Mark O'Masta et al.

Patent Trials and Appeals Board

May 4, 2021

2020003317 (P.T.A.B. May. 4, 2021)

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.
13/640,259 05/23/2013 Mark R. O'Masta 2646-0034US01 1419
134006 7590 05/04/2021
Potomac Law Group, PLLC (UVA)
8229 Boone Blvd
Suite 430
Vienna, VA 22182
EXAMINER
TILLMAN, JR, REGINALD S
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
vdeluca@potomaclaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK R. O’MASTA and HAYDN N.G. WADLEY

Appeal 2020-003317
Application 13/640,259
Technology Center 3600
____________

Before JEREMY J. CURCURI, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 5–13, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
University of Virginia Patent Foundation. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A method for manufacturing a ballistic tile,
comprising:
wrapping a base tile in high-performance fabric, yielding
a wrapped tile, wherein the base tile is a composite tile
comprising a metallic frame with ceramic inserts; and
consolidating the wrapped tile to yield the ballistic tile.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pivitt et al.
(“Pivitt”)
US 4,911,061 Mar. 27, 1990
Ghiorse et al.
(“Ghiorse”)
US 2002/0178900 A1 Dec. 5, 2002
Sayre et al.
(“Sayre”)
US 2010/0043630 A1 Feb. 25, 2010
Howland US 9,170,071 B2 Oct. 27, 2015

REJECTIONS
I. Claims 1 and 5 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ghiorse.
II. Claims 1 and 5 are rejected under 35 U.S.C. § 102(e) as
anticipated by Sayre.
III. Claims 1, 2, 5, and 22 are rejected under 35 U.S.C. § 102(e) as
anticipated by Howland.
IV. Claims 6 and 8–13 are rejected under 35 U.S.C. § 103(a) as
obvious over Sayre.
V. Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over
Sayre and Pivitt.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Anticipation by Ghiorse
Independent claim 1, along with claim 5 (which depends from
claim 1), stand rejected under 35 U.S.C. § 102(b) as anticipated by Ghiorse.
The Appellant argues that “[t]he rejection [of claim 1] improperly
attempts to combine different embodiments of Ghiorse,” by relying upon
features of both the armor component of Figure 1 and the armor system of
Figure 4A. Appeal Br. 5.
This argument is not persuasive of error. As the Examiner points out,
“the elements shown in Figure 1 are included in the embodiment shown in
Figure 4[A].” Answer 7 (citing Ghiorse ¶¶ 34–35). Indeed, Ghiorse states
that “[t]he tile array layers 34 and 42,” which are shown in Figures 4A and
4B, respectively, “are comprised of a plurality of armor components 10,”
shown in Figure 1, “wherein each armor component 10 comprises a tile
having a perimeter wrapped with a wrapping material, as discussed above
with respect to the armor component 10.” Ghiorse ¶ 35.
The Appellant also argues that Ghiorse does not teach claim 1’s
limitation of “wrapping a base tile in high-performance fabric, . . . wherein
the base tile is a composite tile comprising a metallic frame with ceramic
inserts.” Appeal Br. 5–6.
The Examiner finds that Ghiorse’s back plate 32 as teaching the
claimed “metallic frame” of the “base tile.” Non-Final Act. 3. The
Examiner finds that Ghiorse’s tile 12 and its surrounding wrapping
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material 14 teach the claimed “base tile” and “high-performance fabric.” Id.
In addition, the Examiner finds that Ghiorse’s tile array layer 34 teaches the
claimed “ceramic inserts.”
Ghiorse identifies the tile 12, wrapped with wrapping material 14, as
an armor component 10. Ghiorse ¶ 25. Further, Ghiorse’s “tile array
layer[ ] 34 [is] comprised of a plurality of armor components 10 wherein
each armor component 10 comprises a tile having a perimeter wrapped with
a wrapping material.” Id. ¶ 35. Ghiorse’s tile array layer 34, in turn, is
“disposed on the back plate 32.” Id. ¶ 34. Consequently, Ghiorse’s back
plate 32 (i.e., the claimed “metallic frame” in the Examiner’s mapping, as
noted above) is not an element that is described as being wrapped with
wrapping material 14. The disposition of Ghiorse’s back plate 32 and tile
array layer 34 are shown in Figure 4A of the reference, which is reproduced
below:

Figure 4A of Ghiorse schematically shows an embodiment of an armor
system 30. Id. ¶ 16, Fig. 4A. Because Ghiorse’s wrapping of elements (i.e.,
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the armor components, which comprise tile array layer 34) do not include
wrapping back plate 32 (i.e., the “metallic frame,” per the Examiner’s
findings), we are persuaded that the Examiner’s mapping of claim 1 to
Ghiorse does not teach the limitation of “wrapping a base tile in high-
performance fabric, yielding a wrapped tile, wherein the base tile is a
composite tile comprising a metallic frame with ceramic inserts.”
Therefore, we do not sustain the rejection of independent claim 1 or
dependent claim 5, under 35 U.S.C. § 102(b), as anticipated by Ghiorse.
Anticipation by Sayre
Independent claim 1, along with claim 5 (which depends from
claim 1), stand rejected under 35 U.S.C. § 102(e) as anticipated by Sayre.
The Appellant argues that Sayre fails to teach “wrapping a base tile
. . ., wherein the base tile is a composite tile.” Appeal Br. 6. In support, the
Appellant (id.) refers to a portion of Sayre, which states: “The strike face
(61) of the present invention comprises one or more ceramic tiles (21)
individually wrapped with a permeable medium, and a hyperelastic
polymer (31) permeating the permeable medium encapsulating the ceramic
tiles (21).” Sayre ¶ 22. According to the Appellant, Sayre fails to meet the
identified limitation, because “[a]n individually wrapped ceramic tile is not a
composite tile.” Appeal Br. 6.
However, the Examiner does not map the “composite tile” of claim 1
to what the Appellant calls “[a]n individually wrapped ceramic tile” (Appeal
Br. 6) — a reference to Sayre’s “one or more ceramic tiles (21),” which are
“individually wrapped with a permeable medium” (Sayre ¶ 22). Notably,
the Examiner (see Non-Final Act. 4) maps the “high-performance fabric” —
in which the claimed “base tile”/ “composite tile” is “wrapped” — to
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Sayre’s “hyperelastic polymer (31),” which “encapsulat[es]” a plurality of
“ceramic tiles (21)” (Sayre ¶ 22). The disposition of these elements are
shown in Sayre’s Figure 4, which is reproduced below:

Figure 4 of Sayre “is a sectional view of a composite armor panel (11)
showing the ceramic tile (21), back plate (41), back plate reinforcing
permeable medium (54), face-wrap permeable medium (53), edge-wrap
permeable medium (52), hyperelastic polymer (31), and strike face (61).”
Sayre ¶ 20. Accordingly, in the Examiner’s analysis, the claimed
“composite tile” may be understood as mapping to a collection of Sayre’s
elements that include a plurality of ceramic tiles 21. See Non-Final Act 4.
The Appellant also argues that Sayre fails to disclose claim 1’s
limitation of “a composite tile comprising a metallic frame with ceramic
inserts.” Appeal Br. 6. This argument is unpersuasive. The Examiner maps
the claimed “metallic frame” to Sayre’s back plate 41 and, as discussed
above, maps the claimed “ceramic inserts” to ceramic tiles 21. Non-Final
Act. 4. The disposition of these elements is shown in Sayre’s Figure 4,
which is reproduced above. Insofar as the Appellant contends that the
material of back plate 41 is not “metallic,” per claim 1, the Examiner
(Answer 8) refers to paragraph 49 of Sayre, which states that “back plate
(41) may be comprised of a metal [or] metal alloy,” with exemplary
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materials including “aluminum metal, aluminum alloy, and magnesium
alloy.”
Accordingly, we sustain the rejection of independent claim 1 and
dependent claim 5 under 35 U.S.C. § 102(e) as anticipated by Sayre.
Anticipation by Howland
Independent claim 1 (along with claims 2 and 5, which depend
from claim 1) and independent claim 22 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Howland.
Claims 1, 2, 5, and 22 are argued as a group. See Appeal Br. 7–8. We
select claim 1 for analysis, per 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant argues that Howland fails to disclose “wrapping a base
tile in high-performance fabric . . ., wherein the base tile is a composite tile
comprising a metallic frame with ceramic inserts.” See Appeal Br. 7–8.
In the Non-Final Office Action (page 4), the Examiner maps both the
“base tile”/“composite tile” and the “ceramic inserts” to Howland’s ceramic
element 23 (see Howland col. 16, l. 47). However, in the Answer (page 9),
the Examiner maps the claimed “base tile” to Howland’s element 20, which
is described in the reference as “solid elements SE layer 20” that “consists of
a mosaic or matrix of components” (Howland col. 13, l. 33, col. 14,
ll. 12–13).
In the Reply Brief, the Appellant states that Howland’s element 20 is
“not a composite tile as defined in the present claims.” Reply Br. 3 (citing
Howland col. 13, l. 33, Fig. 1). The Reply Brief does not further explain this
position, but the Appeal Brief indicates that the alleged deficiency is that
“Howland is explicit in that it is not describing a frame and insert structure.”
Appeal Br. 8. The Appellant refers to Howland’s alleged lack of claim 1’s
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“composite tile comprising a metallic frame with ceramic inserts,” quoting
Howland’s description of “encapsulation by a metal that is heat shrunk on
the ceramic core tile.” Id. (quoting Howland col. 6, ll. 51–52).
But the Examiner does not rely upon the identified heat-shrunk metal,
for the disclosure of claim 1’s “metallic frame.” The Answer refers to
Howland’s edge bars 28 and center buttons 34 as teaching the “metallic
frame.” Answer 9 (citing Howland Abstract, col. 19, ll. 5–10, Fig. 2). See
Howland col. 19, ll. 9–10 (“The metallic components, the E[dge] B[ars] 28
and C[enter] B[utton] 34, are high strength steel with high hardness and low
elongation.”)
The Appellant also explicitly disputes the Examiner’s mapping of
claim 1’s “wrapping a base tile” feature to the Howland reference. See
Appeal Br. 7–8. (Claim 1 specifically recites “wrapping a base tile in high-
performance fabric,” but the Appellant does not dispute that Howland
teaches the “high performance fabric.”) The Appellant argues:
The Howland “cover 10” is not wrapped around the SE layer 20
or any other tile. As explained in the description and illustrated
in FIG. 1, the cover 10 is not wrapped around the panel, but
instead is applied to one side of the panel to form the outer
cover. The opposite side of the panel includes flexible backer
40, and fiber pack 50 (and not the cover 10). Howland explains
in part: “Cover 10 is a spall cover layer and the outer layer of
the panel of FIG. 1.” Howland, col. 13, ll. 40–41. “Cover 10
fabric is assembled to the SE layer 20 array with an elastomeric
adhesive sublayer 18.” Howland, col. 13, ll. 57–58. Therefore,
even if the SE layer 20 were a composite tile (which it is not),
the SE layer 20 [sic] is not wrapped around the SE layer 20.
Even if the cover 10 and the flexible backer 40 are
considered in combination, they still do not meet the elements
of the claimed invention because neither one, nor the
combination of the two, are wrapped around a composite tile.
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Rather, the SE layer 20 is sandwiched between the cover 10 and
the flexible backer 40. No reasonable interpretation of the
claim language “wrapping a base tile . . . , wherein the base tile
is a composite tile . . .” would encompass applying a spall
covering to one side and a flexible backer to the other side,
even if the structure in between were a composite tile.
Id. These identified features of the reference are shown in Howland’s
Figure 1, which is reproduced below:

Figure 1 is a cross-sectional view of an embodiment of a “mosaic-flexible
armor system or panel” disclosed in Howland depicting cover 10,
elastomeric adhesive sublayer 18, SE layer 20 array, adhesive matrix
sublayer 38, flexible backer 40, and fiber pack 50. See Howland col. 12, ll.
17–20, col. 13, l. 30 – col. 14, l. 25.
In response, the Examiner’s Answer states that Howland’s Figure 1
“clearly shows a cross-section of at least one tile (20 being wrapped between
fabric layers 10, 18, and 40.” Answer 9.
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Also at issue, in the Appellant’s argument, is whether the cited
portions of Howland teach the “wrapping” and “wrapped” features in
claim 1’s limitation: “wrapping a base tile in high-performance fabric,
yielding a wrapped tile.”
The Appellant characterizes Howland’s shortcoming as its failure to
show certain elements of Howland being “wrapped around” SE layer 20.
Appeal Br. 7, 8. Yet, claim 1 simply recites the terms “wrapping” and
“wrapped” — not “wrapped around,” as the Appellant argues. Id. (emphasis
added).
The Specification illuminates the question of whether the partial
covering accomplished in Howland — which the Appellant characterizes as
“SE layer 20 [being] sandwiched between the cover 10 and the flexible
backer 40” (Appeal Br. 8) — satisfies the “wrapping”/“wrapped” limitations
of claim 1. The Specification explains the application of “rolls of fabric” to
a “ballistic tile”:
Generally these separate rolls of fabric will be applied such that
fabric covers the entire ballistic tile, though on occasion there
may be incentive to expose a piece of the panel or have certain
sections of the panel less wrapped than other sections.
Spec. ¶ 18. In view of the quoted portion of the Specification, we
understand that the recited “wrapping”/“wrapped” limitations of claim 1 do
not require that the entirety of the subject tile must be completely covered by
the fabric; instead, portions of a “wrapped” tile may be exposed. Therefore,
the Appellant does not persuade us of error in the Examiner’s determination
that Howland teaches the “wrapping”/“wrapped” limitations of claim 1.
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Accordingly, we sustain the rejection of independent claims 1 and 22,
and dependent claims 2 and 5, under 35 U.S.C. § 102(e) as anticipated by
Howland.
Obviousness Based Upon Sayre
Claims 6 and 8–13 stand rejected under 35 U.S.C. § 103(a) as obvious
over Sayre. Claims 6 and 8 depend from independent claim 1. Claim 9 is an
independent claim; claims 10–13 depend from claim 9.
In regard to dependent claims 6 and 8, the Appellant relies upon the
arguments provided for base claim 1, as to the anticipation rejection based
upon Sayre. See Appeal Br. 9. As discussed above, these arguments are not
persuasive of error in the rejection.
Independent claim 9 recites: “A ballistic tile, comprising . . . a base
tile including a metallic frame with ceramic inserts, the base tile wrapped in
at least two layers of high-performance fabric that have been consolidated,
yielding a ballistic tile.”
The Appellant quotes the Examiner’s rejection of claim 9. Appeal
Br. 9 (quoting Non-Final Act. at 5). Thereafter, the Appellant states:
“Consequently, no prima facie case of unpatentability of claim 9 is stated in
the rejection.” Id. The Appellant provides no explanation for the position
that the Examiner’s rejection might not establish a prima facie case of the
obviousness of claim 9. Accordingly, the Appellant does not persuade us of
error in the rejection of claim 9.
In regard to dependent claims 10–13, the Appellant relies upon the
position presented for base claim 9. See Appeal Br. 9. As explained in the
preceding paragraph, the Appellant does not explain a basis for the position
that the Examiner might not establish a prima facie case of the obviousness
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of claim 9. Therefore, the Appellant does not persuade us of error in the
rejection of dependent claims 10–13.
Accordingly, we sustain the rejection of claims 6 and 8–13 under
35 U.S.C. § 103(a) as obvious over Sayre.
Obviousness Based Upon Sayre and Pivitt
Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious over
Sayre and Pivitt.
The Appellant states: “Claim 7 depends from claim 6 and thus
includes all of the limitations of claims 1 and 6.” Appeal Br. 9. The
Appellant further states:
The rejection [of claim 7] relies on a purported modification of
Sayre “to have the layers as taught by Pivitt.” Office action
at 5. However, even if the alleged teaching of Pivitt of “a
method of wrapping ceramic tile wherein the method comprises
two separate units of fabric wrapped in unique directions
alternately wrapping the base tile sequentially” were to be
applied to Sayre, such does not establish that the invention of
claim 7 (which includes all of the limitations of claims 1 and 6)
would have been achieved.
Id.
We understand the Appellant’s position (in regard to the obviousness
rejection of claim 7) to rely upon the arguments provided for the rejection of
independent base claim 1, as anticipated by Sayre. For the reasons discussed
above, such arguments are not persuasive of error.
Accordingly, we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) as obvious over Sayre and Pivitt.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5 102(b) Ghiorse 1, 5
1, 5 102(e) Sayre 1, 5
1, 2, 5, 22 102(e) Howland 1, 2, 5, 22
6, 8–13 103(a) Sayre 6, 8–13
7 103(a) Sayre, Pivitt 7
Overall
Outcome
1, 2, 5–13,
22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED