Ex Parte Berger

Patent Trial and Appeal Board

Jan 6, 2014

11374917 (P.T.A.B. Jan. 6, 2014)

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.
11/374,917 03/14/2006 Craig M. Berger 23749 - 00007 1005
28534 7590 01/06/2014
MIRICK, O'CONNELL, DEMALLIE & LOUGEE, LLP
1800 West Park Drive, Suite 400
WESTBOROUGH, MA 01581-3926
EXAMINER
PATEL, VINOD D
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/06/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG M. BERGER
____________

Appeal 2012-002391
Application 11/374,917
Technology Center 3700
____________

Before MEREDITH C. PETRAVICK, GAY ANN SPAHN, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Craig M. Berger (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 14-19 and 21-33. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claim 14 is illustrative of the subject matter on appeal:
14. In combination with a transit vehicle, said transit
vehicle selected from the group consisting of rail car, passenger
rail vehicle, passenger transit bus, passenger utility bus, and
school bus, a system for generating radiant heat within interior
portion of said transit vehicle, said system comprising:
(a) at least one floor panel mounted above a sub-floor
structure of said transit vehicle and being sufficiently rigid so as
to meet rigors of passenger traffic in a mass transit environment
and having each of a predetermined shape and a predetermined
size, said at least one floor panel further having at least one
heating element disposed therein; and
(b) a power switch operably disposed intermediate a
power supply source of said transit vehicle and said at least one
heating element for selectively providing and discontinuing a
supply of a predetermined power generated by said power
supply source to said at least one heating element.
See App. Br., Clms. App’x.
REJECTIONS
Appellant requests our review of the following rejections.1 See App.
Br. 9-10.
Claims 14, 26-28, 30, 312, and 33 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bender (US 4,310,745, iss. Jan. 12, 1982) and
Fernandez (US 7,274,007 B2, iss. Sep. 25, 2007).

1 Appellant indicates a Request for Oral Hearing was filed April 15, 2011.
App. Br. 1. However, Rule 41.47(b) requires such requests to be submitted
on a separate paper with an appropriate caption, and we have found no such
paper of record in the electronic file wrapper of this application.
2 Although the Examiner’s ground of rejection (Ans. 5) does not include
claim 31 in the claim listing, the body of the rejection addresses claim 31
(Ans. 7). Accordingly, we have included claim 31 in this rejection.
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Claims 15-18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bender, Fernandez, and Takhashi (JP 09-149999 A, pub. Jun. 10,
1997).
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bender, Fernandez, and Schröder (DE 41 23 129 A1, pub. Jan. 21, 1993).
Claims 21-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bender, Fernandez, and Morgandi (US 7,180,033 B2, iss. Feb. 20,
2007).
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bender, Fernandez, and Jones (US 6,140,609, iss. Oct. 31, 2000).
Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bender, Fernandez, Takhashi, Schröder, Morgandi, and Jones.
ANALYSIS
Rejection of Claims 14, 26-28, 30, 31, and 33 as Unpatentable Over
Bender and Fernandez
Claims 14, 26-28, 30, and 31
Appellant argues for the patentability of independent claim 14 (App.
Br. 21-26) and states “[c]laims 26-28 and 30 stand or fall with claim 14”
(App. Br. 32). Appellant does not separately argue claim 31 which directly
depends from claim 30. See App. Br., Clms. App’x. We select independent
claim 14 as the representative claim, and claims 26-28, 30, and 31 fall with
claim 14. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found Bender discloses, inter alia, “at least one floor
panel ((rigid 10), 11, 12, 13, 14) . . . being sufficiently rigid . . . to meet
rigors of passenger traffic in a mass transit environment.” Ans. 6 (citing
Bender, col. 3, ll. 58-59, which states “[o]nce again this construction can
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be . . . rigid depending upon its intended use”). Appellant argues there is no
evidence that Bender discloses floor heating panels which are “sufficiently
rigid so as to meet rigors of passenger traffic in a mass transit environment”
as recited in independent claim 14. See App. Br. 21-25.
Bender discloses floor heating panels and the materials used in the
heating panels should be sufficiently rigid to suit the intended purpose of the
heating panels. See Bender, Abstr.; col. 1, ll. 38-49; col. 3, ll. 8-23 and 44-
47; and col. 7, ll. 6-11. Bender indicates its heating panels “can be utilized
under a variety of conditions and for a considerable variety of uses”, and
provides a “partial list” of such uses. Bender, col. 5, ll. 52-60. That list has
four major categories (RAILWAYS, COMMERCIAL, DOMESTIC, and
MEDICAL), each with several sub-categories. See id. col. 5, l. 61 to col. 7,
l. 5. The RAILWAYS category corresponds to the “rail car” embodiment of
claim 14. See id. at col. 5, l. 61 to col. 6, l. 9. Moreover, the
COMMERCIAL category includes “Buses” and “Automobile and truck
heating.” Id. col. 6, ll. 11, 17. Bender does not directly state within
columns 5 and 6 that its heating panels may be used as a floor panel in a rail
car, bus, or other mass transit vehicle. Nonetheless, the disclosure at
Bender’s columns 5 and 6 in combination with the earlier disclosure in the
Abstract and in column 1 that the heating panels may be used in a flooring
structure, communicates to one of ordinary skill the use of floor heating
panels in a mass transit vehicle which evidences that Bender’s floor heating
panels are “sufficiently rigid to meet rigors of passenger traffic in a mass
transit environment.” Thus, we disagree with Appellant’s assertions that the
only explicit and enabling teaching in Bender relating to “floor heating
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panels” is in the DOMESTIC category (see App. Br. 23), and that Bender
teaches away from mass transit use (see App. Br. 23-24).
Appellant further argues claim 14 requires “at least one floor panel
mounted above a sub-floor structure of said transit vehicle”, but “Bender
teaches use of his panel in an under floor heating configuration.” App.
Br. 23. Appellant also argues “a person of ordinary skill in the art
(POSITA) . . . would have been directed to install the heating panel under
the actual floor structure” and “the proposed combination teaches away from
using the heating panel of Bender as a floor panel “mounted above a sub-
floor structure of said transit vehicle.” App. Br. 24. We are not
persuaded by Appellant’s arguments. First, it is mere speculation on
Appellant’s part that a person of ordinary skill in the art would have been
directed to install Bender’s heating panel under the actual floor structure.
Second, Bender does not teach away from mounting the panel above a sub-
floor structure. “The prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant’s final attack on the Bender disclosure is that the
predictable result of Bender is a floor heating panel which heats the floor
structure, but which does not generate “radiant heat” within the interior
portion of the vehicle as claimed. See App. Br. 24-25. We conclude,
however, that the limitation in claim 14 reciting “a system for generating
radiant heat within interior portion of said transit vehicle” (emphasis added)
merely sets forth an intended use of the claimed system. The floor heating
panels of Bender are capable of performing that intended use. See, e.g.,
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Bender, Abstr. and col. 5, ll. 30-41. We therefore determine the Examiner
properly relies on Bender in this regard.
Appellant next disputes the Examiner’s reliance on Fernandez as
disclosing a power switch operably disposed intermediate a power supply
source and a heating element, as required by claim 14. See App. Br. 25-26.
In particular, Appellant asserts the switch 18 of Fernandez is coupled only to
the control module 10, and is not disposed intermediate the power supply
source 28 and the heating element 12 of Fernandez. See id. However, claim
14 does not require the switch to be physically disposed between the power
supply and the heating element. Rather, claim 14 requires the switch to be
“operably disposed intermediate” the power supply and the heating element,
which under a broadest reasonable construction requires a switch which is
operable to interrupt delivery of power from the power supply to the heating
element. Fernandez states “the switch 18 signals the control module 10 to
allow the energy source 28 to deliver power (e.g., electrical energy) to the
heater 12.” Fernandez, col. 2, ll. 50-67 (emphasis added). That is all that
claim 14 requires, so we are not persuaded by Appellant’s argument in this
regard.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 14, and claims 26-28, 30, and 31 which fall therewith, as
unpatentable over Bender and Fernandez.
Claim 33
Appellant argues the Examiner erred in finding Bender discloses the
“heat transfer compound . . . disposed within said panel in operative
engagement with said at least one heating element” recited in claim 33. See
App. Br. 26-32 (emphasis added). In pertinent part, the Examiner found the
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reflective sheet 30 of Bender corresponds to the claimed heat transfer
compound. See Ans. 6 and 21-23. We agree with Appellant that the
Examiner erred in making that finding.
Specifically, we agree that the plain and ordinary meaning of heat
“transfer” as understood by one of ordinary skill in the art is “movement of
heat from one body to another.” App. Br. 27-28; see also Spec., p. 10, l. 20
to pg. 11, l. 2. The reflective sheet 30 of Bender, by contrast, reflects heat to
prevent transfer of heat to a cool side of the heating panel. See Bender,
Abstract; fig. 10; col. 1, ll. 29-49; and col. 4, ll. 61-64.
For the foregoing reasons, we determine the Examiner’s finding that
the reflective sheet 30 of Bender corresponds to the claimed heat transfer
compound is not supported by a preponderance of the evidence. The
Examiner does not cite Fernandez as being pertinent to the claimed heat
transfer compound. See Ans. 7-8 and 21-23. We therefore do not sustain
the Examiner’s rejection of claim 33 as unpatentable over Bender and
Fernandez.
Rejection of Claims 15-18 as Unpatentable Over
Bender, Fernandez, and Takhashi
Appellant argues the Examiner erred because this rejection fails to
present an articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness as to claims 15-18. See App. Br. 32-38.
We agree. In pertinent part, the Examiner cites Takhashi as disclosing a
cordless iron having a heater 5 and a heater controller 13 driven by a battery
17 independently of the commercial power source for exciting the heater 5.
See Ans. 10-11. Based on that disclosure in Takahashi, the Examiner
concludes “[i]t would have been obvious to one of ordinary skill in the art at
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the time of invention . . . to provide independent power supply to controller
in order to provide power to controller as taught by Takhashi for the heat
generating system of Bender.” Id. at 11. The Examiner’s conclusion fails to
articulate a reason with a rational underpinning to support the conclusion,
and that deficiency is not remedied by the Examiner’s response to
Appellant’s argument, which adds only that the Examiner relied upon the
knowledge generally available to one of ordinary skill in the art rather than
the disclosure of the prior art. See Ans. 23-24.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claim 15, and its dependent claims 16-18, as unpatentable over Bender,
Fernandez, and Takhashi.
Rejection of Claim 19 as Unpatentable Over
Bender, Fernandez, and Schröder
The Examiner found Figures 2 and 7-10 of Bender disclose an
electrical conductor, an insulation layer “surrounding” the electrical
conductor, and a jacket “surrounding” the insulation layer. See Ans. 11 and
28-29. In particular, the Examiner found “Bender discloses heating element
(11) comprising an electrical conductor and an insulation layer (31).” Ans.
28. Appellant argues that finding was in error. See App. Br. 41-42. We
find the insulation layer 31 does not “surround” the electrical conductor 11
as required by claim 19. Therefore, a preponderance of the evidence does
not support the Examiner’s finding that Bender discloses an insulation layer
which surrounds an electrical conductor, and we correspondingly do not
sustain the Examiner’s rejection of claim 19.
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Rejection of Claims 21-25 as Unpatentable Over
Bender, Fernandez, and Morgandi
Claims 21 and 22
Appellant argues the Examiner erred in finding Fernandez discloses
the coil and contacts of the power switch recited in claims 21 and 22. See
App. Br. 46-47. We agree. The Examiner reasoned in pertinent part as
follows:
Fernandez discloses a power switch but [is] silent with respect
to detail of the switch. As stated by appellant in paragraph
[0047], “such power switch 122 is a well known contactor
having a coil 123 and at least one set of contact 125 disposed
therein”. Therefore, Fernandez switch meets claimed
limitations.
Ans. 13 (emphasis added); see also Ans. 31. We agree with the first two
findings recited in that passage.3 However, those findings do not lead to the
conclusion reached at the end of the passage. Even if the switch components
recited in claim 21 are well known, that does not establish the switch of
Fernandez includes those well-known components. The Examiner does not
cite Morgandi as relating to the power switch components. See Ans. 13.
Therefore, we do not sustain the Examiner’s rejection of claims 21 and 22 as
unpatentable over Bender, Fernandez, and Morgandi.

3 The Examiner’s citation to paragraph [0047] of the Specification appears to
be citing to the pre-grant publication of the application underlying the
present appeal, because the Specification does not have paragraph numbers.
However, since the pre-grant publication is not of record, we instead
considered the disclosure in the Specification at page 13, lines 1-7, which
appears to correspond to paragraph [0047] of the pre-grant publication.
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Claims 23 and 24
Appellant does not argue for the patentability of claims 23 and 24
apart from their independent claim 14. See App. Br. 48. Therefore, we
sustain the Examiner’s rejection of claims 23 and 24 as unpatentable over
Bender, Fernandez, and Morgandi, for the reasons identified above in
connection with claim 14.
Claim 25
Appellant disputes the Examiner’s reliance on Morgandi as disclosing
claim 25’s requirement of “a fuse operatively connected between said power
switch and said at least one heating element.” See App. Br. 48. Specifically,
Appellant asserts the Morgandi fuse 424 “is disposed directly between the
heating element 12 and a power supply” and so operates differently from
claim 25. Id. However, claim 25 does not require the fuse to be physically
disposed between the power switch and the heating element. Rather, claim
25 requires the fuse to be “operably connected between” the power switch
and the heating element, which under a broadest reasonable construction
requires a fuse which is operable to interrupt delivery of power from the
power supply to the heating element if the fuse is blown. Morgandi
discloses such a fuse. See Morgandi, fig. 4 and col. 3, l. 62 to col. 4, l. 19.
We are not persuaded by Appellant’s argument and accordingly, we sustain
the Examiner’s rejection of claim 25.

4 The Appeal Brief at page 48 mistakenly refers to the numeral “40” as being
the fuse in Morgandi. See Ans. 13 and 32; see also Morgandi, col. 3, l. 62 to
col. 4, l. 3.
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Rejection of Claim 32 as Unpatentable Over
Bender, Fernandez, Takhashi, Schröder, Morgandi, and Jones
Appellant argues the Examiner erred in finding Fernandez discloses
the coil and contacts of the power switch recited in independent claim 32.
See App. Br. 51 (referring to “above arguments” concerning rejection of
claim 21). Claim 32 recites a power switch “having a coil and at least one
set of open contacts disposed therein”, which is similar to a corresponding
limitation in claim 21 discussed above. The Examiner’s analysis of
Fernandez to reach this claim limitation is the same in both claims. See Ans.
15 and 34-35. For the reasons provided above in regard to claim 21, we do
not sustain the Examiner’s rejection of claim 32.
DECISION
The rejections of claims 14, 23-28, 30, and 31 as unpatentable over
the prior art are each AFFIRMED.
The rejections of claims 15-19, 21, 22, 29, 32, and 33 as unpatentable
over the prior art are each REVERSED.
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-IN-PART

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