THE BOEING COMPANY

Patent Trials and Appeals BoardNov 6, 2020

13859236 - (D) (P.T.A.B. Nov. 6, 2020)

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. 13/859,236 04/09/2013 Jeffrey Edward Polus 12-1417-US-NP2 1133 63759 7590 11/06/2020 DUKE W. YEE YEE & ASSOCIATES, P.C. P.O. BOX 6669 MCKINNEY, TX 75071 EXAMINER MANGOHIG, THOMAS A ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 11/06/2020 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): patentadmin@boeing.com ptonotifs@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY EDWARD POLUS Appeal 2020-000621 Application 13/859,236 Technology Center 1700 Before KAREN M. HASTINGS, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7, 10, and 36. See Final Act. 3. 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. Appellant identifies the real party in interest as the following party: The Boeing Company of Chicago, Illinois. Appeal Br. 2. Appeal 2020-000621 Application 13/859,236 2 CLAIMED SUBJECT MATTER “The present disclosure generally relates to adhesives, and deals more particularly with a film adhesive for bonding composite parts, particularly at room temperature.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An adhesive bonding film configured to be cured when heating is generated inside the adhesive bonding film when an electromagnetic field is applied to the adhesive bonding film, comprising: at least one layer of a thermally curable resin, the thermally curable resin including embedded ferromagnetic metal particles encapsulated in a coating; and a scrim cloth of glass fibers embedded in the layer of the thermally curable resin. Claims Appendix (Appeal Br. 13) REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Kurauchi US 4,486,373 Dec. 4, 1984 Yadav US 2006/0035087 A1 Feb. 16, 2006 Rathenow US 2011/0306255 A1 Dec. 15, 2011 Abe US 2010/0221545 Al Sep. 2, 2010 REJECTION Claims 1–7, 10, and 36 are rejected under 35 U.S.C. § 103 as being unpatentable over Yadav in view of Rathenow, Abe, and the evidence provided by Kurauchi. Final Act. 3. Appeal 2020-000621 Application 13/859,236 3 Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–7, 10, 36 103 Yadav, Rathenow, Abe, Kurauchi OPINION Claim 12 Appellant does not dispute the Examiner’s finding that Yadav teaches a “thermally curable resin” which includes “embedded ferromagnetic metal particles encapsulated in a coating,” as recited in claim 1. Compare Appeal Br. 6–7, with Final Act. 3 (citing various portions of Yadav including paragraphs 39, 114, and 146 for the teaching). Appellant argues instead that “[t]he cited combination does not provide reasoning for selection of a thermally curable adhesive or ferromagnetic nanoparticles as claimed.” Appeal Br. 6; see also id. at 7 (arguing that “the Office Action does not provide any specific rationale for why a person of skill in the art would specifically choose a ferromagnetic metal particle among the many possibilities of magnetic nanomaterials Yadav offers”). Appellant argues that Yadav teaches various embodiments of adhesives and sealants and “does not emphasize or prefer utilizing thermally cured adhesives.” Id. at 7; see also id. at 9 (arguing that “Yadav appears to show a preference in choosing UV curable adhesives and oxides to increase the hardness of the UV curable adhesive”). These arguments are not persuasive. In an obviousness analysis, “all disclosures of the prior art, including unpreferred embodiments, must be considered in determining obviousness.” In re 2 Appellant argues for the patentability of claims 1–7 and 10 as a group with claim 1 being the representative claim. See Appeal Br. 6–11. These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-000621 Application 13/859,236 4 Lamberti, 545 F.2d 747 (CCPA 1976). Whether Yadav may also disclose additional structures does not negate Yadav’s teaching of the recited structure. A prior art search during the examination of a patent application necessarily requires the Examiner to select the relevant prior art teaching. These arguments regarding other embodiments of Yadav and whether Yadav focuses on a particular embodiment in the various embodiments taught in Yadav do not identify error in the Examiner’s finding that the structural component at issue is known in the art. Appellant’s arguments that “Yadav is silent as to generating heat within the adhesive in response to an electromagnetic field” (Appeal Br. 7) and that “the purpose for selecting a metal particle in Yadav, for magnetic properties, is different from the purpose of the ferromagnetic metal particles of claim 1, generating heat” (id. at 8) are unpersuasive for the arguments do not structurally distinguish the composition recited in claim 1. As the Examiner points out in the Final Rejection, the rejection is based on the structural identity between the prior art and recited composition. Final Act. 8. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Appeal 2020-000621 Application 13/859,236 5 Appellant also argues that the Examiner’s rationale for combining the prior art “is redundant to the disclosures of Yadav.” Appeal Br. 10; see also id. at 11 (arguing that the Examiner’s rationale to combine Yadav with Abe is redundant to the teaching of Yadav). The issue of whether the Examiner’s rationale may be redundant to the prior art teaching does not identify error in the Examiner’s “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner’s rationale – being consistent with the prior art teaching as Appellant argues – shows that the rationale is supported by the record. The rejection of claim 1 is sustained. Claim 36 Claim 36 depends from claim 1 and additionally recites: “wherein the embedded ferromagnetic metal particles are configured to generate the heat in the thermally curable resin in response to the electromagnetic field.” Appellant argues that the Examiner erred because “[t]he embedded ferromagnetic metal particles of claim 36 and the magnetic materials of Yadav are present in the adhesives of Yadav for different purposes.” Appeal Br. 11. As noted supra, “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc., 289 F.3d at 809. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co, 190 F.3d at 1347. Appellant’s argument does not structurally distinguish the prior art and the rejection is sustained. Appeal 2020-000621 Application 13/859,236 6 CONCLUSION The Examiner’s rejection is affirmed. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 10, 36 103 Yadav, Rathenow, Abe, Kurauchi 1–7, 10, 36 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