Ex Parte Wheatley

Patent Trial and Appeal Board

Nov 13, 2012

12212110 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/212,110 09/17/2008 Donald E. Wheatley 8454-000003/US 9729
27572 7590 11/14/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
11/14/2012 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 DONALD E. WHEATLEY
____________

Appeal 2011-008168
Application 12/212,110
Technology Center 1700
____________

Before HUBERT C. LORIN, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL

Donald E. Wheatley, the Appellant,1 seeks our review under 35
U.S.C. § 134(a) of a final rejection of claims 1-3 and 7-13. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The Appellant identifies the real party in interest as “Fortess Stabilization
Systems.” Appeal Brief filed June 24, 2010 (“App. Br.”) at 2.
Appeal 2011-008168
Application 12/212,110

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STATEMENT OF THE CASE

The invention described in the subject application relates to a woven
fiber reinforcement material for use in reinforcing structures such as
concrete walls and other concrete structures. Specification (“Spec.”) ¶¶
[0002], [0004].
Claim 1, which is representative of the subject matter on appeal, is
reproduced below:
1. A woven fiber reinforcement material, comprising:
a plurality of fiber bundles extending generally parallel to
one another in a longitudinal direction and spaced laterally from
one another by at least 1/32 of an inch, said fiber bundles being
selected from the group consisting of carbon fibers, Kevlar,
poly-parapheneylene [sic] tetraphthalamide, para-aramid nylon,
aromatic polyamide and combinations thereof;
a first transverse thread extending in a continuous
serpentine pattern on a first side of said plurality of fiber
bundles;
a second transverse thread extending in a continuous
serpentine pattern on a second side of said plurality of fiber
bundles; and
at least one connecting thread corresponding to each one
of said plurality of fiber bundles, said at least one connecting
thread diagonally crossing the first and second transverse
threads and securing said first and second transverse threads to
said one of said plurality of fiber bundles at a plurality of
longitudinally spaced locations.
App. Br. 21 (Claims App’x).
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In an Examiner’s Answer mailed September 15, 2010 (“Ans.”), the
Examiner modified the statement of the final rejection2 as follows: “Claims
1-3 and 7-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Brown US Patent No. 6,263,629 B1[3] which incorporates by reference
Hendrix et al. US Patent No 5,836,715,[4] in view of Stevenson et al. US
Patent No. 6,056,479.[5]” Ans. 2. The Examiner designated the modification
as a new ground of rejection. Id. at 11. In response to the new ground of
rejection, the Appellant filed a Reply Brief on January 4, 2011 (“Reply
Br.”).

DISCUSSION

The Appellant submits arguments under various subheadings
identifying certain sets of claim(s). To the extent that these sets of claim(s)
have been argued separately pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we
address them separately below. Comments that constitute a skeletal
argument that a reference does not disclose or suggest a particular limitation
is not an argument in support of the separate patentability of a claim within
the meaning of the rule and therefore need not be addressed. In re Lovin,
652 F.3d 1349, 1356-57 (Fed. Cir. 2011).

2 Final Office Action mailed March 18, 2010 at 2.
[3] Brown issued July 24, 2001.
[4] Hendrix issued November 17, 1998.
[5] Stevenson issued May 2, 2000.
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Application 12/212,110

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Claims 1 & 10
We select claim 1 as representative of these two claims. Claim 10
stands or falls with claim 1.
The Examiner found that Brown describes a structural reinforcement
member used for reinforcing products formed of concrete or asphalt. Ans.
3-5. The Examiner acknowledged that, in contrast to claim 1, “Brown does
not specifically recognize that the first and second transverse thread extend
continuously on a first and second side of the longitudinal fibers” and “does
not teach for the first and second transverse threads to be diagonally crossed
by a pair of connecting threads in an interlacing configuration.” Id. at 6.
The Examiner concluded, however, that a person of ordinary skill in the art
would have found the claimed subject matter obvious in view of the
collective teachings of Brown, Hendrix, and Stevenson as well as the
common knowledge in the art. Id. at 6-7, 9.
The Appellant contends that the Examiner failed to articulate how the
teachings of Hendrix are to be combined with those of Brown. Reply Br. 4-
5. The Appellant further contends that a person of ordinary skill in the art
would not have combined Brown, Hendrix (which refers to U.S. Patent
4,242,779 to Curinier issued January 6, 1981), and Stevenson because
Brown’s use of a thermosettable B-stage resin and Hendrix’s disclosure of
“the concept of a non-woven gridwork that would cure in contact with hot
asphalt” are “incompatible” with the weave process described in Stevenson,
i.e., “the disclosures of Brown, Hendrix and Curinier . . . all teach away from
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Application 12/212,110

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incorporating gridwork with a weaving process or a woven article.” Id. at 7-
8.
Thus, a dispositive issue arising from these contentions is:
Did the Appellant show that the Examiner erred in failing to articulate
a reason with some rational underpinning that would have prompted a
person of ordinary skill in the art to combine the prior art references in the
manner claimed?
The Appellant has failed to demonstrate reversible error on the part of
the Examiner. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Appellant does not explain with any reasonable degree of
specificity why the Examiner’s factual findings at pages 4 and 5 of the
Answer regarding the scope and content of Brown’s disclosure are incorrect.
Nor does the Appellant dispute the Examiner’s findings at page 6 of the
Answer that “[i]t is well known in the art of weaving to maintain the threads
continuously and maintain the threads continuously and in a serpentine
shape in order to keep the ends neatly” and that “[w]eaving of weft materials
is commonly done with a continuous yarn.” Rather, as indicated above, the
Appellant asserts – without supporting evidence – that Brown’s teachings
regarding the use of a thermosettable B-stage resin is incompatible with the
weave process described in Stevenson.
The Examiner correctly found, however, that Brown does not require
the structural reinforcing member to be impregnated with the thermosettable
resin, Ans. 10, and therefore the Appellant’s argument fails at the outset.
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Specifically, Brown’s claim 1 describes a structural member that does not
recite a thermosettable B-stage resin. Col. 11, ll. 25-50. Brown’s claim 8
depends from claim 1 and further recites the use of a thermosettable B-stage
resin. Col. 12, ll. 6-12. These facts support the Examiner’s finding that
Brown’s claim 1 describes a gridwork that does not include a thermosettable
resin. Indeed, the Examiner’s finding is also consistent with other parts of
Brown’s disclosure, which states:
The gridwork 10 may be impregnated substantially throughout
with a thermosettable B-stage resin so as to interlock the
strands at their crossover points and maintain the gridwork in a
semi-flexible state which permits the gridwork to conform to
the shape of the product to be reinforced.
Col. 7, ll. 7-12 (emphasis added). The phrase “may be” would have
indicated to one skilled in the relevant art that impregnation with a
thermosettable B-stage resin is optional. For these reasons, the
Appellant’s argument based on the alleged incompatibility of the
thermosettable resin with Stevenson’s weave process is based on an
incorrect understanding of Brown’s disclosure.
We also find no merit in the Appellant assertion that Brown is non-
enabling with respect to a gridwork that does not include a thermosettable B-
stage resin. Reply Br. 9. The burden of proving that a reference disclosure
is nonenabling rests on the applicant. In re Sasse, 629 F.2d 675, 681 (CCPA
1980). Naked assertions amounting to mere attorney argument are
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insufficient to satisfy the Appellant’s burden of proof. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
We also find no error in the Examiner’s position that Hendrix would
have prompted a person of ordinary skill in the art to impregnate a gridwork
after it has been laced. Ans. 9. As discussed above, Brown teaches that
impregnation with a thermosettable B-stage resin provides the benefits of
interlocking the strands of the gridwork at their crossover points and
permitting the gridwork to conform to the shape of the product to be
reinforced. Col. 7, ll. 7-12. Stevenson teaches the provision of yarns woven
in an interlacing diagonal configuration to prevent slipping and displacement
of weft and warp yarns as well as to increase the strength of the junctions.
Col. 9, ll. 56-62; Fig. 5. Hendrix teaches that after a gridwork is produced,
the gridwork may be impregnated with a thermosettable resin that is capable
of being heated to cure to a B-stage. Col. 7, ll. 13-21; Fig. 6. Thus, it would
have been obvious to a person of ordinary skill in the art to impregnate an
interlaced gridwork with a thermosettable resin in view of the collective
teachings of Brown, Stevenson, and Hendrix in order to obtain the known
benefits of a thermosettable resin cured to the B-stage. “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag. Pro, Inc., 425 U.S.
273, 282 (1976)).
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The Appellant’s argument that the teachings of the prior art references
are “incompatible” is unpersuasive. As stated by the Examiner at page 11 of
the Answer, one cannot show nonobviousness by attacking references
individually where the rejection is based on the collective teachings of the
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In this case, the Appellant has not directed us to evidence showing
that a person of ordinary skill in the art would have been incapable of
producing a gridwork based on the collective teachings of the prior art
references. Although Brown, Hendrix, and Stevenson do not describe
identical gridworks, it would have been within the level of the ordinary skill
to make ordinary adjustments to produce a gridwork based on the collective
teachings of the prior art references. KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
We have considered the Appellant’s other arguments but do not find
any of them persuasive to demonstrate reversible error.
Claims 2 & 13
With respect to claims 2 and 13, the Appellant relies on the same
arguments offered for claim 1. Reply Br. 12-13. Therefore, we uphold the
rejection of claims 2 and 13 for the same reasons given for claim 1.
Claim 3
Claim 3 depends from claim 1 and recites that the “woven fiber
reinforcement material is coated in epoxy to rigidify the material.” With
respect to Brown’s embodiment in which a thermosettable resin is used, the
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Examiner found that Brown explicitly describes an epoxy resin as a
thermosettable resin. Ans. 8.
We find no error in the Examiner’s factual finding. Brown discloses:
A B-stage resin is a thermosetting type resin which has
been thermally reactive beyond the A-stage so that the product
has only partial solubility in common solvents and is not fully
fusible even at 150°-180° F. Suitable resins include epoxy,
phenolic, melamine, vinyl ester, cross linkable PVC, and
isophthalic polyester. A common characteristic of all of these
resins is that they are of the thermoset family, in that they will
cross link into a rigid composite, which when fully cured cannot
be resoftened and remolded. They also have the capability to
be “B-staged”, in which they are not fully cured and can be
softened and reshaped either to conform to the shape of the end
use product or corrugated into a three dimensional shape as
described below. A preferred embodiment uses urethane epoxy
resin applied to the flat open mesh scrim by means of a water
emulsion.
Col. 7, ll. 43-58 (italics added for emphasis). Thus, Brown explicitly
discloses the use of an epoxy resin to rigidify the product.
The Appellant argues that the Examiner’s basis for rejecting claim 1,
relying in part on Brown’s teachings concerning the optional use of
thermosettable resin, is inconsistent with the basis for rejecting claim 3,
relying on Brown’s teachings concerning the use of a thermosettable resin.
Reply Br. 13. We disagree. The Examiner is free to rely on alternative
embodiments disclosed in a reference to support alternative bases for
rejecting a claim.

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Claim 7
The Appellant argues that the Examiner failed to address the elements
of claim 7. Reply Br. 14. This is incorrect. See Ans. 4-7.
Claim 8
The Appellant argues that the Examiner failed to address the elements
of claim 8. Reply Br. 14-15. This is incorrect. See Ans. 4-7.
Claim 9
The Appellant argues that the Examiner failed to address the elements
of claim 9. Reply Br. 15-16. This is incorrect. See Ans. 4-7. The Appellant
also argues that Stevenson teaches crossing, not interlacing, threads. Reply
Br. 15. To the extent that the Appellant is correct that Stevenson teaches
crossing threads, the Appellant does not explain why the Examiner’s finding
that such crossing threads constitute interlacing threads is incorrect.
Claim 10
As noted above, claim 10 stands or falls with claim 1. In any event,
the Appellant’s arguments for claim 10 on pages 16-17 of the Reply Brief
mirror those offered for claim 3, which we found unpersuasive. Therefore,
we uphold the rejection of claim 10 for the same reasons given for either
claim 1 or claim 3.
Claim 11
The Appellant argues that the Examiner failed to address claim 11.
Reply Br. 17. This is incorrect. See Ans. 8.
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Claim 12
The Examiner addressed claim 12 on page 8 of the Answer. The
Appellant’s arguments for claim 12 on pages 18-19 of the Reply Brief
mirror those offered for claim 9, which we found unpersuasive. Therefore,
we affirm the rejection of claim 12 for the same or similar reasons given for
claim 9.
SUMMARY

The Examiner’s rejection of claims 1-3 and 7-13 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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