Ex Parte Coe et al

Patent Trials and Appeals Board

Jun 18, 2019

13227259 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/227,259 09/07/2011
23701 7590 06/20/2019
RAUSCHENBACH PATENT LAW GROUP, PLLC
P.O. BOX849
Franconia, NH 03580
CraigM. Coe
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.
COE-001 5151
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
kurt@rauschenbach.com
admin@rauschenbach.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG M. COE, ROBERT GREENE, and
PHILIP DAVID HAGLOF
Appeal 2018-007514
Application 13/227,259
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Craig M. Coe, et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 2-10, 15, 16, 18, and 29.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2018-007514
Application 13/227,259
STATEMENT OF THE CASE
The Specification
The disclosure is directed to a cover for a radiator heater. Spec. ,-J9.
The Rejected Claims
Claims 2-10, 15, 16, 18, and 29 are rejected. Final Act. 1. No other
claims are pending. Id.
Claim 29 is the sole independent claim and is reproduced below,
along with dependent claim 7.
29. A radiator heater comprising:
a) a front panel that fits over at least a portion of an
existing radiator heater comprising hot water pipes;
b) a side flap formed at an angle relative to the front
panel, the side flap positioning the radiator heater cover at an
angle relative to a surface of the existing radiator heater that
provides convective heat transfer; and
c) an angled portion being positioned so that the angled
portion connects the side flap to the front panel of the radiator
heater cover such that the angled portion forms an obtuse angle
with the side flap, the angled portion comprising a plurality of
apertures with a fill factor that is chosen to provide convective
heat transfer, wherein a ratio of an area of the front panel to a
sum of an area of the angled portion and the side flap is in a
range of 0.33 to 2.25 so as to allow heated air to escape from
the radiator heater cover at a velocity such that the heated air
travels into the room and maintains an acceptable heat loss in
the hot water pipes; and
wherein the front panel, the side flap, and the angled
portion are formed of thermoplastic material and are configured
in a shape that mounts over at least a portion of the existing
radiator heater comprising the hot water pipes.
7. The radiator heater cover of claim 29 wherein the
thermoplastic comprises a region comprising an embedded
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material such that the region is at least partially conductive so
as to provide conductive heat transfer away from the hot water
pipes.
Appeal Br. 30, 32-33 (Claims App.).
The Appealed Rejections
The following rejections are before us for review:
1. claims 2-10, 15, 16, 18, and 29 under 35 U.S.C. § l 12(a)/i]l as
not described in the Specification (Final Act. 4); and
2. claims 2-10, 15, 16, 18, and 29 under 35 U.S.C. § l 12(b)/i]2 as
indefinite (id.);
3. claims 2-6, 8, 15, 16, 18, and 29 under 35 U.S.C. §103(a) as
unpatentable over U glietto1 and Zussman2 (id. at 5);
4. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Uglietto,
Zussman, and Wenzhong3 (id. at 10);
5. claim 9 under 35 U.S.C. § 103(a) as unpatentable over Uglietto,
Zussman, and Hayes4 (id. at 11 ); and
6. claim 10 under 35 U.S.C. §103(a) as unpatentable over
Uglietto, Zussman, and Banhazl5 (id.).
1 US 6,550,688 Bl, issued Apr. 22, 2003 ("Uglietto").
2 US 5,884,690, issued Mar. 23, 1999 ("Zussman").
3 CN 201878343 U, published June 22, 2011 ("Wenzhong").
4 US 6,240,739 Bl, issued June 5, 2001 ("Hayes").
5 US 7,622,237 B2, issued Nov. 24, 2009 ("Banhazl").
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DISCUSSION
Rejection I-Written Description
The Examiner rejected claims 2-10, 15, 16, 18, and 29 under 35
U.S.C. § l 12(a)/i]l. Final Act. 4.
Claims2-6, 8-10, 15, 16, and 18
Although the Final Action lists all of claims 2-10, 15, 16, and 18 as
rejected for lack of written description, it provides a substantive rejection for
only claim 7. Final Act. 4; see also Ans. 13 (same). Because no prima facie
case has been presented with respect to claims 2-6, 8-10, 15, 16, and 18, we
reverse their rejection. We address claim 7 below.
Claim 7
Section 112 states, in part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.
35 U.S.C. § l 12(a); see also 35 U.S.C. § 112 iJl (pre-AIA version stating the
same). "In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. See id.
Claim 7 depends from claim 29 and recites "wherein the thermoplastic
comprises a region comprising an embedded material such that the region is
at least partially conductive so as to provide conductive heat transfer away
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from the hot water pipes." Appeal Br. 30 (Claims App.). The Examiner
found that the Specification lacked a written description of such a "region."
Final Act. 4 ("In this case a region of thermoplastic material that is partially
conductive ( claim 7) is not described in the specification.").
Appellants quote paragraph 14 of the Specification and argue that it
provides adequate written description support for claim 7. 6 Appeal. Br. 12-
13. However, the arguments are not commensurate with the rejection. The
arguments are reproduced as follows:
Paragraph [0014] of the originally filed specification clearly
states: (1) that baseboard radiator heater cover can be formed of
a conductive polymer material; and (2) that the conductive
polymer material can be formed of a thermoplastic material that
is embedded with various conductive materials that provides
significant heat transfer through conduction in addition to
convection heat transfer.
Id. at 13. Thus, Appellants do not argue, let alone establish, that paragraph
14 (or any other part of the Specification) describes "a region."
In the Answer, the Examiner further focused on the "region" feature
of claim 7, stating:
Paragraph 0014 and original claim 7 do[] not have support for
amended claimed subject matter of claim 7: "wherein the
thermoplastic comprises a region comprising an embedded
material such that the region that is at least partially conductive
so as to provide conductive heat transfer away from the hot water
pipes." It is not clear how the thermoplastic further comprises a
region that is at least partially conductive. If the region
6 Appellants also quote original claim 7 (Appeal Br. 12-13), which stated:
"The radiator of claim 1 wherein the thermoplastic is at least partially
conductive and provides conductive heat transfer away from the radiator
heater in at least a portion of the radiator heater cover." Spec. 12.
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Application 13/227,259
compris[ es] the embedded conductive material [then] said region
is conductive, not partially conductive.
Ans. 13.
In the Reply, Appellants repeat their arguments, avoiding the
Examiner's point of contention-that the Specification does not describe "a
region" as recited in claim 7. See Reply 4.
For the foregoing reasons, we are not apprised of error in the
Examiner's rejection of claim 7 under 35 U.S.C. § l 12(a)/,-Jl. Accordingly,
we affirm it.
Rejection 2-Indefiniteness
The Examiner rejected claims 2-10, 15, 16, 18, and 29 under 35
U.S.C. § l 12(b)/,-J2. Final Act. 4-5.
Claims 2-6, 8-10, 15, 16, and 18
Although the Final Action lists all of claims 2-10, 15, 16, and 18 as
rejected for indefiniteness, it provides a substantive rejection for only
claim 7. Final Act. 4-5; see also Ans. 13-14 (same). Because no prima
facie case has been presented with respect to claims 2-6, 8-10, 15, 16, and
18, we reverse their rejection. We address claim 7 below.
Claim 7
Section 112 states, in part:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
35 U.S.C. § l 12(b); see also 35 U.S.C. § 112 ,-J2 (pre-AIA version stating
virtually the same).
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During examination, "a claim is indefinite when it contains words or
phrases whose meaning is unclear," i.e., "ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention." In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); see
also MPEP § 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising examiners
that a rejection for indefiniteness is appropriate "after applying the broadest
reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear"). Moreover, "if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 2008 WL
5105055, at *5 (BPAI 2008) (precedential).
As discussed above, claim 7 depends from claim 29 and recites
"wherein the thermoplastic comprises a region comprising an embedded
material such that the region is at least partially conductive so as to provide
conductive heat transfer away from the hot water pipes." Appeal Br. 30
(Claims App.). The Examiner determined that claim 7 was indefinite
because "[i]t is not clear how the thermoplastic further comprises a region
that is at least partially conductive." Final Act. 5. The Examiner further
explained that, "[i]fthe region compris[es] the embedded conductive
material[, then] said region is conductive, not partially conductive." Id.
Appellants argue that "the limitation that the 'thermoplastic further
comprises a region that is at least partially conductive' is explicitly
supported in the originally filed specification" and that "[i]t should be very
clear to one skilled in the art that since as the specification teaches
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thermoplastic material can be embedded with various conductive materials
that it can comprise a region that is at least partially conductive." Appeal
Br. 13-14. This argument is not persuasive. First, the Specification does
not explicitly disclose such "a region." See, e.g., Spec. iJ14, page 12
(original claim 7). Second, the Appellants do not address the Examiner's
point about what in particular is considered to be the "region," and
furthermore, if such a region is embedded with conductive materials, it is not
clear why it is "partially conductive," rather than "conductive."
We agree with the Examiner that the limitation is indefinite.
Accordingly, we affirm the rejection of claim 7 under 35 U.S.C. § l 12(b )/i]2.
Rejection 3----0bviousness
The Examiner rejected claims 2-6, 8, 15, 16, 18, and 29 under 35
U.S.C. § 103(a) as unpatentable over Uglietto and Zussman. Final Act. 5.
With the exception of dependent claim 18 (see Appeal Br. 24-25),
Appellants argue all of these claims together. Appeal Br. 14-28. We select
independent claim 29 as representative of claims 2-6, 8, 15, 16, and 29. See
37 C.F.R. § 41.37(c)(l)(iv).
Claims 2-6, 8, 15, 16, and 29
Uglietto teaches various radiator covers. See, e.g., Uglietto Fig. 3A-
3E. The Examiner found that U glietto discloses all of the subject matter of
claim 29 except for two limitations, namely:
[ 1] wherein a ratio of an area of the front panel to a sum of an
area of the angled portion and the side flap is in a range of 0.33
to 2.25 so as to allow heated air to escape from the radiator heater
cover at a velocity such that the heated air travels into the room
and maintains an acceptable heat loss in the hot water pipes [ ( the
"ratio limitation") and]
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[2] wherein the front panel, the side flap, and the angled portion
are formed of thermoplastic material [ the "thermoplastic
limitation")].
Final Act. 5-9.
The Examiner found that the ratio limitation was not inventive
because it is merely optimizing a result-effective variable-the ratio of a
radiator cover's exposed surface area to its covered surface area. Id. at 6-7.
Zussman teaches a "heater cover, preferably a unitary member of a
thermoplastic material." Zussman 1 :37-38. The Examiner found that
Zussman teaches the thermoplastic limitation and concluded that it would
have been obvious to a person of ordinary skill in the art to substitute the
Zussman's thermoplastic cover material for the Uglietto cover material
"because the substitution of one known element for another would have
yielded predictable results of transferring the heat." Ans. 9-10.
Appellants argue against the rejection of claim 29 on three bases.
Appeal Br. 14-28.
First, Appellants argue that U glietto fails to disclose "a front panel
that fits over at least a portion of an existing radiator heater," as recited in
claim 29. Id. at 14-17. Appellants do not dispute, nor could they
reasonably do so, that U glietto teaches a front panel fitted over a radiator
heater, as shown, for example, in Figure 5. Id. at 16-17 ("[T]he cover of
U glietto is expressly intended for installation with the radiator heater
baseboard system he discloses."); see also U glietto 1 :61-62 ("FIG. 5 is an
isometric view of an installed radiator and cover."). What Appellants
dispute is that Uglietto's radiator is an existing radiator. Id. at 14-17.
U glietto' s radiator exists, and, thus, this argument is not persuasive.
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Second, Appellants argue that "U glietto and Zussman are not fairly
combinable to achieve the present teaching as recited in the pending claims."
Id. at 28. This is so, Appellants argue, because "[ c Jombining the teachings
of U glietto with Zussman would result in a structure with the Zussman cover
over the Uglietto radiator with cover." Id. at 27. This argument is not
persuasive because it is not commensurate with the rejection. In the
rejection, the Examiner does not propose adding Zussman's cover over
Ulglietto's cover. Rather, the Examiner proposed that a person of ordinary
skill in the art would have "substitute[ d] the U glietto cover material with the
Zussman cover material." Final Act. 10 ( emphasis added).
Third, Appellants argue that the Examiner's treatment of the ratio
limitation constitutes error because the Examiner allegedly "gave no reasons
or evidence to support the conclusion that the claimed ratio is a result-
effective variable which is the result of a routine experimentation." Appeal
Br. 18. This argument is not persuasive because the Examiner provided both
reasons and evidence. The Examiner found that varying the ratio of a
radiator cover's exposed surface area to its covered surface area is a result-
effective variable, the result being the controlling of air therethrough to
achieve optimum heating. Final Act. 7. That this was a known result-
effective variable is evidenced by the prior art's use of apertures in radiator
covers. See, e.g., Uglietto 2:63-64 ("The exposed surfaces are provided
with a series of apertures 44 to allow for free air circulation."); see also id.
Figs. 3A-3E (varying the size and number of apertures). The Examiner did
not err in determining that the recited range of ratios of the surface area
having apertures to the surface area of the solid portion could have been
arrived at by routine optimization of this variable artisan, as it merely
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involves balancing convective heat transfer and protection. See In re Aller,
220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation") ( citations omitted).
Accordingly, we affirm the rejection of claim 29 as unpatentable over
Uglietto and Zussman, and thus also the rejection of claims 2-6, 8, 15, and
16, which fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 18
Claim 18 recites: "The radiator heater cover of claim 29 wherein a
ratio of an area of a front panel to a sum of remaining areas is in a range of
0.4 to 6.0." Appeal Br. 31 (Claims App.). The Examiner determined that
this additional claim recitation was not inventive for the same reason as the
ratio limitation of independent claim 29 and, therefore, likewise rejected
claim 18 as unpatentable over U glietto and Zussman. Final Act. 8-9.
Appellants argue against the rejection of claim 18 on the same non-
persuasive basis as they argue against the rejection of claim 29. See Appeal
Br. 25.
Accordingly, for the same reasons discussed above, we affirm the
rejection of claim 18 as unpatentable over U glietto and Zussman
Rejections 4 through 6-----0bviousness
The Examiner rejected, under 35 U.S.C. § 103(a), claim 7 as
unpatentable over U glietto, Zussman, and W enzhong; claim 9 as
unpatentable over U glietto, Zussman, and Hayes; and claim 10 as
unpatentable over U glietto, Zussman, and Banhazl. Final Act. 10-11.
Claims 7, 9, and 10 depend from claim 29 and add further limitations.
The Examiner relied on each of the tertiary references identified in the prior
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paragraph to account for these additional limitations. Id. Yet, Appellants
merely argue that "Uglietto and Zussman Do Not Describe the Limitations
in Dependent Claims 7, 9 [and] 10." Appeal Br. 24; see also id. at 24-25
(lacking any arguments addressing W enzhong, Hayes, or Banhazl).
Appellants' argument is not commensurate with the scope of the rejections
and, thus, not persuasive of Examiner error. Accordingly, we affirm the
rejections, under 35 U.S.C. §103(a), of claims 7, 9, and 10.
DECISION
The Examiner's rejection of claim 7 under 35 U.S.C. § l 12(a)/,-Jl is
affirmed. The Examiner's rejection of claims 2-6, 8-10, 15, 16, and 18
under 35 U.S.C. § l 12(a)/,-Jl is reversed.
The Examiner's rejection of claim 7 under 35 U.S.C. § l 12(b )/,-J2 is
affirmed. The Examiner's rejection of claims 2-6, 8-10, 15, 16, and 18
under 35 U.S.C. § l 12(b)/,-J2 is reversed.
The Examiner's rejection of claims 2-6, 8, 15, 16, 18, and 29 under
35 U.S.C. § 103(a) as unpatentable over Uglietto and Zussman is affirmed.
The Examiner's rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over U glietto, Zussman, and W enzhong is affirmed.
The Examiner's rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over U glietto, Zussman, and Hayes is affirmed.
The Examiner's rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over U glietto, Zussman, and Banhazl is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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