Ex Parte Monro et al

Patent Trial and Appeal Board

Nov 29, 2016

12090011 (P.T.A.B. Nov. 29, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/090,011 07/02/2008 Tanya Monro P34282 8388
7055 7590 12/01/2016
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TANYA MONRO, HEIKE EBENDORFF-HEIDEPRIEM
and PHILIP DAVIES
Appeal 2015-005935
Application 12/090,011
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—8. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2015-005935
Application 12/090,011
Appellants’ invention is best illustrated by independent claim 1,
reproduced below (emphasis added to highlight disputed features):
1. A die for extruding an extrudable material to form a
micro structured fibre preform, the die comprising:
an inlet chamber configured to receive the extrudable
material in a billet form so as to be subsequently heated and
forced through the die, the inlet chamber including wall
portions that taper inwardly in a direction of extrusion;
an open ended extrudate forming chamber configured to
have the micro structured fibre preform formed therein;
a barrier member arranged in the direction of extrusion
between the inlet chamber and the open ended extrudate
forming chamber, the barrier member comprising a plurality of
spaced apart feed channels each independently extending
through the barrier member, from the inlet chamber to the open
ended extrudate forming chamber, without fluid communication
within the barrier member;
a passage forming member extending from the barrier
member substantially in the direction of extrusion so as to
protrude from an outlet face of the barrier member and into the
open ended extrudate forming chamber, wherein the spaced
apart feed channels are arranged with respect to the passage
forming member to allow the extrudable material to
substantially flow about the passage forming member upon
exiting the spaced apart feed channels at the outlet face of the
barrier member to form a corresponding passage in the micro
structured fibre preform.
App. Br. 22 (Claims Appendix).
2
Appeal 2015-005935
Application 12/090,011
Appellants (see Appeal Brief, generally) appeal the following
rejections under 35 U.S.C. § 103(a):
(a) claims 1—8 rejected under 35 U.S.C. § 103 (a) as unpatentable
over Maxwell (WO 02/095460 Al, published November 28, 2002, and
relying on US 2005/003671 Al, published February 17, 2005 as the English
equivalent), Kobayashi (JP4022601 A, published January 27, 1992, relying
on the English translation submitted March 4, 2013 and made of record by
the Examiner in the Office Action of July 8, 2013), Furman (US 4,025,262,
issued May 24, 1977) and Ikedo (JP 02093602 A, published April 4, 1990
and relying on the English Abstract dated March 31, 2014); and
(b) claims 1—8 rejected under 35 U.S.C. § 103 (a) as unpatentable
over Kobayashi, Furman and Ikedo.
In addressing the rejections, Appellants argue independent claim 1
and dependent claims 4—8 separately but present no arguments for dependent
claims 2 and 3. See Appeal Brief, generally. Accordingly, we select
independent claim 1 as representative of the subject matter before us on
appeal. Claims 2 and 3 stand or fall with claim 1. Claims argued separately
will be addressed separately.
OPINION
We have reviewed each of Appellants’ arguments for patentability.
However, we are in agreement with the Examiner that the subject matter of
representative claim 1 is unpatentable. Accordingly, we sustain the
Examiner’s prior art rejections for the reasons explained in the Answer, and
we add the following primarily for emphasis.
3
Appeal 2015-005935
Application 12/090,011
Independent claim 1 is directed to an extrusion die for a process of
making an extruded micro structured fiber preform. App. Br. 5—6.
Rejection (a)1
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 9—14.
Claim 1
Appellants argue Kobayashi does not disclose extruding a
microstructured fibre. App. Br. 11. Appellants additionally argue that
Kobayashi does not disclose a die having an inlet chamber configured to
receive the extrudable material in a billet form. Id. at 12. According to
Appellants, Kobayashi is directed to extruding activated carbon into a
molded article comprising a plurality of longitudinal holes and, given this
different use of the die, there is no reason to modify Kobayashi as to make
microstructure fibers with a reasonable expectation of success in making
such product from a material in billet form. App. Br. 8 and 13; Kobayashi 7,
12-13, 19 (Figure 2).
We are unpersuaded by these arguments. As noted by the Examiner,
Maxwell discloses the use of extrusion dies to make microstructured fiber
preforms. Final Act. 9; Maxwell Figure 1, 14 and 15. Moreover,
Maxwell discloses the use of a die that can provide airholes by simple
absence of the fiber material through the use of either rigid or fluid lumens
(pins) positioned within the die to produce the aforementioned air holes.
1 A discussion of Furman is unnecessary for disposition of this appeal. The
Examiner relied upon this reference to teach heating of the extrudate
material before extrusion. Final Act. 12—13. Appellants rely on arguments
presented when discussing Kobayashi in addressing the Examiner’s reliance
on this reference. App. Br. 15.
4
Appeal 2015-005935
Application 12/090,011
Maxwell 34 and 36. Given the similarities between Maxwell’s disclosed
extrusion die and Kobayashi’s die (Kobayashi Figure 1), Appellants have
not adequately explained why one skilled in the art would not have been
capable of adapting Kobayashi’s die for use in Maxwell’s process of making
a micro structured preform with reasonable expectation of success. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”). While Appellants
argue Kobayashi does not use material in billet form, we note that Maxwell
disclose the use of extrudate material in solid form (particulate form) and
melting the material to obtain the fluid unitary body. App. Br. 12; Maxwell
115. Again, given the similarities between the dies of Maxwell and
Kobayashi, Appellants have not adequately explained why one skilled in the
art would not have been capable of adapting Kobayashi’s extrusion die to
receive extrudate material in a desired known solid form.
Appellants argue Kobayashi does not disclose or suggest an extrudate
forming chamber that is an open ended chamber but instead discloses a
closed extrudate forming chamber (or initial molding space) is essential for
the proper functioning of the extrusion process. App. Br. 1 land 17;
Kobayashi 15—16, 19 (Figure 1). According to Appellants, the initial
molding space in Kobayashi is filled with material 13 and the stopper
member 27 is subsequently removed. App. Br. 17; Kobayashi 15—16.
We are also unpersuaded by these arguments. As noted by the
Examiner, and acknowledged by Appellants in their arguments, Kobayashi
discloses removing the stopper 27 from the die after the initial stage molding
is completed to permit the continued extrusion of the material. Ans. 19;
App. Br. 17; Kobayashi 16—17. Thus, Kobayashi’s die is open ended during
5
Appeal 2015-005935
Application 12/090,011
the extrusion portion of the process. Moreover, the language of claim 1 is
written using the transitional open language comprising and, thus, does not
exclude the use of a stopper in coordination with the claimed open ended
chamber to start the shaping process, as disclosed by Kobayashi.
Appellants argue Ikedo does not disclose or suggest the inlet chamber
including wall portions that are tapered inwardly in the direction of
extrusion. App. Br. 11. According to Appellants, the taper disclosed in
Figures 1 and 2 of Ikedo is a tapering of the passages through element 1
which, at best, corresponds to the purported barrier member 22 in
Kobayashi. Id. at 16.
We also find these arguments unavailing for the reasons presented by
the Examiner. Ans. 20. Moreover, Appellants describe the tapered walls as
forcing the material to be extruded uniformly towards the feed holes. Spec.
12. That is, the tapered walls funnel the material to the feed holes.
Appellants have not adequately explained why one skilled in the art would
not have been capable of providing tapered walls to an extrusion die inlet
chamber to facilitate the feeding of extrudate material into the die.
Appellants do not direct us to any evidence that such tapered walls result in
any unexpected results.
Claims 4—8
With respect to claims 4—6, Appellants argue Kobayashi does not
disclose passage forming members of different sizes, shapes and
arrangements as respectively required by claims 4—6. App. Br. 18—19. With
respect to claims 7 and 8, Appellants argue Kobayashi does not illustrate a
removable feed-hole plate for incorporation into a die. Id. at 19.
6
Appeal 2015-005935
Application 12/090,011
We are also unpersuaded by these arguments. As noted by the
Examiner, Maxwell discloses as known to configure a die for
micro structured fiber preform by varying the size, shape and orientation of
the discrete elements or passage forming members to achieve a desired
product. Final Act. 9; Maxwell Tflf 36—37. With respect to the removable
feed hole plate, one skilled in the art would have been capable of
configuring an extrusion die to have a removable feed hole plate to
accommodate feed hole plates having a variety of shapes and sizes in view
of Maxwell’s disclosure. Maxwell 36—37. Appellants have not
adequately explained why one skilled in the art would not have been capable
of configuring an extrusion die for a desired product in view of Maxwell’s
disclosure.
Therefore, we affirm the Examiner’s prior art rejection under 35
U.S.C. § 103(a) (Rejection (a)) for the reasons presented by the Examiner
and given above.
Rejection (b)
We also affirm the Examiner’s rejection of claims 1—8 under 35
U.S.C. § 103(a) (Rejection (b)) for the reasons presented by the Examiner.
As we discussed above, Appellants have not adequately explained why one
skilled in the art of microstructured fiber preform would not have been
capable of adapting the die of Kobayashi to make a desired product based on
the starting material used. Ans. 18.
Accordingly, we affirm the Examiner’s prior art rejection under 35
U.S.C. § 103(a) (Rejection (b)) for the reasons presented by the Examiner
and given above.
7
Appeal 2015-005935
Application 12/090,011
ORDER
The Examiner’s prior art rejections of claims 1—8 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
8