UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals BoardJan 7, 2021

2020001478 (P.T.A.B. Jan. 7, 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. 15/027,800 04/07/2016 John D. Riehl 74179US02; 67097-2731PUS1 9672 54549 7590 01/07/2021 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER KRASNOW, NICHOLAS R ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 01/07/2021 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN D. RIEHL and CHARLES R. WATSON Appeal 2020-001478 Application 15/027,800 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and GEORGE C. BEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed April 7, 2016 (“Spec.”); Final Office Action mailed July 13, 2018 (“Final Act.”); Advisory Action mailed September 20, 2018 (“Adv. Act.”); Appeal Brief filed January 14, 2019 (“Appeal Br.”); Examiner’s Answer mailed May 16, 2019 (“Ans.”); and Reply Brief filed October 7, 2019 (“Reply Br.”). Appeal 2020-001478 Application 15/027,800 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–16, 21, and 22. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant states the invention relates to a method of molding a component. Spec. ¶ 5. Claim 1, reproduced below, illustrates the claimed subject matter (Appeal Br., Claims Appendix 14): 1. A method of molding a component comprising the steps of: (a) providing a plurality of fibers; (b) applying the fibers with a low temperature sizing to form a plurality of sized fibers; (c) forming a preform from the plurality of sized fibers; (d) placing the preform in a mold; and (e) de-sizing the preform by heating the mold to an initial temperature that is sufficient to break down the low temperature sizing to a gaseous phase. Claim 12 is also independent and recites a method of molding a component including similar recitations as recited in claim 1. Id. at 15. REFERENCES The Examiner relies upon the following prior art: Name Reference Date Walker US 3,207,640 September 21, 1965 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies United Technologies Corporation as the real party in interest. Appeal Br. 1. Appeal 2020-001478 Application 15/027,800 3 Name Reference Date St. Clair et al. hereinafter “St. Clair” US 5,670,256 September 23, 1997 Waldrop et al. hereinafter “Waldrop” US 2012/0231107 A1 September 13, 2012 Bjornhov et al. hereinafter “Bjornhov” US 2013/0130583 A1 May 23, 2013 Naganuma et al. Hereinafter “Naganuma” “Influence of prepreg conditions on the void occurrence and tensile properties of woven glass fiber-reinforced polyimide composites” Composites Science and Technology 69 pp. 2428–2433 June 2009 REJECTIONS 1. The Examiner rejected claims 1, 2, and 5–11 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, and Walker. Final Act. 4–8. 2. The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, Walker, and St. Clair. Final Act. 8–9. 3. The Examiner rejected claim 4 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, Walker, and Millard. Final Act. 9–10. 4. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, Walker, and Naganuma. Final Act. 10–14. Appeal 2020-001478 Application 15/027,800 4 5. The Examiner rejected claims 14–16, and 21 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, Walker, Naganuma, and Millard. Final Act. 14–16. 6. The Examiner rejected claim 22 under 35 U.S.C. § 103 as unpatentable over Bjornhov, Waldrop, Walker, Naganuma, and St. Clair. Final Act. 17–18. OPINION Rejection 1 We confine our discussion to claim 1, which is sufficient for disposition of this rejection. The Examiner’s Rejection In rejecting claim 1 over Bjornhov, Waldrop, and Walker, the Examiner found Bjornhov discloses a method of molding a component including providing a plurality of fibers, forming a preform from the plurality of sized fibers, and placing the preform in a mold as recited in claim 1, but Bjornhov is silent as to sizing and de-sizing the fibers. Final Act. 4. The Examiner found Waldrop discloses using glass fibers to form preforms, where the glass fibers may be sized to eliminate fiber loss during handling without the use of binders and tackifiers. Id. The Examiner determined it would have been obvious to apply sizing to the fibers as disclosed by Waldrop to eliminate fiber loss and to prevent excessive material distortion from normal handling without requiring binders and tackifiers. Id. at 5. The Examiner found that Bjornhov and Waldrop do not disclose using lower temperature sizings such that the sizing can be subsequently removed Appeal 2020-001478 Application 15/027,800 5 from the fibers by a thermal decomposition step. Id. The Examiner found Walker discloses it is desirable to de-size the reinforcement if it is made of fiber glass. Id. The Examiner found Walker discloses de-sizing is done through heat treatment of the material, because it leaves a minimal sizing agent residue to provide a clean glass surface that can be further be finished to enhance bonding of the resin to the fibers. Id. The Examiner determined it would have been obvious to use a low temperature sizing to de-size the preform by heating the mold as taught by Walker to provide a clean glass surface that can be further treated with a finish to enhance bonding of resin to the fibers. Id. Appellant’s Contentions Appellant contends none of the prior art cited by the Examiner discloses de-sizing the preform by heating the mold to an initial temperature that is sufficient to break down the low temperature sizing to a gaseous phase. Appeal Br. 3. In particular, Appellant argues Walker discloses that de-sizing occurs prior to placing the finished reinforcement material in the device disclosed therein, and there is nothing in Walker to suggest the device includes a heater. Id. at 3–5. Appellant contends that the Examiner was incorrect in finding Bjornhov discloses a heated mold as Bjornhov teaches away from using heated molds. Id. at 5–6. Thus, Appellant contends the Examiner engages in an impermissible hindsight reconstruction of the claimed invention. Id. at 6. Issue Did Appellant demonstrate reversible error in the Examiner’s position that Bjornhov in combination with Waldrop and Walker renders obvious the Appeal 2020-001478 Application 15/027,800 6 step of “de-sizing the preform by heating the mold to an initial temperature that is sufficient to break down the low temperature sizing to a gaseous phase” as recited in claim 1? Discussion Initially, we observe that although the Examiner relies on Walker for disclosing de-sizing fiber glass through heat treatment (Final Act. 5), the Examiner’s position is that in view of Walker’s disclosure, it would have been obvious to heat the mold of Bjornhov in order to perform the thermal de-sizing step. Adv. Act. 3. Thus, Appellant’s arguments that Walker does not use a mold to perform the de-sizing step are not persuasive. However, we are persuaded that the Examiner’s position that Bjornhov discloses heating the mold is not sufficiently supported. In discussing molds suitable for its invention, Bjornhov discloses the molds used are unheated, relying instead on energy added from within an intermediate material to supply heat to the matrix substance within the mold. Bjornhov ¶¶ 32, 33, 38. Bjornhov discloses conventional heated molds are unsuitable for its method of supplying heat. Id. at ¶ 91. Bjornhov discloses the molds used therein are preferably made from heat insulating or electrically insulating plastic material. Id. at ¶¶ 38, 39, 112–114. Although Bjornhov discloses the use of resistive heating, such heating is provided by an energy supply device to electrically connected carbon fibers in the reinforcement fiber structure, and not by heating the mold. Id. at ¶ 118, Fig. 1. Thus, Bjornhov does not disclose the use of heated molds. In this regard, although we do not disagree with the Examiner’s position that Bjornhov only teaches away from the used of heated molds for the purpose of removing solvent from the resin and does not teach away Appeal 2020-001478 Application 15/027,800 7 from heated molds for de-sizing purposes (Ans. 5; see Bjornhov ¶ 91), the Examiner’s position does not sufficiently address Appellant’s arguments. That is, in view of the discussion of Bjornhov above, the Examiner does not sufficiently explain how Bjornhov discloses heated molds as would be required to meet the recitation in claim 1. Accordingly, we reverse the Examiner’s rejection of claim 1. Rejections 2–6 In rejecting independent claim 12, as well as dependent claims 3, 4, 13, 14–16, 21, and 22, the Examiner similarly relies on the combination of Bjornhov, Waldrop, and Walker. Final Act. 8–18. The additional prior art cited does not remedy the deficiencies in this combination as discussed above. Accordingly, we reverse Rejections 2–6 for similar reasons as discussed above with respect to claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–11 103 Bjornhov, Waldrop, Walker 1, 2, 5–11 3 103 Bjornhov, Waldrop, Walker, St. Clair 3 4 103 Bjornhov, Waldrop, Walker, Millard 4 12, 13 103 Bjornhov, Waldrop, Walker, Naganuma 12, 13 Appeal 2020-001478 Application 15/027,800 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14–16, 21 103 Bjornhov, Waldrop, Walker, Naganuma, Millard 14–16, 21 22 103 Bjornhov, Waldrop, Walker, Naganuma, Millard, St. Clair 22 Overall Outcome 1–16, 21, 22 REVERSED