Ex Parte Balourdet

Patent Trial and Appeal Board

Nov 28, 2016

13683834 (P.T.A.B. Nov. 28, 2016)

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.
13/683,834 11/21/2012 Xavier Balourdet 3145-00102 7027
23505 7590
CONLEY ROSE, P.C.
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
11/30/2016 EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XAVIER BALOURDET
Appeal 2016-006357
Application 13/683,834
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Xavier Balourdet (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
dated May 11, 2015 (“Final Act.”), rejecting claims 1, 2, 5-14, and 20-22.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as XCIEL, INC. Appeal
Br. 3.
Appeal 2016-006357
Application 13/683,834
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to an “explosion proof
tablet enclosure.” Spec., Title. Claims 1, 20, and 22 are independent.
Claim 1 is reproduced below.
1. An explosion proof enclosure comprising:
a first portion;
a second portion, wherein the first portion and the second
portion are configured to be releasably coupled to each other;
wherein the enclosure has an assembled configuration
having an internal chamber;
wherein the enclosure is configured to house a tablet
computer in the internal chamber; and
a window defined by an outer edge that extends through
the first portion, wherein the window allows a user to actuate a
touch screen of the tablet computer when the enclosure is in the
assembled configuration;
wherein a sealing surface is disposed about the outer edge
of the window to sealingly engage against a surface of the tablet
computer when the enclosure is in the assembled configuration;
wherein, when in the assembled configuration,
combustion within the internal chamber is prevented from
escaping into the surrounding environment in response to the
sealing engagement between the sealing surface and the surface
of the tablet computer.
EVIDENCE
The Examiner relied upon the following evidence:
Fearing
Song US 2011/0051348 A1
US 2012/0057295 A1
US 2012/0314354 A1
US 5,534,664 July 9, 1996
Mar. 3,2011
Mar. 8, 2012
Dec. 13,2012
Simpson
Rayner
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Application 13/683,834
Muday US 2013/0258573 A1 Oct. 3, 2013
REJECTIONS
The Final Action included the following grounds of rejection:
1. Claims 1, 5, 7, and 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Rayner and Muday.
2. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Rayner,
Muday, and Fearing.
3. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Rayner,
Muday, and Song.
4. Claims 8-14 under 35 U.S.C. § 103(a) as unpatentable over
Rayner, Muday, and Simpson.
ANALYSIS
First Ground of Rejection
Appellant presents the same arguments directed to independent claims
1, 20, and 22, and does not present any separate arguments for patentability
of dependent claims 5, 7, and 21. Appeal Br. 17-23. We select claim 1 as
representative of the claims subject to the first ground of rejection, and the
remaining claims 5, 7, and 20-22 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner found that Rayner teaches an enclosure as called for in
claim 1 except that Rayner “does not explicitly teach the enclosure and/or
seal to be explosion proof.” Final Act. 3^1 (Examiner finding that “Rayner
teaches the enclosure to be waterproof and dust proof’). The Examiner
turned to Muday for its disclosure of a protective enclosure for a tablet
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where the enclosure is “hermetically seal[ed] . . . from outside contamination
in order to prevent the ingress of environmental contaminants into the
enclosure.” Id. at 4 (citing Muday, paras. 71, 76). The Examiner
determined that “[o]ne of ordinary skill in the art would have found it
obvious to strengthen the seal of Rayner such that it was not only waterproof
and dust proof but also hermetic as suggested by Muday in order to prevent
ingress of environmental contaminants into the enclosure.” Id. The
Examiner found that “[hermetically sealing the Rayner enclosure would in
effect also make the enclosure explosion proof in that combustion would be
prevented from escaping due to the enclosure being airtight.” Id.', see also
Ans. 8 (Examiner finding that a “hermetic seal not only prevents ingress but
also egress since any air from the inside of the enclosure would be prevented
from escaping to the outside environment”).
Appellant contends that the Examiner erred in finding that modifying
Rayner to include a hermetic seal would result in an enclosure that prevents
combustion within the internal chamber from escaping into the surrounding
environment, as called for in claim 1. Appeal Br. 18-19. Appellant argues
that a hermetic or “air-tight” seal is not necessarily capable of preventing the
egress of combustion into a surrounding environment because combustion
within an enclosure may result in higher fluid pressure within the enclosure
than in the surrounding environment. Id. at 19. Appellant contends that
because Muday is silent as to hermetically sealing its enclosure against such
a pressure differential and because a hermetic seal may not prevent
combustion from escaping, the Examiner failed to provide a basis in fact
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Application 13/683,834
and/or technical reasoning to reasonably support the finding that Rayner’s
enclosure, as modified by Muday, would possess inherently the claimed
characteristic. Id. at 19-20. Appellant further relied on a Declaration of
Xavier Balourdet (“Inventor Dec.”) in which the inventor describes the
hazardous location classification system and describes certain physical
testing of a commercially available metal enclosure sold by Xciel, Inc. that
found the enclosure to be in compliance with the applicable standards of the
hazardous location system.
The Examiner responded that “the claims do not require any pressure
differential and only requires that in [an] assembled configuration,
combustion within the internal chamber is prevented from escaping into the
surrounding environment.” Id. at 8; see also id. at 9 (“a small degree of
combustion taking place without resulting in any change in pressure can be
prevented with a hermetic seal as taught by Muday”). The Examiner found
the declaration by the inventor to be ineffective to show non-obviousness
because “there was no nexus between the declaration and the claimed
subject matter” and “the declaration failed to give any reason why it would
not be obvious to hermetically seal a tablet enclosure.” Id. at 10.
Appellant replies:
the fact that the combustion escape prevention feature could
potentially occur with a hermetic sealing feature is not sufficient
to establish the inherency of the combustion escape prevention
feature in the hermetic sealing feature ... as it is directed to a
mere possibility, and not the necessity of the combustion escape
prevention feature being present in the teachings of Muday.
Reply Br. 2.
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The express and inherent disclosures of a prior art reference may be
relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103. In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.”). “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708-09
(Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986)
(finding it insufficient for an appellant to merely assert that the prior art does
not inherently possess the characteristic relied on and challenge the PTO to
prove the contrary by experiment or otherwise. “The PTO is not equipped to
perform such tasks.”). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
omitted).
For the reasons that follow, we find that the Examiner had a sound
basis for believing that the enclosure of Rayner, as modified by the hermetic
seal of Muday, is capable of preventing combustion from escaping as called
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for in claim 1. We further find that Appellant has not met its burden to show
that the enclosure of claim 1 is structurally different from the modified
Rayner enclosure or that the modified Rayner enclosure fails to necessarily
or inherently possess the characteristics of his claimed enclosure.
We find that the Examiner had a sound basis for finding that the
hermetic seal in the modified Rayner enclosure would be capable of
preventing “combustion within the internal chamber . . . from escaping into
the surrounding environment in response to the sealing engagement between
the sealing surface and the surface of the tablet computer,” as called for in
claim 1. As noted by the Examiner, the claim is written broadly to call for
prevention of “combustion” generally without any limitations in the claim
on the conditions of the combustion within the internal chamber that must be
prevented from escaping. Ans. 8. We find the Examiner’s finding
reasonable that the hermetic seal, being airtight, would also prevent egress of
any air from inside of the enclosure to the surrounding environment. Id. at
7-8; see also id. at 9 (Examiner finding that “a small degree of combustion
taking place without resulting in any change in pressure can be prevented
with a hermetic seal”).
We find the Examiner’s inherency determination rests on a sound
basis in part because the structure of the sealing surface described in
Appellant’s Specification does not appear to differ significantly from the
structure of the sealing surface of the Rayner enclosure, as modified by
Muday. Appellant identifies sealing surface 308 as corresponding to the
claimed sealing surface. Appeal Br. 8. The Specification describes:
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Sealing surface 308 extends between an outer edge 309 and the
outer edge 303 of window 302. Surface 308 is configured to
sealingly engage the front face 101 of tablet 100 so as to prevent
or at least substantially restrict fluids or particles (e.g., dust,
particulates, fibers, etc.) from entering or exiting enclosure 200
when assembly 10 is in its assembled configuration (Figures 2A-
2B). Sealing surface 308 also includes a first portion 308a that
extends about first aperture 304 and a second portion 308b that
extends about second aperture 306.
Spec., para. 27. Thus, sealing surface 308 is described as being configured
to sealingly engage the tablet to prevent or restrict fluids or particles from
entering and exiting the enclosure. Likewise, Rayner’s top member interior
perimeter portion 20a and O-ring 15b provide a sealing surface that is
disposed about the outer edge of the window to sealingly engage against a
surface of the tablet computer when the enclosure is in the assembled
configuration. Final Act. 3 (citing Rayner, paras. 23, 40, 123, 152-54); see
also Rayner, paras. 138, 141, Figs. 2C, 4A; Appeal Br. 12 (Appellant’s
discussion of Rayner’s interior perimeter portion 20a). In particular, Rayner
describes:
top member interior portion 20a is configured as a wiper portion
... to function in part as a seal and partly as a particle catch
preventing or otherwise reducing the ingress of liquid or
particulate matter for ingressing beneath the wiper when the top
member 2 is coupled to the electronic device.
Rayner, para. 138. When portion 20a and O-ring 15b are modified to
provide a hermetic seal, as suggested by Muday, the modified sealing
surface provides an airtight seal that prevents passage of air past the seal.
The preponderance of the evidence demonstrates that the structure of
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Application 13/683,834
Rayner’s seal, as modified by Muday, is similar to the sealing surface 308
described in Appellant’s Specification. Based on the fact that the modified
Rayner enclosure and the claimed enclosure are substantially identical, the
Examiner had a sound basis for finding that Rayner’s modified enclosure
would be capable of preventing combustion within the internal chamber
from escaping into the surrounding environment.
Thus, we find that the Examiner set forth adequate evidence of
inherency to shift the burden to require Appellant to prove that Rayner’s
modified enclosure does not necessarily or inherently possess the
characteristics of his claimed product. Appellant has not met this burden.
Appellant has not pointed to any structural difference between the claimed
sealing surface and the sealing surface of the prior art that would render the
prior art sealing surface incapable of preventing combustion from escaping
the enclosure. Appellant’s contention that “in the event of combustion
within housing 60 [of Rayner], the increased temperature in cavity 63 caused
by the internal combustion may result in a pressure differential” and that
“the seal provided by housing 60 may be incapable of resisting the pressure
differential. . . and as a result, may allow fluid communication from cavity
63 to the surrounding environment” (Appeal Br. 19 (emphasis added)) is not
commensurate with the scope of claim 1. Claim 1 does not require the
enclosure to prevent escape of combustion under any particular type of
conditions. Ans. 8 (Examiner noting that the claims fail to recite any type of
conditions or that combustion must result in a pressure difference).
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Appellant’s reliance on the Inventor’s Declaration is unavailing.
Although the Declaration states that a commercial enclosure product sold by
Xciel, Inc. meets industry standards to be capable of use with an electronic
device in certain hazardous locations, the Declaration fails to tie this
evidence to the claims. In fact, the claims do not require the claimed
enclosure to meet any particular component standards or to prevent
combustion from escaping in a manner sufficient to allow for use in any
particular categories of hazardous locations (e.g., Class I and II, Division 2).
For these reasons, Appellant has not demonstrated error in the
Examiner’s finding that the modified enclosure of Rayner would be capable
of preventing combustion from escaping into a surrounding environment, as
recited in claim 1.
Appellant’s additional argument (Appeal Br. 20-21) that the
Examiner failed to take Official Notice with respect to the missing element
of an enclosure that prevents escape of combustion is also unavailing
because it is based on the premise that an element is missing from the
combination of Rayner and Muday. For the reasons provided above, we
disagree with this premise.
Appellant raised a new argument for the first time in the Reply Brief
that the Examiner failed to provide a legally sufficient rationale for the
proposed modification of Rayner with the teaching of Muday. Reply Br. 3-
4. Appellant contends that this argument is in response to the Examiner’s
statement of the reason to combine as set forth in the Response to
Arguments portion of the Answer. Id. at 3 (citing Ans. 7). Upon
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examination of the prosecution, however, we note that this same statement
of the reason to combine was set forth by the Examiner in the Final Action.
Final Act. 4. As such, Appellant’s argument raised for the first time in the
Reply Brief is untimely and Appellant has not made a showing of good
cause as to why the Board should consider the belated argument.
Accordingly, we will not consider it. See 37 C.F.R. § 41.41(b)(2).
For these reasons, we sustain the rejection of claim 1, and claims 5,
7, and 20-22 which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Rayner and Muday.
Remaining Grounds of Rejection
Appellant does not present separate arguments for the patentability of
dependent claims 2, 6, and 8-14 over Rayner, Muday, and one of Fearing,
Song, and Simpson. Appeal Br. 23-31 (Appellant arguing that Fearing,
Song, and Simpson do not cure the asserted deficiency in the combination of
Rayner and Muday). Thus, for the same reasons as set forth above in our
analysis of claim 1, we likewise sustain the rejections under 35 U.S.C.
§ 103(a) of claim 2 as unpatentable over Rayner, Muday, and Fearing, claim
6 as unpatentable over Rayner, Muday, and Song, and claims 8-14 as
unpatentable over Rayner, Muday, and Simpson.
DECISION
The decision of the Examiner to reject claims 1, 2, 5-14, and 20-22 is
AFFIRMED.
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Application 13/683,834
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)(l)(iv).
AFFIRMED
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