Ex Parte Campisi et al

Patent Trial and Appeal Board

Feb 23, 2017

12927060 (P.T.A.B. Feb. 23, 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.
12/927,060 11/04/2010 Francis H. Campisi CAMP-001DIV 7508
120704 7590 02/27/2017
Pasieirn Rnrke T T P
EXAMINER
P.O. Box 610 TRIGGS, ANDREW J
Scarborough, ME 04070-0610
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
ccaseiro @ caseiroburke. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS H. CAMPISI and JAMES F. CAMPISI
Appeal 2015-002443
Application 12/927,060
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
14 and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-002443
Application 12/927,060
CLAIMED SUBJECT MATTER
The claims are directed to a method for actively insulating a structure.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for actively insulating a building structure at a
surface thereof, the method comprising the steps of:
a) providing a first layer of insulation,
b) providing a second layer of insulation in direct contact
with the surface between the surface and the first layer of
insulation, wherein the second layer of insulation is configured
to form one or more elongated channels, wherein when the
second layer of insulation is placed adjacent to the surface each
of the one or more elongated channels is an active air channel in
contact with the surface, and wherein the first layer of insulation
has no elongated air-channel as an active air channel,
c) spacing the first layer of insulation from the second
layer of insulation only by a thermally conductive ply to form
one or more conductive ply channels between the first layer of
insulation and the second layer of insulation, wherein each of the
one or more conductive ply channels is adjacent to one or more
of the one or more active air channels,
d) directing a flow of a volume of air through the one or
more active air channels, and
e) conducting energy from the one or more active air
channels to the one or more conductive ply channels or from the
one or more conductive ply channels to the one or more active
air channels.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Baker
Nonoshita
Wintermantel
Bonin
US 5,383,337 Jan. 24, 1995
US 5,761,864 June 9, 1998
US 6,269,598 B1 Aug. 7, 2001
US 6,754,997 B2 June 29, 2004
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Application 12/927,060
REJECTIONS
I. Claims 1, 2, 4—6, 9-13, and 20-22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bonin.
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bonin and Wintermantel.
III. Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonin and Baker.
IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonin and Nonoshita.
OPINION
Rejection I
Claim 1 is the sole independent claim. Appellants separately argue
the patentability of claims 1 and 22. We select claim 1 as representative of
claims 1, 2, U-6, 9-13, 20 and 21. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Appellants argue that claim 1 is patentable because “Bonin does not
disclose having a thermally conductive ply touching a first layer of
insulation.” Appeal Br. 8. Appellants explain that “the Bonin bubble wrap
shows that the conductive ply (104) does not touch the first layer (10).” Id.
at 9.
The Examiner agrees that contact between the conductive ply and the
first layer of insulation is not explicitly stated by Bonin. Ans. 4. But, the
Examiner determined that this type of contact would necessarily occur, such
as during installation of the bubble wrap within the wall. Non-Final Act. 3,
4, and 9; see also Ans. 4 and 5. The Examiner further determined that it
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Application 12/927,060
would have been obvious “for the second layer of insulation to make contact
with [a] surface [of the first layer of insulation] during installation and use.”
Non-Final Act. 3.
Though Appellants argue that the Examiner’s determination of
obviousness is unreasonable, they only point to what is expressly shown by
Bonin. Appeal Br. 7. Nowhere do Appellants directly address the
Examiner’s reasoning behind the determination of obviousness or explain
why it is incorrect, as opposed to not being expressly disclosed. We further
note that Figure 1 of Bonin shows the left-most sheet material 100 in direct
contact with the wall 10. This disclosure further supports the Examiner’s
conclusion of obviousness. For these reasons, we are not informed of error
in the Examiner’s rejection.
Appellants also argue that claim 1 is patentable because “Bonin does
not. . . disclose having an active air channel adjacent to the surface of the
structure to be insulated.” Id. at 8. Appellants explain “the Bonin bubble
wrap shows that... the active air channel (106) does not touch the building
wall (30).” Id. at 9. Further, “air flow (25) [is not shown] in contact with
surface 30,” rather it “flow[s] away from surface 30.” Id. The relevant
section of claim 1 states “when the second layer of insulation is placed
adjacent to the surface each of the one or more elongated channels is an
active air channel in contact with the surface.”
It is unclear how the layers 100 and air channels 106 of Bonin are not
adjacent the surface 30 as identified by the Examiner. See Final Act. 3,8;
Ans. 4, 6. Bonin states “[e]ach of the layers 100 provides a field of spacing
elements 102, such as bubbles . . . which creates open voids 106 between the
layers 100 for accommodating ... air movement vertically between the
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Application 12/927,060
layers 100.” Bonin col. 5:9-15. Further, looking at Figures 3 and 4, it
would appear that at least the right-most layer 100 is adjacent the surface 30
and that the voids 106 are part of an air channel, where the air channel is in
contact with the surface as required by claim 1. Thus, we are not informed
of error in the Examiner’s rejection.
Appellants then argue that claim 1 requires two different “cross-
sectional arrangements” which are not shown by Bonin, “the first
arrangement is: building surface/second layer of insulation/conductive
ply/first layer of insulation” and “[t]he second is: building surface/air
channel/first layer of insulation.” Appeal Br. 10.
Though claim 1 defines some of the spatial relationship between the
building surface, the first and second layers of insulation, the conductive ply,
and the air channel, it is not limited to the specific cross-sections identified
by Appellants. “[Djuring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). For example, though the claim
states that the conductive ply channels are adjacent the air channels, what
“adjacent” means is not defined. Thus, in this example, the claim does not
appear to require a cross-section with a conductive ply and a second cross-
section without it, nor does it require “the active channels to be spaced from
one another by the adjacent conductive ply channels,” as argued by
Appellants. Appeal Br. 10.
Further, the transitional term “comprising” in claim 1, which is
synonymous with “including,” “containing,” or “characterized by,” is
inclusive or open-ended and does not exclude additional, unrecited elements
or method steps. Mars Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1376
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(Fed. Cir. 2004). Further, “[t]he word ‘comprising’ transitioning from the
preamble to the body signals that the entire claim is presumptively open-
ended.” Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371—73
(Fed. Cir. 2005). Thus, Appellants’ argument that the claim is limited to two
specific cross-sections is not commensurate with the scope of the claim. For
example, the Examiner found that the claimed second layer of insulation can
include multiple layers of insulation as shown by Bonin. Ans. 7. Thus, as
the claim is not as limited as argued by Appellants we are not informed of
error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (limitations not appearing in the claims cannot be relied upon
for patentability).
Claim 22
Claim 22 depends from claim 1 and adds “wherein the thermally
conductive ply is discontinuous.” Appellants argue that in Bonin the
“‘thermally conductive ply’ is continuous.” Appeal Br. 8 and 10. This is
because, it is argued, the claim requires there to be “discontinuity [or gaps] .
. . where the [] first and second insulation layers are spaced from one
another.” Id. at 11.
Appellants’ argument goes beyond the requirements of the claim.
Claim 22 states that “the thermally conductive ply is discontinuous,” but it
does not specify where the discontinuity or gaps are located. The Examiner
found that “the conductive ply [of Bonin] is discontinuous because of
elements 110 in Figure 3” which breaks up the conductive ply along the
height of the wall. Ans. 8; see also, Final Act. 5 and 13. As this is all that is
required by the claim, we are not informed of error in the Examiner’s
rejection.
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Rejection II
Claim 3 depends from claim 1 and further requires “placing at least
one of the one or more conductive ply channels beneath and above openings
of the building structure which would otherwise inhibit airflow of a similar
one of the one or more active air channels.” The Examiner found that claim
3 is unpatentable based on the combination of WintermanteTs teachings of
air flow around an opening and the structure of Bonin. Non-Final Act. 13.
Appellants argue that Bonin and Wintermantel do not show the
configuration of Figure 1 of the Specification with “the conductive ply
channel above and below the window opening . . . which does not use any
air” and “that the sides of the opening also touch the conductive ply
channel.” Appeal Br. 13.
Appellants’ discussion of Figure 1 fails to identify what features of
claim 3 are not suggested by the prior art or how Figure 1 is related to claim
3. The Examiner correctly determined that “[a]ll the claim requires is
placing conductive ply channels above and below openings in the building
structure.” Non-Final Act. 6. Appellants’ argument does not identify errors
in the Examiner’s reasoning or findings. Thus, we are not informed of errors
in the Examiner’s rejection.
Rejection III
Appellants argue that claims 7 and 14 “include[] a configuration of
components distinct from that which is disclosed by Bonin and the Baker
reference does not resolve the noted limitations of Bonin.” Appeal Br. 13—
14.
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Application 12/927,060
To the extent Appellants are arguing that the limitations of claims 7
and 14 are not taught by the prior art, apart from their dependency from
claim 1 discussed above, merely listing claim limitations with broad
assertions is not sufficient to inform us of error in the Examiner’s rejection.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Appellants also argue that “Baker fails to disclose such a method for
the purpose of warming” and that Bonin and Baker fail to disclose “a
method for insulating a structure in cool season and warm seasons.” Appeal
Br. 14—15. Neither of these limitations appear in any of claims 1, 7, or 14.
See Ans. 10. Thus, it is not clear how these arguments would distinguish the
claims from the prior art.
For these reasons we are not informed of error in the Examiner’s
rejection.
Rejection IV
Claim 8 depends from claim 1 and adds “introducing conditioned
room temperature air into the one or more active air channels and returning
or recycling a portion to a room of the structure for additional use of air flow
temperature and for conservation of energy.”
The Examiner found that Bonin teaches introducing conditioned air
into air channels and that Nonoshita teaches “air flowing through an air
channel in the outside wall of a structure where the air is returned in a room
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Application 12/927,060
[the attic] of the structure for additional use of the air flow temperature and
for conservation of energy.” Non-Final Act. 14. The Examiner further
determined that it would have been obvious to combine the teachings of
Bonin and Nonoshita. Id.
Appellants argue that “the present invention provides continuous
ventilation” where Nonoshita teaches that its “fans are not driven in the
winter.” Appeal Br. 15. This limitation is not in claim 8 and thus cannot
differentiate the claim from the prior art.
Appellants also argue that “the present invention only returns
conditioned air back into the room” where Nonoshita “brings [] ambient
temperature [air] into the room.” Id. But, as noted above, the rejection
relies on Bonin for teaching conditioned air flowing through the channels,
and Nonoshita is relied on only to teach flowing air from a channel into a
room. As Appellants’ argument does not address what is taught or
suggested by the combination of Bonin and Nonoshita we are not informed
of error in the Examiner’s rejection. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (citations omitted) (Obviousness must be considered in light
of what the combined teachings of the references would have suggested to
those of ordinary skill in the art.).
DECISION
The Examiner’s rejections of claims 1—14 and 20—22 are 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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