Ex Parte Dooley et al

Patent Trials and Appeals BoardApr 22, 2019

14082811 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/082,811 11/18/2013 88971 7590 04/24/2019 Hoffman Warnick LLC 540 Broadway 4th Floor Albany, NY 12207 FIRST NAMED INVENTOR Brynn Mary Dooley 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. 20121112-US-NP 8514 EXAMINER GOLDEN, CHINESSA T ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/24/2019 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): ptocommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYNN MARY DOOLEY, YU QI, EDWARD GRAHAM ZWARTZ, and NAN-XING HU Appeal2018-005777 Application 14/082,811 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and MICHAEL G. McMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 1 In explaining our Decision, we cite to the substitute Specification of February 10, 2014 (Sub. Spec.), Final Office Action of August 17, 2017 (Final), Appeal Brief of December 28, 2017 (Appeal Br.), Examiner's Answer of March 22, 2018 (Ans.), and Reply Brief of May 17, 2018 (Reply Br.). Appeal2018-005777 Application 14/082,811 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ I34(a), Appellant2 appeals from the Examiner's decision to reject claims 1-8 and 10-15 under 35 U.S.C. Â§ 103 as obvious over Qi '897 3 in view ofTsotsis4 and adding Qi '421 5 to reject claim 9. 6 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. Claim 12 is illustrative of the subject matter on appeal: 12. A composition of matter comprising: a layer having a metal coated non-woven polymer fiber mesh having pores of a size of from about 1 micron to about 50 microns. Appeal Br. 10 ( claims appendix). The Specification describes forming a metal coating on an electrospun non-woven fiber matrix and melting/annealing to yield a continuous metallic mesh with pores of about 1 micron to about 50 microns. Sub. Spec. ,r,r 37, 56-57. 2 The Appeal Brief fails to identify the real party in interest. In the spirit of 37 C.F.R. Â§ 4I.37(c)(l)(i), we assume Xerox Corporation, the applicant under 3 7 C.F .R. Â§ 1.46, is the real party in interest. 3 Qi et al., US 2012/0224897 Al, published September 6, 2012 ("Qi '897"). 4 Tsotsis, US 2010/0264266 Al, published October 21, 2010. 5 Qi et al., US 2012/0208421 Al, August 16, 2012 ("Qi '421"). 6 Appellant's Appeal Brief does not list any related appeals. However, on April 1, 2019, a panel of the Board decided Appeal 2018-005854, which was brought in Serial Number 14/082,801, an application to Applicant Xerox Corporation with inventive entity overlapping the inventive entity of the present application under appeal. Appeal 2018-005854 addresses a rejection over the same prior art combination we review in this appeal and some of the issues are the same. Appellant's Appeal Brief should have listed Appeal 2018-005854 as a related appeal as required under 37 C.F.R. Â§ 4I.37(c)(l)(ii) as it has a bearing on our decision in this appeal. 2 Appeal2018-005777 Application 14/082,811 OPINION Appellant does not argue any claim apart from the others. Appeal Br. 3-6. We select claim 12 as representative to resolve the issue on appeal. The issue is: Has Appellant identified a reversible error in the Examiner's finding that Tsotsis teaches forming a metal-coated non-woven fabric that may be porous or in the finding of a reason to combine Tsotsis' metal- coating with the non-woven of Qi '897? Appellant has not identified such an error. There is no dispute that, as found by the Examiner, Qi '897 teaches a layer having a non-woven polymer fiber mesh having pores of a size of from about 50 nm to about 50 Âµm, a range of pore sizes that includes the 1 micron to about 50 microns pore sizes of claim 12. Compare Final 10, with Appeal Br. 3-5, and Reply Br. 2--4. The Examiner acknowledges that Qi '897 does not teach coating metal onto the non-woven polymer fiber mesh. Final 10. Tsotsis teaches a laminate structure containing a metal-coated non- woven fabric mesh. Tsotsis ,r,r 5, 27. The Examiner concludes that it would have been obvious to the ordinary artisan to coat metal, as taught by Tsotsis, onto the non-woven fabric of Qi '897 to provide a low-density (lightweight), high-strength, high-modulus, tailorable structure that has exceptional fatigue resistance and excellent thermo-mechanical endurance properties as taught by Tsotsis. Final 10. Appellant does not dispute that Tsotsis teaches forming a metal coating on a non-woven fabric, but contends that the resulting metal-coated non-woven fabric would not have a pore size of about I micron to about 50 3 Appeal2018-005777 Application 14/082,811 microns because Tsotsis teaches away from forming a metal-coated non- woven fabric with pores. Appeal Br. 3--4; Reply Br. 2-3. Appellant further contends that the Examiner's finding of a reason to apply the metal coating of Tsotsis on the non-woven fabric of Qi '897 is lacking. Appeal Br. 5; Reply Br. 3--4. First, we do not agree with Appellant that Tsotsis teaches away from a coated non-woven fabric with the required pore size. Appellant contends that Tsotsis' metal-coated fabrics must be non-porous because Tsotsis terms the structure a "metal-coated" fabric (Tsotsis ,r 1 ), discloses "applying a metal coating onto the fabric to form a metal-coated fabric" (Tsotsis ,r 30), states that "'coating' and 'coated' refer to the covering of the fabric by metal" (Tsotsis ,r 33), and uses "cladding" and "coating" interchangeably (Tsotsis ,r 33). Appeal Br. 3--4. Appellant's argument is not persuasive because it overlooks Tsotsis' teachings indicating that the metal-coated non-woven fabric may be porous. For instance, although Tsotsis discloses that "'coating' and 'coated' refer to the covering of the fabric by metal," Appellant left out the rest of the sentence, which reads "and include incorporation of the metal either into, or onto, the fabric." Tsotsis ,r 33. Further as pointed out by the Examiner, Tsotsis discloses that the metal coating may only partially coat the fibers or fabric. Ans. 15, citing Tsotsis ,r 25. Tsotsis also discloses that the metal coating may be applied to the individual fibers rather than the already formed fabric. Id. And Figure 3 shows a cross-sectional view of an isolated metal-coated fiber 16 from a metal-coated fabric 12 with the metal coating conforming to the individual fibers of the fabric. Tsotsis ,r 22. Thus, Tsotsis suggests it is the fibers of the non-woven that are coated. Where the 4 Appeal2018-005777 Application 14/082,811 thickness of the coating is less than the gap between fibers in the non- woven, there will be pores. That Tsotsis' fabric would have been understood to encompass metal- coated fabrics with pores is further bolstered by the "Background" and "Summary" sections of Tsotsis. Tsotsis ,r,r 2-5. In those sections, Tsotsis indicates that the metal-coated fabric is an improvement over prior art titanium (Ti) foils that "are non-porous and therefore are difficult or impossible to use in liquid-molding processes." Tsotsis ,r 4. For these reasons, we cannot say that Tsotsis teaches away from a metal-coated non-woven polymer mesh having pores. As to the reason for coating the non-woven of Qi '897 with a metal- coating, Qi '897 teaches a non-woven fabric with an average pore size of about 50 nm to about 50 Âµm, which encompasses the pore size of the claim, and Tsotsis teaches a laminate containing a metal-coated non-woven fabric. Applying the metal of Tsotsis to the non-woven fabric of Qi results in a metal-coated non-woven fabric for use in applications requiring the properties of the metal and the properties of the non-woven fabric. When a claim is to a combination that "'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007), quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). One such predictable use is in the laminate of Tsotsis. Tsotsis specifically states that the resulting laminate "can be used to impart strength to composite structures, such as aircraft skin panels of laminate structure." Tsotsis ,r 5. These laminates are tightly bonded to honeycomb layers and 5 Appeal2018-005777 Application 14/082,811 "[t]his structure provides a low-density (lightweight), high-strength, high- modulus, tailorable structure that has exceptional fatigue resistance and excellent thermo-mechanical endurance properties." Tsotsis ,r 12. Although Appellant is correct that the reason the ordinary artisan would have made the combination is based on the improved properties of the laminate rather than the improved properties of the metal-coated non-woven fabric alone, this reason is enough to support the obviousness of making the combination. It is not that the Examiner is ascribing improved properties of a laminate structure to one element of many in the laminate structure, it is that the one element (metal-coated non-woven fabric) contributes to the properties of the entire laminate structure. To get the properties of the laminate, one must include the metal-coated non-woven fabric. A preponderance of the evidence supports the Examiner's finding of a reason to combine the non-woven of Qi '897 with the metal of Tsotsis for use in the laminate of Tsotsis. Appellant does not direct additional arguments to the rejection of claim 9. Appeal Br. 6. For the reasons we state above, Appellant has not persuaded us of a reversible error in the Examiner's rejection of claim 9. CONCLUSION We sustain the Examiner's rejections. DECISION The Examiner's decision is affirmed. 6 Appeal2018-005777 Application 14/082,811 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7