Ex Parte Kuntz et al

Patent Trial and Appeal Board

Nov 21, 2016

13318856 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/318,856 01/10/2012
23911 7590 11/23/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Julian Kuntz
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.
l 13696.63967US 8956
EXAMINER
LUK, EMMANUEL S
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN KUNTZ and FRANZ STADLER
Appeal2015-006292
Application 13/318,856
Technology Center 1700
Before JAMES C. HOUSEL, MONTE T. SQUIRE and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 16 and 22-29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In our Decision below we refer to the Specification filed April 11, 2011
(Spec.), the Final Office Action mailed June 13, 2014 (Final Act.), the
Appeal Brief filed January 26, 2015 (Appeal Br.), the Examiner's Answer
mailed April 15, 2015 (Ans.), and the Reply Brief filed June 10, 2015 (Reply
Br.).
2 Appellants identify the real party in interest as EADS Deutschland GmbH.
Appeal Br. 3.
Appeal2015-006292
Application 13/318,856
STATEMENT OF CASE
The claims are directed to a device for shaping a workpiece having a
first and second component between which the workpiece to be shaped can
be molded during heating. Spec. 1. Claim 16, reproduced below, is
illustrative of the claimed subject matter:
16. A device for shaping a workpiece, the device comprising:
a first component; and
a second component,
wherein between the first and second component the
workpiece is arranged for molding while heated, and
wherein a configuration and material properties of the first
or second components is selected such that thermal expansion of
the first or second component is different in different directions,
wherein the first or second component, which has a
different thermal expansion in different directions, comprises at
least one layer of carbon fiber reinforced plastic arranged on top
of at least one layer of glass fiber reinforced plastic,
wherein fibers of the at least one layer of carbon fiber
reinforced plastic and fibers of the at least one layer of glass fiber
reinforced plastic are not oriented parallel to each other.
Claims Appendix at Appeal Br. 14.
REJECTIONS 3
The Examiner rejects claims 16 and 22-29 under 35 U.S.C. § 103(a)
as being unpatentable over Satoh4 in view of Tomoko. 5 Final Act. 2.
3 The rejection of claims 16 and 22-29 under 35 U.S.C. § 103(a) as being
unpatentable over Astwood et al. (US2009/0001630 Al, published June 26,
2008) in view of Tomoko and further in view of Satoh has been withdrawn
and is not before us on appeal. Ans. 5.
4 Hajime Satoh, EP 0 415 207 A2, published June 3, 1991 ("Satoh").
5 Tomoko et al., JP 04279331, published October 5, 1002 ("Tomoko").
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Appellants seek our review of the Examiner's rejection of claims 16
and 22-29, but present argument directed to independent claim 16 only and
provide no additional argument as to claims 22-29. Appeal Br. 6-9.
Therefore, we focus our discussion below on claim 16 to resolve the issues
on appeal.
OPINION
The Examiner rejects claim 16 as unpatentable in view of Satoh and
Tomoko. Final Act. 2. The Examiner finds that Satoh teaches a method of
producing a hollow article comprising a fiber reinforced thermoplastic resin
that is formed between a cylindrical mandrel and outer mold. Id. The
mandrel may be reinforced with glass fibers that restrict thermal expansion
and may run parallel and perpendicular to the axis of the mandrel. Id. The
Examiner acknowledges that "Satoh ('207) fails to teach or suggest that the
first component (31) or second component (34) compris[ es] the at least one
layer of carbon fiber reinforced plastic arranged on the at least one layer of
glass fiber reinforced plastic." Id. at 3. The Examiner finds however, that
Tomoko, teaches "a fiber-reinforced resin laminated body (1) to have a
sufficient dispersion of carbon fibers and glass fibers by alternately
laminating the carbon fibers (3) and the glass fibers (2)." Id. According to
the Examiner, Tomoko also teaches that "the glass fiber resin layers (20) and
carbon fiber resin layers (30) that are spread together laterally in multiple
stages in this manner, the reinforced fibers in each layer may form the
same angle ... , or the reinforced fibers in each layer may have a
diagonal laminate symmetrical to the neutral axis." Id. The Examiner
reasons that one skilled in the art would have had reason to modify Satoh to
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include at least one carbon fiber reinforced plastic layer and at least one
glass fiber reinforced plastic layer to "obtain [the] same physical properties
as those for either carbon fiber reinforced plastic or glass fiber reinforced
plastic" and to reduce costs. Id. at 4.
Appellants present multiple arguments in response to the Examiner's
rejection. Appeal Br. 6-9. First, Appellants argue that
[i]n contrast to Satoh's disclosure of using only a single set of
glass fibers to achieve different expansion in different directions,
Appellant's claim 16 requires that the different expansion
characteristics in different directions is achieved with two fiber
reinforced plastic layers with two different types of fibers (i.e.,
glass and carbon fibers) that are arranged so that they are not
parallel with each other.
Id. at 7. Thus, Satoh does not teach a shaping device that has two layers of
different types of fiber reinforced plastic. Id. 6-7.
Appellants fail to persuade us of reversible error. Appellants'
arguments are directed to the teachings of Satoh alone and fail to address the
combined teachings of Satoh and Tomoko as presented by the Examiner.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Rather, "[t]he test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art."
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Second, Appellants recognize that "Tomoko notes that the breaking
strain of carbon fiber reinforced laminates can be improved using glass
fibers, and accordingly discloses a particular method of forming a laminate
that includes both carbon and glass fibers." Appeal Br. 7. But, Appellants
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urge that "Tomoko contains no disclosure of any advantages of replacing an
all glass fiber arrangement, such as the arrangement of Satoh, to include
some carbon fibers." Id.
Appellants fail to identify reversible error. Tomoko teaches, as the
Examiner finds, that "glass fibers have low elasticity, the aforementioned
conventional fiber-reinforced resin laminate has the drawback of not
sufficiently utilizing the merits of high strength and high elasticity possessed
by the carbon fibers." Tomoko i-f4. Tomoko also teaches that "when both
fibers are sufficiently dispersed, there is a drawback that the physical
properties, including the strength and elasticity, etc., decline with an
increase in the ratio of the glass fibers incorporated therein." Id. (emphasis
added). Tomoko aims to strike a balance that maximizes strength, flexibility
and cost efficiencies by utilizing a combination of glass and carbon fibers
(Id. at 5) and therefore provides reason to include carbon fibers in the glass
fiber arrangement of Satoh.
Third, Appellants contend that because Satoh teaches that "different
expansion characteristics in different directions can be achieved using a
single set of glass fibers and when two non-parallely arranged sets of fibers
are employed there will be the same expansion characteristics in different
directions," there would be no need to look for additional teachings beyond
Satoh to achieve the desired results. Appeal Br. 7-8.
Appellants do not persuade us of reversible error. Appellants'
argument presupposes that the reason to combine the references needs to be
identical to those advantages sought by Appellants. But, it has been
established that the reason for combining references does not have to be
identical to that of the applicant in order to establish obviousness. See In re
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Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). "As long as some motivation
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992). Here, Tomoko teaches, as the Examiner finds (Final Act. 3
and Ans. 5---6), that the combination of the glass fibers reinforced plastic and
the carbon fibers reinforced plastic within the laminated body allow for "a
fiber-reinforced resin laminate that makes it possible to obtain nearly [the]
same physical properties as in the carbon fiber-reinforced resin and that can
also improve the breaking tenacity and to reduce the cost." Tomoko i-f 5; see
also id. i-fi-12 and 4. Thus, the Examiner aptly reasons that the skilled artisan
would have reason to modify Satoh to achieve the "improved properties of
strength and elasticity." Ans. 6.
Fourth, Appellants dispute that Satoh and Tomoko are in the same
field of endeavor. Appeal Br. 8. Specifically, Appellants contend that
"Satoh is not in the field of different layers of fiber reinforced plastic." Id.
Appellants' arguments in this regard are not persuasive of reversible
error by the Examiner. Prior art is analogous if it is either: (1) from the same
field of endeavor as the claimed invention; or (2) reasonably pertinent to the
particular problem faced by the inventor. In re Bigio, 381F.3d1320, 1325
(Fed. Cir. 2004); In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA
1979). Thus, in order to be considered analogous art, a prior art reference
that is not from the same field of endeavor as a claimed invention MUST be
"reasonably pertinent" to the problem addressed by the inventor. Prior art is
"reasonably pertinent" when it would "logically commend itself' to an
inventor's attention in considering his problem. In re Icon Health and
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Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007)(citing In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992)); see also MPEP § 2141.0l(a). Here,
both Satoh and the claimed invention are directed to molding a workpiece,
made of a fiber-containing composite, between a first component and a
second component. Final Act. 2-3; Compare Satoh col. 2, 11. 32--41 and col.
16, 1. 15---col. 17, 1. 27 with Spec. i-fi-f l--4. Therefore, Satoh is in the same
field of endeavor. 6 Moreover, because both Satoh and the claimed invention
desire to accomplish uniform thermal expansion so that warpage and
wrinkles do not result in the workpiece being molded and quality of the
resulting product is improved, Satoh is reasonably pertinent to the problem
addressed by Appellants. Compare Satoh col. 6, 1. 58---col. 7, 1. 15, col. 9, 11.
23-33, and col. 16, 1. 55---col. 17, 1. 16 with Spec. i12. Appellants do not
provide any argument specific to the Tomoko reference. Appeal Br. 8.
Accordingly, the Examiner's findings with respect to Tomoko are
uncontroverted.
And finally, Appellants argue that the Examiner's reason for
combining the prior art's teachings, i.e., cost savings, is not supported by the
teachings of Tomoko. Appeal Br. 8. In particular, Appellants contend that
Tomoko "discloses that carbon fibers are more expensive than glass fibers,
6 The Examiner explains that "Satoh and Tomoko are both in the same field
of endeavor, such as device comprising a component composed of a
plurality layers of fiber reinforced plastic, wherein each layers of the fiber
reinforced plastics are oriented in predetermined manner." Final Act. 3.
However, this definition of the field of endeavor is incomplete and focuses
on the invention's structural solution as opposed to the functional purpose
shared by both Satoh and the claimed invention-more fully described by
the Examiner in discussing the express teachings of Satoh. See e.g., Final
Act. 2-3; Ans. 5.
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and accordingly the proposed modification to replace the lower cost glass
fibers of Satoh to include the more expensive carbon fibers of Tomoko
would have increased costs and not reduced costs." Id.
Appellants do not persuade us of reversible error. To begin, improved
cost was but one reason the Examiner offered as an explanation for why the
skilled artisan would have been motivated to combine the teachings of Satoh
and Tomoko to arrive at the claimed invention. As the Examiner explained:
the person of ordinary skilled [sic] art would understand to
modify the device for shaping workpiece of Satoh ('207) with
the combination of the glass fibers reinforced plastic and the
carbon fibers reinforced plastic, in order to utilize/exhibit the
modified device with improved properties of strength and
elasticity (See paragraphs [0004], [0008] of translation of
Tomoko et al. (' 3 31) ).
Ans. 5---6; see also Final Act. 4. Moreover, although carbon fibers may cost
more than glass fibers, including carbon fibers yields certain property
benefits that can be economized. Tomoko i-fi-14and9. Therefore, the
Examiner identified sufficient reason for skilled artisan to combine the
teachings of Satoh and Tomoko to achieve the invention of claim 16.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 16 and 22-29.
DECISION
For the above reasons, the Examiner's rejection of claims 16 and 22-
29 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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