Ex Parte Kailani et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613455907 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/455,907 04/25/2012 Ammar Kailani P0755D1 6008 116992 7590 12/27/2016 Lennox International Inc. c/o Hubbard Johnston, PLLC 4849 Greenville Ave., Suite 1490 Dallas, TX 75206 EXAMINER CLEMENTE, ROBERT ARTHUR ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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 following e-mail address(es): docket-rj @hubbardjohnston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMMAR KAILANI and RUSSELL LEWIS BALDINGER Appeal 2015-004711 Application 13/455,907 Technology Center 1700 Before DONNA M. PRAISS, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 and 14—19. We have jurisdiction under 35 U.S.C. § 6. 1 This decision makes reference to the Specification filed Apr. 25, 2012 (“Spec.”), the Final Office Action mailed July 10, 2014 (“Final Act.”), the Appeal Brief filed Dec. 5, 2014 (“App. Br.”), the Examiner’s Answer mailed Feb. 6, 2015 (“Ans.”), and the Reply Brief filed Mar. 19, 2015 (“Reply Br.”). Appeal 2015-004711 Application 13/455,907 The subject matter of this appeal relates to composite materials including carbon nanotubes including one or more types of particles. Spec. 1:9-10. Claim 1 is illustrative (disputed elements italicized): 1. An apparatus for receiving a filter member, the apparatus comprising: a plurality of discrete substantially rigid frame sections, wherein: each respective section of said plurality of sections lying generally in a respective plane substantially oriented about a respective axis and a having a respective length greater than a respective width; said plurality of sections being joined width-to-width generally oriented with respect to a plane in an assembled orientation to circumscribe a quadrilaterally bound zone for effecting said recelvmg; adjacent portions of respective joined sections m said assembled orientation establishing respective joining structures; and each respective said joining structure maintaining said adjacent portions oriented substantially about a respective axis, and further wherein each said respective joining structure includes a first joined section including at least three discrete protruding structures and a second joined section including at least three discrete apertures, said at least three protruding structures configured to extend substantially parallel with respect to each other at least partially into said at least three apertures for effecting a joining relationship between said respective joined sections. 2 Appeal 2015-004711 Application 13/455,907 The Examiner maintains, and Appellants2 appeal, the rejection of claims 1 and 14—19 under 35 U.S.C. § 103(a) as unpatentable over Brandhofer.3 Ans. 2; App. Br. 4. Appellants argue the subject matter of independent claim 1, and rely on those same arguments for patentability of claims 14—19. App. Br. 4—8. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 14—19 will stand or fall together with claim 1 on which they depend either directly or indirectly. OPINION The dispositive issue for this appeal is whether the Examiner erred in finding that Brandhofer suggests substituting, in its apparatus for receiving a filter member, the lug and receiver connection with a projection and receiving space connection where the projection is provided on the same side as the other projection. After review of the arguments and evidence presented by both Appellants and the Examiner, we affirm the stated rejection. It is the Examiner’s position that Brandhofer suggests the subject matter of claims 1 and 14—19 for the reasons stated on pages 2—5 of the Final Action and pages 2—5 of the Answer. In the Appeal Brief, Appellants argue that Brandhofer fails to teach or suggest “at least three protruding structures configured to extend substantially parallel with respect to each other” as recited in claim 1. App. Br. 5. Appellants argue that Brandhofer “may at most teach that its projection (6) extends in a first direction, its elongated protuberance (10) 2 Appellants identify the real party in interest as Lennox Industries Inc. App. Br. 3. 3 Brandhofer et al., US 6,059,966, issued May 9, 2000 (“Brandhofer”). 3 Appeal 2015-004711 Application 13/455,907 extends in the first direction, and the lug (8, 38) extends in a second perpendicular direction. Even if Brandhofer suggested exchanging its lug (38) for an exchanged projection (6’), the exchanged projection (6’) would still be perpendicular to the original projection (6).” Id. According to Appellants, one of ordinary skill in the art would interpret Brandhofer’s disclosure that “instead of lug 38, a further plug-in connection can also be formed corresponding to projection 6 and receiving space 7” to mean that “the lug (38) would be exchanged for a projection (6’).” Id. at 5—6 (quoting Brandhofer 4:31—33). Appellants contend that “Brandhofer does not, as the Examiner alleges, suggest rotating the positioning of the newly exchanged projection (6’) by 90 degrees.” Id. at 6. The Examiner responds that the Appellants’ interpretation of Brandhofer limits the disclosure “to suggest that the lug (8, 38) be exchanged for a projection (6).” Ans. 6. The Examiner finds that the plain meaning of Brandhofer’s disclosure “also mentions a receiving space which could just as easily be considered to be exchanged for the lug.” Id. The Examiner further responds that “[o]ne of ordinary skill in the art would readily understand that the lug (8, 38) and receiver (9, 39) and projection (6) and receiving space (7) need to be provided in sets. An exchange predictably requires an exchange of the entire set because, for example, the lug (38) cannot be used with the receiving space (7).” Id. Regarding the orientation of the exchanged connection, the Examiner responds that “one of ordinary skill in the art would not be inclined to modify the projection and receiving space when clearly just duplicating the already disclosed projection and receiving space would form a functioning connection.” Id. at 7. Finally, the Examiner finds that even if Brandhofer were to be understood 4 Appeal 2015-004711 Application 13/455,907 as suggesting swapping the projection (6) in place of the lug (8, 38) and the receiving space (7) in place of the receiver (9, 39), as Appellants argue, “it would be considered functionally equivalent to swap [] the projection and receiving space.” Id. at 8. In the Reply Brief, Appellants concede that Brandhofer’s disclosure suggests a substitution of male/female type connections. Reply Br. 2; see Ans. 8 (“Appellant does not argue that Brandhofer is not suggesting a substitution.”). Appellants assert that “the Examiner is attempting to interpret this ‘unclear’ statement [in Brandhofer] in a way that reads on the claims, as opposed to the other interpretation that would not read on the claims.” Id. at 3. Additionally, Appellants argue that “the Examiner goes into great detail as to the technical reasons why one skilled in the art would take the substitution by Brandhofer and then rotate the exchanged projection 6 and receiving space 7 to read on the claims” and that this is based on impermissible hindsight. Id. Appellants assert without citation that “[sjimilar arguments exist, and were provided in the Appeal Brief, as to why one would not rotate the exchanged projection 6 and receiving space 7.” Id. We are not convinced that the Examiner improperly found Brandhofer suggests substituting the lug and receiver connection with a projection and receiving space connection such that Brandhofer’s apparatus provides “at least three protruding structures configured to extend substantially parallel with respect to each other” as recited in claim 1 for the reasons stated by the Examiner in the Final Action and Answer, including the Response to Arguments section. Ans. 2—7; Final Act. 2—7. We add the following primarily for emphasis. 5 Appeal 2015-004711 Application 13/455,907 Appellants’ arguments are not persuasive for a number of reasons. First, Brandhofer explicitly teaches the interchangeability of the lug connection for the projection and receiving space connections. Brandhofer 4:31—33 (“In the case of a base frame, instead of lug 38, a further plug-in connection can also be formed corresponding to projection 6 and receiving space 7.”); Final Act. 3. Second, Appellants merely assert without support that there are technical reasons why one would not rotate the exchanged projection 6 and receiving space 7 so that they are parallel to the existing projection 6 in Brandhofer’s apparatus. Reply Br. 3. Appellants do not direct us to any evidence that would rebut the Examiner’s finding that one of ordinary skill in the art would duplicate the already disclosed projection and receiving space rather than modify the projection and receiving space orientation to have the same projection where the log would have been. Ans. 7. Third, Appellants’ argument that Brandhofer’s suggestion to exchange the lug connection with another plug-in connection is limited to replacing the lug component with the projection component is unpersuasive because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Nothing in the record before us shows that the substitution of the projection and receiving space connection on the same side as the other projection would frustrate the principle of operation of Brandhofer. Moreover, the Examiner’s undisputed finding that Brandhofer discloses the substitutability of the plug-in connections exemplified suggests that the connections of the plates in Brandhofer’s apparatus are not dependent on the orientation of the connection systems relative to each other. Ans. 3; Final Act. 3; see also Brandhofer 2:66—67 (“The connection is effected by the use of various 6 Appeal 2015-004711 Application 13/455,907 means which are independent of one another.”). Fourth, the Examiner’s finding that it would be functionally equivalent to swap the projection and receiving space in the event Brandhofer were understood to suggest replacing the lug one for one with the projection is reasonable and unrebutted. Ans. 8. For the foregoing reasons, we affirm all of the Examiner’s rejections under 35 U.S.C. § 103(a). 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)(v). AFFIRMED 7 Copy with citationCopy as parenthetical citation