Ex Parte West

Patent Trial and Appeal Board

Aug 30, 2017

12752667 (P.T.A.B. Aug. 30, 2017)

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.
12/752,667 04/01/2010 Colin John West 2733.20US02 2942
24113 7590 08/30/2017
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
FOSTER, NICHOLAS L
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
08/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte COLIN JOHN WEST1
__________________

Appeal 2015-003822
Application 12/752,667
Technology Center 3600
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Action
rejecting claims 1–3 and 6.2 Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Airbus Operations Limited.
Appeal Br. 2.
2 Appellant’s contention that claim 6 is cancelled to advance prosecution
(Appeal Br. 10) is not supported by an amendment filed after the Final
Action to cancel claim 6, as the Examiner correctly notes. Ans. 4.
Appeal 2015-003822
Application 12/752,667

2
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A joint, such as an aircraft joint, the joint comprising two
components fastened together by at least two fasteners and a
sealing material that seals an area of high compression around
each of the fasteners and an area of lower compression in
between the fasteners, in which the sealing material comprises
an at least partially-cured polysulphide sealant and a reinforcing
element, the sealing material when in an uncompressed state
having regions of differing thickness with a constant cross-
section in one direction, wherein thickness is the material
dimension between opposing surfaces of the components of the
joint, the regions of differing thickness being arranged such that
the effective sealing range of the sealing material is greater than
the effective sealing range of a sealing material having the same
mean thickness and the same composition and having a uniform
thickness.
REJECTIONS
Claims 1–3 and 6 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3–5.
Claims 1–3 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over John (US 3,022,870, issued Feb. 27, 1962) and Terauchi
(US 5,390,939, issued Feb. 21, 1995).
ANALYSIS
Claims 1–3 and 6 as being indefinite
Claim 1
The Examiner determined the limitation “[a] joint, such as an aircraft
joint” renders claim 1 indefinite because it is unclear if claim 1 is limited to
an aircraft joint, or if an aircraft joint is merely a non-limiting example of a
“joint” that is being claimed. Final Act. 3–4 (emphasis added); Ans. 2.
Appeal 2015-003822
Application 12/752,667

3
Appellant argues that the mere use of “such as” does not render the
claim indefinite if a skilled artisan can ascertain the meaning in light of the
Specification. Appeal Br. 9 (citing the MPEP). Appellant argues that a
skilled artisan would understand claim 1 to cover joints that include an
aircraft joint but it may include other joints in other contexts. Id. at 9–10.
Appellant discloses the invention as relating to a method of sealing a
joint, in particular, an aircraft interfay joint. Spec. 1:13–14. The method is
applicable to any joint that requires compression of a solid sealing material
of defined thickness, such as aircraft, marine craft, and land-based vehicles.
Id. at 10:7–10. Claim 1 recites “an aircraft joint” as an exemplary joint.
However, the language of claim 1 makes clear that “the joint compris[es]
two components fastened together by at least two fasteners and a sealing
material that seals an area of high compression around each of the fasteners
and an area of lower compression in between the fasteners.” This language
is consistent with the Specification, which discloses the invention as directed
to joints that include two components fastened together by fasteners with a
sealing material in between. See Spec. 13:16–26, Fig. 1. A skilled artisan
would understand that claim 1 is not limited to an aircraft joint but includes
other joints with the claimed features.
The Examiner determined that the phrase “the sealing material when
in an uncompressed state having regions of differing thickness . . . , wherein
thickness is the material dimension between opposing surfaces of the
components of the joint,” is indefinite because it is unclear if Appellant is
claiming a thickness of the sealing material in an uncompressed state or in
an installed state, or claiming the distance between the opposing surfaces of
the components of the joint when in an installed state. Final Act. 4.
Appeal 2015-003822
Application 12/752,667

4
We agree with Appellant that the plain meaning of this limitation is
that the claimed thickness of the sealing material is determined when the
sealing material is “in an uncompressed state.” Appeal Br. 10. We also
agree with Appellant that this thickness of the sealing material is measured
as a dimension that extends between opposing surfaces of the components
that form the joint. Id. Appellant describes this thickness in Figures 2a and
3a where uncompressed sealing materials have thicknesses of 0.6 mm and
0.8 mm, respectively, before they are compressed to their maximum and
fully compressed sealing thicknesses. Spec. 14:5–14, Figs. 2b, 2c, 3b, 3c.
Thus, we do not sustain the rejections of claim 1 for indefiniteness.
Claim 6
Claim 6 depends from claim 1 and recites “[a] sealing material for use
in the joint of claim 1.” The Examiner determined that claim 6 is indefinite
because it is unclear whether “a sealing material” in claim 6 is the same or a
different material than “a sealing material” that is recited in claim 1. Final
Act. 5. As a result, the Examiner determined that it was unclear whether the
Appellant is claiming an additional sealing material in claim 6 or the sealing
material recited in claim 1 with additional features, or an independent claim.
Id. The Examiner reasoned that claim 6 does not further limit claim 6 if
claim 6 recites the same sealing material as claim 1. Id.
Appellant does not present arguments for claim 6, instead arguing that
claim 6 was cancelled. Appeal Br. 10; Reply Br. 4. Appellant is correct that
claims may be cancelled by an amendment that is filed on or after the filing
of an appeal brief. Reply Br. 4. However, there is no evidence that such an
amendment was filed or entered in this application. Ans. 4. Moreover,
Appellant appeals the final rejection of claims 1–3 and 6. Appeal Br. 1, 12.
Appeal 2015-003822
Application 12/752,667

5
We agree with the Examiner that the recitation of “[a] sealing material
for use in the joint of claim 1” is indefinite because it is unclear whether the
sealing material in claim 6 is the same sealing material as recited in claim 1
or a different sealing material. Because claim 6 recites “a sealing material”
without referring to “a sealing material” in claim 1 for antecedent basis, it
appears that claim 6 is reciting a different sealing material than claim 1.
However, the Specification discloses only a single sealing material in each
joint. See Spec. 13:16–15:13, Figs. 1–3. The Specification discloses that
polysulphides are preferred. Id. at 9:23–10:2. Claim 1 recites a sealing
material that comprises “an at least partially-cured polysulphide sealant and
a reinforcing element.” In view of these disclosures, the ambiguous claim
language, and Appellant’s failure to traverse the rejection (Appeal Br. 10;
Reply Br. 4), we summarily sustain the rejection of claim 6 as indefinite.
Claims 1–3 and 6 as
unpatentable over John and Terauchi
Appellant argues claims 1–3 and 6 as a group. Appeal Br. 11–17. We
select claim 1 as representative, with claims 2, 3, and 6 standing or falling
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that John discloses a joint, as recited in claim 1,
except for the sealing material having regions of different thickness in an
uncompressed state. Final Act. 6–7. The Examiner found that Terauchi
discloses a sealing tape/strip used in joints between fastened metal plates
with regions of differing thickness in an uncompressed state, as claimed. Id.
at 7. The Examiner determined that it would have been obvious to include
this feature in John to provide a more effective seal for joints. Id. at 8.
Appeal 2015-003822
Application 12/752,667

6
Appellant argues that John discloses a flat uniform thickness material
that seals in areas of high compression around a fastener whereas Terauchi
discloses a sealing material that only seals in an area of low compression in
a grooved area away from fasteners. Appeal Br. 12–13. Appellant argues
that a skilled artisan would not place the sealing material of John around a
fastener of Terauchi and the sealing material of Terauchi away from the
same fastener, and there would be a gap between the two sealing materials
because there is no information in either reference about providing a sealing
material in the whole of the area away from a fastener. Id. at 14. Appellant
also argues that Terauchi’s sealing material is water expandable and thus is
incompatible with aircraft applications. Id. at 15. Appellant further argues
that a skilled artisan would find no information in either reference as to how
to combine a water expandable sealant of Terauchi with a polysulfide sealant
of John. Id. Appellant argues that a skilled artisan would not use a water
expandable seal of Terauchi on riveted aircraft seams of John. Reply Br. 8.
Appellant’s arguments are not persuasive for the following reasons.
The Examiner does not propose to include John’s seal on Terauchi’s joint or
to include Terauchi’s sealing material in John’s seal, as Appellant argues.
Instead, the Examiner proposes to modify John’s seal to include the shape of
Terauchi’s seal with its embossments (i.e., its areas of increased thickness).
Final Act. 8; Ans. 6, 8. The Examiner’s reason for doing so is supported by
a rational underpinning that the modification would provide a more effective
seal for the joints of John. See Final Act. 8. Appellant’s arguments do not
apprise us of error in the Examiner’s reasoning. Terauchi teaches that the
compression of ridge portions 31b provides a tight seal even with a smaller
thickness of the seal’s base plate 31a. See Terauchi, 6:29–62, Figs. 13–16.
Appeal 2015-003822
Application 12/752,667

7
Appellant also argues that John does not disclose a sealing material
with a reinforcing element as the Examiner found to be the case. Appeal Br.
16. Appellant argues that the Specification discloses the reinforcing agent
forming a web or mesh network around which the sealing material cures and
reinforcing agents include a glass fiber, carbon fiber, or Kevlar, rather than
the silica powder described by John. Id.
The Examiner’s finding that John discloses a reinforcing element as
recited in claim 1 is supported by a preponderance of evidence. It is well-
settled that a reference does not have to disclose a claimed feature using the
same terminology as in a claim in order to anticipate or teach that feature.
Appellant contends that the reinforcing element resists deformation. Appeal
Br. 16. John teaches a silica powder filler that acts as a reinforcing agent by
improving the ability of the sealing material “to resist excessive flow under
continued pressures, and therefore to resist flow-out from the seams and
joints on long standing and under pressure differential.” John, 3:73–4:2;
Ans. 11. John refers to this material as “reinforcing pigments.” John, 4:7.
John’s teachings are consistent with Appellant’s Specification, which
merely recites exemplary materials as glass fiber, carbon fiber, and Kevlar
(Spec. 9:25–10:2) and Appellant’s contentions that the reinforcing agents
“resist deformation under pressure” (Appeal Br. 16). John teaches that its
silica powder reinforcing filler resists deformation under pressure so that it
does not flow out from seams, as discussed above. Appellant recognizes this
teaching of John. Reply Br. 12–13. Claim 1 does not require the reinforcing
element to be formed as a mesh or web. We decline to read such unclaimed
features from the Specification into claim 1. Nor does claim 1 recite any
other features that distinguish over the reinforcing filler of John.
Appeal 2015-003822
Application 12/752,667

8
We also agree with the Examiner that John teaches a joint with two
components fastened together by at least two fasteners with areas of high
and lower compression. Ans. 7, 9. In this regard, John discloses that
When the two layers of metal are riveted together, as indicated
in the accompanying drawing, or otherwise mechanically
combined, as by bolting, permanently clamping, etc., the
intervening film not only adheres firmly to the opposing metal
surface, but also deforms sufficiently to fill completely all
irregularities of or between the two surfaces, while effectively
resisting the forces, set up by riveting or flexing of the seam,
tending to squeeze the sealer from the seam area.

John, 3:15–23.
This disclosure teaches a continuous sealing material that extends
along a seam joined with multiple rivets. The sealing material fills high
compression areas at each rivet and lower compression areas therebetween.
Finally, Appellant argues for the first time in the Reply Brief that the
references do not teach or suggest the claimed greater sealing range. Reply
Br. 9. This argument is untimely and will not be considered as it was made
for the first time in the Reply Brief, not in response to an argument raised in
the Answer, and without good cause being shown. 37 C.F.R. § 41.41(b)(2).
Thus, we sustain the rejection of claims 1–3 and 6.
DECISION
We reverse the rejection of claim 1 as being indefinite, and we affirm
the rejection of claim 6 as being indefinite.
We affirm the rejection of claims 1–3 and 6 under 35 U.S.C. § 103(a).
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)(iv).
AFFIRMED