Ex Parte Karem

Patent Trials and Appeals BoardApr 14, 2016

13372119 - (D) (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. Â§ 134(a) from the Examiner's rejection of claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 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. Â§ 112, first paragraph as failing to comply with the written description requirement, under 35 U.S.C. Â§ 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. Â§ 102(b) orÂ§ 103 over Salkind. OPINION We affirm the rejection under 35 U.S.C. Â§ 112, second paragraph and reverse the rejections under 35 U.S.C. Â§ 112, first paragraph,Â§ 102(b) and Â§ 103. Rejection under 35 U.S. C. Â§ 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). 2 Appeal2014-006828 Application 13/372,119 Accordingly, we atlirm the rejection under 35 U.S.C. Â§ 112, second paragraph. Rejection under 35 U.S. C. Â§ 112, first paragraph For an applicant to comply with the 35 U.S.C. Â§ 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 3 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. Â§ 112, first paragraph. Rejection under 35 U.S. C. Â§ 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). 4 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). 5 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. Â§ 102(b). Rejection under 35 U.S. C. Â§ 103 The Examiner provides no obviousness rationale (Ans. 5, 7-8). Hence, we reverse the rejection under 35 U.S.C. Â§ 103. DECISION/ORDER The rejection of claims 1-9 under 35 U.S.C. Â§ 112, second paragraph is affirmed. The rejections of claims 1-9 under 35 U.S.C. Â§ 112, first paragraph, written description requirement and under 35 U.S.C. Â§Â§ 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. Â§ 1.136(a). AFFIRMED 6