Ex Parte ChaudhryDownload PDFPatent Trial and Appeal BoardMay 7, 201814176142 (P.T.A.B. May. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/176,142 7590 Afzal M. Chaudhry 29 Willocks Circle Somerset, NJ 08873 FILING DATE FIRST NAMED INVENTOR 02/09/2014 Afzal Muhammad Chaudhry 05/07/2018 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. 9161 EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3649 MAILDATE DELIVERY MODE 05/07/2018 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 AFZAL MUHAMMAD CHAUDHRY 1 Appeal2017-005183 Application 14/176,142 Technology Center 3600 Before KEN B. BARRETT, ARTHUR M. PESLAK, and ANTHONY KNIGHT, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Afzal Muhammad Chaudhry ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-5, 9, 10, 12, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Afzal Muhammad Chaudhry. See Appeal Br. 2. Appeal2017-005183 Application 14/176, 142 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A hollow heat and sound insulation ball (HASIB) compnsmg a shell having an inner surface and an outer surface; a first non-conductive highly reflective coating on the inner surface of the shell; and a second non-conductive highly reflective coating on the outer surface of the shell; wherein the shell is made of an insulating material; and wherein an internal space of the hollow HASIB is under a vacuum condition. REJECTIONS 1) Claims 1 and 3-5 are rejected under 35 U.S.C. § 103 as unpatentable over Henderson (US 5,500,287, issued Mar. 19, 1996) and Simko (US 4,618,517, issued Oct. 21, 1986). 2) Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Henderson, Simko, and Cochran (US 4,671,994, issued June 9, 1987). 3) Claims 9 and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Henderson, Simko, and Danielson (US 3,331,729, issued July 18, 1967). 4) Claims 12 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Henderson, Simko, and Hofmann (US 2005/0281999 Al, published Dec. 22, 2005). 2 Appeal2017-005183 Application 14/176, 142 DISCUSSION Rejection 1 The Examiner finds that Henderson discloses most of the limitations of claim 1, including "a second non-conductive highly reflective coating on the outer surface of the shell" but does not disclose "a first non-conductive highly reflective coating on the inner surface of the shell." Final Act. 3--4. The Examiner finds that "Simko teaches that it is known in the art to have similar microspheres with a coating on the interior surface." Id. at 4 (citing Simko, 1 :65---69). The Examiner concludes that it would have been obvious "to incorporate a coating on the interior surface of the micro spheres in order to add further insulative properties" and because the interior coating would not be exposed "to damage which would impact the insulative properties." Id. Appellant contends that Simko' s interior coating is formed of metals which "are conductive" and thus does not disclose the recited second coating because it is not "non-conductive." Appeal Br. 3, 5. Appellant also contends that Simko "teaches away from having a non-conductive highly reflective coating" due to Simko's disclosure of metal coatings. Id. at 3. Appellant also contends that "Henderson in view of Simko fails to disclose or render obvious a method for making the hollow heat and sound insulation ball (HASIB) of claim 1, which would preclude a conclusion of obviousness of the HASIB of claim 1." Id. at 4--5. In support of this contention, Appellant submits a series of arguments directed to the processes disclosed in Henderson and Simko for forming microspheres. Id. at 3-5. The Examiner responds that "Simko was cited as a generic reference to teach that having coatings on an interior surface of a microsphere are 3 Appeal2017-005183 Application 14/176, 142 known, not for the specific material of the coating. With these two features in mind, the [Examiner] combined the references and made an obviousness rejection." Ans. 9. For the following reasons, we sustain the rejection of claim 1. First, with respect to Appellant's contention that Henderson in view of Simko fails to disclose or render obvious a method for making the claimed HASIB, claim 1 is an apparatus claim and does not recite any product by process limitations. Appellant's contention is, thus, not persuasive because it is not commensurate with the scope of claim 1 and is not supported by evidence. Second, with respect to Appellant's argument that Simko teaches away, we note that when a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits or otherwise discourages the solution claimed. See Croes, Inc. v. US. International Trade Commission, 598 F.3d 1294, 1308 (Fed. Cir. 2010)(Prior art taught away by specifically discouraging use of foam straps.); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not direct us to any specific portion of Simko where the use of non-conductive coatings is criticized, discredited, or otherwise discouraged. Appellant's teaching away argument is, thus, not persuasive. Third, Henderson discloses "an evacuated microsphere or shell 10." Henderson 4:30. Shell 10 is provided with a coating 18 on its outer surface. Id. at Fig. 1, 11:37--45. Appellant does not dispute the Examiner's finding that Henderson's coating 18 is non-conductive and highly reflective. See Appeal Br. 3-5. Nor does Appellant argue that the Examiner's rationale for 4 Appeal2017-005183 Application 14/176, 142 combining the teachings of Henderson and Simko is erroneous. See id. While we understand that Simko' s inner coating is formed of metal and thus is not "non-conductive" as required by claim 1, the Examiner does not propose incorporating Simko's metal coating into Henderson. Rather, the Examiner relies on Simko for its general teaching that it is known in the art to use coatings on the interior of insulating micro spheres. We understand that the rejection is based on applying Henderson's non-conductive highly reflective coating 18 to the interior of Henderson's micro spheres as taught by Simko. See Ans. 9. Appellant's argument regarding the material of Simko' s internal coating is, thus, not persuasive because it does not address the Examiner's rejection. We have considered all of Appellant's arguments and determine that the arguments fail to apprise us of error in the Examiner's factual findings or rationale, quoted above, for the combination of Henderson and Simko, which we determine to be reasonable and supported by rational underpinnings. We thus, sustain the rejection of claim 1 under 35 U.S.C. § 103(a). Appellant does not argue separately for the patentability of dependent claims 3 and 5. See Appeal Br. 3-5. We, thus, sustain the rejection of claims 3 and 5. Claim 4, which depends from claim 1, requires that "the first non- conductive highly reflective coating covers an entirety of the inner surface of the shell." Appeal Br. 9 (Claims App.). Appellant argues that "Henderson states 'heating the gas permeated particles to blow each particle into a shell having a hollow interior."' Appeal Br. 5 (citing Henderson 1:21-22). Based on this portion of Henderson, Appellant then contends that placing a reflective coating on the "entirety of the inner surface of the shell of 5 Appeal2017-005183 Application 14/176, 142 Henderson will prevent the gas permeated particles of Henderson to permeate through the shell to produce vacuum." Id. The Examiner responds that Appellant's argument "is conclusory and without any evidence." Ans. 11. For the following reasons, we sustain the rejection of claim 4. As the Examiner notes, there are no "limitations in the claims as to what constitutes 'non-conductive' or 'highly reflective', nor is a definition provided in the disclosure." Ans. 8. Appellant's argument is premised on a construction of the limitation "highly reflective coating" requiring the coating to be impermeable to gas particles. Appellant, however, directs us to no disclosure in the Specification to support such a construction. In addition, the portion of Henderson referenced by Appellant refers to the process by which Henderson's microspheres are manufactured. Appellant does not provide any evidence or persuasive technical reasoning why applying Henderson's exterior coating to the interior of Henderson's shells would prevent the gases from permeating through the shell. Consequently, Appellant does not apprise us of Examiner error and we sustain the rejection of claim 4. Rejection 3 In arguing for the patentability of claims 9 and 10, Appellant relies on the same arguments as for claim 1. We sustain the rejection of claims 9 and 10 for the same reasons as stated above for claim 1. Rejection 4 The Examiner relies on the combined teachings of Henderson and Simko for disclosure of the HASIB's of claim 1 and finds that "Hofmann 6 Appeal2017-005183 Application 14/176, 142 teaches that it is known in the art to have microspheres used [in] drywall, which has first and second plies." Final Act. 7 (citing Hofman i-fi-f 123, 231 ). The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to incorporate the spheres in Henderson in view of Simko with the drywall in Hofmann, as the spheres in Henderson in view of Simko are used for many purposes, would function as intended if incorporated into drywall." Id. at 7-8. Appellant contends that the combination of Henderson, Simko, and Hofmann does not disclose the drywall recited in claim 12. Appeal Br. 7. Appellant argues that paragraph 123 of Hofmann relates to "a filler including hollow glass spheres" while paragraph 231 relates "to the composite precursor material to form sandwich structures" and "[t]he filler of paragraph [123] of Hofmann is not in the precursor of paragraph [231] of Hofmann to form sandwich structures." Id. at 7-8. The Examiner responds that the combined teachings of Hofmann's paragraphs 231 and 123 "note that the material in Hofmann can be used in sheet rock" and "[i]t is well known that sheetrock has outer sheathing layers which the [Examiner] equated to plies." Ans. 13. The Examiner also notes that Henderson discloses using its shells in various building materials and thus, the combined teachings of the references renders claim 14 unpatentable. Id. at 14. The Examiner has the better position here. Hofmann discloses hollow spheres that can be used as filler material. Hofmann also references their use in connection with sheetrock (drywall). Hofmann, i1i-f123, 231. Appellant does not adequately explain why Hofmann's reference to filler material in paragraph 123 means that "the filler material is not in the 7 Appeal2017-005183 Application 14/176, 142 precursor material" referenced in paragraph 231. However, more pertinently, Appellant does not address the rejection which proposes placing the microspheres resulting from the combined teachings of Henderson and Simko into the drywall disclosed in Hofmann. Appellant's argument, thus, does not apprise us of Examiner error and we sustain the rejection of claim 12. Appellant does not argue separately for the patentability of claim 13 which depends from claim 12. Appeal Br. 7-8. We, thus, sustain the rejection of claim 13. DECISION The Examiner's decision rejecting claims 1-5, 9, 10, 12, and 13 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 8 Copy with citationCopy as parenthetical citation