Mark O'Masta et al.Download PDFPatent Trials and Appeals BoardMay 4, 20212020003317 (P.T.A.B. May. 4, 2021) Copy Citation 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. Appeal 2020-003317 Application 13/640,259 2 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. Appeal 2020-003317 Application 13/640,259 3 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 Appeal 2020-003317 Application 13/640,259 4 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., Appeal 2020-003317 Application 13/640,259 5 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 Appeal 2020-003317 Application 13/640,259 6 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 Appeal 2020-003317 Application 13/640,259 7 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 Appeal 2020-003317 Application 13/640,259 8 “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. Appeal 2020-003317 Application 13/640,259 9 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. Appeal 2020-003317 Application 13/640,259 10 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. Appeal 2020-003317 Application 13/640,259 11 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 Appeal 2020-003317 Application 13/640,259 12 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. Appeal 2020-003317 Application 13/640,259 13 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 Copy with citationCopy as parenthetical citation