Ex Parte DeBaunDownload PDFPatent Trial and Appeal BoardAug 28, 201814275495 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/275,495 05/12/2014 49840 7590 08/30/2018 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. 2924496-000001 1977 EXAMINER ORTMAN JR., KEVIN C ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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 Appeal2017-009383 Application 14/275,495 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 1-26 of Application 14/275,495 under 35 U.S.C. § 103(a) as obvious. Final Act. 4--10 (mailed August 8, 2016). Appellant1 seeks reversal of the rejection pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we affirm. 1 Daniel T. Debaun is identified as the real party in interest. Br. 2. Appeal2017-009383 Application 14/275,495 BACKGROUND The '495 Application describes shields for protecting a person from harmful thermal and electromagnetic radiation produced by electronic devices. Spec. 1. Claims 1-3 are representative of the '495 Application's claims and are reproduced below from the Claims Appendix to the Appeal Brief: 1. A body shield for shielding a person from thermal and electromagnetic radiation from portable electronic devices, the body shield comprising, a body portion having a core and an outer casing overlaying said core, 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 further comprising a cover pivotally coupled to said body portion and configured to overlay the portable electronic device. 3. 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. 43. REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 1-26 are rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Katz, 2 Romanko, 3 2 US 5,336,848, issued Aug. 9, 1994. 3 US 2010/0300744 Al, published Dec. 2, 2010. 2 Appeal2017-009383 Application 14/275,495 Steelmon, 4 as evidenced by Trenkler5 and Ni, 6 and Hackenbroich. 7 Final Act. 4; Answer 2. DISCUSSION Rejection 1. Appellant makes separate arguments for reversal of this rejection with respect to three groups of claims: (1) claims 1, 8, 15 and 21, 8 Br. 6-14; (2) claims 2, 9, 15, and 21, id. at 27, 35-36, 39, 40; and (3) claims 3, 10, 16, and 22. Id. at 39--40 and 40--42. With respect to the independent claims, we select claim 1 as representative. We further select claims 2 and 3 as representative of the dependent claims groups (2) and (3), respectively. 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. 6-9; (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 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 1--4 (18th Int'l Conf. on Composite Materials) (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 8, 15, and 21. Compare Br. 5-13 with Br. 13-21. 3 Appeal2017-009383 Application 14/275,495 frequency electromagnetic radiation, e.g., 800 Hz-10 Ghz, for the remaining two layers, id. at 9-10; (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 10; ( 4) the Examiner has merely provided a laundry list of components to provide a proposed combination from six references, id. at 11-12; and (5) "it is only through ... hindsight that [Appellant's] invention of a three layered core with specific frequency shielding capabilities can be glea[n]ed from the cited references." Id. at 14. 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 when read together. Appellant's criticisms of the individual references, therefore, do not establish nonobviousness. See In re Keller, 642 F .2d 413 (CCP A 1981 ); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 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."). In this case, Appellant has not identified any particular claim limitation that is neither described nor suggested by the combination of cited references. 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; Br. 6. 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, 11-14. 4 Appeal2017-009383 Application 14/275,495 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 11. 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 12. 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 3:11-14; see also 2:65---67; Answer 14. Thus, we agree with the Examiner that Steelmon' s teachings are not limited to absorption radiation wavelengths for laser-produced electromagnetic radiation. Answer 14. 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 14--15; see 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 argues in connection with argument (3) that the claimed subject matter achieves its effectiveness through the materials selected and the thicknesses thereof. Br. 9. 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 appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). 5 Appeal2017-009383 Application 14/275,495 The Examiner, furthermore, does not rely on Ni and Trenkler merely for showing carbon fiber and nickel use. Answer 12-13. 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 13; see claim 15. 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 12-13; see claim 16. 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 12-13; see claim 15. 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 14. 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. 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'! Co. v. Teleflex Inc., 550 6 Appeal2017-009383 Application 14/275,495 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 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, contrary to Appellant's argument (4), we find nothing about 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. Fourth, Appellant's argument ( 5) asserts that the Examiner improperly supported the rejection with the use of hindsight. Br. 14. The Examiner explained why a person of ordinary skill in the art would have 7 Appeal2017-009383 Application 14/275,495 combined Katz, Romanko, Steelmon, and Hackenbroich. Answer 5-8. 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. Claim 2. The Examiner found that 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 pivotally coupled to the body portion and configured to overlay the portable electronic device or adapted to move between a position covering the portable electronic device and a position uncovering the device, wherein the cover has a core and an outer casing overlaying the core, wherein the core included 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, as taught by modified Katz, for the well-known and expected result of creating a shield that also provides protection through the cover, such as that taught by modified Katz. Answer 8. Appellant argues that 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." Br. 39. To support this position, 8 Appeal2017-009383 Application 14/275,495 Appellant further argues 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 are not persuasive because "'arguments of counsel cannot take the place of evidence lacking in the record."' Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997); see also Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) ("Attorney argument is not evidence."); Gemtron Corp. v. Saint- Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) ("[U]nsworn attorney argument ... is not evidence and cannot rebut ... other admitted evidence .... "); In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). We agree with the Examiner that Appellant has not provided sufficient evidence demonstrating that it was erroneous for the Examiner to find that claim 2 is drawn to a combination of known elements, according to known methods, that yields predictable results. See Answer 1 7. Thus, when we consider all of the evidence of record, we determine that the preponderance of the evidence supports the Examiner's conclusion of obviousness for claim 2. Claim 3. 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." Id. 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 17-18. Appellant argues that the Examiner's applied prior art does "not specifically distinguish a layer for 'conducting."' Br. 40. Appellant further 9 Appeal2017-009383 Application 14/275,495 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. 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 18. 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 3. 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 of obviousness for claim 3. 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 1-26. 37 C.F.R. § 4I.37(a)(l)(iv). We, therefore, affirm Rejection 1. DECISION For the reasons set forth above, we affirm the§ 103(a) rejection of claims 1-26 of the '49 5 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 10 Copy with citationCopy as parenthetical citation