Ex Parte Borrel

Patent Trial and Appeal Board

Feb 22, 2017

12991594 (P.T.A.B. Feb. 22, 2017)

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.
12/991,594 11/08/2010 Pierre-J^r^me Borrel 2008P05715 9948
24131 7590 02/24/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
DANG, KET D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE-JEROME BORREL1
Appeal 2014-008745
Application 12/991,594
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pierre-Jerome Borrel (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final rejection of claims 17—22.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is Siemens VAI Metals
Technologies S.A.S. Appeal Br. 2 (filed Mar. 10, 2014).
2 Claims 1—11 have been cancelled; claims 12—16 have been withdrawn.
Final Act. 2 (mailed Oct. 11, 2013).
Appeal 2014-008745
Application 12/991,594
CLAIMED SUBJECT MATTER
The invention concerns “drying and/or curing organic coatings such
as paints or varnishes on continuously running metal strips.” Spec. 1:5—7.
Claim 17 is illustrative of the subject matter on appeal, and recites:3
17. A device for curing, drying, or curing and drying an
organic protective, decorative, or organic protective and
decorative coating previously deposited on a metal strip, the
device comprising:
a tunnel furnace having an enclosure with hot internal
walls, a first end with an inlet and a second end with an outlet;
said enclosure having a moving device for moving the
strip with the organic coating from said inlet to said outlet;
said enclosure having each of:
an electromagnetic induction strip heating device
for heating the strip passing through the furnace by
electromagnetic induction;
a wall heating device for heating the walls of the
enclosure and the strip with the coating by convection with
a combustion gas; and
an infrared radiation device for heating the strip
with the coating by infrared radiation.
Amendment 2 (amended Claims App.).
3 Appellant amended claim 17 in an After Final Amendment. Amendment
(filed Dec. 16, 2013) [hereinafter “Amendment”] 2 (amending claim 17 to
delete “single” from the phrase “a single tunnel furnace”), 7. The Examiner
entered the Amendment for purposes of appeal. Adv. Act. 1 (mailed Jan 2,
2014). Therefore, the version of claim 17 that is before us in this appeal is
that presented by Appellant in the After Final Amendment, entered by the
Examiner in the Advisory Action. Compare Amendment 2, with Appeal Br.
13 (Claims App.) (improperly including “single”).
2
Appeal 2014-008745
Application 12/991,594
REJECTIONS
The claims stand rejected as follows:
I. Claim 17 under 35U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
II. Claims 17—22 under 35 U.S.C. § 112, second paragraph, as
indefinite.
III. Claims 17—22 under 35 U.S.C. § 103(a) as unpatentable over
Demidovitch4 and Delaunay.5
ANALYSIS
Rejection I— Written Description — Claim 17
The Examiner finds that the original Specification lacks support for
‘“a single tunnel furnace . . .’ and ‘a wall heating device ....’” Final Act. 4;
see also Ans. 2—3, 5—6.
Appellant contends that the limitation of a “single” tunnel furnace is
supported by Figure 1 and page 8, line 28 through page 9, line 4 of the
Specification. Appeal Br. 5.6 Appellant also contends that the limitation of
a “wall heating device” is supported by the Specification at page 5, lines 16—
17 and page 6, line 34. Id.
As discussed above, pending claim 17 does not require “a single
tunnel furnace.” See supra note 3. Claim 17 requires simply “a tunnel
furnace having an enclosure.” See Amendment 2. This limitation is
4 US 6,180,933 Bl, iss. Jan. 30, 2001.
5 US 5,768,799, iss. June 23, 1998.
6 Appellant notes that claim 17 was amended to remove the “single” tunnel
limitation, but incorrectly states that the Amendment was not entered.
Appeal Br. 4—5; see supra note 3.
3
Appeal 2014-008745
Application 12/991,594
supported by Appellant’s original disclosure. See, e.g., Spec. 3:30-31, 5:11—
14, 6:30-31, 8:30, Figs. 1—2 (furnace 1). Accordingly, we do not sustain the
Examiner’s rejection on this basis.
Claim 17 recites “a wall heating device for heating the walls of the
enclosure.” See Amendment 2. We agree with Appellant that this limitation
is supported by the original Specification. See, e.g., Spec. 4:23—26 (“heating
by convection by means of a combustion gas and heating of the enclosure is
performed by convection by means of the same combustion gas as that used
for heating the strip by convection”), 6:34 (“means of heating the walls of
the enclosure”), 7:5—7 (“the means of heating the internal walls of the
enclosure comprise means of heating by convection by means of a
combustion gas”).
We do not agree with the Examiner that the cited portions of the
Specification disclose only that the walls are heated “by combustion gas, not
a wall heating device” as claimed. Ans. 5—6 (emphasis added). Although
Appellant’s Specification does not employ the phrase “a wall heating
device,” such in haec verba disclosure is not required. Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). Indeed, the
Specification discloses that the combustion gas is generated by a device, for
example,
an infrared radiation emitter with catalytic burner... said emitter
comprising a catalytic structure made up of a catalytic element
impregnated with a catalytic combustion material onto the
surface of which a combustion gas or mixture of air and
combustion gas is injected, heating by convection of the walls of
the enclosure and the strip being ensured by oxidation of the
combustion gas injected on the surface of the catalytic element
of said infrared radiation emitter.
4
Appeal 2014-008745
Application 12/991,594
Spec. 5:11—20. This disclosure is sufficient to “reasonably convey[] to those
skilled in the art that the inventor had possession of the claimed subject
matter”—a wall heating device—“as of the filing date.” Ariad, 598 F.3d at
1351. Accordingly, we do not sustain the Examiner’s rejection on this basis.
Rejection II—Indefiniteness — Claims 17—22
The Examiner finds that claim 17 “is unclear and indefinite [as] to the
relationship among ‘a wall heating device’ and ‘an induction heating device’
or ‘an infrared radiation device’ or ‘resistance heating device’ or ‘gas
heating device’ or ‘convection heating device’ and to whether they are the
same or different.” Final Act. 5; Ans. 6.
Appellant contends that “[t]hree distinct elements are present and
claimed. . . . The three sources are disclosed in the specification and the
claim requires ‘each of the three heat sources to be present.” Appeal Br. 6;
Reply Br. 2—3 (filed July 21, 2014).
We agree with Appellant. First, the Examiner’s reference to a
“resistance heating device,” a “gas heating device,” and a “convention
heating device” is unclear because claim 17 does not include any of these
elements. See Amendment 2. Second, claim 17 explicitly states that the
enclosure requires “each of [1] an electromagnetic induction strip heating
device ... [2] a wall heating device . . . and [3] an infrared radiation device.”
Id. As such, a person of ordinary skill in the art would understand that each
of the three different types of heating devices are required by claim 17. See
Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
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Appeal 2014-008745
Application 12/991,594
Rejection III— Obviousness — Claims 17—22
The Examiner finds that Demidovitch discloses a device substantially
as claimed, wherein the furnace enclosure includes an electromagnetic
induction strip heating device (18, 24) and a wall heating device (20) for
heating by convection with a combustion gas. Final Act. 2—3, 6 (citing
Demidovitch, Figs. 1—2). The Examiner finds that Demidovitch fails to
disclose an infrared radiation device, but finds that Delaunay discloses
heating a metal strip with infrared radiation. Id. at 7 (citing Delaunay, 1:23—
25). The Examiner concludes that it would have been obvious to modify
Demidovitch’s device “with said enclosure having an infrared radiation
device for heating the strip with the coating by infrared radiation ... in order
to use any suitable known technique, and an improvement in the cleanliness
of the oven, which decreases the frequency of maintenance operations
associated with cleaning the oven.” Id. (citing Delaunay, 3:22, 3:32—34).
The Examiner also states that it would have been obvious to “try a known
infrared heating,” and that the “result of such a substitution would have been
predictable in that the curing and/or drying device would have provided
sufficient heating for use in the curing and/or drying process.” Id. at 3; see
also Ans. 6—7.
Appellant contends, inter alia, that the cited prior art establishes only
“that each of the required heat sources are separately known but not used in
the claimed configuration.” Appeal Br. 7. According to Appellant,
Delaunay only briefly mentions infrared heating and provides “no
instruction or teaching to combine with other heat sources because
[Delaunay] clearly teaches in the alternative.” Id. at 10 (citing Delaunay,
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Application 12/991,594
1:23—25). Therefore, Appellant argues that “there is no articulated
reasoning” to support the combination. Id. at 12; Reply Br. 4.
The cited prior art demonstrates that each of the three claimed heating
techniques was known. Specifically, Demidovitch discloses heating a strip
of steel by induction, at furnace sections 18, 24, and also discloses heating
the strip by convection with fuel-fired furnace section 20. Demidovitch,
6:53—7:3, Fig. 1. Although Demidovitch does not disclose infrared heating,
Delaunay describes the use of infrared heating, when describing the
“Background of the Invention.” Delaunay, 1:23—26 (“The sheet provided
with its paint coating may be heated by various means, especially by
blowing hot air or by using infrared heating or electromagnetic induction
heating systems.”). Indeed, Delaunay discusses the known use of each
claimed heating technique, albeit in the alternative. Id.', Appeal Br. 10.
However, a claim “is not proved obvious merely by demonstrating
that each of its elements was, independently, known in the prior art.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Often, every element of
a claimed invention can be found in the prior art. In re Kotzab, 217 F.3d
1365, 1370 (Fed. Cir. 2000). Here, however, the Examiner does not provide
articulated reasoning with rational underpinning to support the conclusion
that it would have been obvious to also include infrared heating in
Demidovitch’s device, so as to provide all three claimed heating devices
together in a furnace enclosure. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). First, the Examiner’s conclusion that it would have been obvious
to modify Demidovitch’s device to employ infrared heating, as taught by
Delaunay, in order to “improve [] the cleanliness of the oven” is misplaced
because Delaunay explains that this advantage relates to “the invention,”
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Application 12/991,594
which utilizes induction, not infrared heating. See Final Act. 7; Delaunay,
1:23—26 (describing infrared heating as the “Background of the Invention”),
1:63—2:1 (describing “the present invention” as involving heating by
induction), 3:23—34 (describing advantages of “the invention”).
The Examiner’s additional conclusions that it would have been
obvious “to use any suitable known technique” or “to try a known infrared
heating” likewise fail. Final Act. 7, 3. The Examiner provides no
persuasive reasoning to explain why a skilled artisan would have found it
obvious to utilize infrared heating in conjunction with the induction and
convection heating disclosed by Demidovitch. The Examiner’s statement
that “such a substitution would have been predictable” {id. at 3) is
insufficient because the Examiner does not explain clearly how Demidovitch
would be modified by this “substitution,” and merely substituting
Delaunay’s infrared heating for either the induction heating or the
convection heating taught by Demidovitch still fails to render obvious claim
17, which requires “each of’ an induction device, a device for heating by
convection, and an infrared radiation device (i.e., all three heating devices).
Id.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 17, or claims 18—22 which depend therefrom, as
unpatentable over Demidovitch and Delaunay.
DECISION
The rejections of claims 17—22 are REVERSED.
REVERSED
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