Ex Parte Oehler et al

Patent Trial and Appeal Board

Feb 15, 2019

14462906 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/462,906 08/19/2014
60476 7590 02/20/2019
PA TENT DOCKET DEPARTMENT
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Stephen D. Oehler
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.
14-0707-US-NP
(24691-757)
CONFIRMATION NO.
4714
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
USpatents@armstrongteasdale.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN D. OEHLER and
FREDERICK T. CALKINS
Appeal2018-003500
Application 14/462,906
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-16. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision, we refer to the Specification filed August 19, 2014
("Spec."); the Final Office Action dated March 23, 2017 ("Final Act."); the
Advisory Action dated July 11, 2017 ("Adv. Act."); the Appeal Brief filed
September 7, 2017 ("Appeal Br."); the Examiner's Answer dated December
22, 2017 ("Ans."); and the Reply Brief filed February 15, 2018 ("Reply
Br.").
2 Appellant is applicant The Boeing Company, identified as the real party in
interest. App. Br. 1.
3 The first page of the Final Office Action incorrectly indicates that claims
1-20 are rejected. Claims 17-20 were previously withdrawn. App. Br. 1.
Appeal2018-003500
Application 14/462,906
STATEMENT OF THE CASE
The claims are directed to composite sandwich structures for a
vehicle, and aircraft comprising same. Claim 1, reproduced below from the
Claims Appendix, illustrates the claimed subject matter:
1. A composite sandwich structure for a vehicle, said
composite sandwich structure comprising:
a first sheet comprising a first surface and an opposing
second surface, wherein a transverse direction is defined normal
to said second surface of said first sheet;
a second sheet opposite said first sheet; and
a core coupled between said first and second sheets, said
core is formed from a shape memory alloy having an austenite
finish transition temperature within a range of about -35
degrees Celsius to about -10 degrees Celsius, said shape
memory alloy comprises a plurality of web portions that each
extend from said first sheet to said second sheet, said core is
configured to reversibly transform between:
a substantially fully austenite state in response to
said composite sandwich structure being subjected to a
relatively low force applied substantially parallel to the
transverse direction, and
an at least partially martensite state in response to
said composite sandwich structure being subjected to a
relatively high force applied to said composite sandwich
structure substantially parallel to the transverse direction,
wherein each of a plurality of first portions of said core
correspondingly changes shape to accommodate an application
of the relatively high force, such that said core reversibly
deforms.
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Appeal2018-003500
Application 14/462,906
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Elzey et al.
("Elzey")
Widdle, Jr. et al.
("Widdle")
Blohowiak et al.
("Blohowiak")
US 2005/0158573 Al
US 2011/0030380 Al
US 2011/0300358 Al
REJECTIONS
July 21, 2005
Feb. 10,2011
Dec. 8, 2011
The Examiner maintains and Appellant seeks review of the rejection
of claims 1-16 under 35 U.S.C. § 103 4 over Blohowiak in view of Elzey,
and in further view of Widdle.
OPINION
Independent claim 1 recites a composite sandwich structure for a
vehicle; independent claim 9 recites an aircraft comprising a composite
sandwich structure. App. Br. 12, 14 (Claims App.). Claims 1 and 9 are
otherwise identical. See id. Appellant argues claims 1 and 9 together, and
relies on these arguments for patentability of dependent claims 2-8 and 10-
16.
In the Appeal Brief, Appellant provides background on the technology
involved in the appeal:
4 We consider this appeal under the AIA version of the statute because the
application was filed after the March 16, 2013, effective date of the America
Invents Act.
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Appeal2018-003500
Application 14/462,906
In general, SMAs [ shape memory alloys] are capable of being
"snapped" back and forth between two distinct solid shapes
( associated respectively with the austenite and martensite states
of the alloy) by passing the SMA through a well-defined
temperature change. In addition, an SMA may be transformed
from one shape to another by application and removal of
mechanical stress, but only while in the austenitic temperature
range.
[ A ]n SMA is typically transitioned from its martensite phase to
its austenite phase by increasing the temperature of the SMA.
The transition starts at the austenite start temperature As and
completes above the austenite finish temperature Af. Similarly,
an SMA is typically transitioned from its austenite phase to its
martensite phase by decreasing the temperature of the SMA.
That transition starts at the martensite start temperature Ms and
ends at the martensite finish temperature Mf. Therefore, if an
SMA is to be used as a temperature-based actuator, the
heating/cooling source associated with the actuator must be
capable of moving the SMA from above the austenite finish
temperature to below the martensite finish temperature, and
vice versa.
However, when an SMA is in its austenite phase, application of
mechanical stress can transform the SMA to the martensite
phase, despite the fact that the SMA remains above the
martensite start temperature Ms. Notably, this effect only
occurs to the extent the SMA is in the austenite phase to begin
with-if the SMA is below the martensite start temperature Ms,
at least a portion of the SMA will already be in the martensite
phase, and no further phase-based deformation of that portion
due to mechanical stress can occur.
App. Br. 4---6 (citing US 8,800,590 to Gilbertson et al., issued August 12,
2014 ("Gilbertson"), and US 2014/0026679 to Mankame et al., published
January 30, 2014 ("Mankame")).
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Appeal2018-003500
Application 14/462,906
The Examiner finds that claim 1 is unpatentable over Blohowiak in
view of Elzey and further in view of Widdle. Final Act. 2. The Examiner
finds that Blohowiak discloses a composite for an aircraft in which nitinol
sheets (a type of SMA) are sandwiched between first and second fiber
reinforced plies, but is silent as to the austenite finish temperature of the
nitinol, necessitating that one of ordinary skill consult the art in order to
determine an appropriate austenite finish temperature. Id. at 2-3. The
Examiner finds that Elzey teaches SMAs typically have austenite finish
temperatures between about-20QC and about +770QC. Id. at 3. The
Examiner finds that the combination of Blohowiak and Elzey does not teach
a SMA including a plurality of web portions, as recited in claim 1. Id. at 4.
The Examiner relies on Widdle for teaching an SMA actuated aerostructure
comprising a shape memory actuator layer having a fluted shape. Id. The
Examiner concludes that it would have been obvious at the time the
invention was filed to have incorporated Widdle' s fluted shape in the nitinol
layer of the combination of Blohowiak and Elzey.
Appellant argues persuasively that the Examiner errs in assuming that
one of ordinary skill in the art would have an incentive to combine an SMA
shape described as useful for an actuator system (e.g., Blohowiak and
Widdle) with an austenite finish transition temperature of an SMA that is
suitable for a mechanical stress absorption system (e.g., Elzey or the
claimed invention). App. Br. 6. Appellant correctly describes Blohowiak as
concerned with actively morphing vehicle surfaces in a controlled fashion
using thermal inputs, to reduce environmental noise and emissions, reduce
fuel-related operating costs, and improve lift-to-drag during cruise
conditions, and Widdle as concerned with active control of surface shapes to
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Appeal2018-003500
Application 14/462,906
address the problem of reducing noise and drag during flight. Reply Br. 2,
3; see Blohowiak ,r 3; Widdle ,r,r 3--4. Claim 1, in contrast, is drawn to a
composite sandwich that morphs in response to mechanical stress (transverse
impacts). App. Br. 12 (Claims App.). As Appellant explains, the range of
austenite finish transition temperatures claimed (about-35 degrees Celsius
to about -10 degrees Celsius) would inhibit the active, thermally-induced
shape morphing disclosed in Blohowiak at virtually all operating
temperatures of any vehicle, particularly aircraft. Reply Br. 2. In addition,
we note that Blohowiak discloses transforming nitinol from a martensite
structure to an austenite structure by heating the composite to a temperature
of between about 1 lOQF and about 320QF. Blohowiak ,r 15.
The Examiner finds that the Specification does not disclose a specific
composition or treatment process of the SMA, specifically nitinol, which
would have suggested the claimed composite is structurally different from
the nitinol disclosed in Blohowiak and Widdle. Ans. 7-8. In response,
Appellant argues that it was well known in the art how to tailor an SMA to
achieve a preselected austenite finish temperature, quoting Gilbertson:
"manufacturers may alter the alloy composition to achieve different
transition temperatures." Reply Br. 4 (quoting Gilbertson, col. 6, 11. 18-20).
Appellant also argues that the nitinol of the art cited by the Examiner,
having an austenite finish temperature tuned to facilitate active induction of
shape morphing in flight, would already be substantially in the martensite
state at in-flight operating temperatures, and, therefore, would not be capable
of transforming from austenite to martensite in response to transverse
impacts, as required by claim 1. Reply Br. 5.
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Appeal2018-003500
Application 14/462,906
Appellant contends that one of ordinary skill in the art at the time of
the invention would not have been motivated to modify Blohowiak' s
composition to include an SMA with the claimed austenite finish
temperature ( about -3 5 degrees Celsius to about -10 degrees Celsius)
because it would have been impracticable or impossible to reliably cool the
SMA to below the austenite finish temperature in order to trigger the
martensite state. Reply Br. 5.
We agree with Appellant in this regard. Although, as acknowledged
by Appellant, the prior art suggests that the austenite transition temperature
may be adjusted, the Examiner has not provided sufficient reasoning with
rational underpinnings to modify the austenite transition in Blohowiak to the
range recited in claim 1. See KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). When the references cited by the exarniner fail to establish a
prim a facie case of obviousness, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988)
For the reasons above, the Examiner fails to show prima facie
obviousness of claim 1 over the cited references. We do not sustain the
rejection of claim 1. For the same reasons, we do not sustain the rejection of
claims 2-16.
DECISION
The rejection of claims 1-16 is reversed.
REVERSED
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