Ex Parte Brockschmidt et al

Patent Trial and Appeal Board

May 3, 2018

13696665 (P.T.A.B. May. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/696,665 01109/2013
22116 7590 05/07/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Mario Brockschmidt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
201 OP02622WOUS 8285
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/07/2018 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO BROCKSCHMIDT, PETER GROPPEL, and
FRIEDHELM POHLMANN
Appeal2017-008480
Application 13/696,665
Technology Center 1700
Before GEORGE C. BEST, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
8, 11, and 14--16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Siemens Aktiengesellschaft is identified as the real party in interest.
(Appeal Brief, filed February 14, 2017 ("App. Br."), 2.)
2 Non-Final Rejection mailed September 14, 2016 ("Act."). The record
shows there are multiple rejections previously issued such as the final
rejections mailed August 31, 2015 and May 12, 2016. In this decision, we
also refer to the Examiner's Answer mailed March 20, 2017 ("Ans."), and
the Reply Brief filed May 22, 2017 ("Reply Br.").
Appeal2017-008480
Application 13/696,665
CLAIMED SUBJECT MATTER
The claims are directed to an electrically insulating material,
insulating paper, and insulating tape to provide effective electrical insulation
of a high voltage rotary machine. Spec. 4:26-31. 3 Claim 8, reproduced
below, is illustrative of the claimed subject matter:
8. An electrical insulating and thermally conductive material
for a high voltage rotary machine comprising:
a base resin, and
a filler powder consisting solely of an aluminum oxide powder
in disc-shaped form distributed in the base resin, wherein the
proportion of the filler powder lies between 5 0% by vol[.] and
7 5% by vol. of the base resin.
App. Br. 12 (Claims Appendix) (emphasis added).
REFERENCE
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Smith WO 2005/124790 A2 Dec. 29, 2005
REJECTION
Claims 8, 10, 11, and 14--16 have been rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Smith. Act. 2.
3 U.S. Patent Application No. 13/696,665 ("Spec."), Electrically Insulating
Material, Insulating Paper, and Insulating Tape for a High Voltage Rotary
Machine.
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Application 13/696,665
Claim 84
OPINION
Smith undisputedly discloses a hybrid material having a resin and
filler encompassing the recited resin and volume range of the filler.
Compare App. Br. 6-7 (citing Smith i-fi-f 10, 11, 14, 36, 37, 58, and 65) with
Act. 2, 5 (citing Smith, Abstract, i-fi-f 10, 36, 65, and 75). Appellants do not
dispute that Smith discloses using alumina as the filler for the hybrid
material. Compare App. Br. 6-7 with Act. 2 (citing Smith i166); compare
Ans. 2 with Reply Br. 2-3. Appellants also do not dispute that Smith
describes a hybrid material having a discoid shaped filler. Compare App.
Br. 6-7 with Act. 2 (citing Smith i1 7 5); compare Ans. 2 with Reply Br. 5.
Smith further discloses that "[h ]igher volume filling tends to give higher
structural stability to a matrix." Smith i1 66. Smith discusses characteristics
of the resin and filler including their shapes and sizes as relevant to
parameters of the hybrid material. See, e.g., id. i-fi-171, 73, 75. Appellants
have not identified reversible error in the prima facie case of obviousness as
it is undisputed that "the ranges of a claimed composition overlap the ranges
disclosed in the prior art." See In re Peterson, 315 F.3d 1325, 1329-30
(Fed. Cir. 2003).
"[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness. But
the presumption will be rebutted if it can be shown: (1) That the prior art
taught away from the claimed invention; or (2) that there are new and
4 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013),
claims 10 and 11 stand or fall with claim 8, as Appellants make no distinct
arguments beyond the arguments regarding claim 8. See, e.g., App. Br. 5-9;
Reply Br. 2---6.
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Application 13/696,665
unexpected results relative to the prior art." Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (internal citations
omitted).
In this case, Appellants argue that it is "difficult to ascertain" the
scope of Smith's "semi-infinite or innumerable" disclosure, and "it would
not have been obvious to try or otherwise select the specific claimed
parameters." App. Br. 6; Reply Br. 5. Appellants also argue that "Smith is
solely concerned with forming a loaded resin material having an increased
thermal conductivity therein." App. Br. 6. Appellants, however, do not
present argument or evidence that Smith teaches away from the claimed
invention or that there are unexpected results.
Moreover, to the extent that the recited material may exhibit
properties such as those asserted by Appellants, "[ m ]ere recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention." In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir.
1991 ). The Supreme Court in KSR has held that it is incorrect to "assum[ e]
that a person of ordinary skill attempting to solve a problem will be led only
to those elements of prior art designed to solve the same problem." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, Appellants'
arguments concerning whether Smith recognized the same problem (see
App. Br. 7) are not relevant.
Lastly, Appellants have not shown that a person of ordinary skill in
the art is imbued with knowledge taught only by the inventor of the
challenged patent. App. Br. 9; see W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721F.2d1540, 1553 (Fed. Cir. 1983). In this case, the Examiner finds
a person of ordinary skill in the art is imbued with knowledge that "was
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Application 13/696,665
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure."
See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). More
specifically, the Examiner finds that the recited composition is known in the
prior art and characteristics such as the volume of the component in the
composition could affect various parameters of the composition. Ans. 5-6.
No reversible error has been identified by Appellants in this aspect of the
obviousness analysis.
For the reasons provided above, no reversible error has been identified
and we sustain the Examiner's rejection of claim 8.
Claim 145
Claim 14 recites "[a]n insulating tape for a high voltage rotary
machine" having "a carrier" and a tape comprising the material of claim 8,
wherein the tape is secured on the carrier." App. Br. 9. In addition to
repeating the arguments for claim 8, Appellants argue that Smith does not
teach an insulating tape having "the tape ... secured on the carrier" as
recited in claim 14. Id. Appellants unelaborated argument, however, merely
disagrees with but does not address the Examiner's fact findings. Compare
Act (citing Smith i-fi-16, 56) with App. Br. 9; compare Ans. (citing the same
and finding that Smith describes "the filled resin can be impregnated into a
mica tape" and "[t]hese tapes have the structure of a paper of mica flakes
bonded to a pliable backing sheet" and reasoning that "the backing sheet is
5 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), claim
15 stands or falls with claim 14, as Appellants make no distinct arguments
beyond the arguments regarding claim 8. See, e.g., App. Br. 5-9; Reply Br.
2---6.
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Application 13/696,665
the carrier and the layer that comprises the paper and filled resin is secured
on the carrier") with Reply Br. 2---6. No reversible error has been identified
here.
Claim 16
Claim 16 is similar to claim 8 except that claim 16 recites "the filler in
the base resin is from 70-75% by vol. of the base resin." App. Br. 10.
Appellants' argument with regard to claim 16 is similar to those for claim 8.
Id. For the reasons provided in detail supra, no reversible error has been
identified with regard to claim 16.
DECISION
The Examiner's rejection of claims 8, 11, and 14--16 is affirmed.
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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