Ex Parte Leistner et alDownload PDFPatent Trial and Appeal BoardFeb 17, 201612300359 (P.T.A.B. Feb. 17, 2016) Copy Citation 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: J~~ I ,/f,fj~~~fv' //•. - \i _..,fil h-.! l ... ~, . ; . ~ ,• '1: ·U -: . ~ \ >\ ,•' 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." 6 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). 7 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 Copy with citationCopy as parenthetical citation