The Boeing Company

Patent Trials and Appeals BoardJul 24, 2020

2020001067 (P.T.A.B. Jul. 24, 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. 14/209,052 03/13/2014 Jeremie J. Albert 13-1380-US-NP 1928 122219 7590 07/24/2020 Miller, Matthias & Hull LLP/ The Boeing Company One North Franklin Street Suite 2350 Chicago, IL 60606 EXAMINER FABULA, MICHAEL A ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 07/24/2020 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): bmatthias@millermatthiashull.com patentadmin@boeing.com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEREMIE J. ALBERT, RICHARD R LAVERTY, JONATHAN W. GABRYS, and RUSSELL F. GRAVES Appeal 2020-001067 Application 14/209,052 Technology Center 3600 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and WILLIAM A. CAPP, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–3, 5–9, 11–15 and 20.1 See Non-Final Act. 1. 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 Boeing Company” as the real party in interest. Appeal Br. 3. Appeal 2020-001067 Application 14/209,052 2 CLAIMED SUBJECT MATTER The claims are directed to an integrated armor for hypervelocity impacts. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A structural armor for a space structure formed by a process comprising: a) providing an angular member core, the angular member core having a plurality of front and rear nodes; b) bonding a front armor facesheet to the front nodes of the angular member core; and c) bonding a rear armor facesheet to the rear nodes of the angular member core, the rear armor facesheet being offset from the front armor facesheet. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wadley US 2009/0286100 A1 Nov. 19, 2009 REJECTIONS Claims 1–3, 5, 6, 8, 9, 11–15, and 20 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Wadley. Non-Final Act. 3. Claims 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Wadley. Non-Final Act. 8. Appeal 2020-001067 Application 14/209,052 3 OPINION Claim Grouping All claims except for claim 7 are argued as a group for which claim 1 is representative for purposes of both rejections against it under 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues both the anticipation and obviousness rejection against claim 1 under the same subheading. However, different standards apply to the differing grounds of rejection, as discussed below. Anticipation In the anticipation rejection the Examiner relies on the acknowledged prior art embodiment discussed in the “Background of the Invention” section of Wadley. Non-Final Act. 4 (citing Wadley paras. 3–9). To the extent the Examiner relies on any aspect of Wadley’s disclosure concerning Wadley’s preferred embodiment, the Examiner does so only as evidence of what the structure having bonded facesheets relied upon by the Examiner for purposes of anticipation is, with the understanding that this structure has an otherwise generally identical geometric structure to Wadley’s improved extruded version.2 Appellant’s remarks address only the disclosure of Wadley relating to Wadley’s purportedly improved extruded monolithic panels and not the version having the bonded facesheets relied upon by the Examiner. Appeal Br. 6–7 (citing Wadley paras. 12, 13, 15, 74, 75, Figs. 14A, B). Accordingly, the Examiner’s finding that the acknowledged prior 2 See MPEP § 2131.01(II) and cases cited therein for a discussion of relying on additional evidence to show inherent characteristics of the subject matter relied upon in an anticipatory reference. Appeal 2020-001067 Application 14/209,052 4 art embodiment discussed in the “Background of the Invention” section of Wadley anticipates the claimed subject matter is uncontroverted. Appellant contends that the portions of Wadley cited by Appellant teach away from using bonded face sheets. Appeal Br. 6–7. “A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Celeritas Techs. Ltd. v. Rockwell Intl. Corp., 150 F.3d 1354, 1360 (Fed.Cir.1998). For the foregoing reasons, we sustain the Examiner’s anticipation rejection. Obviousness Although 37 C.F.R. § 41.50(a)(1) provides that an affirmance of the rejection of a claim on any grounds suffices to constitute a general affirmance of the rejection of that claim, we address the Examiner’s alternative obviousness rejection against claim 1 for the sake of completeness. See, e.g., In re Wagenhorst, 64 F.2d 780, 782 (CCPA 1933) (“It being made the statutory duty of the Board of Appeals ‘to review and determine upon the validity of the adverse decisions of examiners,’ it would seem that this duty is not fully performed without a review of all adverse decisions by the Examiner.”) (cited with approval in In re Nielson, 816 F. 2d 1567, 1571 (Fed. Cir. 1987)). As mentioned above, Appellant argues Wadley teaches away from the bonded-facesheet embodiment upon which Wadley expressly sought to improve. Appeal Br. 6–7. A bright-line rule prohibiting an examiner’s reliance on prior-art admissions in patent publications would make little Appeal 2020-001067 Application 14/209,052 5 sense. “Rigid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As a practical matter, holding references necessarily teach away from that which they acknowledge as prior art at the time of their filing would seemingly be overcome by the simple practice of having examiners cite an even older reference primarily disclosing that acknowledged prior art itself. A requirement to uncover such references would seem to pose an administrative burden having little substantive benefit because those older references would essentially be cumulative for the subject matter for which the examiner relies upon them. Neither applicants nor examiners are encouraged to rely on cumulative references in the course of patent prosecution. See, e.g., MPEP § 2120(I). Our reviewing court’s predecessor rejected the notion that, when formulating a rejection, the PTO cannot propose to omit the structure which the inventor in a cited prior-art reference regarded as her contribution to the art. See In re Umbarger, 407 F.2d 425, 430 (CCPA 1969). Just because purportedly “better alternatives” may exist in the prior art it “does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). The better rule, and the proper one, is that references should be considered on a case-by-case basis, in their entirety, and in context, for that which they fairly teach those of skill in the art. See MPEP § 2123(I). There is no dispute that Wadley expressly recognizes the problems associated with facesheet bonding in prior-art panels. Appeal Br. 6–7 (citing Wadley para. 12). However, teaching away is a question that must be considered not from the perspective of Wadley, or any specific inventor for Appeal 2020-001067 Application 14/209,052 6 that matter, but from the perspective of one skilled in the art. Wadley may present good reasons to favor Wadley’s design over that of the prior art. However, this does not necessarily mean that, when considering Wadley in its entirety, and in the context of the knowledge generally available to the skilled artisan, Wadley’s comments concerning the inferiority of prior-art panels in comparison to Wadley’s own panel would necessarily render it nonobvious to make and use the conventional prior-art panels at all. For example, the skilled artisan may be reluctant to quickly depart from convention in an industry such as defense where property and human life and safety may be at stake. See, e.g., Wadley claim 78 (“tank armor plating structure or a land, air, space or water vehicle/craft to provide land, air, space or water vehicle/craft plating structure”). In making the teaching away argument Appellant focuses only on Wadley’s disclosure of overcoming one specific problem associated with prior-art panels. Appellant does not provide any evidence or analysis of Wadley as a whole and in the context of the art to demonstrate that Wadley’s disclosure in this regard would render the manufacture and use of conventional structures nonobvious. Appellant merely points to Wadley’s preferred embodiment and the advantages Wadley attributes to it. Appeal Br. 6–7. Skilled artisans typically consider both the benefits lost and gained in making engineering decisions. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). Even if, after considering all relevant factors, that inquiry results in a determination that the conventional embodiment having bonded facesheets is, in certain circumstances, less preferable to the extruded monolithic version promoted by Wadley, that fact alone does not necessarily mean the less preferable embodiment is nonobvious. Ans. 3 (citing MPEP Appeal 2020-001067 Application 14/209,052 7 §§ 2145(X)(D)(1), 2141.02(VI)), 5; see also Non-Final Act. 4 (citing, inter alia, Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)); and MPEP § 2123. Furthermore, even if Wadley could be said to “teach away” from the embodiment Wadley improved upon, “there is no rule that a single reference that teaches away will mandate a finding of nonobviousness.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). On the totality of the record presently before us, the evidence and reasoning in support of obviousness outweighs the evidence and arguments against. Accordingly, we sustain the obviousness rejection of claims 1–3, 5, 6, 8, 9, 11–15, 20. Claim 7 Appellant’s argument with regard to claim 7 is: The Examiner simply avers that Wadley renders such structure obvious, even though Wadley lacks any suggestion of the latter claim elements. As noted previously, in order to support an obviousness rejection, MPEP §2143.03 requires “all words in the claim to be considered” Appeal Br. 9. Contrary to Appellant’s assertion, the Examiner provided an entire page of analysis concerning the line and a half of text comprising claim 7. Non-Final Act. 9. Because Appellant did not address the substance of the Examiner’s analysis in this regard, neither do we. “Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection.” See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citations omitted). “[T]he Board will not, as a general matter, Appeal 2020-001067 Application 14/209,052 8 unilaterally review those uncontested aspects of the rejection.” Id at 1075–76 (citations omitted). Appellants have not contested with specificity any of the Examiner’s findings nor apprised us of any flaws in the Examiner’s reasoning or legal conclusions. Arguments must address the Examiner’s action. 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). The Board will not advocate for Appellants by scouring the record to see if the Board can identify some flaw in the Examiner’s findings of fact, articulated reasoning, or legal conclusions. See, e.g., Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1250 n.2 (Fed. Cir. 2008) (“A skeletal ‘argument[,]’ really nothing more than an assertion, does not preserve a claim. . . . Judges are not like pigs, hunting for truffles buried in briefs.”) (citation omitted). Because Appellant does not address the Examiner’s position regarding this rejection the Examiner’s findings and reasoning stands uncontroverted. Any arguments of error in the examiner’s rejection that could have been made by the appellant have been waived by failing to address the grounds of rejection set forth by the Examiner. See Hyatt v. Dudas, 551 F.3d 1307, 1312, 1314 (Fed. Cir. 2008) (“[A] ‘ground of rejection’. . . is not merely the statutory requirement for patentability that a claim fails to meet but also the precise reason why the claim fails that requirement.” “[T]he applicant can waive appeal of a ground of rejection.”). Accordingly, we sustain the Examiner’s rejection of claim 7. Appeal 2020-001067 Application 14/209,052 9 DECISION The Examiner’s rejections are affirmed. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 6, 8, 9, 11–15, 20 102(a)(1), 102(a)(2), 103 Wadley 1–3, 5, 6, 8, 9, 11–15, 20 7 103 Wadley 7 Overall Outcome 1–3, 5–9, 11–15, 20 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