and debris as holes are drilled in
the work structure 120. Id. at para. [0029].
Independent claim 7, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal:
7. A method of forming a hole in a structure
having an outer mold surface, the method comprising:

providing a drill template having a housing, the
housing comprises a rigid contact surface that conforms
to the outer mold surface, and a drill bushing is formed in
the housing;

locating the drill template onto the structure such
that the contact surface fits and conforms to the outer
mold surface, and such that the drill template is indexed
to a desired position relative to the structure;

connecting a vacuum system to an integral vacuum
port of the drill template;

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inserting a drill bit into the drill bushing;

drilling a hole into the structure using the drill bit
guided by the drill bushing; and

supplying a vacuum to the housing using the
vacuum system.

THE REJECTIONS
Claims 1-17 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over Garcia (US 2003/0170082 A1; pub. Sep. 11, 2003)
and Cato (GB 2 012 043 A; pub. Jul. 18, 1979).
Claim 18 stands rejected as unpatentable 35 U.S.C. 103(a) over
Garcia, Cato and Combs (US 4,952,101; iss. Aug. 28, 1990).

OPINION
Obviousness over Garcia and Cato
Claims 1-11 and 13-161
The Garcia published application for patent discloses a concave
drilling plate for accurately drilling holes in a composite work piece with a
vacuum manifold attached to remove debris during the drilling process.
Garcia 1, para. [0007].
Figures 1, 2, and 3 of the Garcia publication are reproduced below:

1 With respect to claims 1-17, Appellants present a single argument for claim
7, and a separate argument for claims 12 and 17. App. Br. 9-14. We select
claim 7 as illustrative of claims 1-11 and 13-16, and we separately address
claims 12 and 17. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

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The Garcia publication discloses in Figures 1-3 a drilling template 10
including a body 11 with rigid contact end walls 12, side walls 13 and a top
wall 14. Garcia 2, para. [0020]. Attached to the bottom edges of walls 12,
13 is a lip 16 which is placed against the composite structure 100 during
drilling to form a fully or partially sealed interfrace. Id. “A seal or gasket
17 is preferably mounted around the bottom lip of the walls 13, 14 to aid in
sealing the interface between the drilling bar 10 and the composite structure
100 or other work piece.” Id. A vacuum system includes outlets 30 that are
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connected to a vacuum manifold system to remove debris generated during a
drilling process. Garcia 3, para. [0026]. Drilling ports 18 are arranged in a
pair of rows which correspond to a desired positioning of drill holes in the
composite 100 and each of the drill ports preferably includes a bushing 20
for accurately guiding a drill bit 51 during drilling. Garcia 2, para [0021].
Independent method claim 7 calls for providing a drill template
having a housing that comprises a rigid contact surface. The Specification
does not provide a lexicographical definition of “rigid,” which is commonly
understood to mean stiff, firm, unbending2. Spec., passim. We discern
nothing in Appellants’ Specification inconsistent with this ordinary
definition. Consistent with this ordinary meaning, the Specification
discloses that a more rigid template improves stability, suggesting increased
rigidity increases stiffness. Spec., para. [0006]. Thus, claim 7 calls for a
drill template having a housing that includes a stiff, firm, unbending contact
surface.
The Examiner found that Garcia discloses the subject matter of claim
7 with the exception that gasket 17 does not provide a rigid contact surface.
Ans. 3-4. The Examiner concluded that it would have been the simple
substitution of one known element for another to replace Garcia’s contact
surface with a rigid contact surface such as plastic cup 1 disclosed by Cato.
Ans. 4.
Appellants assert that the plastic cup of Cato is not rigid because
“‘rigid’ is an antonym of ‘plastic,’” and for that reason the Examiner failed
to establish a prima facie case of obviousness. App. Br. 11-12.

2 “Rigid: Stiff, firm, unbending,” adj., def.A.I.1., Oxford English Dictionary
(1989) available at www.OED.com, last accessed Nov. 12, 2012.
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Appellants’ assertion that plastic is an antonym for rigid may be
correct when the term “plastic” is used as an adjective, but not when, as
here, it is used as a noun. We agree with the Examiner that the Cato
disclosure includes the concept that the plastic cup is rigid (stiff, firm,
unbending). This fact is confirmed by the disclosure that the cup includes an
aperature to guide a drill bit. Cato 1, ll. 40-47. For the Cato cup to guide a
drill bit the plastic cup must be rigid. Consequently, Appellants’ argument
that Cato’s cup is not rigid as claimed is not persuasive.
Appellants also argue that Garcia teaches away from the proposed
combination in that “[a]dding a rigid material to Garcia's device would
vitiate a purpose of Garcia's device because Garcia specifies that the
compressibility of a gasket [gasket 17] allows the interface to seat against
the drilling surface and conform to minor surface irregularities and
imperfections.” App. Br. 12. Garcia does not, however, “criticize, discredit
or otherwise discourage investigation into the invention claimed” as required
for teaching away. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009).
Garcia discloses that gasket 17 “is preferably mounted around the
bottom lip of the walls 13, 14 [sic 12, 13] to aid in sealing . . . .” Id. at
[0020]. (Emphasis added). In other words, the seal or gasket 17 is preferred
but it is optional and direct contact of the rigid lip 16 with the outer mold
surface of the structure 100 is inherently disclosed. See Ans. 6 (noting that
the gasket is not necessary as evinced by it not being included in Garcia’s
independent claims); Garcia, col. 4 (independent claim 1, not including a
gasket) and col. 5 (claim 11, depending from claim 1 and adding a gasket).
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Thus, contrary to Appellants’ assertion, Garcia’s device can operate without
gasket 17. Appellants teaching away argument is not convincing.
As such, we sustain the rejection of claim 7, and claims 1-6, 8-11, and
13-16 fall with claim 7.
Claims 12 and 17
Claim 12 depends from independent claim 7, and adds, “the drill
template comprises an edge of part locator that conforms to an edge of the
structure and locating the drill template further comprises locating the edge
of part locator against the edge of the structure.” App. Br. 18. Claim 17
depends from claim 13 and contains a similar limitation. Id. at 19. The
Specification describes that vacuum housing 12 may include one or more
edge of part locators 142, intended to fit against an edge of structure 120 for
precisely aligning template 100. Spec., para. [0042]. In other words, the
edge of part locators fit against the structure being drilled to aid in
alignment.
The Examiner found that Figure 1 of Garcia discloses notches (at
either end of side 11) that are capable of receiving clamps for positioning the
edge against the edge of a workpiece. Ans. 4, 7. The Examiner’s finding is
deficient. Claims 12 and 17 do not recite notches capable of receiving
clamps; rather, claims 12 and 17 call for an edge of the part locator that
conforms to the structure. Further, the Examiner found that Garcia need
only be capable of locating the edge as claimed. Ans. 4 and 7. Such
reasoning may be applicable to an apparatus claim, but method claims 12
and 17 call for the step of locating utilizing the edge of part locator and
Garcia contains no such disclosure.
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We agree with Appellants that the Examiner has not established that
Garcia discloses or renders obvious the steps of claims 12 and 17. See App.
Br. 13-14. Accordingly, we do not sustain the rejection of claims 12 and 17.

Obvious over Garcia, Cato, and Coombs
Claim 18
Claim 18 depends from independent claim 7, and Appellants repeat
the arguments for claim 7 without identifying a distinction between the
subject matter of claims 7 and 18. App. Br. 14. For the reasons given with
regard to claim 7, supra, those arguments are unconvincing here as well, and
we sustain the rejection of claim 18.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1-11 and 13-16
under 35 U.S.C. § 103(a) as obvious over Garcia and Cato.
We REVERSE the Examiner’s decision to reject claims 12 and 17
under 35 U.S.C. § 103(a) as obvious over Garcia and Cato.
We AFFIRM the Examiner’s decision to reject claim 18 under
35 U.S.C. § 103(a) as obvious over Garcia, Cato, and Coombs.

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

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