Ex Parte Leistner et al

Patent Trial and Appeal Board

Feb 17, 2016

12300359 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/300,359 12/15/2008
7055 7590 02/19/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Philip Leistner
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.
P35534 8460
EXAMINER
GRIFFIN, WALTER DEAN
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP LEISTNER, KLAUS BREUER, and
KLAUSSEDLBAUER
Appeal 2014-001841
Application 12/300,359
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
October 23, 2012 decision finally rejecting claims 21-38 and 40 ("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 Fraunhofer-Gesellschaft
zur Foerderung der angewandten Forschung e.V. (Appeal Br. 2).
Appeal 2014-001841
Application 12/300,359
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a component for sound absorption
and air conditioning (Abstract). The component is positionable to have a
front side for facing a room and a rear side for facing away from the room,
and coated with photocatalytically active material (id.). Independent claim
21 is representative of the claims on appeal and is reproduced below from
the Claims Appendix of the Appeal Brief:
21. A sound absorption and air conditioning device
compnsmg:
a sound-absorbing planar structure structured and
arranged to be positionable in a room and to reduce a noise
level within the room, such that a front side is oriented toward
the room and a rear side is oriented away from the room;
a photocatalytically active material coated on at least the
rear side;
UV light sources arranged to irradiate the sound-
absorbing planar structure; and
an air guide path at least one of along and through the
planar structure.
Appeal Br. 26. Claim 31 is identical to claim 21, except that it
additionally recites that "the sound absorbing planar structure has an
inner layer that can be one of heated or cooled."
2
Appeal 2014-001841
Application 12/300,359
REJECTIONS
I. Claims 21, 23, 27-33, 35-38, and 40 are rejected under
35 U.S.C. § 102(b) as anticipated by Weiss. 2
TT. Claims 22, 24--26, and 34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Weiss in view of Y oudell. 3
DISCUSSION
Anticipation Rejection of claims 21, 23, 27-33, 35-38, and 40 over Weiss
Weiss discloses a lamp which functions as a photocatalytic air
purifying device (Weiss, Abstract, FIG. 1). The lamp 1 has a shade 32
which is coated on the inside with a photocatalyst 30, and UV light source
10, as illustrated in Weiss's FIG. 2 and described at i-f 15:
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Weiss's FIG. 2 is a bottom perspective view of the lampshade of Weiss's
invention.
2 Weiss, U.S. Patent Pub. 2006/0280660, published December 14, 2006.
3 Youdell et al., U.S. Patent Pub. 2004/0166037, published August 26, 2004.
3
Appeal 2014-001841
Application 12/300,359
It is well established that "[a] prior art reference anticipates a patent
claim under 35 U.S.C. § 102(b) if it discloses every claim limitation." In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)).
In this instance, Appellants contend that Weiss does not disclose a number
of features recited in the rejected claims.
First, Appellants allege that Weiss does not disclose a "planar
structure" as recited in independent claims 21 and 31 (Appeal Br. 10).
According to Appellants, Weiss's lampshade "would not have been
reasonably interpreted by those ordinarily skilled in the art as a planar
structure, within the context of Applicants' disclosure ... " (Appeal Br. 11,
emphasis in original).
"The PTO must give claims their broadest reasonable construction
consistent with the specification." In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007). In this instance, the Specification states
that "a planar structure is to be understood to be not only a structure with a
flat surface, but it can also be any other type of surface, which may, for
example, be curved or domed" (Spec. i-f 7). Thus, as found by the Examiner
(Ans. 8), Weiss's lampshade-which is visibly curved in the drawings- is
"a planar structure" as that phrase is used in the claims. 4
4 Appellants raise for the first time in the Reply Brief that Weiss lampshade
does not include "a rear side oriented away from the room" (Reply Br. 2-3).
If the outside of the lampshade is oriented towards the room, the inside
would be oriented away from the room. The Specification provides that the
room is not meant to be defined by a wall enclosing surface; that is, the
claim term "room" is reasonably interpreted as encompassing an area of an
4
Appeal 2014-001841
Application 12/300,359
Appellants further argue that "the disclosure of Appellants' own
invention cannot be properly relied upon by the Examiner to interpret the
applied art" and the Examiner's reliance on the definition of "planar
structure" in Appellants' specification is "improper" (Reply Br. 3; see also,
Appeal Br. 11). This argument is misplaced. The Examiner's finding that
Weiss's lampshade falls within the scope of the claimed planar structure is
based at least in part on a construction of the claimed phrase "planar
structure" as it is defined in Appellants' Specification. The Specification is
properly used in construing a claim term. See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Thus, we decline to find error in
the Examiner's finding that the claimed planar structure reads on Weiss's
device.
Appellants further assert that a person of skill in the art would
understand the definition of "planar surface" set forth in the Specification
means only that other surface textures can also be provided on the planar
surface (Reply Br. 4). This argument is without persuasive merit because (a)
it relies solely on attorney argument without evidentiary support, and (b) is
contradicted by the plain language of the Specification, which states that "A
planar structure is to be understood to be not only a structure with a flat
enclosure in which a noise level is intended to be reduced and in which the
air is intended to be conditioned that is less than the total area of the
enclosure ("the space located between the rear side of the component and a
room-enclosing surface, such as a wall" is not included within the meaning
of "the room") (Spec. i-f 8).
5
Appeal 2014-001841
Application 12/300,359
surface, but it can also be any other type of surface, which may, for example,
be curved or domed," and makes no reference to surface textures. 5
Second, Appellants contend (Appeal Br. 12) that Weiss fails to
disclose the presence of "UV light source~" (emphasis added) as recited in
claims 21 and 31, asserting that Weiss's lamp has only a single UV light
source 10 (Appeal Br. 12). However, as found by the Examiner (Ans. 9),
Weiss teaches that its light source 10 may be a plurality of xenon lamps,
which would meet the claim recitation of UV light source~ (Weiss, i-f 16).
Third, Appellants argue that Weiss fails to disclose a sound-absorbing
planar structure structured and arranged to be positionable in a room and to
reduce a noise level in the room (Appeal Br. 13). This argument is not
persuasive. As a preliminary matter, we agree with the Examiner (Ans. 9)
that the limitation "to be positionable in a room and reduce a noise level
with the room" is a statements of intended use, and is met if Weiss's
lampshade is capable of performing the intended use. Appellants argue that
"the achievement of noise level reduction in the room is a characteristic of
the physical structure of the planar structure and not a mere intended use"
(Reply Br. 6). However, as suggested by Appellants, the noise level
reduction "is a characteristic" of the physical structure of the planar
structure. Thus, as correctly determined by the Examiner, if Weiss's
5 Appellants also contend that the sentence in the Specification that "In
general, the surface of the planar structure may be adapted to the form of the
room-enclosing surface" would have suggested to a person of skill in the art
that Weiss's lampshade is not a "planar structure" (Reply Br. 4--5). This
argument is not persuasive because the cited sentence states only that "in
general" the surface "may be" shaped (adapted) to the form of the room-
enclosing surface, and therefore would not limit the meaning of "planar
surface."
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Appeal 2014-001841
Application 12/300,359
lampshade is capable of reducing a noise level within a room, it meets this
limitation.
The Examiner finds that Weiss's lampshade is made of materials
which inherently reduce noise (Ans. 2, citing Weiss, i-f 20). In support of this
finding, the Examiner relies on Weiss's disclosure that its lampshade
includes a photocatalytic coating (Ans. 10). The Examiner further finds that
the photocatalytic coating would have some degree of roughness and
porosity which contributes to the sound absorbing effect of the claimed
device (id., citing to Appellants' Specification, i-f 28). The Examiner's
finding is based on facts (Weiss's lampshade has a photocatalytic coating)
and/or technical reasoning (as described in the Specification, a
photocatalytic coating contributes to sound absorption), and therefore is
sufficient to make the cited inherency finding. Appellants have not
challenged these underlying facts/reasoning (see, Reply Br. 6-7) and,
therefore, have not shown reversible error in the Examiner's finding that
Weiss's lampshade inherently meets the sound absorption limitation of the
claims. Ex parte Levy, 17 U.S.P.Q.2d 1461 (B.P.A.I. 1990).
As set forth above, Appellants have not shown reversible error in the
anticipation rejection of independent claims 21 and 31 over Weiss.
Appellants make several independent arguments in support of some of
the claims. With regard to claim 31, Appellants contend that Weiss does not
disclose an inner layer that can be one of heated or cooled (Appeal Br. 15).
However, as found by the Examiner, Weiss's lampshade has an inner layer
which can be heated or cooled, thereby meeting this limitation (Ans. 11-12).
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Appeal 2014-001841
Application 12/300,359
ivioreover, Weiss also discloses that its UV-light source can emit heat, which
would necessarily heat (or cool) the inner layer of the lampshade (Ans. 12). 6
With regard to claim 27, Appellants argue that, "while the lampshade
of Weiss is arranged to form openings at the top and bottom, there is no
express or implied teaching of openings arranged in the sound-absorbing
planar structure to reduce loss due to flow through pressure" (Appeal Br.
1 7). The Examiner finds that Weiss discloses that its lampshade can be
made of fiberglass, which includes fiberglass tissue, which is very porous
and would have the openings recited in claim 27 (Ans. 3, 12-13, citing
Weiss, i-f 20). Appellants do not challenge this finding, and thus do not show
reversible error.
With regard to claims 28 and 29, Appellants allege that a person of
skill in the art would not have interpreted Weiss as disclosing that the UV-
light sources comprise UV light-emitting diodes (claim 28) or that they can
emit visible light for one of direct or indirect lighting (Appeal Br. 17).
However, as found by the Examiner (Ans. 13), Weiss teaches that its light
source can be a light-emitting diode and can also emit visible light (Weiss i-f
16). Thus, Appellants have not shown reversible error in the rejection of
claims 28 and 29.
With regards to claim 32 (which recites that the sound absorbing
planar structure of claim 31 is transparent), Appellants argue that Weiss fails
to disclose a transparent structure (Appeal Br. 17). However, the Examiner
finds that Weiss discloses that its lampshade may be made of glass (Weiss, i-f
6 Appellants make the same argument with respect to claim 30, which
depends from claim 21 and recites that the sound absorbing planar structure
can be either heated or cooled. The argument is not persuasive for the same
reasons as with respect to claim 3 1.
8
Appeal 2014-001841
Application 12/300,359
20), which is generally understood to be transparent. Appellants do not
challenge this finding. Based on the preponderance of the evidence
standard, Appellants have not shown reversible error in the rejection of
claim 32.
Obviousness of claims 22, 24--26, and 34 over Weiss in view of Y oudell
We have reviewed Appellants' arguments set forth in the Appeal Brief
and the Reply Brief seeking reversal of the obviousness rejections over
Weiss in view of Y oudell. We sustain these rejections essentially for the
reasons set forth in the Final Action and the Answer. In particular and for
reasons stated by the Examiner (Ans. 14=15), Appellants have not shown
reversible error in the Examiner's findings which support the obviousness
rejection, nor in the determination as to why a person of skill in the art
would have combined the teachings of the references in the manner required
to make out the rejection.
CONCLUSION
We AFFIRM the rejection of claims 21, 23, 27-33, 35-38, and 40
under 35 U.S.C. § 102(b) as anticipated by Weiss.
We AFFIRM the rejection of claims 22, 24--26, and 34 under 35
U.S.C. § 103(a) as being unpatentable over Weiss in view ofYoudell.
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
9