Ex Parte Colson et al

Patent Trial and Appeal Board

Jan 3, 2018

13466363 (P.T.A.B. Jan. 3, 2018)

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.
13/466,363 05/08/2012 Darryl A. Colson 67010-565
PUS 1 ;PA-0022054
2167
26096 7590 01/05/2018
TART SON OASKFY fr OT DS P C
EXAMINER
400 WEST MAPLE ROAD
SUITE 350
BRUNJES, CHRISTOPHER J
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRYL A. COLSON and JOHN M. BECK
Appeal 2016-0023141
Application 13/466,3632
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1, 4—7, 10-13, and 16—19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants filed two Appeal Briefs. The first Appeal Brief, filed May 11,
2015, is hereinafter “Appeal Br.” and the Appeal Brief filed July 15, 2015 is
hereinafter “Corrected Appeal Br.”.
2 According to Appellants’ Appeal Brief, the real party in interest is
Hamilton Sundstrand Corp., which is owned by United Technologies Corp.
Appeal Br. 1.
Appeal 2016-002314
Application 13/466,363
The claims are directed to “a cover for an electric terminal box in a
ram air fan assembly.” Spec. 11. Claims 1,7, 13, and 19 are independent.
Claim 1 reproduced below, is representative of the claimed subject matter:
1. A terminal box cover for a ram air fan assembly
comprising:
a body defining a top wall having an outer surface and an
inner surface, with said body extending between a forward end
and a rearward end;
an opening formed in a forward wall at said forward end,
said opening allowing electric supply feeders to move into an
internal space defined by said cover when mounted on a terminal
box base;
said outer surface extending from said forward end to said
rearward end such that said forward wall is thicker than a rear
wall at said rearward end, thickness being defined as a distance
extending away from said top wall;
a separator wall defined extending from said inner surface,
said separator wall extending from said front wall toward said
rear wall, and being spaced from said rear wall, and said
separating wall having a curved inner lip at a rearwardmost end;
wherein said curved inner lip curves about a radius that is
between 1.00 and 1.07 inches (2.54 and 2.72 centimeters); and
wherein said rearwardmost end of said curved inner lip is
spaced from an inner surface of a first sidewall that is closest to
said rearward most end by a rearward end distance, and a ratio of
said radius of curvature to said rearward end distance is between
.365 and .425.
Corrected Appeal Br. 2
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Appeal 2016-002314
Application 13/466,363
EVIDENCE RELIED ON BY THE EXAMINER
Voorheis et al. US 5,920,188 July 6, 1999
(“Voorheis”)
Kuwahara et al. US 6,344,612 B1 Feb. 5, 2002
(“Kuwahara”)
Katsuzawa et al. US 2002/0050752 Al May 2, 2002
(“Katsuzawa”)
Applegate US 2006/0197394 Al Sept. 7, 2006
Winter et al. US 2011/0042967 Al Feb. 24, 2011
(“Winter”)
Hassel US 2012/0267988 Al Oct. 25, 2012
REJECTIONS
The Examiner made the following rejections:
1. Claim 6 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1 and 4—6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Katsuzawa, Kuwahara, and Voorheis.
3. Claims 7 and 10-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Katsuzawa, Kuwahara, Voorheis, and Applegate.
4. Claims 13 and 16—18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Katsuzawa, Kuwahara, Voorheis, Applegate, and
Winter.
5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Katsuzawa, Kuwahara, Voorheis, Applegate, and Hassel.
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Application 13/466,363
OPINION
Rejection 1
Appellants do not address appropriately the Examiner’s rejection and
in failing to do so, fail to identify any reversible error. See Appeal Br. 6—9.
Although we appreciate Appellant’ position that “it is clear from the
remainder of the specification and claims what was meant by the language
questioned in claim 6,” we are not persuaded because such an argument is
merely a conclusory statement that the language of claim 6 is not indefinite.
See Reply Br. 1. We therefore summarily sustain this rejection. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary
affirmance without consideration of the substantive merits is appropriate
where an appellant fails to contest a ground of rejection).
Rejection 2
Appellants present arguments against the rejections of claims 1 and 4—
6 together; we select claim 1 as representative. See 37 C.F.R.
§41.37(c)(l)(iv).
Claim 1
The Examiner finds that the combination of Katsuzawa, Kawahara,
and Voorheis discloses substantially all of the limitations of independent
claim 1, but fails to disclose “the radius of the curved inner lip of the
separator wall being between 1.00 and 1.07 inches and the ratio between the
radius of the curved inner lip to the distance between the rearward most end
of the separator wall from the and the inner wall being between .365 and
.425.” Final Act. 5. Nonetheless, the Examiner finds that
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Appeal 2016-002314
Application 13/466,363
[t]he courts have held that where the only difference between the
prior art and the claims was the recitation of relative dimensions
of the claimed device, the device having the claimed relative
dimensions would not perform differently than the prior art
device and is therefore not patentably distinct. (See MPEP
§ 2144.04 - Paragraph IV.A).
Id. at 5—6. The Examiner concludes the rejection of claim 1 stating that
“[t]he optimum ranges/values for the specific dimensions of the separator
wall would have been a design choice that depended on the size of the
terminal box cover, the size of the conduit, and the flexibility of the
conduit.” Id. at 7.
Appellants respond that “[t]he Examiner argues that the dimensions
and ratios now added to the independent claims from the original dependent
claims are ‘design choice’” but that the dimensions and ratios instead “quite
clearly differentiate the claimed structure from the prior art.” Appeal Br. 7.
According to Appellants, “[w]hat the Examiner is actually arguing is that the
dimensions or ratios could be optimized. However, support of a prima facie
case of obviousness based on optimization of a known result effective
variable requires first that the variable be recognized in the prior art
(MPEP§2144.05).” Id. at 7-8; Reply Br. 2.
In response, the Examiner takes the position that a person skilled in
the art would have readily understood “these limitations were simply a
design choice by the appellant and that it would have been well within the
capabilities of a person having ordinary skill in the art to modify Katsuzawa
(as modified by Kuwahara & Voorheis) to meet the claimed invention.”
Ans. 14. Further, the Examiner notes that the claimed ratio in In re Antoine
provided a described benefit, whereas here Appellants have not shown any
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Application 13/466,363
benefit for having the claimed ranges. See Ans. 14-15. The Examiner
reasons that “that the ratios & dimensions claimed were chosen so as to
properly mate [the] terminal box cover with the structure of the terminal box
base and that these values are solely dependent on the size of the terminal
box and the gage of the wires.” Id. at 15.
We are not persuaded by Appellants’ arguments for two reasons.
First, Appellants do not address the Examiner’s rejection of the claims based
upon design choice. See 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“An appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by submitting arguments
and/or evidence to show that the examiner made an error.”). More
specifically, the Examiner relies on design choice and not optimization to
conclude that the recited ranges would have been obvious to a person of
ordinary skill in the art. Accordingly, Appellants’ arguments about
optimization are not persuasive.
The second reason we are not persuaded by Appellants’ arguments is
because we are not apprised of error in the Examiner’s design choice
rationale. In appropriate circumstances, a modification of prior art teachings
may be a matter of design choice. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975). However, merely asserting that the change is an obvious
design choice is insufficient. See Cutsforth, Inc. v. MotivePower, Inc., 636
Fed. App’x. 575, 578 (Fed. Cir. 2016) (unpublished) (stating that a particular
placement of an element is a design choice does not make it obvious; a
reason must be offered as to why a skilled artisan would have made the
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Application 13/466,363
specific design choice). In the present case, the Examiner proposes to
modify the dimensions of the terminal box cover of Katsuzawa, Kuwahara,
and Voorheis because it would have been obvious to a person having
ordinary skill in the art at the time of the invention to “accommodate the size
of the conduit in the terminal box (in regards to the thickness of the
forward/rear wall & the distance of the separator wall from the side wall)
and the flexibility of the conduit (in regards to the radius of the curved inner
lip).” Final Act. 8. The Examiner thus has a rationale for the combination
and the conclusion that the modification would be a matter of design choice.
Appellants have not apprised us of why the Examiner’s rationale in this
instance is in error.
In particular, the Examiner reasonably concludes that the dimensions
and ratios of the claimed features solve no stated problem and present no
unexpected result and would be an obvious matter of design choice within
the ordinary skill in the art. See Final Act. 15 (“In the instant application,
the claimed ratios & dimensions are just disclosed as falling between a
specific range, without any evidence or support as to how these claimed
ratios & dimensions would provide any novel or unexpected result over a
terminal box cover having different ratios & dimensions.”); see also In re
Kuhle, 526 F.2d 553, 555 (CCPA 1975). Referring to Appellants’
Specification paragraphs 21—26, although the various dimensions and ratios
are recited, paragraphs 21—26 do not indicate any reasoning for or criticality
to the various dimensions and ratios. Thus there is nothing to indicate in
Appellant’s Specification nor in the applied prior art that the dimensions and
ratios would not be an obvious matter of design choice within the ordinary
skill in the art.
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Application 13/466,363
Further in the Brief, Appellants opine that “[i]t would be difficult to
hypothesize a clearer example of hindsight reconstruction.” Appeal Br. 9.
However, Appellants do not identify, nor do we discern, any knowledge that
the Examiner relied upon that was gleaned from Appellants’ disclosure and
that was not otherwise within the level of ordinary skill in the art at the time
of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
(so long as a conclusion of obviousness is based on a reconstruction that
“takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellants’] disclosure, such a reconstruction
is proper”). As we explained above, however, the Examiner states a
rationale for the modification that we determine is supported adequately by
sufficient facts, namely, that “the specific dimensions of the separator wall
would have been a design choice that depended on the size of the terminal
box cover, the size of the conduit, and the flexibility of the conduit.” See In
re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016); see also Final Act. 7.
Appellants offer no rebuttal to the Examiner’s reasonable explanation here.
Accordingly, Appellants’ argument regarding design choice is not
persuasive.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s factual findings, or the reasoning provided for the ultimate
conclusion of obviousness with respect to claim 1. Accordingly, we sustain
the rejections of independent claim 1, and of dependent claims 4—6.
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Application 13/466,363
Rejections 3—5
Appellants have not provided any substantive arguments for the
separate patentability of claims 7, 10-13, and 16—19 (see Final Act. 8—11)
and, as such, for the same reasons discussed supra, we also sustain the
rejections of claims 7, 10-13, and 16—19.
DECISION
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 112,
second paragraph is affirmed.
The Examiner’s decision to reject claims 1, 4—7, 10—13, and 16—19
under 35 U.S.C. § 103 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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