Ex Parte MacDuff et al

Patent Trials and Appeals Board

May 19, 2016

12178494 - (D) (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/178,494 07/23/2008
25541 7590 05/23/2016
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Malcolm MacDuff
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.
21453.01US2 6415
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
twilliams@ngelaw.com
tmcdonough@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOLM MACDUFF and JAMES MACDUFF
Appeal2014-003551
Application 12/178,494
Technology Center 3700
Before CYNTHIA L. MURPHY, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants (Malcolm MacDuff and James MacDuft) appeal under
35 U.S.C. § 134 from the Examiner's rejections of claims 1-20. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-003551
Application 12/178,494
STATEMENT OF THE CASE
The Appellants' invention "relates generally to heating systems and,
in particular, to electric radiant heating systems." (Spec. i-f 2.)
Illustrative Claim1
1. An electric radiant heating system comprising:
an electric cable spaced apart from a surface to be
warmed;
a plurality of wire hangers that suspend the electric cable
a predetermined distance below the surface in an inter-joist
space;
a first heat-transferring fin connected to the electric cable
to transfer heat from the electric cable to the surface to be
warmed; and
a second heat-transferring fin, separate and detachable
from the first heat transferring fin, connected to the electric
cable to also transfer heat from the electric cable to the surface
to be warmed, wherein the first and second heat-transferring
fins are attached to the electric cable by twist clips that connect
the first and second heat transferring fins to the electric cable
via elongated slots in flat portions of the first and second heat-
transferring fins, wherein the hangers are distributed along the
electric cable in a spaced-apart relationship relative to the first
and second heat-transferring fins such that the fins are
connected to the electric cable in between successive hangers.
Armstrong
Rothenbach
Fast
Pickard
References
us 3,323,582
us 3,384,158
us 4,476,983
us 5,454,428
Apr. 26, 1965
Sept. 3, 1965
Oct. 16, 1984
Oct. 3, 1995
1 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 15-20 of the Appeal Brief.
2
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Application 12/178,494
Schmitt
Lin
Iwasaki
Ernst
US 2001/0026681 Al
US 2003/0197102 Al
US 2005/0150639 Al
US 2007/0181704 Al
Rejections2
Oct. 4, 2001
Oct. 23, 2003
Jul. 14, 2005
Aug.9,2007
I. The Examiner rejects claims 1-8 and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, and Armstrong.
(Final Action 3.)
II. The Examiner rejects claims 9, 10, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, and
Ernst. (Id. at 9.)
III. The Examiner rejects claims 9, 10, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, Ernst,
and Iwasaki. (Id. at 13.)
IV. The Examiner rejects claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, Ernst,
and Fast. (Id. at 17.)
V. The Examiner rejects claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, Ernst,
Iwasaki, and Fast. (Id. at 22.)
VI. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Rothenbach, Schmitt, Lin, Armstrong, and Iwasaki.
(Id. at 13.)
2 The Examiner's rejection of claims 9-20 under 35 U.S.C. § 112, first
paragraph (see Final Action 2) has been withdrawn (see Answer 24).
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VIL The Examiner rejects claims 15 and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, and
Fast. (Id. at 14.)
VIII. The Examiner rejects claims 15 and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong,
Iwasaki, and Fast. (Id. at 19.)
IX. The Examiner rejects claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong, Fast,
and Pickard. (Id. at 18.)
X. The Examiner rejects claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Rothenbach, Schmitt, Lin, Armstrong,
Iwasaki, Fast, and Pickard. (Id. at 23.)
ANALYSIS
Analogous Art
The Examiner's obviousness rejections are based upon a combination
of the teachings of Rothenbach with the teachings of other prior art
references, namely Armstrong, Ernst, Schmitt, Pickard, Lin, Fast and
Iwasaki. (See Final Action 3-23.) In order for a reference to be proper for
use in these obviousness rejections, the reference must be analogous art to
the claimed invention. A reference is analogous art to the Appellants'
claimed invention when the reference is from the same field of endeavor or
when the reference is reasonably pertinent to a problem faced by the
Appellants. 3
3 See In re Bigio 381F.3d1320, 1325 (Fed. Cir. 2004) ("Two separate tests
define the scope of analogous prior art: (1) whether the mi is from the same
4
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Application 12/178,494
The Appellants "acknowledge the relevancy of Rothenbach" but
submit that "a person of ordinary skill in the art looking at Rothenbach at the
time of the invention would not have relied on the other cited references to
arrive at the claimed invention." (Appeal Br. 12.)
With respect to Armstrong, Ernst, Schmitt, and Pickard, the
Appellants argue that "[t]he conductive panel and tile technologies cited by
[these references] are so different from Rothenbach from a heat transfer
point of view that a skilled person would not have made the combination."
(Appeal Br. 12.)
We are not persuaded by this argument because we consider the
Appellants' field of endeavor to be heating systems for floor-like structures
(see Spec. i-f 2-3); and we consider Armstrong, Ernst, Schmitt, and Pickard
to be in the same field of endeavor.4 Additionally or alternatively,
Armstrong, Ernst, Schmitt, and Pickard are all concerned with heating floor-
like structures, and thus would have logically commended themselves to the
Appellants' attention. 5 Moreover, we agree with the Examiner that "one of
field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's em .. ieavor; whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved").
4 Armstrong relates to "a heat transfer device which can be used with stock
radiation panels commonly used to assemble ceilings" (Armstrong, col. 1,
lines 11-13); Ernst relates to "heating systems for habitable structures" and
"floor heating systems" (Ernst i-fi-1 1, 3); Schmitt relates to "heated planks or
boards for forming walkways, decks, platforms, seats, benches, and the like"
(Schmitt i-f 3); and Pickard "relates to hydronic floor, wall and ceiling
heating systems" (Pickard col. 1, lines 6-8).
5 See In re ICON Health and Fitness, Inc. 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) ("A reference is reasonably pertinent if, even though it may be in a
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Application 12/178,494
ordinary skill in the art would have been familiar [with] the basic
fundamentals of heat transfer and recognized that the cited references
involve both heat conduction and radiation." (Answer 40.) In other words,
one of ordinary skill in the art would have appreciated that the prior art
teachings regarding certain items (e.g., mounting hangers, inter-joist-space
suspension, an electric heating cable, connecting clips, etc.) employed
during the heating of floor-like structures were not confined to conductive-
panel and/or tile technologies.
With respect to Lin and Fast, the Appellants argue they are not
"reasonably pertinent to the problem of providing radiant floor heating, as
claimed." (Appeal Br. 12.)
We are not persuaded by this argument because we do not consider
"radiant floor heating" to be the sole problem faced by the Appellants. A
problem also faced by the Appellants was "ease of installation" and
particularly "twist clips that can be inserted through slots in the fins for
quick and easy installation." (Spec. i-fi-1 4, 5.) Lin relates to "pilaster strips
having slots that accept removable clips for the support of various items"
(Lin i-f l, emphasis added); and Fast relates to "[an] apparatus for displaying
blister packs or other items which are apertured so as to be suspended from
a hook at a location beyond the edge of a shelf' (Fast, col. 1, lines 6-9,
emphasis added). Lin and Fast would have logically commended
themselves to an inventor's attention when considering a clip for insertion
through an aperture of an item (e.g., a fin) for support and suspension
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem'').
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purposes. One of ordinary skill in the art would have appreciated that these
prior art clip designs had uses beyond "a pilaster of a cabinet" (Appeal Br.
12) and/or "merchandise displayed in a store" (id.). 6
With respect to Iwasaki, the Appellants argue it "teaches a heat
exchanger for an automobile" and is not "pertinent to the problem of
providing radiant floor heating." (Appeal Br. 12.) As indicated above, we
do not consider "radiant floor heating" to be the sole problem faced by the
Appellants. Moreover, Iwasaki appears to be relied upon for its teachings
regarding louvers (see Final Action 13) and limitations related to louvers are
not recited in the claims on appeal (see Claims App.; see also Answer 24).
Accordingly, we consider all of the applied prior art references
(Rothenbach, Armstrong, Ernst, Schmitt, Pickard, Lin, Fast and Iwasaki) to
be analogous art and proper for use in the Examiner's obviousness rejections
(Rejection I-X).
Independent Claim 1
Independent claim 1 is directed to an electric radiant heating system
comprising "an electrical cable," "a plurality of wire hangers that suspend
the electric cable," and "first and second [] fins [that] are attached to the
electric cable." (Claims App.) The Examiner finds that Rothenbach
6 In other words, "familiar items may have obvious uses beyond their
primary purposes." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).
For example, "an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references employing other
'housings, hinges, latches, springs, etc.,"' which come from areas such as "a
desktop telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part housing for
storing audio cassettes." In re ICON Health and Fitness, Inc. 496 F.3d
1374, 1379-80 (Fed. Cir. 2007).
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discloses a radiant heating system comprising an energy-carrier pipe 1, a
plurality of wire hangers 13 that suspend energy-carrier pipe 1, and fins 2
attached to energy-carrier pipe 1. (See Final Action 3--4; see also
Rothenbach Figs. 7, 9.)
Independent claim 1 recites that the plurality of wire hangers suspend
the electric cable "a predetermined distance below [a] surface [to be
warmed] in an inter-joist space." (Claims App.) The Examiner finds that
Armstrong discloses a plurality of hangers 30 that suspend a heating-fluid
conduit 10 from a building beam 28. (See Final Action 7, see also
Armstrong col. 2, lines 1-9, Fig. 3.) The Examiner determines that it would
have been obvious for Rothenbach's wire hangers 13 to suspend energy-
carrier pipe 10 from a building beam in an inter-joist space. (See Final
Action 8.)
The Appellants argue that neither Rothenbach nor Armstrong
discloses or suggests suspending a cable in an inter-joist space. (See Appeal
Br. 7.) According to the Appellants, "while FIG. 7 of Rothenbach shows a
hanging arrangement 13, Rothenbach does not disclose or suggest hanging
the arrangement 13 in inter-joist spaces." (Id.) Also, according to the
Appellants, "[t]he tile or panel in Armstrong sits on a frame suspended
below the joists, rather than between the inter-joist spaces." (Id.)
We are not persuaded by these arguments because Rothenbach
discloses that its energy-carrier pipes "are affixed to the flooring or ceiling
structure" (Rothenbach, col. 3, lines 16-18); and Armstrong discloses
attachment to "a building beam 28 or other external support" (Armstrong,
col. 2, lines 1-2). Additionally, the Examiner finds (and the Appellants do
not dispute) that " [a] joist is known to mean any of the wood, steel, or
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Appeal2014-003551
Application 12/178,494
concrete beams set parallel from wall to wall or across or abutting girders to
support a floor or ceiling." (Answer 26.) One of ordinary skill would infer
(from the teachings of Rothenbach, the teachings of Armstrong, and general
knowledge regarding floor/ceiling structure) that Rothenbach's energy-
carrier pipe 1 could be affixed, via hangers 13, from a girder or other
floor/ceiling structure in an inter-joist space. 7
Independent claim 1 also recites that "the hangers are distributed
along the electric cable in a spaced-apart relationship relative to the first and
second [] fins such that the fins are connected to the electric cable in
between successive hangers." (Claims App.) The Examiner finds that
Rothenbach teaches that hangers 13 can be distributed along a conduit in
such a spaced-apart relationship. (See Final Action 7.) The Examiner
explains that Rothenbach discloses hanger-receiving holes 8 (and thus
hangers 13) that "are distributed along" energy-carrier pipe 1 and, "are in a
spaced-apart relationship relative to the first and second[] fins [2]" such that
"the fins are connected to the cable in between successive hangers."
(Answer 32; see also Rothenbach Fig. 8.)
The Appellants argue that the Rothenbach's hangers 13 "directly
contact the fins" and an arrangement "in which the hangers touch the fins is
completely anathema to what the claimed invention is seeking to achieve."
(Appeal Br. 8; see also Rothenbach Figs. 3, 8.) According to the Appellants,
"[t]he plain and ordinary meaning of 'spaced-apart' cannot mean that the
7 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (An
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim" as "the inferences and
creative steps that a person of ordinary skill in the art would employ" can be
taken into account).
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hangers are connected directly to the fins and to consider this the broadest
reasonable interpretation (as the Examiner intends) effectively reads this
limitation out of the claim and is thus wholly unreasonable." (Reply Br. 2.)
The Appellants contend that the spaced-apart relationship recited in
independent claim 1 requires "a sequence along the cable as follows: a fin,
then a space, then a hanger, then another space, then another fin, then
another space, then another hanger, and so on as shown by way of example
of FIG. 1 in the present application." (Id.)
We are not persuaded by the Appellants' arguments because
independent claim 1 does not preclude the hangers from contacting fins,
does not require the hangers to be spaced apart from the fins, 8 and does not
specify that the fins' entire lengths must be connected to the cable between
successive hangers. 9 The Examiner sufficiently shows that Rothenbach
8 We note that independent claim 1 also recites that an element (i.e., the
electric cable) is "spaced apartfrom" another element (i.e., the to-be-warmed
surface). (Claims App., emphasis added.)
9 The Appellants assert that "[a]s explained in the [S]pecification, the
claimed invention intersperses the fins and hangers to maximize radiant and
convective heat transfer." (Appeal Br. 8.) However, the Appellants do not
point, with particularity, to where this explanation can be found in the
Specification. The Specification indicates that "a user (or installer) 90
attaches the fins 50 to the cable 16 between the joists 44 at regular intervals
along the length of the cable 16; and that "[t]he cable 16 is suspended by
hangers 60, also spaced at regular intervals between the joists 44 along the
length of the cable 16." (Spec. i-f 31.) Also, the discussion in the
Specification regarding "hotspots" (see Appeal Br. 8) relates to "[t]he
hangers 60 suspend[ing] the electric cable 16 a predetermined distance
beneath an underside of the floor" (Spec. i-f 29). As for the illustrated
distribution of hangers 60 relative to fins 50, the Specification states "[i]t
should be expressly understood that the distribution and spacing of the
hangers 60 or the heat-transferring fins 50, or fin assemblies 50, shown
10
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discloses hangers I3 in a spaced-apart relationship relative to the length of
fins 2. (See Answer 34, Rothenbach Fig. 8.) 10 The Examiner also
sufficiently shows that Rothenbach discloses that intermediate portions of
the fins are connected to the electric cable in between successive hangers.
(See id.)
Independent claim I further recites that the fins "are attached to the
electric cable by twist clips that connect the first and second [] fins to the
electric cable via elongated slots." (Claims App.) The Appellants argue that
"the clips in Lin are not 'twist clips' since they are not made to twist inside
the elongated slots." (Reply Br. 4.) We are not persuaded by this argument
because the Examiner finds Rothenbach teaches "twist clips" for attaching
its fins 2 to energy-carrier pipe 1. (See Final Action 4.) The Examiner looks
to Lin only for its teachings on "elongated slots." (See id. at 7-8.)
schematically in FIG. IA and in FIG. IB are not intended to reflect a
distribution and spacing that would actually be used to suspend the tubing."
(Spec. i-f 29.) As such, interpreting the claim language broadly to read upon
hanger distributions and/or spacings different from what is shown in
Figures IA and IB is consistent with the Specification. See In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d I359, I364 (Fed.Cir.2004) ("[T]he PTO must
give claims their broadest reasonable ... [construction] consistent with the
[specification]").
10 The Appellants direct our attention to In re Glaug, 283 F.3d I335 (Fed.
Cir. 2002) and its holding that "the term spaced apart in the context of
adhesive zones required the presence of an adhesive zone followed by a
zone entirely free of adhesive." (Reply Br. 2.) To the extent that this
holding can be directly applied to the facts at hand, Rothenbach appears to
teach hangers I3 that would satisfy this interpretation of "spaced apart."
Rothenbach shows, in Figure 8, hanger I 3 inserted through hole 8 is
followed by a zone that it is entirely free of hangers (i.e., the space between
holes 8). When a hanger I 3 is inserted through the other illustrated hole 8,
this "hanger-free" zone would situated between the two hangers I3.
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The Appellants argue that "the Examiner has failed to articulate a line
of reasoning to explain why his combination of references is proper."
(Appeal Br. 13; see also Reply Br. 2-3.) However, the Examiner articulates
that the combination would "provide a heating cable that is conventional and
commonly used," "securely and removably connect clips within slots of a
surface," and "attach a device to a building beam or other external support."
(Final Action 8, emphasis omitted.) The Appellants do not contend that
these statements by the Examiner are unreasonable and/or without rational
underpinnings. As such, the Examiner's articulated reasoning for the
combination goes unchallenged by the Appellants. 11
Thus, in view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 (Rejection I).
Dependent Claims 2--8
Claims 2-8 depend directly or indirectly from independent claim 1
(see Claims App.); are rejected on the same ground as independent claim 1;
(see Final Action 3), and are not argued separately (see Appeal Br. 9). Thus,
these claims fall with independent claim 1 and we sustain the Examiner's
rejection of dependent claims 2-8 (Rejection I).
11 The Appellants contend that the Examiner's rejection "fails to take into
account, inter alia, the recognition of the technical problem and the
conception of an appropriate solution to the problem." (Appeal Br. 13.)
However, the Examiner is not confined to the Appellants' problem and/or
solution. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 419-20 (2007).
("[The Circuit] first err[ ed] ... [in] holding that courts and patent examiners
should look only to the problem the patentee was trying to solve," under the
correct analysis, "any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed").
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Independent Claim 9
Independent claim 9 is directed to a method comprising the step of
suspending an electric cable "in an inter-joist space a predetermined distance
below the surface to be warmed." (Claims App.) The Appellants argue that
"neither Rothenbach nor Armstrong discloses suspending a cable in the
inter-joist space, as claimed." (Appeal Br. 9.) We are not persuaded by this
argument because, as discussed above in our analysis of independent
claim 1, one of ordinary skill would infer that Rothenbach's energy-carrier
pipe 1 could be affixed, via hangers 13, from a girder or other floor-support
structure in an inter-joist space. Also, to the extent that Ernst does not teach
"suspending a conduit in an inter-joist space" (Appeal Br. 12, emphasis
added), Ernst does teach situating a conduit in a space between floor joists
(see e.g., Ernst i-f 35, Fig. 8).
Independent claim 9 also recites the step of attaching first and second
heat-transferring fins "to the cable in a spaced-apart relationship along the
electric cable relative to the hangers such that the fins are connected to the
electric cable in between successive hangers." (Claims App.) The
Appellants argue that "for at least the reasons discussed above with respect
to [c]laim 1," Rothenbach and Armstrong fail to disclose or suggest
attaching the fins to the cable in the spaced apart relationship recited in
independent claim 9. (Appeal Br. 10.) For the same reasons discussed
above in our analysis of independent claim 1, we are not persuaded by this
argument.
Thus, in view of the foregoing, we sustain the Examiner's rejections
of independent claim 9 (Rejections II and III).
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Dependent Claims 1 {}-13
Claims 10-13 each depends directly or indirectly from independent
claim 9 (see Claims App); and the Appellants argue that "the cited
references, alone or in combination, fail to disclose or suggest each and
every feature of [ c] laim 9, and as such, the claims dependent therefrom as
well" (Appeal Br. 10). As we are unpersuaded by the Appellants'
arguments with respect to independent claim 9, these dependent claims fall
therewith. Thus, we sustain the Examiner's rejections of dependent
claims 10-13 (Rejections II-V).
Independent Claim 14
Independent claim 14 is directed to a radiant heating system
comprising "a plurality of wire hangers that suspend the electric cable a
predetermined distance in an inter-joist space below an underside of a floor,"
wherein "fins [are] spaced apart along the cable from the hangers such that
the fins are connected to the electric cable in between successive hangers."
(Claims App.) The Appellants argue that "[fJor at least the reasons
discussed above with respect to [ c] laim 1," the cited references fail to
disclose these limitations. (Appeal Br. 11.) Thus, for the same reasons
discussed above in our analysis of independent claim 1, we sustain the
Examiner's rejections of independent claim 14 (Rejections I and VI).
Dependent Claims 15-20
Claims 15-20 each depends directly or indirectly from independent
claim 14 (see Claims App.) and they are not argued separately (see Appeal
Br. 11 ). Thus, these claims fall with independent claim 14 and we sustain
the Examiner's rejections of dependent claims 15-20 (Rejections VII-X).
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DECISION
We AFFIRM the Examiner's rejections of claims 1-20.
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
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