David Piney

Patent Trials and Appeals Board

Feb 28, 2022

2022001430 (P.T.A.B. Feb. 28, 2022)

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. 13/390,886 02/16/2012 David Donald Piney 1555 114587 7590 02/28/2022 David Donald Piney 99900 DD 885 265 RPO CENTRE POINT VANCOUVER, BRITISH COLUMBIA V5T 0E2 CANADA EXAMINER SHABLACK, JOHNNIE A ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 02/28/2022 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): DavidPiney@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID DONALD PINEY Appeal 2022-001430 Application 13/390,886 Technology Center 3600 Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, 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 35, 36, 38-41, 43, 45, 54-62, and 64. 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(a). Appellant identifies the real party in interest as the inventor, David D. Piney. Appeal Br. 2. Appeal 2022-001430 Application 13/390,886 2 CLAIMED SUBJECT MATTER Appellant’s invention is related to an “Automated Window Enclosure.” Spec.,2 Title. The independent claims 54, 55, 56, 62, and 64 on appeal, reproduced below, are illustrative of the claimed subject matter. 54. A window enclosure device, comprising: at least one enclosure panel with an exterior wall thermal resistance attribute is driven by a drive mechanism to an open position and to a closed position as required and to seat in said closed position in a thermal seal with an insulated external rigid frame that’s in said thermal seal with a building exterior around a window to be enclosed. 55. A window enclosure device, comprising: at least one enclosure panel with an exterior wall thermal resistance attribute is driven by a drive mechanism to an open position and to a closed position as required and to seat in said closed position in a thermal seal with an insulated external rigid frame that’s in said thermal seal with a building exterior around a bank of windows to be enclosed. 56. A window enclosure device, comprising: at least one enclosure panel with exterior wall security and thermal resistance attributes is driven by a drive mechanism to an open position and to a closed position as required and to seat in said closed position in a thermal seal with an insulated external rigid frame that’s in said thermal seal with a building exterior around at least one element selected from the group consisting of a window to be enclosed and a bank of windows to be enclosed. 62. A window enclosure device, comprising: at least one enclosure panel comprising at least one vacuum tube and an insulating matrix; said at least one enclosure panel provides interior daylight lighting and high thermal resistance to the 2 We refer to the most recently filed Specification in the record, which is dated February 7, 2020 and has pages numbering from “Page32/58” to “Page58/58.” Appeal 2022-001430 Application 13/390,886 3 window enclosure device when enclosing in thermal seal at least one window to be enclosed. 64. A window enclosure device, comprising: at least one enclosure panel comprising at least one vacuum tube; said at least one enclosure panel provides interior daylight lighting and high thermal resistance to the window enclosure device when enclosing in thermal seal at least one window to be enclosed. THE REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Davidson US 4,370,826 Feb. 1, 1983 Butler US 4,443,978 Apr. 24, 1984 Parker US 5,270,084 Dec. 14, 1993 Perron ’242 US 5,893,242 April 13, 1999 Perron ’793 US 6,658,793 B2 Dec. 9, 2003 Torben US 2008/0309099 Dec. 18, 2008 Pedersen US 8,161,684 B2 April 24, 2012 THE REJECTIONS3,4 I. Claims 35, 36, 38-41, 43, 45, 54-62 and 64 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3 The Examiner has withdrawn the following rejections under 35 U.S.C. § 112, second paragraph, indefiniteness: (i) claims 36, 38, 41, 45, and 57-61 for reciting “at least one auxiliary device detects conditions according to a management program” and claim 40 for reciting “outdoor conditions”; (ii) claims 36, 38, 41, 43, 45, 54, and 55-61 for reciting “as required”; (iii) claims 36, 38, 41, 43, 45, and 57-61 for reciting “a stall/reset feature”; (iv) claims 38, 45, 59, and 60 for reciting “therefore”; and (v) claims 38, 45, and 59-61 for reciting “panel anchor travel.” Final Act. 3-6; Ans. 3-4. 4 The Examiner considers claims 36, 38, 39, 41, 43, 45, and 57-61, “as best understood,” to be “allowable if rewritten to overcome the rejection(s) under Appeal 2022-001430 Application 13/390,886 4 II. Claims 54 and 56 stand rejected under 35 U.S.C. § 102(b) as anticipated by Perron ’242. III. Claims 54 and 56 stand rejected under 35 U.S.C. § 102(b) as anticipated by Perron ’793. IV. Claims 54-56 stand rejected under 35 U.S.C. § 102(b) as anticipated by Davidson. V. Claims 62 and 64 stand rejected under 35 U.S.C. § 102(b) as anticipated by Parker. VI. Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Perron ’242, Torben, and Pedersen. VII. Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Perron ’793 and Torben. VIII. Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Davidson and Torben. IX. Claim 40 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Perron ’793 and Butler. X. Claim 40 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Davidson and Butler. OPINION Rejection I During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under 35 U.S.C. 112[, second paragraph] . . . and to include all of the limitations of the base claim and any intervening claims.” Final Act. 18. Appeal 2022-001430 Application 13/390,886 5 the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. In re Am. Acad. of Sci. Tech Center, 367 F.3d at 1364. “If no reasonably definite meaning can be ascribed to certain terms in the claim, . . . the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Claims 54-56: “[an] enclosure panel . . . is driven . . . to seat in [a] closed position in a thermal seal with [a] . . . rigid frame that’s in said thermal seal with a building exterior around . . . window[(s)] to be enclosed” Regarding independent claims 54, 55, and 56, the Examiner finds that “[i]t is unclear how the thermal seal that is between the . . . enclosure panel and . . . rigid frame can also be the same thermal seal that is between the . . . frame and the building.” Final Act. 3. Appellant argues that the claims recite only a single thermal seal, relative to two window positions (i.e., open and closed). Appeal Br. 375 (“in [A]ppellant’s understanding because the enclosure panel is distinctly claimed in the closed position the [Examiner’s] opposing argument, ‘a different thermal seal,’ is seen to be erroneous for it refers to the open position”); see also id. at 35-38; Reply Br. 17 (“there is only one thermal seal in [A]ppellant’s claimed structure”). Appellant explains that, 5 We refer to the Appeal Brief filed on June 2, 2020. Appeal 2022-001430 Application 13/390,886 6 [f]or example, when the at least one enclosure panel . . . is open there’s a thermal seal between the insulated external rigid frame and the building exterior around a window or bank of windows to be enclosed. And when the at least one enclosure panel . . . is driven to seat in the closed position in a thermal seal with the . . . frame that’s in said thermal seal with a building exterior . . . , there’s still only one thermal seal. Reply Br. 17. Appellant submits that “said closed position is where the enclosure panel . . . is driven . . . to snugly seat in a thermal seal.” Id. at 10-11. Each of claims 54, 55 and 56 recite, with emphasis added, “[an] enclosure panel . . . is driven . . . to seat in [a] closed position in a thermal seal with an insulated external rigid frame [that is] in said thermal seal with a building exterior around a window[(s)].” The use of the claim term “said” refers back to the earlier recited “a thermal seal,” such that the claims recite a single thermal seal; in other words, the recitation of “a thermal seal” provides antecedent basis for the recitation of “said thermal seal.” Appellant appears to construe the claimed “thermal seal” as a single seal that has two conditions: a first sealing condition that is permanently present between the insulated external rigid frame and the building exterior; and a second sealing condition that is present only when the enclosure panel is seated in a closed position with the insulated external rigid frame, but which is absent when the enclosure panel is in an open position. In this way, Appellant appears to define the thermal seal to be a combination of the sealing condition or sealing structural elements between the closed enclosure panel and insulated external rigid frame, and the insulated external rigid frame and building exterior. Appeal 2022-001430 Application 13/390,886 7 The Specification discloses, with reference to a “Summary” of the invention, that “[e]xterior mounted enclosure panels are designed to close securely in an insulated frame, which is bonded in thermal seal to the building.” Spec. 32:1024-26. The Specification also discloses, with reference to a “DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS,” that “the enclosure panels . . . are mounted in an external rigid frame” (id. at 47:1501-03), wherein, with reference to “Fold up models,” “panels butt tightly as they close (one of which uses a soft rubber gasket to facilitate snug closure 4)” (id. at 48:1515, 1536-37). The Specification also discloses that “The Slider enclosure panel slides into place (as opposed to swing into place) from above, below or to either side of the window, thus thermally sealing the window space with a virtual exterior wall to snugly enclose the window in its seated position with the insulated frame.” Id. at 55:1743-1745. The Specification further discloses panel- seating gaskets, such as molded plastic panel-seating gaskets 9, 18 of the external rigid frame 9. See, e.g., id. 48:1532-1534; 50:1580). The Specification discloses, with reference to Figure 31A (with “peripheral panel-seating gaskets . . . removed”) that “external rigid frame . . . is bonded (via thermal gasket) to the building frame with bolts” and that “126 []delineates the two insulated enclosure panels periphery[] hinged horizontally where they butt 18 panel-seating gasket.” Spec. 41:1291, 1303, 1306-07. Thus, the Specification consistently describes two separate thermal seals: a first seal between the enclosure panel and the insulated external rigid frame when the enclosure panel is seated in a closed position Appeal 2022-001430 Application 13/390,886 8 (i.e., provided by a gasket), and a second seal between the insulated external rigid frame and the exterior (i.e., a bond created by a thermal gasket).6 Figures 1A and 1B7 from the Specification are reproduced below. Figures 1A and 1B depict “[a] single enclosure panel model reference,” wherein the following reference numerals correspond to the structure indicated: “100 window (glass); “9 external rigid frame”; “18 panel-seating gasket”; “75 single enclosure panel”; “135 insulated external rigid frame”. 6 Notably, Appellant does not argue that the insulated external rigid frame itself is, for example, a rigid rubber gasket, that provides a thermal seal with the seated enclosure panel and also a thermal seal with the building exterior. Nor have we considered whether there is support for an insulated external rigid frame that is also a sealing gasket in the Appellant’s Specification, as originally filed. Nonetheless, we find that such thermal seals would be distinct as between different surfaces of such an insulated external rigid frame sealing gasket and either the enclosure panel or the building exterior. 7 We refer to the most recently filed Figures 1A and 1B, filed on October 27, 2019. Appeal 2022-001430 Application 13/390,886 9 Spec. 33:1048-1055. Reference numerals 9, 18, and 135 appear to point to the same structure. In view of the Specification, we interpret the model depicted in Figures 1A and 1B as including insulated8 external rigid frame 9, 135, wherein the insulation is provided by a panel-seating gasket 18, which also provides a thermal seal with single enclosure panel 75. In sum, we decline to interpret claims 54, 55, and 56, as written, as reciting a single thermal seal defining the (overall) condition (i.e., thermally sealed) of the three components of the enclosure panel, insulated external rigid frame, and building exterior (when the enclosure panel is seated with the insulated external rigid frame), for example, by interpreting distinct structures or structural relationships between the enclosure panel and the insulated external rigid frame, and also between the insulated external rigid frame and the building exterior to be, in total, forming a single thermal seal-not that it would not be possible to claim such a condition if clearly written. Here, we agree with the Examiner that the claim language is unclear because the same thermal seal is expressly claimed relative to two distinct structural relationships: the enclosure panel seated with the insulated external rigid frame, and also the insulated external rigid frame with the building exterior. For example, in the event the thermal seal of the 8 Although an external insulated rigid frame is disclosed in the Specification, we cannot find a detailed description of a construction of the frame, for example, describing the materials that provide the external rigid frame with its insulative properties-other than the provision of a panel-seating gasket. Notably, the term “insulate” means, for example, to protect (something) by interposing material that prevents the loss of heat, which is consistent with the interposition of a gasket or rubber material associated with the external rigid frame and provided at the interface of the enclosure panel and external rigid frame, as consistently disclosed in the Specification. Appeal 2022-001430 Application 13/390,886 10 seated enclosure panel with the insulated external rigid is provided by a snug fit, it is unclear how that same snug fit provides a thermal seal of the insulated external rigid frame and the building exterior, or in the event a thermal seal of the insulated external rigid frame and the building exterior is provided by a bond, it is unclear how that same bond provides a thermal seal of the seated enclosure panel and the insulated external rigid frame. For purposes of the Examiner’s prior art rejections, we interpret independent claims 54, 55, and 56 as reciting “[a] window enclosure device” (in the preamble of the claim) that includes the structures of (i) “at least one enclosure panel”; (ii) “a drive mechanism”; (iii) “an insulated external rigid frame,” for example, insulated by a rubber gasket; (iv) “a [first] thermal seal” that is a thermal seal formed by the enclosure panel with the external insulated rigid frame when the enclosure panel is in a seated, closed position; and (v) “[a second] thermal seal” (replacing or corresponding to the recited “said thermal seal”) between the insulated external rigid frame and a building exterior, wherein the rigid frame and second thermal seal must be capable of such a thermal seal with a building exterior when installed, the building exterior itself not being a structural member of the recited window enclosure device. Or, put another way in view of Appellant’s claim construction, we consider whether the prior art discloses a thermal seal including a seated enclosure panel in a thermal seal with an insulated external rigid frame, and the insulated external rigid frame in a thermal seal with a building exterior. Notably, we do not interpret claims 54-56 to require separate, structural sealing elements, in addition to, for example, an insulated external rigid frame, to provide such thermal seals; the insulation, Appeal 2022-001430 Application 13/390,886 11 for example, of the insulated external rigid frame may provide such thermal seals. Accordingly, we affirm the Examiner’s rejection of independent claims 54, 55, and 56 under 35 U.S.C. § 112, second paragraph, as being indefinite, and claims 35, 36, 38-41, 43, 45, and 57-61 depending therefrom. Claims 36, 38, 39, 41, 45, 57-62, and 64: “high thermal resistance” Dependent claims 36, 38, 39, 41, 45, and 57-61, and independent claims 62 and 64 recite that “said vacuum daylight portal” provides “high thermal resistance to the window enclosure device when closed.” See Appeal Br. 73, 74, 77-82 (Claims App.). The Examiner finds that the claim term “high” is relative and therefore indefinite. Final Act. 4, 6. Appellant argues that the claim language “high thermal resistance” is “as accurate as circumstances permit.” Appeal Br. 197 (emphasis omitted); see also id. at 5-7 (citing In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) and an “Oct. 27 Affidavit,” which was “denied entry” due to lack of being “affirmed”).9 In support, Appellant submits that the claim language 9 Although Appellant “requests the Board to consider whether the Dec 10 Advisory[] is a substantial error of patent law under 35 USC [§] 132[] for not reasonably notifying appellant of the denied entry of the Oct 27 Affidavit and Claims before appellant constructed the current Appeal Brief upon the Oct 27 Affidavit and Claims subject matter,” such an issue is not a rejection of the claims that is before us on appeal. Appeal Br. 9. In particular, an Examiner’s refusal to enter documents in the record, including, for example, an amendment to the claims or evidence (e.g., an affidavit or declaration) is a petitionable matter that is not subject to review by this Board. See MPEP § 1201 (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F. 3d 975, 984 (Fed. Cir. 2002). Moreover, Appeal 2022-001430 Application 13/390,886 12 “said vacuum daylight portal provides . . . high thermal resistance to the window enclosure device” provides context to the claim term “high,” which means a thermal resistance for the claimed window enclosure device that is “higher thermal resistance than current window glass technology because [of the] vacuum.” Appeal Br. 32; see also Reply Br. 4-5. Words of degree may lack precision, but they do not in themselves render a claim indefinite. Seattle Box Co. v. Industrial Crate & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Rather, a term of degree is definite if the specification “provides some standard for measuring that degree,” wherein “one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.” Id. Here, the claim term “high” is a term of degree. The Specification discloses, with reference to Figure 27, that “vacuum daylight portals can be combined for increased thermal resistance” (Spec. 40:1259 (emphasis added)) and, perhaps also with reference to Figure 27, that “two vacuum daylight portals are shown sandwiched together 130 & 131 with high thermal resistance” (id. at 48:1-2 (emphasis added)).10 The Specification also discloses, with reference to Figure 32, that “glass vacuum tubes [are] dipped in clear plastic resin and mounted in a foam matrix in order to construct an R-30 vacuum daylight portal.” Id. at 41:1313-14. Appellant’s proposed amendment, deleting the claim term “high” and replacing it with the term “insulating” is not permitted in the context of an Appeal Brief, and therefore, we decline to consider it. See Appeal Br. 33, 197. 10 We decline to determine whether there is written description support for this subject matter in the Specification as originally filed. Appeal 2022-001430 Application 13/390,886 13 We are not persuaded by Appellant’s argument that the Specification provides a standard for measuring a degree of “high” thermal resistance by virtue of a comparison with current window glass technology (assuming current refers to as of the filing date of Appellant’s Specification). In addition, assuming that it is well known in the relevant field of art that an “R” value is a measure of the resistance of windows to heat conduction, the Specification’s description of an R-30 value relative to glass vacuum tubes constructed a certain way does not provide a standard for measuring what “high” thermal resistance is relative to the claimed vacuum daylight portal providing thermal resistance to a window enclosure device when closed. Accordingly, we affirm the Examiner’s rejection of independent claims 36, 38, 39, 41, 45, 57-62, and 64 under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 38, 45, 59, and 60: “said mechanical seating mechanism stands said drive mechanism off said closed position with a folding mounting bracket and when driven to said closed position permits said at least one enclosure panel with said exterior wall thermal resistance attribute to seat by closing said folding mounting bracket” The Examiner finds that “[i]t is unclear how the drive mechanism has ‘said closed position’ since the prior recitation of a closed position is in regards to the at least one enclosure panel.” Final Act. 5. In other words, the Examiner finds that “[t]he claims did not clearly set forth antecedent basis for the drive mechanism having a closed position;” instead, “[t]he claims have antecedent basis for the at least one enclosure panel having a closed position.” Id. Appeal 2022-001430 Application 13/390,886 14 The Examiner’s interpretation of the claims is correct, in that the independent claims from which claims 38, 45, 59, and 60 depend (Appeal Br. 73, 76, 79, 80 (Claims App.)), namely, claims 54 and 55, recite that “at least one enclosure panel . . . is driven by a drive mechanism” (Appeal Br. 77 (Claims App.)). Thus, the recitation in dependent claims 38, 45, 59, and 60 of “said mechanical seating mechanism . . . when driven to said closed position” appears to refer to the closed position of the enclosure panel, and not the mechanical seating mechanism as the claim language states. Thus, these claims are unclear. Accordingly, we affirm the Examiner’s rejection of claims 38, 45, 59, and 60 under 35 U.S.C. § 112, second paragraph, as being indefinite. Rejection II The Examiner finds that Perron ’242 anticipates claims independent claims 54 and 56. Final Act. 7-10. To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). In particular, the Examiner finds that, relative to Perron ’242, at least one of the pair of panels or shutters 20 corresponds to the claimed enclosure panel, frame 28 insulated by insulation 26 corresponds to the claimed insulated external rigid frame, and building wall 2 corresponds to the claimed building exterior.11 Final Act. 7, 9 (citing, e.g., 11 We are not persuaded by Appellant’s argument that the Examiner “simply . . . mention[s] a few words in common” between Perron ’242 and the claims and merely “inserts reference coordinates from Perron [’]242 for example, into [A]ppellant’s unique claim[ed] subject matter”; rather, the Examiner articulates the rejection sufficiently by reading the claim limitations onto the Appeal 2022-001430 Application 13/390,886 15 Perron ’242 1:1-23, 3:1-32, Figs. 1, 2). The Examiner also finds that Perron ’242 discloses an (overall) thermal seal, as claimed, when shutter 20 is driven to seat in a closed position, because in the closed position, shutter 20 is in a thermal seal with frame 28 via air chamber 34, and frame 28 is in a thermal seal with building wall 2 by virtue of thermally insulating air gap 144 and sealing brushes 128, 134. Id. at 9-10 (citing Perron ’242 1:39-45, 3:24-32, 6:20-37). See also Ans. 10-20. Figure 2 of Perron ’242 is reproduced below. structure disclosed in Perron ’242, or in other words, by identifying structure in Perron ’242 that corresponds to the structures claimed. See Appeal Br. 47-50. This argument is also not persuasive as applied to Rejections III and IV. Appeal 2022-001430 Application 13/390,886 16 Figure 2 of Perron ’242 depicts a cross-section of a building wall 2, a window opening 8, a shutter unit 18, and a pair of panels or shutters 20 (see, e.g., Perron ’242 3:61-4:3), which are “horizontally moveable in a plane parallel to the building wall 2 by means of a driving mechanism” (id. at 4:55-57) and have “thermal insulation 26 . . . applied against the centre part of the inner sheet 22” of shutter 20 (id. at 4:7-9), and are also “surrounded by a frame 28”12 (id. at 4:9). Perron ’242 also depicts “[f]rame 28 inwardly protrud[ing] from the insulation 26 and . . . plywood sheets 30 . . . secured to frame 28,” which “form an air chamber 34 with the frame 28 and the insulation 26.” Id. at 4:11-14. Perron ’242 further depicts “an upper sealing brush strip 128 which is horizontally secured to the shutter frame 28 by means of a bracket 130” and is “in sliding contact with a horizontal Z- shaped metal strip 132 which is secured to the building wall 2 along the window opening lintel 12,” and also “[a] horizontal lower sealing brush strip 134 . . . secured to the underside of frame 28,” which “is in sliding contact with the top of the window opening sill 10” (id. at 6:9-18). Perron ’242 discloses that “sealing brush strips 128, 134 . . . are designed to seal from the exterior elements a thermally insulating air chamber 144, . . . the chamber 144 being additional to the air chamber 34 incorporated within the shutter panels.” Id. at 6:29-34. Figure 1 of Perron ’242 depicts the thermally insulating external window shutter attached to an exterior building wall. 12 Notably, Perron ’242’s frame appears to be fastened to the shutter, such that the frame moves with the shutter; however, the air gap, which the Examiner finds discloses a thermal seal is present when the shutter is driven to seat in a closed position with the insulated external rigid frame, as required by claims 54 and 56. In other words, claims 54 and 56 do not require the enclosure panel to move independently from the frame. Appeal 2022-001430 Application 13/390,886 17 Appellant argues that Perron ’242’s “brush bristle structure is erroneously considered to provide a thermal seal with an exterior wall thermal resistance attribute” because Perron ’242’s use of the term “sealing brushes” is “a relative term,” wherein “laypeople understand that brush bristles cannot provide a seal, . . . let alone a thermal seal with exterior wall security and thermal resistance attributes,” as claimed. Appeal Br. 50. Appellant submits that “the hardware components under [the] shutters [of Perron ’242] provide only local obstruction to outside airflow, which simply flows around it right through to the window glass, mitigated by only brush bristles” (id. at 52), “which are clearly unable to prevent the escape of a liquid or a gas according to examination dictionary definition of a seal, let alone provide a thermal seal with exterior wall thermal resistance attributes as distinctly claimed” (id. at 53). Appellant further submits that Perron ’242’s “shutters can [not] be driven to seat around a window to be enclosed in order to provide a seal.” Id. at 59. We are not persuaded by Appellant’s argument. The Specification does not provide an express definition for the claim term “thermal seal.” See Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (when a patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term, such definition controls). Notably, the Specification does not indicate that a seal must prevent the escape of a liquid or a gas (i.e., be airtight), as argued by Appellant, as the Specification refers to “a thermal seal with no air gaps,” implying that a thermal seal may or may not have air gaps. Id. at 56:1772. We accept the Examiner’s definition of “thermal seal,” which is based on plain meanings of these terms: “a seal against the transfer of heat.” Ans. 18. Appeal 2022-001430 Application 13/390,886 18 Further, a preponderance of the evidence supports the Examiner’s finding that Perron ’242’s sealing brush strips 128, 134 are seals, and further, that together with air chamber 144, they provide a thermal seal, as Perron ’242 discloses that sealing brush strips 128, 134 are designed to seal from the exterior elements a thermally insulating air chamber 144.13 Regarding Appellant’s argument that Perron ’242’s “shutters can [not] be driven to seat around a window to be enclosed in order to provide a seal” (Appeal Br. 59), claims 54 and 56 require the enclosure panel to be driven to open and closed positions, and to seat in the closed position in a thermal seal with an insulated external rigid frame. Appellant does not dispute the Examiner’s reliance on Perron ’242’s air chamber 34 for providing a thermal seal relative to Perron ’242’s enclosure panel (i.e., shutter 20) and insulated exterior rigid frame (i.e., frame 28). As Perron ’242’s shutter 20 is (always) in a thermal seal relative to frame 28 via air chamber 34, we are not apprised of error in the Examiner’s finding that such a thermal seal exists when shutter 20 is in a closed, seated position “with” the insulated external rigid frame, as claimed. Claims 54 and 56 do not require the enclosure panel to seat around a window to be enclosed. Appellant also argues that the claim language “exterior wall security and thermal resistance attributes” means that 13 Moreover, Perron ’793 is evidence that a person of ordinary skill in the art would recognize that sealing brush strips are recognized in the prior art as providing a thermal seal, as Perron ’793 discloses, with reference to a window shutter 10, that “for additional insulation and protection against cold temperatures, the shutter 10 is equipped with flexible sealing devices of any existing type, such as elongated brushes 19, located between the frame 15 and the sliding panels 20, 20', and rigid insulation foam 19ʺ all around the frame 15.” Perron ’793 6:59-64. Appeal 2022-001430 Application 13/390,886 19 . . . the enclosure panels will achieve an R-30 rating with 6” of SM Styrofoam 125 for example, and are mounted in an external rigid frame that’s both top plate 81 and window jack anchored 9b. The enclosure panels have heavy gauge security wire welded to the steel / aluminum frame face, and are fully enclosed within a molded heavy gauge plastic skin. When closed these enclosure panels offer no building intrusion opportunities short of using demolition tools, which would make exterior walls of most building equally vulnerable. Thus in effect, their security and thermal resistance attributes are exterior wall equivalent. Appeal Br. 51 (quoting Spec. 47:1501-08). Appellant submits that the Specification discloses that “[the] conceptual basis of this invention ‘turns window glass space in buildings into a virtual exterior wall with the touch of a switch,” and provides “optimum energy conservation for window enclosure while achieving unprecedented building security.” Id. (quoting Spec. 32:1021-27); see also id. at 56-57; see also id. at 67-68 (arguing that the claims require “security and thermal resistance attributes . . . equivalent to regional building code, which inherently means optimum energy conservation for window enclosure”); see also Reply Br. 14-15, 21-22, 36- 37. Independent claim 54 requires the enclosure panel to have “an exterior wall thermal resistance attribute,” and independent claim 56 requires the enclosure panel to have “exterior wall security and thermal resistance attributes.” Appeal Br. 77 (Claims App.). The Specification does not provide express definitions relative to these attributes, but rather, as indicated by Appellant supra, the Specification provides examples of enclosure panel constructions that may achieve such attributes. For example, the Specification discloses that Appeal 2022-001430 Application 13/390,886 20 [t]he basic materials for enclosure panel core construction will vary according to regional weather conditions, material availability and custom security needs. But basically the enclosure panels will achieve an R-30 rating with 6” of SM Styrofoam 125 for example, and are mounted in an external rigid frame that’s both top plate 81 and window jack anchored 9b. The enclosure panels have heavy gauge security wire welded to the steel / aluminum frame face, and are fully enclosed within a molded heavy gauge plastic skin. When closed these enclosure panels offer no building intrusion opportunities short of using demolition tools, which would make exterior walls of most building equally vulnerable. Thus in effect, their security and thermal resistance attributes are exterior wall equivalent. Spec. 47:1500-07. In this regard, the Examiner correctly determines that “Appellant is relying upon descriptions from the [S]pecification that are not recited in the claims.” Ans. 10. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). We construe the claim language “an exterior wall thermal resistance attribute” to mean a quality of thermal resistance (i.e., resisting heat transfer) of a wall that may be on an exterior of a building. We find that a preponderance of the evidence supports the Examiner’s finding that Perron ’242’s shutters 20 (i.e., enclosure panels) have “an exterior wall thermal resistance attribute,” as claimed, because Perron ’242 discloses the shutters are “each made of plywood sheets 22 covered by a metal sheathing defining the outside face of the panel,” which would inherently provide thermal resistance similar to that of an exterior wall, for example, made of plywood wall covered by metal sheathing. Perron ’242 4:2-9. We also construe the claim language “exterior wall security . . . attribute[]” to mean a quality of Appeal 2022-001430 Application 13/390,886 21 protection of a wall that is on an exterior of a building and find that a preponderance of the evidence supports the Examiner’s finding that Perron ’242’s shutters 20 (i.e., enclosure panels) have an “exterior wall security attribute[],” as claimed, because Perron ’242’s plywood, metal-sheathing covered shutters would also inherently provide the security protection of a plywood, metal-sheathing covered exterior wall. Appellant further argues that Perron ’242’s frame is not an “insulated external rigid frame that’s uniquely claimed by [A]ppellant to snugly seat in the closed position,” because Perron ’242’s frame “cannot even make direct contact with the shutters 20 when closed, which are stood completely off the building exterior in order to provide travel clearance to open and close.” Appeal Br. 53; see also Reply Br. 38-39. Claims 54 and 56 require the enclosure panel “to seat in [a] closed position in a thermal seal with an insulated external rigid frame,” but do not specify direct contact between the enclosure panels and the insulated external rigid frame; rather, material or structure providing an insulative property (i.e., a rubber gasket, sealing brushes, an airgap) may be interposed between the enclosure panel and the insulated exterior rigid frame to provide a thermal seal(s), as required by the claims and as discussed supra. Appeal Br. 77 (Claims App.). Perron ’242 discloses that “thermal insulation 26 . . . is applied against the centre part of the inner sheet 22 [of shutter 20] and surrounded by a frame 28 which is approximately the same size as window opening 8” (Perron ’242 4:7-10) and that “[f]rame 28 inwardly protrudes from the insulation 26 and two or more plywood sheets 30 are secured to frame [and] form an air chamber 34 with the frame 28 and the insulation 26” (id. at Appeal 2022-001430 Application 13/390,886 22 4:11-14). Thus, we find that a preponderance of the evidence supports the Examiner’s finding that Perron ’242’s frame, which by definition is a rigid structure that surrounds something, is external, at least relative to building wall 2, and further, is insulated by virtue of thermal insulation 26 which the rigid frame surrounds. Regarding the claim requirement that when seated in a closed position, the enclosure panel is “in a thermal seal with” the rigid frame, Appellant’s argument does not apprise us of error in the Examiner’s finding that when Perron ’242’s shutter 20 is seated in a closed position, a thermal seal is provided with frame 28 by “plywood sheets 30 . . . secured to frame 28 . . . form[ing] an air chamber 34 with the frame 28 and the insulation 26,” which “air chamber 34 [is] incorporated within the shutter panels.” Perron ’242 4:11-14, 6:33-34. Accordingly, we sustain the Examiner’s rejection of independent claims 54 and 46 under 35 U.S.C. § 102(b) as anticipated by Perron ’242. Rejection III The Examiner finds that Perron ’793 also anticipates claims 54 and 56. Final Act. 7-10. In particular, regarding independent claims 54 and 56, the Examiner finds that, relative to Perron ’793, panel 20, 20´ corresponds to the claimed enclosure panel and frame 15 corresponds to the claimed rigid frame 28. Final Act. 10-11 (citing, e.g., Perron ’793 2:16-25, 55-67, 6:53- 67, 7:1-5, Fig. 1). The Examiner also finds that Perron ’793’s panel 20 seats in a thermal seal with frame 15, which is insulated by elongated brushes 19 or foam 19ʺ. Id. at 11 (citing Perron ’793 6:53-67, 7:1-5). Appeal 2022-001430 Application 13/390,886 23 Figure 2 of Perron ’793 is reproduced below. Figure 2 of Perron ’793 depicts “shutter 10 compris[ing] a frame 15 enclosing a window opening O and externally secured to the surface of the wall W,” wherein “coplanar panels 20, 20´ are movably mounted on the frame 15 via a pair of elongated guide members 30, 30´.” Perron ’793 4:45- 49. Perron ’793 discloses that for additional insulation and protection against cold temperatures, the shutter 10 is equipped with flexible sealing devices of any existing type, such as elongated brushes 19, located between the frame 15 and the sliding panels 20, 20´, and rigid insulation foam 19ʺ all around the frame 15. The external edges 26a, 26a´ of the panels 20, 20´ carry a flexible flap 19aʺ, typically made out of rubber type material, incurved inwardly to close off any gap between them and the sides of the frame 15 when in closed configuration. Additionally, a similar flexible sealing device 19´ such as a rubber flap is installed on the internal edge 26 of one of the panels 20´ and adapted to abut Appeal 2022-001430 Application 13/390,886 24 the internal edge 26´ of the other panel 20 to seal off the gap between the two when in closed configuration. Perron ’793 6:59-7:5. Notably, Figure 1 of Perron ’793 depicts the external window shutter attached to an exterior building wall. Figure 3 of Perron ’793 is reproduced below. Figure 3 of Perron ’793 depicts foam 19ʺ providing a thermal seal between exterior wall W and frame 15. Perron ’793 6:59-7:5. Appellant argues that the “brush bristle structure is erroneously considered to provide a thermal seal with an exterior wall thermal resistance Appeal 2022-001430 Application 13/390,886 25 attribute.” Appeal Br. 50. Appellant submits that “the hardware components under the Perron 793 shutters provide only local obstruction to outside airflow, which simply flows around it right through to the window glass, mitigated by only brush bristles and a rubber flap along the vertical sides that butt the shutter vertical sides when closed.” Id. at 52. To be clear, claims 54 and 56 require the enclosure panel to have an exterior wall thermal resistance attribute, and we find that a preponderance of the evidence supports the Examiner’s finding that Perron ’793’s shutters 20, 20´ “provide[] protection and insulation against cold temperatures” (Final Act. 10), in that Perron ’793’s shutters 20, 20´ (in addition to simply being shutters that inherently provide a measure of thermal resistance and security when closed) have flexible, rubber flaps to resist heat transfer via gaps between shutters 20, 20´ and frame 15, and also between the shutters 20, 20´ themselves. Moreover, we find that a preponderance of the evidence supports the Examiner’s finding that Perron ’793’s elongated brushes 19 are thermal seals, as Perron ’793 expressly discloses (as discussed supra) that elongated brushes 19 are an example of an existing type of flexible sealing device, and as disclosed in Perron ’793, function to protect against cold temperatures. Perron ’793 6:59-64. Cf. Appeal Br. 59 (arguing that Perron ’793’s shutters cannot be driven to seat around a window to be enclosed in order to provide a seal, let alone a thermal seal). Similar to Appellant’s arguments relative to Perron ’242 supra, Appellant argues that Perron ’793 fails to disclose an “insulated external rigid frame that’s uniquely claimed by [A]ppellant to snugly seat in the closed position”; rather, Perron ’793’s “frame 15 with insulation 19ʺ cannot even make direct contact with the shutters 20 when closed, which are stood Appeal 2022-001430 Application 13/390,886 26 completely off the building exterior in order to provide travel clearance to open and close.” Appeal Br. 53; see also id. at 59 (arguing that although Perron ’793’s “shutters do butt on the vertical sides when closed, they cannot butt the shutters along the horizontal face when closed, which move in parallel plane with the applied art structure”); Reply Br. 38-39. As discussed supra, Perron ’793 discloses that there is rigid insulation foam 19ʺ all around the frame 15, and therefore, a preponderance of the evidence supports the Examiner’s finding that Perron ’793 discloses an insulated external rigid frame, as claimed. Moreover, claims 55 and 56 require the enclosure panel to seat in a closed position in a thermal seal with an insulated external rigid frame, and a preponderance of the evidence supports the Examiner’s finding that Perron ’793’s sliding panels 20, 20´ seat in a closed position, wherein elongated brushes 19, which are located between the frame 15 and the sliding panels 20, 20´, provide a thermal seal. Notably, claims 54 and 56 do not recite “snugly” relative to the seating of the enclosure panel in a thermal seal with the rigid frame, or an “optimum energy conservation.” See, e.g., Appeal Br. 59. Accordingly, we sustain the Examiner’s rejection of independent claims 54 and 56 under 35 U.S.C. § 102(b) as anticipated by Perron ’793. Rejection IV The Examiner further finds that Davidson anticipates claims 54-56. Final Act. 11-12. In particular, the Examiner finds that Davidson’s four shutters 13, 14, 15, and 16 are each enclosure panels with exterior wall security and thermal resistance attributes (Final Act. 11 (citing Davidson 1:20-60, 2:50-60)) and that Davidson’s support bar 20, track means 21, 22, Appeal 2022-001430 Application 13/390,886 27 and end supports 23 disclose an insulated exterior rigid frame (Ans. 29). The Examiner also finds that Davidson’s shutter seats in a closed position in a thermal seal with an insulated external rigid frame that is in a thermal seal with a building exterior, for example, “Davidson discloses the thermal seal reduces heat transfer and air gaps to insulate the window.” Final Act. 11 (citing Davidson 1:20-60, 2:50-68, 4:1-26, 8:8-27, Fig. 1). In particular, the Examiner finds that Davidson’s shutter “seats with a vertical insulated rigid frame ([support bar] 20) and with top and bottom insulated rigid frames ([track means] 21 and 22).” Ans. 29 (emphasis added). The Examiner finds that “Davidson discloses the enclosure panels are seated when the enclosure panels are in the closed position and it is understood that when the panel butts when closed, it provides a seal around the periphery of the panels to provide thermal insulation.” Ans. 31. Figure 1 of Davidson depicts “a typical thermal insulation shutter device fastened to a wall completely encompassing and sealing a building glass area Appeal 2022-001430 Application 13/390,886 28 commonly called a window,” and particularly “show[ing] how the device seals at the edge of the window.” Davidson 2:62-65. Davidson’s Figure 1 shows “a four shutter thermal insulation device 10 mounted on a building wall 1” (Davidson 4:1-2), wherein “cam seal support bar 20 . . . seals the shutters at the sides of the glass area and provides a seal at the rear of the shutter 13 and 16 and helps tie the assembly together” (id. at 4:9-11). Appellant argues that Davidson’s “guide track leaks away the otherwise conserved energy of the shutters and the exterior wall through the window glass when the shutters are closed,” and therefore, “a thermal seal is not possible with the Davidson slider design, let alone with an exterior wall thermal resistance attribute that’s distinctly claimed.” Appeal Br. 55; see also Reply Br. 23-25 Although the Examiner relies on cam seal support bar 20, in addition to track means 21, 22 for providing a thermal seal when shutter 13, 14 is in a closed and seated position, we agree with Appellant that Davidson fails to disclose that the insulated external rigid frame, as relied on by the Examiner, namely, Davidson’s track means 21, 22, and end supports 23, are either insulated or provide a thermal seal with Davidson’s shutter when closed.14 To be clear, we construe the claim language “at least one enclosure panel . . . is driven . . . to seat in [a] closed position in a thermal seal with an insulated 14 Notably, Anderson (US 4,242,836; issued January 6, 1981), which is of record, discloses that it is well known in the art of insulating shutters for windows (albeit on the interior) to provide “sealing means . . . between the [sliding] shutters, the track and a window frame to inhibit air leakage.” Anderson, Abstract. For example, Anderson discloses that it is well known to use “weather-stripping for making airtight and water tight seals about certain sliding window parts.” Id. at 1:15-17. Appeal 2022-001430 Application 13/390,886 29 external rigid frame” to mean that the enclosure is thermally sealed relative to the insulated external rigid frame, and not merely that an insulation is present to provide a thermal seal between the panel and a portion of the insulated external rigid frame, as accomplished by Davidson’s cam seal support bar 20. Moreover, Appellant argues that “Davidson is specifically claimed and disclosed for a building interior, which alone precludes anticipation.” Appeal Br. 56. Indeed, claims 54-56 recite that and Davidson discloses that the “improved thermal insulation shutter device” is “mounted to the inside wall of said building attached to the structural framing.” Davidson 1:31-32. Thus, a preponderance of evidence does not support the Examiner’s finding that Davidson discloses an insulated external rigid frame that is in a thermal seal with a building exterior around a window to be enclosed. Accordingly, we cannot sustain the Examiner’s rejection of independent claims 54-56 under 35 U.S.C. § 102(b) as anticipated by Davidson. Rejection V The Examiner finds that Parker anticipates claims 62 and 64. Final Act. 12-13. In particular, regarding claims 62 and 64, the Examiner finds that Parker’s glazing unit is an enclosure panel, as claimed, because Parker’s glazing unit “encloses an opening which is understood to be a window.” Final Act. 12 (citing, e.g., Parker, Fig. 1). The Examiner relies on a dictionary definition of the claim term “window” as recited relative to “the window enclosure device”: “an opening in a wall or roof of a building that is provided to let [in] light or air or to see through.” Id. at 13 (citing the Appeal 2022-001430 Application 13/390,886 30 Collins English Dictionary). The Examiner also finds that Parker’s glazing unit comprises at least one vacuum tube and an insulating matrix (i.e., “mastic material and discs 21 together form an insulating matrix within the panel”). Id. at 12 (citing Parker 3:12-31, Fig. 1). Figure 1 of Parker is reproduced below. Figure 1 of Parker depicts “a fragmentary perspective view of a glazing unit . . . with the peripheral sealing means partly removed for illustrative purposes.” Parker 4:15-17. Parker discloses that “[t]he [invented] structure also lends itself to retrofitting, that is adding an additional pane or panes to an existing single or multi-pane structure” and that “[s]ince the insulation value of the applicant’s glazing units are better than a normal wall, it is possible to put in a larger window area and not lose on insulation.” Id. at 9:32-37. As relied on by the Examiner, Parker discloses that, according to one construction, Appeal 2022-001430 Application 13/390,886 31 the cap of sealing material is a layer of solder covering the peripheral edges of the panes and extending across the gap between them. . . . The solder is applied progressively . . . about the periphery of the panes and bridging the gap between them. In this process, a small tube is placed in the solder layer, extending through it to the chamber between the panes. A partial vacuum is drawn through this tube and ultimately the tube pinched and melted to seal off the vacuum-containing chamber. Parker 3:12-27. Appellant argues that Parker15 fails to disclose “vacuum tubes” or “at least one enclosure panel comprising at least one vacuum tube and an insulating matrix,” or that Parker’s device is “intended to be a window enclosure device.” Appeal Br. 57; see also id. at 60-61; Reply Br. 60-65. The Specification discloses, for example, with reference to Figure 32, “vacuum daylight portals” which may be “glass vacuum tubes . . . dipped in 15 Regarding Appellant’s argument that Parker is not analogous art to the claimed invention (Reply Br. 60), we find that Parker is in the same field of endeavor as Appellant’s claimed invention, namely, window enclosure devices having interior daylight lighting, for example, provided by a vacuum tube. See, e.g., Parker 1:6-10 (disclosing that the “Field of Invention” is “a multi-pane glass glazing unit,” for use in “residential and commercial construction where controlled light transmittance . . . is desirable”). We further find that Parker addresses the problem of providing interior daylight lighting relative to a window enclosure device. Thus, Parker is analogous art properly relied on by the Examiner. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appeal 2022-001430 Application 13/390,886 32 clear plastic resin and mounted in a foam matrix in order to construct an R- 30 vacuum daylight portal.” Spec. 41:1313-14, Fig. 32. Figure 32 is reproduced below. Figure 32 depicts a “Plexliglas . . .facer plate [128]” and “glass vacuum tubes [129].” Id. at 41:1311-13. We are not persuaded by Appellant’s argument that Parker’s multi- pane glazing unit is not an enclosure panel of a window enclosure device, as Parker discloses that the glazing unit is intended to cover a window area, as discussed supra, and we accept the Examiner’s definition supra. However, we agree with Appellant that a preponderance of the evidence fails to support the Examiner’s finding that Parker discloses that the glazing unit comprises a vacuum tube, as claimed, but rather describes using a tube to create a vacuum between the panes of glass. Accordingly, we do not sustain the Examiner’s rejection of claims 62 and 64 under 35 U.S.C. § 102(b) as anticipated by Parker. Appeal 2022-001430 Application 13/390,886 33 Rejection VI Claim 35 depends from independent claim 56 and is reproduced below. 35. The window enclosure device as claimed in claim 56, further comprising: an insulated external rigid frame16 for ice and snow conditions17 that’s in said thermal seal with said building exterior around at least one element selected from the group consisting of said window to be enclosed and said bank of windows to be enclosed, comprises an external rigid frame and a panel-seating gasket. Appeal Br. 72 (Claims App.). As an initial matter, to the extent the “an insulated external rigid frame” recited in claim 35 is intended to refer back to the same insulated external rigid frame recited in independent claim 56 from which claim 35 depends, claim 35 should recite “said insulated external rigid frame,” whereby the recitation of “an insulated external rigid frame” in claim 56 provides antecedent basis for this claim element. Otherwise, claim 35 is 16 For the purpose of efficient prosecution, we read this claim element as “said insulated external rigid frame.” 17 The Examiner correctly determines that that claimed phrase “for ice and snow conditions” is a statement of intended use, which does not definitively structurally limit the claimed insulated external rigid frame. Thus, the claimed phrase “for ice and snow conditions” in not entitled to patentable weight and does not distinguish the claimed invention from the prior art. See, e.g., Final Act. 13; cf. Reply Br. 26 (arguing that “the claim 35 insulated external rigid frame element clearly differentiates the panel-seating gasket subject matter for ice and snow conditions from the parent claim 56 - where conventional gasket material that’s suitable for the purpose is sufficient,” without expressly claiming, for example, gasket material required for such condition); see also id. at 31-32. Appeal 2022-001430 Application 13/390,886 34 introducing a new structural element, or a second insulated external rigid frame, into claim 35, which is in addition to the insulated external rigid frame recited in independent claim 56 from which claim 35 depends. Notably, the Specification does not provide written description support for two insulated external rigid frames relative to a single window enclosure device. Notwithstanding, claim 35 appears to further limit the insulated external rigid frame recited in claim 56 to be comprised of an external rigid frame and a panel-sealing gasket. Notably, the use of the transitional phrase “comprising” means that although the insulated external rigid frame must be insulated, the insulative property may be provided by a structure other than the external rigid frame and a panel-sealing gasket expressly recited in claim 35.18 Notwithstanding, claim 35 also reads on an embodiment wherein the panel-sealing gasket itself provides the insulative property that is required by the claimed insulated external rigid frame. Regarding dependent claim 35, the Examiner interprets Perron ’242’s insulated external rigid frame to be frame 28 insulated with thermal insulation 26, plywood sheets 30, and sealing brush strips 128, 134. Final Act. 13. The Examiner finds that Perron ’242 fails to disclose a panel- sealing gasket, as required by claim 35, and the Examiner relies on Torben19 18 We decline to determine whether such a structure has written description support in the Specification, as originally filed. 19 Regarding Appellant’s argument that Torben is not analogous art to the claimed invention (Reply Br. 81), we find that Torben is in the same field of endeavor as Appellant’s claimed invention, namely, window enclosure devices. See, e.g., Torben ¶ 1 (disclosing that the invention relates to “pivotably openable window or like closure member[s],” such as “pivotably openable closure member with a stationary aperture frame, such as a Appeal 2022-001430 Application 13/390,886 35 for disclosing that “it is known for a panel to seat in a closed position within an external rigid frame and panel-sealing gasket,” which Appellant does not dispute.20 Id. at 14. The Examiner reasons that it would have been obvious to modify Perron ’242’s insulation relative to external rigid frame 28 to be a panel-seating gasket because “it is a known technique for providing a thermal seal that contours and seats with improved ergonomics.” Id. Thus, we understand the Examiner’s proposed modification to be a substitution of Perron ’242’s sealing brush strips 128, 134 with a panel-seating gasket, because Perron ’242’s shutter 20 seats relative to sealing brush strips 128, 134 via frame 28. Appellant argues that Perron ’242’s frame 28 is fixed relative to shutter 20, and therefore, shutter 20 cannot “seat” in a panel-seating gasket, as required by by the Examiner’s proposed modification. Appeal Br. 64. We are not persuaded by Appellant’s argument. Although Appellant is correct in that Perron ’242’s external rigid frame 28 moves along with shutter 20 (and air chamber 34 between thermal insulation 26 and plywood sheets 30), Appellant’s argument does not apprise us of error in the Examiner’s reasoning that modifying Perron ’242’s sealing brush strips 128, pivotable window sash within a stationary window frame”). We further find that Torben addresses the problem of sealing between movable and stationary window enclosure members, which is reasonably pertinent to a problem also addressed by Appellant. Thus, Torben is analogous art properly relied on by the Examiner. 20 The Examiner also relies on Pedersen as evidence that “it is known for insulating sealing brushes to be equivalent to gaskets for providing a panel with insulation during seating of a panel” and further reasons that it would have been obvious to modify Perron ’242’s external rigid frame 28 to have a panel-sealing gasket, as taught by Torben, because “Pedersen specifically discloses that sealing brushes are equivalent to gaskets.” Final Act. 14. Appeal 2022-001430 Application 13/390,886 36 134 to be a panel-seating gasket, as taught in Torben, results in Perron ’242’s shutter 20 seating in a panel-seating gasket via external rigid frame 28, as required by claim 35. The same panel-seating gasket still provides that thermal seal required by independent claim 56 between Perron ’242’s external rigid frame 28 and the building exterior or wall 2. Appellant also argues that “it’s inherently impossible for the Torben design to provide [the claimed] panel-seating gasket,” because Torben only discloses “some flexible gasket material that’s not rightly disclosed for the multitude of function alleged.” Appeal Br. 65. Torben discloses, with reference to Figures 1 to 4, “an openable window assembly 11 with a main, substantially stationary, or fixed frame structure 12 . . . , and an openable sash structure 13” (Torben ¶ 36), wherein “a resilient and preferably circumferential gasket (not shown) is often provided between the frame 12 and the sash 13,” the gasket being “compressed when the sash is in the closed position in order to provide a substantially hermetic seal between the frame 12 and the sash 13” (id. ¶ 38). Torben also discloses that the gaskets may be “fine brushes, plastic foam strips or a metal or plastic strip with a tight fit.” Id. ¶ 62. Torben further discloses that “the frame and sash structures may for the major part be built using wood products, although it is also possible to use metal or plastic,” which “may be exposed to the weather.” Id. ¶ 85. Thus, we find Appellant’s argument conclusory in that Torben discloses the use of a panel- seating gasket between a stationary frame and a movable window in exterior building applications. Finally, Appellant argues that the Examiner’s proposed modification changes “the principle of operation of Perron ’242” and that the Examiner Appeal 2022-001430 Application 13/390,886 37 improperly relies on hindsight. Appeal Br. 65. We are also not persuaded by this Argument, as Perron ’242 would still function as a thermally insulating external window shutter, in view of the Examiner’s proposed modification, which is supported by factual findings in the prior art and not solely gleaned from Appellant’s Specification. Accordingly, we sustain the Examiner’s rejection of claim 35 under 35 U.S.C. § 103 as obvious over Perron ’242, Torben, and Pedersen. Rejection VII Regarding dependent claim 35, we apply the Examiner’s finding relative to independent claim 56 and Perron ’793, as discussed supra. In particular, Perron ’793 discloses that “for add[ed] insulation . . . elongated brushes 19 [are] located between the frame 15 and the sliding panels 20,” and we interpret Perron ’793’s exterior insulated rigid frame to comprise an external rigid frame 15 and elongated brushes 19, as required by claim 35. Perron ’793 6:59-63. Notably, Perron ’793 itself discloses that elongated brushes are an example of “flexible sealing devices of any existing type.” Id. at 6:61-62. The Examiner relies on Torben for disclosing that “it is known for a panel to seat in a closed position with an external rigid frame and panel-seating gasket.” Final Act. 15. The Examiner reasons that it would have been obvious to modify Perron ’793’s insulation relative to external rigid frame 15 to be a panel-seating gasket because “it is a known technique for providing a thermal seal that contours and seats with improved ergonomics.” Id. Thus, we understand the Examiner’s proposed modification to be a substitution of Perron ’793’s elongated brushes 19 with a panel-seating gasket, because Perron ’793’s shutter 20 seats relative to Appeal 2022-001430 Application 13/390,886 38 frame 28 with elongated brushes 19 interposed therebetween to provide a seal. Appellant again argues that the Examiner’s proposed modification would change the “principle of operation” of Perron ’793 and that the Examiner improperly relies on hindsight. Appeal Br. 65. Again, we are not persuaded of Examiner by Appellant’s arguments, because Perron ’793 would still function as an external window shutter, in view of the Examiner’s proposed modification, which is supported by factual findings in the prior art and not solely gleaned from Appellant’s Specification. Accordingly, we sustain the Examiner’s rejection of claim 35 under 35 U.S.C. § 103 as obvious over Perron ’793 and Torben. Rejection VIII Regarding dependent claim 35, although the Examiner’s reliance on Torben for disclosing a panel-seating gasket may cure the deficiency in the Examiner’s findings regarding Davidson’s disclosure of a thermal seal with Davidson’s insulated external rigid frame 20, 22, 23, 25 (as identified by the Examiner), the Examiner’s reliance on Torben does not address the Examiner’s erroneous finding that Davidson’s insulated external rigid frame is in a thermal seal with a building exterior, as discussed supra. Accordingly, we cannot sustain the Examiner’s rejection of claim 35 under 35 U.S.C. § 103 as obvious over Davidson and Torben. Rejection IX Claim 40 depends from independent claim 56 and is reproduced below. Appeal 2022-001430 Application 13/390,886 39 40. The window enclosure device as claimed in claim 56, further comprising: said drive mechanism comprises auxiliary device integration comprising at least one auxiliary device interface plug with electrical circuitry connections and a management program such that at least one auxiliary device detects and responds to outdoor conditions and is integrally connected to at least one auxiliary device interface plug that triggers said drive mechanism to drive said at least one enclosure panel with said exterior wall security and thermal resistance attributes to said open position and to said closed position according to said management program and to snugly seat and stall/ reset in said closed position in said thermal seal with said insulated external rigid frame that’s in said thermal seal with said building exterior. Appeal Br. 74-75 (Claims App.). Regarding dependent claim 40, the Examiner finds that Perron ’793 discloses an enclosure panel driven by a drive mechanism (i.e., manual crank 60), however, the Examiner determines that Perron ’793 fails to disclose an auxiliary device integration, as claimed. Final Act. 17. The Examiner finds that “it is known . . . for a system to have auxiliary device integration for automatically controlling a drive mechanism for controlling a thermal barrier,” and the Examiner relies on Butler for disclosing an auxiliary device interface plug (i.e., “(at control unit 64 connecting to auxiliary devices) with electrical circuitry connections ([i.e.,] connection between the control unit to the sensors)” and a management program (i.e. “control unit is programmed”), such that “auxiliary device ([i.e.,] 40, 42) detects and responds to outdoor conditions and is integrally connected to the auxiliary device interface plug . . . that triggers a drive mechanism (58) to drive . . . [an] enclosure panel.” Id. The Examiner reasons that “it would Appeal 2022-001430 Application 13/390,886 40 have been obvious . . . to provide the drive mechanism (motor) of Perron ’793 with auxiliary device integration in order to automatically control the enclosure panel” and also to provide Perron ’793’s motor “with auxiliary integration having auxiliary devices, an auxiliary device interface plug, electrical circuitry connection, and a management program in order to apply the known technique of automatically controlling a motor based on auxiliary devices, as taught by Butler.” Id. Appellant argues that “one of skill in the art in light of the [S]pecification understands that Butler does not disclose [the claimed] auxiliary device integration.” Appeal Br. 61. Appellant submits that “Butler solely discloses its inherent control unit 64 that responds to its inherent temperature sensors in order to activate its garage door motor to lift or to lower its inner panel and outer panel.” Id. at 62. Appellant concludes that The issue is whether Butler can drive at least one enclosure panel with exterior wall security and thermal resistance attributes to snugly seat in a thermal seat with an insulated external rigid frame that’s in said thermal seal with a building exterior around a window or bank of windows to be enclosed, even in ice and snow conditions, as distinctly claimed. Id. at 62; see Reply Br. 78-80. Appellant’s argument, however, fails to recognize that the Examiner relies on Perron ’793, and not Butler, for disclosing the structures of the claimed window enclosure device, but for the auxiliary device integration recited in claim 40. In other words, Appellant’s argument does not apprise us of error in the Examiner’s findings relative to Perron ’793 and Butler, or address the combined teachings of the prior art as relied on by the Examiner. See Ans. 38-39. Appeal 2022-001430 Application 13/390,886 41 Accordingly, we sustain the Examiner’s rejection of claim 40 under 35 U.S.C. § 103 as unpatentable over Perron ’793 and Butler. Rejection X Regarding dependent claim 40, the Examiner’s reliance on Butler for disclosing auxiliary device integration does not cure the deficiencies in the Examiner’s erroneous findings regarding Davidson’s disclosure of a thermal seal with Davidson’s insulated external rigid frame 20, 22, 23, 25 (as identified by the Examiner) and a building exterior, as discussed supra. Accordingly, we cannot sustain the Examiner’s rejection of claim 40 under 35 U.S.C. § 103 as obvious over Davidson and Butler. CONCLUSION The Examiner’s rejections of claims 35, 36, 38-41, 43, 45, 54-62, and 64 under 35 U.S.C. § 112, second paragraph, as being indefinite are affirmed. The Examiner’s rejections of claims 54 and 56 under 35 U.S.C. § 102(b) as anticipated by each of Perron ’242 and Perron ’793, and of claim 35 under 35 U.S.C. § 103(a) as unpatentable over Perron ’242, Torben, and Pedersen, and over Perron ’793 and Torben, and of claim 40 under 35 U.S.C. § 103(a) as unpatentable over Perron ’793 and Butler are all affirmed. The Examiner’s rejection of claims 54-56 under 35 U.S.C. § 102(b) as anticipated by Davidson, and of claim 35 under 35 U.S.C. § 103(a) as unpatentable over Davidson and Torben, and of claim 40 under 35 U.S.C. § 103(a) as unpatentable over Davidson and Butler are all reversed. The Examiner’s rejection of claims 62 and 64 under 35 U.S.C. § 102(b) as anticipated by Parker is reversed. Appeal 2022-001430 Application 13/390,886 42 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 35, 36, 38- 41, 43, 45, 54-62, 64 112(b) Indefiniteness 35, 36, 38- 41, 43, 45, 54-62, 64 54, 56 102(b) Perron ’242 54, 56 54, 56 102(b) Perron ’793 54, 56 54, 55, 56 102(b) Davidson 54, 55, 56 62, 64 102(b) Parker 62, 64 35 103(a) Perron ’242, Torben, Pedersen 35 35 103(a) Perron ’793, Torben 35 35 103(a) Davidson, Torben 35 40 103(a) Perron ’793, Butler 40 40 103(a) Davidson, Butler 40 Overall Outcome 35, 36, 38- 41, 43, 45, 54-62, 64 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