Ex Parte Sanderson et al

Patent Trial and Appeal BoardApr 28, 2016

12801826 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/801,826 06/28/2010 23117 7590 05/02/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Timothy Sanderson 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. SCS-5065-80 7637 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY SANDERSON and PETER BURCHELL Appeal2014-006443 Application 12/801, 826 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL Appellants 1 filed an appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 11, 12, 14--18, and 20-24. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 3 1 Appellants identify the real party in interest as Airbus Operations Limited. Appeal Br. 4. 2 Claims 1-10, 13, and 19 have been withdrawn from consideration. 3 Our decision refers to Appellants' amended Specification (Spec.) filed June 28, 2010, Appellants' Appeal Brief (Appeal Br.) filed December 3, 2013, the Examiner's Answer (Ans.) mailed February 26, 2014, and Appellants' Reply Brief (Reply Br.) filed April 23, 2014. Appeal2014-006443 Application 12/801,826 STATEMENT OF THE CASE The subject matter on appeal relates to methods of filling a void between two structural components (see, e.g., claims 11 and 17). Appellants disclose that voids have been a common problem in aviation between structural components. Spec. p. 1, 11. 7-8. Voids occur when a fit between structural components is not sufficiently tight to permit a good interface. Spec. p. 1, 11. 8-10. Appellants disclose a number of conventional methods to address such voids but the methods are time consuming and expensive. Spec. p. 1, 1. 13 top. 2, 1. 5. Appellants disclose a shim for filling a void that is easy to handle, can be used for various void thicknesses, is quick to cure, and does not require additional bonding or fixing steps. Spec. p. 2, 11. 22- 30. Claim 11 is illustrative: 11. A method of filling a void between two structural components each component having at least a partial mating surface, said void existing when said mating surfaces are joined together in a predetermined orientation, the method comprising: attaching an adjustable shim to said mating surface of one of the components, wherein the adjustable shim comprises a stack of plies comprising plastic material reinforced with a three-dimensional fibre layer, the plastic material flowable under compressive force prior to cure for adjusting the thickness of the shim; after attaching said shim, aligning the two components to said predetermined orientation to compress the shim and fill said void between the two components; and curing the shim with said components in said predetermined orientation. Claims Appendix at Appeal Br. 3 1. 2 Appeal2014-006443 Application 12/801,826 The claims on appeal stand rejected as follows: 4 (1) Claims 11, 12, 14--18, and 20-24 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement; (2) claims 11, 12, 14--18, and 20-24 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite; (3) claims 11, 12, 14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. Â§ 102(b) as being anticipated by Gerhard; 5 (4) claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view of Padmanabhan; 6 (5) claims 11, 12, 14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view ofDow; 7 and (6) claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and Dow and further in view of Padmanabhan. 4 The following rejections have been withdrawn by the Examiner: the rejection of claim 11 under 35 U.S.C. Â§ 112, first paragraph, because the language "at least a partial mating surface" fails to comply with the written description requirement; the rejection of claim 11 under 35 U.S.C. Â§ 112, first paragraph, because the language "with said components in said predetermined orientation" fails to comply with the written description requirement; the rejection of claim 17 under 35 U.S.C. Â§ 112, first paragraph, because the language "re-aligning the two components to said predetermined position" fails to comply with the written description requirement; the rejection of claim 11 under 35 U.S.C. Â§ 112, second paragraph, due to the language "partial mating surface" being indefinite; and the rejection of claim 11 under 35 U.S.C. Â§ 112, second paragraph, due to the language "said void existing when said mating surfaces are joined together" being indefinite. Ans. 2-3. 5 Gerhard et al., US 6,881,374 B2, issued Apr. 19, 2005 ("Gerhard"). 6 Padmanabhan, US 6,179,942 Bl, issued Jan. 30, 2001. 7 Dow, US 4,837,065, issued June 6, 1989. 3 Appeal2014-006443 Application 12/801,826 Restriction Requirement ANALYSIS Appellants request review of the Examiner's restriction requirement and interpretation of claims 1, 11, and 1 7. Appeal Br. 11 and Reply Br. 2. This matter is properly raised by a petition under 3 7 C.F .R. Â§ 1.181. 37 C.F.R. Â§ 1.144 (2013). Petitionable matters are not appealable to the Patent Trial and Appeal Board. In re Berger, 279 F.3d 975, 984--985 (Fed. Cir. 2002) (citing Jn re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see also MPEP Â§ 1201. Moreover, claim 1 has been withdrawn from consideration and is not before us on appeal. Rejection under 35 USCÂ§ 112, First Paragraph Claims 11, 12, 14--18, and 20-24 are rejected under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. Appellants separately argue claims 11, 12, 17, and 18. Therefore, we separately address these claims under the Examiner's rejection below. The remaining claims under this rejection stand or fall with the claim from which they depend. Claim 11 In the rejection of claim 11, the Examiner finds Appellants' Specification is silent with regard to a void existing when "mating surfaces are joined together." Ans. 4. The Examiner finds the Specification discloses a void is present when components are to be joined together but the void is filled when the components are joined together. Ans. 4 and 9. The test for sufficiency of a written description is whether the disclosure "'clearly allow[s] persons of ordinary skill in the art to recognize 4 Appeal2014-006443 Application 12/801,826 that [the inventor] invented what is claimed."' Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). The disclosure must "reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." 598 F.2d at 1351. Possession means "'possession as shown in the disclosure"' and "requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art." Id. Appellants assert one of ordinary skill in the art would understand Appellants possessed the claimed subject matter. In particular, Appellants cite page 1, lines 7-12 of Appellants' Specification, which discloses the problem of voids existing because of imperfect mating surfaces. Appeal Br. 13. Appellants further cite page 2, lines 14--15 of the Specification, which discloses Appellants' "method of filling a void between two structural components to be joined together." Appeal Br. 13 and Reply Br. 3. Page 5, lines 4--6 of the Specification also discloses aligning a rib 1 8 and a cover 2 "'to determine the extent of the void between the two components which is to be filled when the components are joined."' Reply Br. 6-7. We agree Appellants' Specification reasonably conveys to one of ordinary skill in the art that Appellants possessed the claimed subject matter. The Specification discloses a void can exist between structural components before a shim is placed between the structural components to fill the void. 8 Regardless of the convention used by the Examiner and Appellants, we adopt for this decision the convention of identifying structural features in drawings using reference numerals in bold-face font. 5 Appeal2014-006443 Application 12/801,826 Although page 5, lines 4--6 of the Specification uses the term "aligned" instead of 'joined" to describe bringing the rib 1 and cover 2 together to determine the extent of a void between the two components, this description, as well as the description of the problem with voids between structures in the prior art on page 1 of the Specification, permit one of ordinary skill in the art to recognize that Appellants possessed a method in which a void initially exists when mating surfaces of two structural components are joined together, as recited in claim 11. As a result, the Examiner reversibly erred in rejecting claim 11 under 35 U.S.C. Â§ 112, first paragraph for failing to meet the written description requirement and we do not sustain the Examiner's rejection. Claims 12 and 18 The Examiner rejects claims 12 and 18 for lacking support in the written description because claims 12 and 18 each recite that the plastic material of an adjustable shim is at least one of a thermoplastic material and a thermosetting plastic material. Ans. 4. The Examiner finds the Specification discloses the plastic material can be a thermoplastic material or a thermosetting material. Ans. 4. Appellants contend the Specification discloses materials in addition to thermoplastic and thermosetting materials, referencing the disclosure of the fibre layers of the adjustable shim being woven carbon fibres at page 6 of the Specification. Appeal Br. 15-16 and 17 and Reply Br. 7-8 and 10. Appellants' arguments are not persuasive. Because claims 12 and 18 use the language "at least one of," the scope of claims 12 and 18 includes the plastic material being both a thermoplastic material and a thermosetting material. Appellants have not rebutted the Examiner's determination that 6 Appeal2014-006443 Application 12/801,826 the Specification does not reasonably convey to one of ordinary skill in the art that Appellants possessed a plastic material including both a thermoplastic material and a thermosetting material. As determined by the Examiner, carbon fibers are not a thermoplastic or thermosetting material. Ans. 11. Moreover, the disclosure of carbon fibers regards the material of the fibre layer of the adjustable shim, not the plastic material of the adjustable shim. Therefore, we sustain the Examiner's rejections of claims 12 and 18 under 35 U.S.C. Â§ 112, first paragraph, for not complying with the written description requirement. Claim 17 In the rejection of claim 17, the Examiner finds the Specification is silent with regard to "aligning said structural components to a predetermined orientation and determining the extent of said void." Ans. 4. The Examiner finds the Specification mentions "predetermined orientation" at page 2, lines 14--21 only when a shim is present and the void is absent. Ans. 4. The Examiner further finds page 5, lines 2-12 of the Specification disclose initially orienting two components to determine the extent of a void, attaching a shim to one of the two components, and orienting the two components to compress the shim between the two components but the "predetermined orientation" is disclosed only for the final step of orienting the components and compressing the shim, not for the initial alignment of the two components to determine the extent of the void. Ans. 12. Appellants argue one of ordinary skill in the art would understand the alignment between the structural components when aligning the components to determine the extent of a void is the same as the alignment when 7 Appeal2014-006443 Application 12/801,826 compressing the shim. Appeal Br. 16-17 and Reply Br. 9-10. Appellants' argument is persuasive. The Examiner has not shown that the orientation of the structural components in the alignment step to determine the extent of the void and the orientation of the structural components to compress a shim and fill a void differ from one another. Indeed, it is understandable for the two orientations to be the same so the shim may perform its function of filling the extent of the void, as determined when the structural components are initially aligned before the shim is placed between the structural components. As a result, we do not sustain the Examiner's rejection of claim 17 under 35 U.S.C. Â§ 112, first paragraph for failing to meet the written description requirement. Rejections under 35 US. C. Â§ 112, Second Paragraph Claims 11, 12, 14--18, and 20-24 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. For the reasons given below, we will not sustain this rejection. We separately address below the claims discussed in the Examiner's rejection. Claims 11 and 1 7, "predetermined" The Examiner rejects claims 11 and 17 because the language "predetermined" is indefinite. Ans. 5. The second paragraph of 35 U.S.C. Â§ 112 requires the specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. Â§ 112 i-f 2 (2011). "As the statutory language of 'particular[ity]' and 'distinct[ ness]' indicates, claims are required to be cast in clear-as 8 Appeal2014-006443 Application 12/801,826 opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Exact precision is not required. The test for determining the question of indefiniteness may be formulated as whether the claims "set out and circumscribe a particular area with a reasonable degree of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971 ). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. The Examiner has not shown that claims 11 and 17 do not point out and distinctly claim the invention with a reasonable degree of precision and particularity, as required by the proper test for indefiniteness. The Examiner cites Joseph E. Seagram & Sons, Inc. v. Marzall, 180 F.2d 26 (D.C. Cir. 1950) to support the rejection but does not explain why the language "predetermined" of claims 11 and 1 7 does not point out and distinctly claim the invention with a reasonable degree of precision and particularity. Ans. 5 and 14--15. Here, "predetermined" refers to the orientation between structural components and includes the final alignment between the structural components when they are joined together with the shim filling the void between the structural components. As discussed above, it is reasonably clear that the orientation of the structural components in the alignment step for determining the extent of the void and the orientation of the structural components to compress a shim and fill the void are the same. Indeed, the Examiner states at page 15 of the Answer "it is noted that ... it may be clear that the mating surface orientation is determined beforehand." In view of this, one of ordinary skill in the art would readily understand that this 9 Appeal2014-006443 Application 12/801,826 orientation between the structural components, which includes the final orientation, would have been determined beforehand. Although the Examiner determines that "it is not clear what (prior) event is being referenced in the claims" (Ans. 15), the Examiner does not explain why the use of "predetermined" refers to a prior event other than that the mating surface orientation has been determined beforehand. Therefore, the language "predetermined" is reasonably precise and particular in claims 11 and 17, especially when considering the context of the claims, including their preambles. As a result, we do not sustain the Examiner's rejection of claims 11 and 17 under 35 U.S.C. Â§ 112, second paragraph, as indefinite for using the language "predetermined." Claim 1 7, "determining the extent of said void" The Examiner rejects claim 17 by determining the language "the extent of said void" lacks antecedent basis and is indefinite. Ans. 5. The Examiner finds claim 17 does not previously recite an "extent," which may refer to various parameters of a void. Ans. 16. The Examiner also determines that it is not clear what parameter (e.g., thickness, width, length, or other parameter) "the extent" references. Ans. 5. The Examiner further determines that the language "determining the extent of said void" is not limited to a more particular type of determination, such as a calculation, measurement, guessing, estimation, or other type of determination. Ans. 17. Appellants contend "a 'void' inherently has an 'extent,' i.e., a void is a space and that space is bounded by an 'extent'," and therefore the language "the extent of said void" has antecedent basis, citing MPEP Â§ 2173.05( e ). Appeal Br. 19--20. In addition, Appellants offer a dictionary definition for 10 Appeal2014-006443 Application 12/801,826 "extent" as being "'the range over which something extends."' Id. Appellants further assert the language of claim 17 is simply broad and Appellants' Specification discloses using an adjustable shim having a thickness greater than the void. Appeal Br. 20; Reply Br. 11-12. Appellants' argument is persuasive. As the example discussed in MPEP Â§ 2173 .05( e) of a sphere inherently having a surface, we similarly determine that one of ordinary skill in the art would understand that a void inherently has an "extent." Therefore, "the extent of said "void" does not lack antecedent basis. Moreover, the mere breadth of the language "extent" does not render it indefinite. As stated in In re Gardner, "[b ]readth is not indefiniteness." 427 F.2d 786, 788 (CCPA 1970). Although various parameters, including volume and thickness, may be needed to define the "extent" of a void, the extent itself refers to a single, inherent concept of the bounds of the space defined by the void. Therefore, we do not sustain the Examiner's rejection of claim 17 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Rejection under 35 USCÂ§ 102 Claims 11, 12, 14, 16-18, 20, 21, 23, and 24 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Gerhard. The dispositive issue on appeal for the anticipation rejection is whether Gerhard discloses an adjustable shim, as recited in claims 11 and 17. The Examiner finds Gerhard discloses a method of filling a void between two structural components by attaching a shim to a mating surface of one of the components, aligning the two components so as to compress 11 Appeal2014-006443 Application 12/801,826 the shim, and curing the shim. Ans. 6. In particular, the Examiner finds laminae 214A, 214D disclosed by Gerhard serve as two structural components and the combination of two laminae 214B, 214C in between laminae 214A, 214D serves as an adjustable shim. Ans. 6. Appellants contend Gerhard doesn't disclose a shim. Appeal Br. 21. Appellants define a "shim" as "'a thin often tapered piece of material (as wood, metal, or stone) used to fill in space between things (as for support, leveling, or adjustment of fit)"' 9 and assert Gerhard does not disclose a shim within this ordinary meaning of "shim." Appeal Br. 21-22. The Examiner does not contest the ordinary meaning of "shim" asserted by Appellants but finds the laminae 214B, 214C of Gerhard fall within the ordinary meaning of "shim" cited by Appellants. Ans. 18-19. Appellants' arguments are persuasive. We construe "shim" in claims 11 and 17 to have the ordinary meaning asserted by Appellants. Gerhard discloses a method in which a layered structure 212 or layered arrangement of lamina 214 is inserted into an apparatus 200 that conveys the structure or layered arrangement through zones to form a composite structure 202. Gerhard col. 3, 11. 25-26 and col. 5, 11. 26-33 and 53-54. The laminae 214A, 214B, 214C, 214D cited by the Examiner are individual lamina of the layered arrangement of lamina 214. Gerhard col. 6, 11. 17-21. Laminae 214A, 214B, 214C, 214D of Gerhard are not used "for support, leveling, or adjustment of fit" but are layers stacked together to form a composite structure 202 via the apparatus 200 of Gerhard. Nor does Gerhard disclose a 9 Merriam-Webster, Inc., Webster's Ninth New Collegiate Dictionary, 1086 (1988). 12 Appeal2014-006443 Application 12/801,826 shim being used in the manner recited in the methods of claims 11 and 17. For the reasons described above, we do not sustain the Examiner's Â§ 102(b)rejectionofclaims 11, 12, 14, 16-18,20,21,23,and24over Gerhard. Rejections under 35 US.C. Â§ 103 The Examiner rejects claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view of Padmanabhan; claims 11, 12, 14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view of Dow; and claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and Dow and further in view of Padmanabhan. The Examiner's reliance on the remaining prior art of record does not cure the deficiencies discussed above with regard to Gerhard. Therefore, we do not sustain the Examiner'sÂ§ 103 rejections. DECISION On the record before us: A. The Examiner's rejection of claims 11, 14--17, and 20-24 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement is reversed; B. the Examiner's rejection of claims 12 and 18 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement is affirmed; C. the Examiner's rejection of claims 11, 12, 14--18, and 20-24 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite is reversed; 13 Appeal2014-006443 Application 12/801,826 D. the Examiner's rejection of claims 11, 12, 14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. Â§ 102(b) as being anticipated by Gerhard is reversed; E. the Examiner's rejection of claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view of Padmanabhan is reversed; F. the Examiner's rejection of claims 11, 12, 14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and further in view of Dow is reversed; and G. the Examiner's rejection of claims 15 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gerhard and Dow and further in view of Padmanabhan is reversed. 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)(l ). AFFIRMED-IN-PART 14