Ex Parte DeBaun

Patent Trial and Appeal Board

Aug 30, 2018

14699919 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/699,919 04/29/2015
49840 7590 09/04/2018
Atlanta Baker Donelson
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Rd.
A1LANTA, GA 30326
FIRST NAMED INVENTOR
Daniel T. DeBaun
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.
2924496-1 9063
EXAMINER
ORTMAN JR., KEVIN C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
atlip@bakerdonelson.com
tdavis@bdbc.com
ipdocketing@bakerdonelson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL T. DEBAUN
Appeal2017-008900
Application 14/699,919
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-25 of Application 14/699,919
under 35 U.S.C. § 103(a) as obvious. Final Act. 3-12 (mailed August 8,
2016). Appellant seeks reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). 1 We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellant is identified as the real party in interest. Br. 2.
Appeal2017-008900
Application 14/699,919
BACKGROUND
The '919 Application describes shields for protecting a person from
harmful thermal and electromagnetic radiation produced by electronic
devices. Spec. 1. Claims 1-3 and 5 are representative of the '919
Application's claims and are reproduced below from the Claims Appendix
to the Appeal Brief (paragraphing added):
1. A body shield for shielding a person from thermal and
electromagnetic radiation from a portable electronic device, the
body shield comprising,
an outer covering having a core and an outer casing encasing
said core, said outer covering including a central portion
configured to removably overlay a top surface of the portable
electronic device and at least one sidewall extending from said
central portion configured to overlay a side surface of the
portable electronic device,
said core including a first layer having a material
composition for shielding extremely low frequency
electromagnetic radiation, a second layer having a material
composition for absorbing higher frequency electromagnetic
radiation.
2. The body shield of claim 1 wherein said outer covering at
least one sidewall includes two sidewalls extending from
opposite side edges of said central portion.
3. The body shield of claim 1 wherein said core extends
past the periphery of the portable electronic device.
5. The body shield of claim 1 wherein said core further
includes a third layer having a material composition for
conducting higher frequency electromagnetic radiation.
Br. 48--49 (Claims App.).
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Application 14/699,919
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1-25 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Katz, 2 Romanko, 3
Steelmon, 4 as evidenced by Trenkler5 and Ni, 6 and
Hackenbroich. 7 Final Act. 3; see also Answer 2.
DISCUSSION
Rejection 1. Appellant makes separate arguments for reversal of this
rejection with respect to three groups of claims: (1) claims 1, 10, 19 and 24,
(Br. 7-15); (2) claims 1, 2, 3, 10, 11, 12, 19, 20, 21, 22, 24, and 25, (id. at
12, 20-21, 28-29, 37-38, 41--42, 42--43, 44--45, and 46--47); and (3) claims
5, 14, and 23. Id. at 42, 43--44, and 46. With respect to the independent
claims, we select claim 1 as representative. 8 We further select claims 2 and
2 US 5,336,848, issued Aug. 9, 1994.
3 US 2010/0300744 Al, published Dec. 2, 2010.
4 US 4,980,564, issued Dec. 25, 1990.
5 US 4,890,083, issued Dec. 26, 1989.
6 Ni et al., Electromagnetic Shielding Property of CFRP Composite
Laminates, 18th International Conference on Composite Materials, 1--4
(2011).
7 US Des. 429,470, issued Aug. 15, 2000.
8 Although Appellant provides separate arguments in the Brief for each
independent claim, the arguments urging reversal of claim 1 are substantially
similar to the arguments for reversal of claims 10, 19, and 24. Compare Br.
7-15 and 15-24. Accordingly, we limit our discussion to claim 1, with the
understanding that it applies with equal force to the other independent claims
on appeal.
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Application 14/699,919
3 as representative of claims group (2); and claim 5 as representative of the
dependent claims group (3). 37 C.F.R. § 4I.37(c)(l)(iv). We address
Appellant's arguments regarding each group of claims in tum.
Claim 1. Appellant argues that the rejection of claim 1 as
unpatentable over the combination of Katz, Romanko, Steelmon, and
Hackenbroich should be reversed because: (1) Katz and Romanko fail to
describe the frequency ranges shielded or absorbed by individual layers, (Br.
7-10); (2) Steelmon's absorption radiation wavelengths for laser-produced
electromagnetic radiation are outside the range for extremely low frequency
electromagnetic radiation, e.g., 0-300 Hz range, for the first layer and higher
frequency electromagnetic radiation, e.g., 800 Hz-10 Ghz, for the remaining
two layers (id. at 10-11 ); (3) the Examiner "cannot simply identify a metal
and assume that it has the claim recited qualities," nor cite Ni and Trenkler
for showing carbon fiber and nickel use (id. at 11 ); ( 4) it is impossible to
determine from the Hackenbroich design patent "whether ... the material
shown in the other references could be used in conjunction with the device
of Hackenbroich without destroying its intended use," (id. at 37); (5) the
Examiner has merely provided a laundry list of components to provide a
proposed combination from six references, (id. at 12-13); and (6) "it is only
through ... hindsight that [Appellant's] invention of a three layered core
with specific frequency shielding capabilities can be glea[ n Jed from the cited
references." Id. at 24.
Appellant's arguments are not persuasive.
First, we are not persuaded by arguments (1) and (2) because the bulk
of Appellant's arguments are directed to attacking the individual secondary
references rather than the combined teaching of the references. In this case,
Appellant has not identified any particular claim limitation that is neither
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Application 14/699,919
described nor suggested in the cited references. Appellant's criticisms of the
individual references, therefore, do not establish nonobviousness. See In re
Keller, 642 F.2d 413 (CCPA 1981); In re McLaughlin, 443 F.2d 1392, 1395
( CCP A 1971) ("[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.").
The combined teachings of Katz, Romanko, Steelmon, and
Hackenbroich describe or suggest the claim limitations at issue. There is no
dispute that Katz's electromagnetic radiation shield 8 does not teach the
claimed first and second layers, nor each layer's requisite properties.
Answer 3--4; see also Br. 16. In rejecting claim 1, the Examiner relies upon
Romanko and Steelmon for teaching such layers and their
shielding/absorbing of low and high frequency electromagnetic radiation.
Answer 4--7, and 13-16.
The Examiner found that Katz, in combination with Romanko,
describes a shielding arrangement in which a carbon fiber reinforced
polymer layer is located between two aluminum conductive layers. Id. at 13.
The Examiner further found that Steelmon teaches: (i) an external iron
coating material that shields radiation and (ii) an inner aluminum layer that
reflects radiation. Id. at 14. The Examiner determined that "Steelmon
provides motivation for modifying one of the conductive layers of Romanko
to be made of iron, whereas the opposite conductive layer is to remain
aluminum." Id.
Steelmon explicitly discloses that "a compound or group of elements
[or] compounds may be selected to be highly absorptive for ... a particular
range of wavelengths." Steelmon 2:65----67, 3:11-14; see also Answer 14.
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Thus, we agree with the Examiner that Steelmon's teachings are not limited
to absorption radiation wavelengths for laser-produced electromagnetic
radiation. Answer 16. Rather, Steelmon's teachings are applicable to
controlling the exposure to radiation wavelengths that would have been
expected to be encountered by the ordinary skilled artisan. Id. at 16-17; see
also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) ("It is well settled
that a prior art reference is relevant for all that it teaches to those of ordinary
skill in the art.").
Second, Appellant states in connection with argument (3) that the
claimed subject matter achieves its effectiveness through the materials
selected and the thicknesses thereof. Br. 11. The limitations of claim 1,
however, are silent with respect to any thicknesses of the selected materials.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of [Appellants']
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.").
The Examiner, furthermore, does not rely on Ni and Trenkler merely
for showing carbon fiber and nickel use. Answer 14--15.
As explained by the Examiner, Ni provides evidence that the carbon
fiber reinforced middle layer of Katz's electromagnetic radiation shield 8, as
modified by Romanko, would have been expected to provide absorption
against higher frequency electromagnetic radiation at wavelengths that
overlap an 800 Hz-10 Ghz frequency range. Id. at 15 (see claim 19).
Likewise, Trenkler provides evidentiary support that Romanko' s aluminum
conductive layer would have provided shielding against higher frequency
electromagnetic radiation, e.g., above 10 KHz. Answer 14--15 (see claim
23).
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The Examiner further explained that Trenkler provides evidence that
Romanko's iron conductive layer, as modified by Steelmon, would have
provided shielding against extremely low frequency electromagnetic
radiation from O Hz up to about 10 KHz. Answer 14 (see claim 19).
Therefore, we agree with the Examiner that "the materials of [Katz's
modified] core (i.e.[,] iron layer, carbon fiber reinforced polymer layer, and
aluminum layer) and their functional effects as claimed by Appellant were
known at the time of invention and have been presented ... in view of the
record of prior art." Answer 16. The applied prior art teaches that these
materials may be selected to shield or absorb particular wavelength ranges of
electromagnetic radiation-a person of ordinary skill in the art at the time of
the invention would have reasonably inferred that the prior art materials
would have possessed the requisite properties. See id. at 6-7. It has been
established that "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007); see also Fritch, 972 F.2d at 1264---65 (A reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom.).
Because the Examiner's findings that the materials of Katz's modified
core would have had the claimed properties are reasonable, the burden is on
Appellant to provide evidence or reasoning sufficient to rebut the findings.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical, processes the PTO can require an
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of [the] claimed product."). In this instance,
however, Appellant has not provided any evidence or reasoning that would
support a conclusion that the materials of Katz's modified core would not
have possessed the functional effects recited in claim 1.
Third, Appellant states, in connection with argument ( 4), that a
Hackenbroich device "made of a simple metal case ... would not be
adaptable to include a multi-layered core and/or the outer casing." Id.
Appellant's arguments, however, are not persuasive because "arguments of
counsel cannot take the place of evidence lacking in the record." Estee
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,595 (Fed. Cir. 1997); In re
Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
As explained by the Examiner, Katz does not explicitly teach that the
tray has a cover pivotally coupled to the body. Answer 7. The Examiner,
however, found that Hackenbroich illustrates a shielding box having a cover,
which is pivotally coupled to the body portion. Id. ( citing Hackenbroich
Figs. 7, 8). The Examiner determined that it would have been obvious to the
ordinary skilled artisan to further modify Katz's modified shield
to comprise a cover having a core and an outer casing encasing
the core, wherein the outer covering includes a central portion
configured to removable overlay a top surface of the portable
electronic device and at least a sidewall extending from the
central potion configured to overlay a side surface of the
portable electronic device, wherein the core includes a first
layer for shielding extremely low frequency electromagnetic
radiation, a second layer having a material composition for
absorbing higher frequency electromagnet radiation, as taught
by modified Katz, for the well-known and expected result of
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creating a shield that also provides protection through the
cover.
Answer 8.
We find that it would have been obvious for the ordinary skilled
artisan to select a material for Hackenbroich's device that would have been
adaptable for incorporating Katz's modified core and/or outer casing. We,
furthermore, agree with the Examiner that Appellant has not provided
sufficient evidence demonstrating that it was erroneous for the Examiner to
find that claim 1 is drawn to a combination of known elements, according to
known methods, that yields predictable results. See id. at 18. Thus, when
we consider all of the evidence, we determine that the preponderance of the
evidence supports the Examiner's conclusion of obviousness with respect to
the outer covering's requisite features.
Fifth, contrary to Appellant's argument (5), we find nothing about the
Examiner's combination of numerous references that detracts from the
obviousness of claim 1. The number of references cited by the Examiner
does not negate the obviousness of the combination when the prior art uses
the various elements for the same purposes as they are used by Appellant,
making the claimed invention as a whole obvious. In re Gorman, 933 F.2d
982, 987 (Fed. Cir. 1991). The obviousness criterion is not based on the
number of references, but what the references would have described or
suggested to a person of ordinary skill in the art in the field of invention. Id.
Sixth, Appellant's argument ( 6) asserts that the Examiner improperly
supported the rejection with the use of hindsight. Br. 14. However, the
Examiner explained why a person of ordinary skill in the art would have
combined Katz, Romanko, Steelmon, and Hackenbroich. Answer 5-8.
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These explanations do not rely upon hindsight, and Appellant has not
demonstrated error in these findings.
Thus, when we consider all of the evidence, we determine that the
preponderance of the evidence supports the Examiner's conclusion of
obviousness for claim 1.
Claims 2 and 3. Appellant argues, inter alia, that it is impossible to
determine from the Hackenbroich design patent whether the materials
disclosed by Katz, Romanko, and Steelmon could be used in conjunction
with Hackenbroich's device without destroying its intended use. Br. 41--42.
These arguments are the same as those discussed in connection with
argument ( 4) regarding claim 1 and are unpersuasive for the reasons
discussed above. Thus, when we consider all of the evidence, we determine
that the preponderance of the evidence supports the Examiner's conclusion
of obviousness for claims 2 and 3.
Claim 5. The Examiner found that "the first layer, second layer, and
third layers of' Katz's modified core "are met by the structure of the record
of prior art." Answer 19--20. The Examiner further found that Katz's
modified core "teaches a structure comprising a low frequency shielding
ferromagnetic material, a high frequency electromagnetic radiation
absorbing carbon fiber reinforced composite material, and a conductive high
frequency aluminum layer," based on evidence provided by Trenkler and Ni.
Id. at 20.
Appellant argues that the Examiner's applied prior art does "not
specifically distinguish a layer for 'conducting.'" Br. 42. Appellant further
argues that the Examiner's reliance on the teachings of six references "does
not distinguish the capabilities of the layers." Id.
Appellant's arguments are not persuasive.
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For the reasons set forth above discussing claim 1, we agree with the
Examiner that the structure of Katz's modified core suggested by the prior
art would have reasonably been expected to have had the claimed properties.
See Answer 20. Appellant has not provided any evidence or reasoning that
would support a conclusion that the materials of Katz's modified core would
not have possessed the functional effects recited in claim 5. See Best, 562
F.2d at 1255. Thus, when we consider all of the evidence, we determine that
the preponderance of the evidence supports the Examiner's conclusion that
claim would have been obvious.
For the reasons set forth above and in the Answer, we are not
persuaded by any of Appellant's arguments for reversal of the obviousness
rejection of claims 1-25. 37 C.F.R. § 4I.37(a)(l)(iv).
We, therefore, affirm Rejection 1.
DECISION
For the reasons set forth above, we affirm the 35 U.S.C. § 103(a)
rejection of claims 1-25 of the '919 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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