Ex Parte Karem

Patent Trial and Appeal Board

Apr 14, 2016

13372119 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/372,119
24392 7590
FISH & TSANG LLP
ROBERT D. FISH
2603 Main Street
Suite 1000
02/13/2012
04/18/2016
Irvine, CA 92614-6232
FIRST NAMED INVENTOR
AbeKarem
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.
023322.0028US2 3041
EXAMINER
LONEY, DONALD J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
rfish @fishiplaw.com
patents@fishiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABE KAREM
Appeal2014-006828
Application 13/372,119
Technology Center 1700
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a composite laminate. Claim 1 is illustrative:
1. A composite laminate having:
first and second layers;
a laminate thickness tapering at least 60% from a
maximum thickness at an edge of the laminate;
the first layer having a length, a width and a thickness,
wherein the length is greater than the width, and the width is
greater than the thickness, and wherein the thickness
varies by at least 10% along the length; and
the first layer comprising pultruded composite fibers.
Appeal2014-006828
Application 13/372,119
Salkind
The Reference
us 3,782,856
The Rejections
Jan. 1, 1974
Claims 1-9 stand rejected as follows: under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement,
under 35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention and under 35 U.S.C. § 102(b) or§ 103
over Salkind.
OPINION
We affirm the rejection under 35 U.S.C. § 112, second paragraph and
reverse the rejections under 35 U.S.C. § 112, first paragraph,§ 102(b) and
§ 103.
Rejection under 35 U.S. C. § 112, second paragraph
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity.'"
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
Claim 1, which is the sole independent claim, requires "a laminate
thickness tapering at least 60% from a maximum thickness at an edge of the
laminate". "[T]he Applicant concedes that the limitation could be
misconstrued. In response, the Applicant proposes the limitation read 'a
laminate thickness tapering at least 60% from a maximum thickness to an
edge of the laminate' and is willing to make an amendment to that effect"
(Reply Br. 3).
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Appeal2014-006828
Application 13/372,119
Accordingly, we atlirm the rejection under 35 U.S.C. § 112, second
paragraph.
Rejection under 35 U.S. C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)).
Regarding the Appellant's claim term "pultruded composite fibers"
the Examiner asserts that "[t]he specification fails to provide support for the
fibers being of a composite material (e.g. bi-component or core-sheath)"
(Ans. 3). The Examiner points out that Appellant's Specification's
"[p ]aragraph 0026 discloses the fibers are in a composite material (i.e. fibers
and matrix or resin), not that they are made of a composite (i.e. two different
materials)" (id.) and that "[a]ll of the fibers disclosed in the specification
appear to be single component fibers (i.e. graphite, fiberglass, aramid and/or
boron)" (id.).
It is proper to use the Specification to interpret what the Appellant
means by a word or phrase in a claim. See In re Morris, 127 F.3d 1048,
1053-56 (Fed. Cir. 1997).
The Appellant's Specification indicates that "pultruded composite
fibers" refers to a pultruded composite comprising fibers in a matrix or resin,
not to a pultrusion wherein the fibers are made of a composite material
(i-fi-f 14 ("the present inventive subject matter can provide for increased
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Appeal2014-006828
Application 13/372,119
compressive strength in a composite laminate by including a layer with
pultruded fibers"), 26 ("As used herein, 'composite' means engineered
materials comprising two or more constituent materials. Of special
relevance is carbon composites, in which carbon fiber is embedded in a
matrix or resin. . . . A layer of composite material could also
advantageously include pultruded fibers in the form of a pultrusion. All
suitable fibers including graphite, fiberglass, aramid, and boron are
contemplated, as well as all suitable matrix or resin materials."), 29 ("In
preferred embodiments, pultruded fibers in broad thin pultrusion strips are
incorporated into aircraft structure .... A plurality of fibers 510, 512 are
embedded in a matrix or resin 520."), 31 ("These laminates typically
comprise multiple layers or plies of composite with fibers in a resin.")).
Thus, the Examiner has not established that the Appellant's
Specification would have failed to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, the Appellant was in
possession of pultruded composite fibers. Accordingly, we reverse the
rejection under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S. C. § 102(b)
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
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Appeal2014-006828
Application 13/372,119
The Appellant's sole independent claim ( 1) requires a composite
laminate having first and second layers, "the first layer comprising pultruded
composite fibers." 1
Salkind discloses an aerodynamic blade spar assembly comprising
high strength fibers or filaments in a matrix, preferably continuous high
tensile strength fibers preimpregnated with the matrix (col. 4, 1. 67 - col. 5,
1. 12).
The Examiner asserts that "pultruded" is a process limitation (Ans. 7).
The Appellant's Specification discloses (i-f 5):
It is known in the composite materials industry that
pultruded composites exhibit significantly higher compression
strength than typical fibers pre-impregnated with resin (pre-
preg in the industry vernacular) in autoclave cured laminates.
The pultrusion process of tensioning fibers and curing them
under tension raises the compression strength of the material by
over 60%. Pultruded composites also allow lower resin content
and therefore a higher fiber volume fraction than a comparable
pre=preg strr1cture. Higher fiber volume fractions also lead to
higher composite material stiffness and strength per unit
weight.
The Appellant's Specification, therefore, indicates that "pultruded" is a
structural characteristic of the composite, not merely a process limitation.
The Examiner states that "[t]he examiner believes if one used a low,
or mid, quality apparatus to perform this process that one could possibly
obtain fibers with a lesser quality and/or the same properties as the prior art,
absent a showing to the contrary" (Ans. 7-8).
1 The Appellant acknowledges that pultruded stiffeners running top-to-
bottom inside aircraft wings along their length were known in the art
(Spec. i1i16-8; Fig. 3).
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Appeal2014-006828
Application 13/372,119
That speculation does not provide the factual support required for
establishing that Salkind discloses pultruded composite fibers.
For the above reasons we reverse the rejection under
35 U.S.C. § 102(b).
Rejection under 35 U.S. C. § 103
The Examiner provides no obviousness rationale (Ans. 5, 7-8).
Hence, we reverse the rejection under 35 U.S.C. § 103.
DECISION/ORDER
The rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph
is affirmed. The rejections of claims 1-9 under 35 U.S.C. § 112, first
paragraph, written description requirement and under 35 U.S.C. §§ 102(b)
and 103 over Salkind are reversed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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