Ex Parte Golner et al

Patent Trial and Appeal Board

Dec 27, 2016

13244517 (P.T.A.B. Dec. 27, 2016)

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.
13/244,517 09/25/2011 Thomas M. Golner 87304.2440 1751
7590 12/29/2016
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
BAISA, JOSELITO SASIS
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS M. GOLNER, SHIRISH P. MEHTA, and
PADMA VARANASI
Appeal 2015-006132
Application 13/244,517
Technology Center 2800
Before BEVERLY R. FRANKLIN, N. WHITNEY WILSON, and
LILEN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
March 12, 2014 decision finally rejecting claims 1—9, 11—13, and 15—20
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Waukesha Electric Systems,
Inc. (Br. 3).
Appeal 2015-006132
Application 13/244,517
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a power transformer which
includes first and second transformer components and a composite structure
positioned between the two components (Abstract). The composite structure
includes a first composite fiber having at least one base fiber, a sheath of
binder material, and nanoclay particles, and the second composite fiber has
at least one base fiber and is bound to the first composite fiber by at least a
portion of the sheath (id.). Details of the claimed invention may be seen in
illustrative claim 1, which is reproduced below from the Claims Appendix of
the Appeal Brief:
1. A power transformer, comprising:
a first transformer component;
a second transformer component; and
a composite structure, positioned between the first
transformer component and the second transformer component,
including:
a first composite fiber comprising at least one base fiber,
a sheath of binder material arranged on the at least
one base fiber, and nanoclay particles, and
a second composite fiber comprising at least one base
fiber, the second composite fiber being bound to
the sheath of the first composite fiber by melting at
least a portion of the sheath,
wherein the nanoclay particles include plate-like particles
having a height between 1 nm to 100 nm, a length
of between 10 to 100 times the height, and a width
of between 10 to 100 times the height.
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Appeal 2015-006132
Application 13/244,517
REJECTIONS
I. Claims 1—9, 11—13, and 15—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Schroeder2 in view of Wood3 and Ellul.4
II. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schroeder in view of Wood and Ellul, and further in view of Rogers.5
DISCUSSION
Appellants do not offer separate, substantive arguments with respect
to claims 2—9, 11—13, 15—17, or 19 (Br. 28—29). Accordingly, we will not
address these claims independently.
Claim 1. The Examiner finds that Schroeder discloses each of the
elements of claim 1, except that Schroeder does not disclose (1) the second
composite fiber being bound to the sheath of the first composite fiber by
melting at least a portion of the sheath, and (2) the first composite has
nanoclay particles with the dimensions recited in claim 1 (Final Act. 2—3,
citing Schroeder, FIGS. 1 and 2, 7:24—67). The Examiner further finds that
Wood discloses a composite fiber comprising nanoclay particles, and Ellul
discloses nanoclay particles having the dimensions recited in claim 1 (Final
Act. 3, citing Wood, 5:35—47, and Ellul, 66 and 67). The Examiner finds
that it would have been obvious to use nanoclay particles on a composite
fiber as taught by Wood and Ellul to provide a component that has a low
coefficient of thermal expansion and a high thermal shock resistance through
2 Schroeder et al., U.S. Patent No. 4,095,205, issued June 13, 1978.
3 Wood et al., U.S. Patent No. 7,201,572 B2, issued April 10, 2007.
4 Ellul et al., U.S. Patent Pub. 2007/0238810 Al, published October 11, 2007.
5 Rogers et al., U.S. Patent No. 3,695,984, issued October 3, 1972.
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Appeal 2015-006132
Application 13/244,517
improved dispersibility of the clays {id.). Finally, with regards to the
limitation “the second composite fiber being bound to the sheath of the first
composite fiber by melting at least a portion of the sheath,” the Examiner
determines that it was not entitled to patentable weight because it is a
product-by-process limitation {id.).
Appellants make several arguments urging reversal of the rejection of
claim 1. First, Appellants contend that none of the cited references teaches
all of the limitations of claim 1 (Br. 10—11). This argument is not
persuasive. The rejection is not an anticipation rejection under 35 U.S.C.
§ 102, but instead is an obviousness rejection under 35 U.S.C. § 103(a).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants also argue that it would not have been obvious to modify
Schroeder’s insulation paper with nanoclay particles as taught by Wood,
because “[t]he Wood composite is not intended for use in electric
transformers for insulation purposes,” but instead is intended for burners
(Br. 11). Appellants further argue that the proposed modification would
render Schroeder unsatisfactory for its intended purpose because Wood’s
composite is meant to provide “high thermal output” while Schroeder is
meant to insulate (Br. 12). This argument is not persuasive of reversible
error. As noted by the Examiner (Ans. 9—10), Wood teaches that its
composite can be used for thermal insulation (Wood, 10:52—56). Thus,
Wood teaches that its composite can be used for insulative purposes, and its
combination with Schroeder would not render Schroeder unsuitable for its
intended purpose.
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Appeal 2015-006132
Application 13/244,517
Appellants further contend that it would not have been obvious “to
modify the Schroeder insulation paper with Ellul low-temperature nanoclay-
filled thermoplastic vulcanizate” because Ellul’s material has a low melting
point which could not be used in Schroeder’s device (Br. 12—13). However,
as explained by the Examiner, the rejection relies on Ellul only for the
purpose of teaching nanoparticles having the dimensions recited in the
claim, and does not require incorporation of Ellul’s material into Schroeder’s
device (Ans. 10-11).
Appellants assert that “the applied references fail to provide any
motivation that would lead one of ordinary skill in the art to combine the
references in a manner set forth” in the rejection (Br. 15). It is well
established that rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this instance, the
Examiner has provided a detailed explanation of the motivation to make the
required combination to arrive at the claimed invention (Final Act. 3, Ans.
9—11). Appellants have not persuasively refuted these reasons (Br. 15), and
therefore have not shown reversible error in the rejection.
Finally, Appellants argue that the Examiner erred in not giving
patentable weight to the limitation that the second composite is bound to the
sheath of the first composite fiber by melting at least a portion of the sheath
(Br. 15). Appellants argue that the Examiner has mischaracterized the claim
as a product-by-process, and asserts that “[t]he sheath of the fibers being
bound by melting is a structural feature of the claims that results in a specific
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Application 13/244,517
structure” {id.). However, while the overall claim is a structural claim, that
specific limitation is a product by process claim. Appellants have not
provided persuasive evidence that binding the second composite fiber to the
sheath by melting, as opposed to by other methods, would result in a
different structure (see, Br. 15).
Accordingly, Appellants have not demonstrated reversible error in the
rejection of claim 1.
Claims 2 and 19. Appellants contend that it would not have been
obvious “to utilize the teachings of a ceramic burner [Wood] in a system that
utilizes a cooling fluid for transformer components as recited by claim 2”
and that the claimed combination of Wood and Schroeder would render
Schroeder unsatisfactory for its intended purpose (Br. 15—16). Appellants
make a similar argument in connection with claim 19 (Br. 22). This
argument is not persuasive for the reasons set forth above in connection with
claim 1, namely that Wood teaches that its composite can be used for
insulation.
Claim 4. Appellants contend that the Examiner’s finding that Wood
discloses that the nanoclay particles can be included only in the base fiber is
not supported in Wood’s disclosure (Br. 16). This argument is not
persuasive of error because the Examiner finds that this element is also
taught in Wood at column 6, lines 25—29 (Ans. 11—12). Appellants do not
contest this finding. Moreover, Wood teaches at column 1, lines 50-55 that
the base substrate can be impregnated with nanoparticles, as further
elucidated in the passages relied on by the Examiner (Wood, 5:37-45 and
6:25-29).
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Application 13/244,517
Claims 18 and 20. Appellants make the similar arguments in
connection with claims 18 and 20 that they do in connection with claim 1
(Br. 16—22 and 23—28). These arguments are not persuasive for the same
reasons as set forth above.
CONCLUSION
We AFFIRM the rejection of claims 1—9, 11—13, and 15—20 under
35 U.S.C. § 103(a) as unpatentable over Schroeder in view of Wood and Ellul.
We AFFIRM the rejection of claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Schroeder in view of Wood and Ellul, and further in
view of Rogers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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