Ex Parte McCormick

Patent Trial and Appeal Board

Aug 21, 2018

13333386 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/333,386 12/21/2011 Bruce McCormick
29318 7590 08/23/2018
JAMES D. STEVENS
REISING ETHINGTON P.C.
755 W. BIG BEA VER RD.
SUITE 1850
TROY, MI 48084
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.
8076-3001-2 4152
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
stevens@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE MCCORMICK
Appeal2017-010425
Application 13/333,386
Technology Center 3700
Before DANIEL S. SONG, WILLIAM A. CAPP and
JEFFREY A. STEPHENS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 20-33. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies Savsu Technologies LLC as the real party in interest.
Appeal Br. 3.
Appeal2017-010425
Application 13/333,386
THE INVENTION
Appellant's invention relates to thermally insulted storage containers.
Spec. 1. Claim 21, reproduced below with paragraph indentation added, is
illustrative of the subject matter on appeal.
21. A storage container, comprising:
a plurality of walls arranged to at least partially define a
storage space,
wherein at least one of the walls includes two or more
overlapping super-insulating panels,
each of the super-insulating panels being an aero gel panel
or a microporous panel having a thermal conductivity less
than 0.02 W /m-K at atmospheric pressure, and
an adhesive layer disposed between at least two of the
super-insulating panels.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Phan
Kirby
Dietrich
Rusek
us 4,044,449
us 5,091,233
us 6,164,030
US 2004/0180176 Al
Aug.30, 1997
Feb.25, 1992
Dec. 26, 2000
Sept. 16, 2004
The Examiner also relies on Admitted Prior Art (APA) found in
Appellant's own Specification at paragraphs 31 and 32 and
augmented by a definition set forth in paragraph 28.
The Examiner also relies on an article entitled Thermal
Conductivity of Some Common Materials (hereinafter
"TCCM"). 2
2 http://web.archive.org/web/200602 16234044/
http://www.engineeringtoolbox.com/thermal-conductivity-d_ 429 .html [last
accessed 9/1/2016 10:06:31 AM]
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The following rejections are before us for review:
1. Claims 20, 24, 25, 27, and 31 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 21 and 32 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Rusek and AP A.
3. Claims 26 and 29 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Rusek, AP A, and TCCM.
3. Claims 20, 22, 24, 25, 27, 28, 30, 31, and 33 are rejected under 35
U.S.C. 103(a) as being unpatentable over either of:
(a) Rusek, Kirby, and Phan; or
(b) Rusek, AP A, and Phan.
4. Claim 23 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over the applied art of ground number 3 above, in combination
with Dietrich. 3
OPINION
Section 112, first paragraph, Written Description
The Examiner considers that the limitation in independent claim 20
directed to a complex edge profile extending around the entire periphery of
the wall lacks written description support. Non-Final Action 3. The
Examiner takes the position that the "walls" of the container have flat sides
that do not comprise the complex edge portion. Id.
3 A ground of rejection over Rusek, Kirby, and Thermal Conductivity of
Some Common Materials has been withdrawn by the Examiner. Final
Action 4---6; Ans. 8.
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Appellant directs our attention to Figures 2 and 3 of the disclosure and
points out that each of the illustrated walls has a complex edge profile.
Appeal Br. 9.
In response, the Examiner construes the term "entire periphery of the
wall" as including the flat surfaces on the top and bottom of the wall.
Ans. 9.
In reply, Appellant construes the periphery of the wall as just
pertaining to the edge and, therefore, excluding the flat surfaces on the top
and bottom of the wall. Reply Br. 2-3.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a construction that is
"unreasonably broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
Appellant's invention is directed to a storage container that has a
plurality of "walls." Spec. ,r 5. The walls have: (1) an interior surface;
(2) an exterior surface; and (3) a thickness defined between the surfaces. Id.
The walls have "edges" that are complimentary in shape. Id. ,r 7. At least
one wall has a "complex edge profile" that extends around a "periphery" of
the wall. Id. Adjacent edges are mated together to define an interface. Id.
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,r 8. In claim 20, a complex edge profile of one wall joins the complex edge
profile of at least one other wall. Claims App. claim 20.
We think that a person of ordinary skill in the art would understand a
typical "wall" to comprise two, opposing, relatively large surfaces spaced
apart by a comparatively narrow thickness that defines an "edge." In
accordance with the ordinary and customary meaning of "edge" as applied to
a "wall," the "edge" excludes the relatively large, opposing, front and back
surfaces of the wall. This construction comports with Appellant's position.
The Examiner's construction is unreasonably broad. Under the proper
construction, Appellant's disclosure provides written description support for
a "complex edge profile extending around the entire periphery of the wall."
We do not sustain the Examiner's Section 112 written description
rejection of claim 20, and claims 24, 25, 27, and 31 that depend therefrom.
Claim 21
Unpatentability of Claims 21 and 32
over Rusek and AP A
The Examiner finds that Rusek discloses the invention substantially as
claimed except for microporous insulating panels with a thermal
conductivity less than 0.02 W/M-k at atmospheric pressure. Non-Final
Action 6-7. The Examiner relies on AP A as disclosing the claimed panels.
Id. at 7. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to make the
panels of Rusek with a microporous or aero gel material. Id. According to
the Examiner, a person of ordinary skill in the art would have done this as it
merely entails selecting a known material on the basis of its suitability for an
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intended use. Id. (citing Sinclair & Carroll Co. v. Interchemical Corp., 325
U.S. 327 (1945)).
Appellant traverses the Examiner's rejection by arguing that APA
fails to disclose the claimed thermal conductivity "at atmospheric pressure."
Appeal Br. 19.
Regarding the Cryogel® and Excelfrax® materials disclosed by
the Appellant as examples of aerogel and microporous
materials, the Appellant's disclosure does not admit that these
materials have the recited thermal conductivity at atmospheric
pressure. Indeed paragraph [0031] of the Appellant's
disclosure is silent regarding the thermal conductivity of these
materials.
Id. at 20 (emphasis added).
In response, the Examiner points out that Appellant provides a
definition of "super-insulating" in the Specification. Ans. 10, Spec. ,r 28.
The Examiner interprets Appellant's Specification as identifying materials
that satisfy such definition. Id.; see also Spec. ,r,r 31, 32.
In reply, Appellant concedes that: "Appellant discloses that there are
aerogel materials and microporous materials in the prior art that have the
recited thermal conductivity." Reply Br. 4. However, Appellant then argues
that:
The mere admission that there are some aerogel materials or
microporous materials in the prior art with the recited thermal
conductivity is decidedly NOT an admission that "it was known
in the art to manufacture super-insulating panels" from those
materials.
Id. ( emphasis added). Appellant further argues that the recited material
properties in paragraph 32 of the Specification are inapplicable as they relate
to properties in the presence of a vacuum and not at atmospheric pressure.
Id.
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Appellant's Specification admits that "Aerogel materials are highly
nonporous solids that are known in the art." Spec. ,r 31. The Specification
then states that "suitable" aerogel materials may be obtained commercially.
Id. The Specification further admits that microporous materials are known
in the art. Id. The Specification then states that a "suitable" microporous
material is commercially available. Id. The Specification explains that
microporous panels are "typically constructed" for higher temperature
applications, but are also "suitable" for use in cold storage containers. Id.
The Specification acknowledges that a "vacuum panel" generally
comprises a hermetically sealed container having an internal pressure lower
than atmospheric pressure. Id. at ,r 32. The Specification then relates that
"suitable" vacuum panels are commercially available. Id.
Appellant's argument that APA does not admit that aerogel and/or
microporous panels with a thermal conductivity less than 0.02 W/m-K at
atmospheric pressure are known in the prior art is not persuasive.
Appellant's Specification describes commercially available materials as
"suitable." Spec. ,r 31. Appellant's Specification then describes
commercially available panels as "suitable." Id. ,r 32. Indeed, the word
"suitable" appears no less than five (5) times in paragraphs 31 and 32 of the
Specification. Conspicuously absent from Appellant's Specification is any
written description and/or enabling teaching disclosure that informs a person
of ordinary skill in the art how to modify the commercially available
materials and panels to render them "suitable" for use in Appellant's
invention. See generally Spec. Appellant does not direct us to any alleged
teaching that purportedly shows a person of ordinary skill in the art how to
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modify the commercially available products disclosed in paragraphs 31
and 32 in order to render them "suitable" for use in the invention.
A patent applicant is required to submit a specification that contains a
written description of the invention in "full, clear, concise, and exact terms."
35 U.S.C. § 112(a). However, a "specification need not disclose what is
well known in the art." Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984). Under the facts and
circumstances present here, we find unpersuasive Appellant's argument that
it was not known to manufacture super-insulating panels from the "suitable"
materials identified in paragraph 31 of the Specification. Although
paragraph 32 of the Specification recites thermal conductivity at evacuated
pressures, Appellant's admission that the commercially available panels are
"suitable," without any accompanying teaching disclosure to render them
suitable, permits only one reasonable and logical conclusion, namely, that
the "suitable" panels exhibit the claimed thermal conductivity at atmospheric
pressure.
Furthermore, we are of the opinion that the Examiner has, at the very
least, shown a sound basis for believing that the Vacupor® panels identified
in paragraph 32 of the Specification satisfy the super-insulated panel
limitation of claim 21. This is sufficient to shift the burden to Appellant to
show otherwise. See In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990) ("when
the PTO shows sound basis for believing that the products of the applicant
and the prior art are the same, the applicant has the burden of showing that
they are not."). Appellant's naked denials are not sufficient to carry such
burden. Thus, we determine that the Examiner's findings of fact regarding
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the thermal conductivity of the AP A panels is supported by a preponderance
of the evidence.
Appellant next argues that Rusek "teaches away" from the use of
aerogel and microporous materials. Appeal Br. 20. Appellant points to
discussion in Rusek that aerogel and microporous materials are "expensive"
and "difficult to form into three-dimensional shapes." Id.
In response, the Examiner states that Rusek does not teach away from
the proposed modification. Particularly with respect to the cost factor, the
Examiner notes that a person of ordinary skill in the art may look to more
expensive materials for a variety of reasons, including making a more
valuable product.
Appellant's teaching away argument is not persuasive. While Rusek
acknowledges that inorganic core materials are expensive and difficult to
form into three-dimensional shapes, it also observes that they exhibit high
temperature capability and are non-flammable. Rusek, ,r 5. An implicit
motivation to combine exists when the improvement is technology-
independent and the combination of references results in a product that is
more desirable. Dystar Textilfarben GmBH & Co, v. CH Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). A non-exclusive list of desirability factors
includes making a product stronger, cheaper, cleaner, faster, lighter, smaller,
more durable, or more efficient. Id. Thus, as recognized by the court in
Dystar, there are factors to be considered in the analysis other than cost. See
also In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) ("That a given
combination would not be made by businessmen for economic reasons does
not mean that persons skilled in the art would not make the combination
because of some technological incompatibility. Only the latter fact would be
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relevant"). The "mere disclosure of alternative designs does not teach
away." In re Mouttet, 686 F.3d 1322, 1334 (Fed.Cir. 2012). Rather,
teaching away requires "clear discouragement" from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Rusek discloses an alternative design with certain design tradeoffs. We
discern no "clear discouragement" from using aerogel or microporous
insulating materials, particularly in high end products where product
performance, not cost, may be an important factor in the selection of
materials.
Appellant next argues that the Examiner's proposed modification
would render Rusek unsatisfactory for its intended purpose. Appeal Br. 21.
We disagree. "A reference must be considered for everything that it teaches,
not simply the described invention or a preferred embodiment." In re
Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Rusek
discloses a storage container with insulated walls. Rusek, Fig. 8. Merely
substituting one insulating material for another would not render Rusek
unsatisfactory for its intended purpose.
Finally, Appellant argues that the Examiner's underlying reasoning
for the proposed combination is "illogical and improper." Appeal Br. 21. In
particular, Appellant renews the argument that aerogel materials are
"expensive to produce." Id. In response, the Examiner reiterates that there
are other considerations that go into selecting materials other than cost. Id.
In the Sinclair case cited in the Examiner's rejection, the Supreme
Court pointed out that:
Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece
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to put into the last opening in a jig-saw puzzle. It is not
invention.
Sinclair, 325 U.S. at 335. Similarly, in the case of In re Leshin, 277
F.2d 197 (CCPA 1960), the court held that selection of a material on the
basis of its suitability for an intended use is obvious.
Mere selection of known plastics to make a container-dispenser
of a type made of plastics prior to the invention, the selection of
the plastics being on the basis of suitability for the intended use,
would be entirely obvious; and in view of35 U.S.C. 103, it is a
wonder that the point is even mentioned.
Id. at 199. In the instant case, Appellant relies on selection of a known, off-
the-shelf, commercially available aerogel or microporous panel as imparting
patentability over the prior art. Appellant, however, does not successfully
rebut the Examiner's position that Appellant has merely selected a known,
suitable material for an intended purpose.
We sustain the Examiner's unpatentability rejection of claim 21 over
Rusek and AP A.
Claim 32
Claim 3 2 depends from claim 21 and adds the limitation: "wherein at
least one wall is curved." Claims App. The Examiner finds that Rusek
discloses walls that are curved. Non-Final Action 8.
Appellant argues that Rusek's container has flat walls and is in the
form of a box. Appeal Br. 16, 24. Appellant also observes that Rusek
acknowledges that aerogel and microporous materials are difficult to form
into three-dimensional shapes. Id. at 18. Appellant argues that the
Examiner's rejection fails to account for these deficiencies in aerogel and
microporous materials. Id. Appellant argues that the rejection fails to take
into account the subject matter "as a whole." Appeal Br. 24.
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In response, the Examiner maintains that Rusek discloses curved walls
on account of the fact that the walls are curved at their edges to form
comers. Ans. 12. The Examiner maintains that the claim limitation, in its
current form, is broad enough to read on Rusek' s rounded comers such that
the claim needs to be further refined to overcome the curved comers of
Rusek. Id. The Examiner maintains that the rejection does, in fact, take into
account the subject matter as a whole. Id.
Rusek discloses storage containers that exhibit three-dimensional
shapes. Rusek, ,r 42. Although Rusek discloses one embodiment that
exhibits the shape of a box with rounded comers, it also discloses an
embodiment in the shape of a bowl that has curved walls. Id., Fig. 7.
Although Rusek does acknowledge that forming three-dimensional shapes
using aerogel and microporous materials may be "difficult," it nevertheless
strongly implies that three-dimensional shapes were, notwithstanding such
difficulty, known in the prior art. Appellant provides neither evidence nor
persuasive technical reasoning showing that more than ordinary skill is
required to overcome such difficulty. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,421 (2007) ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton").
We are not apprised of Examiner error and, accordingly, we sustain
the Examiner's unpatentability rejection of claim 32.
Claim 26
Unpatentability of Claims 26 and 29
over Rusek, AP A, and TCCM
Claim 26 depends from claim 21 and adds the limitation: "wherein
the adhesive layer is an insulating material having a thermal conductivity of
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0.1 W /m-K or less." Claims App. The Examiner relies on TCCM as
disclosing adhesive materials with the recited thermal conductivity. Non-
Final Action 7.
Appellant argues that TCCM does not disclose the recited thermal
conductivity and that the Examiner has failed to identify a material from
TCCM that meets the claim limitation. Appeal Br. 13, 22. In response, the
Examiner identifies fiberglass as a material that can be used for adhesive.
Ans. 11. In reply, Appellant questions the Examiner's finding that fiberglass
can be used as an adhesive. Reply Br. 5.
There is no mention of fiberglass in the Examiner's rejection of
claim 26. See Non-Final Action 7. The TCCM reference is little more than
a multi-column table that lists the name of a material or substance and then
lists its thermal conductivity at various temperatures. See TCCM. One line
item on the list is "Fiberglass." Id. at 2. There is no mention in TCCM of
fiberglass as having adhesive properties. The Examiner stops short of
finding that it is well-known in the art that fiberglass has adhesive
properties, neither does the Examiner take Official Notice that fiberglass has
adhesive properties. See Ans. 11. Thus, there is no underlying factual basis
in the Examiner's rejection to support the statement that: "TCCM teaches
that fiberglass, a materials that can be used for adhesive, can have a thermal
conductivity of less than 0.1." Id.
The Examiner's findings of fact are not supported by a preponderance
of the evidence and, therefore, we do not sustain the Examiner's
unpatentability rejection of claim 26 over Rusek, AP A, and TCCM.
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Claim 29
Claim 29 depends from claim 21 and adds the limitation: "each
super-insulating panel is encapsulated in an insulating material that is not a
super-insulating material, the insulating material having a thermal
conductivity between 0.02 and 0.1 W/m-K." Claims App. The Examiner
finds that Rusek teaches encapsulation with an insulating material 20. Non-
Final Action 8. The Examiner relies on TCCM as teaching polymer
materials with the recited thermal conductivity. Id.
Appellant argues that TCCM does not disclose a flexible polymer
film that is necessary to fulfill the Rusek function of element 20. Appeal
Br. 23. Appellant also argues that Rusek does not disclose a "requirement"
that encapsulating materials have the claimed thermal conductivity.
In response, the Examiner identifies polystyrene from TCCM as
disclosing the recited thermal conductivity. Ans. 11. The Examiner also
points out that Appellant engages in an individual attack on the references of
a combination, citing In re Keller, 642 F.2d 413,425 (CCPA 1981), and In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Ans. 11.
In reply, Appellant argues that TCCM teaches a form of polystyrene
that cannot exist in "film" form "as required by the Rusek enclosure." Reply
Br. 6.
TCCM discloses a material referred to as "Polystyrene expanded" that
has a thermal conductivity of 0.03 W/m-K. TCCM, p. 3. Although Rusek
teaches that it is preferable to use a heat sealable, polymer film for its
vacuum sealed enclosure, we have already determined that it would have
been obvious to substitute Rusek's core glass fiber material with an aerogel
or microporous material. Appellant provides neither evidence, nor
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persuasive technical reasoning, that would preclude further modifying Rusek
by using an expanded polystyrene material to encapsulate an aerogel or
microporous material.
Appellant also argues that the Examiner's reason for combining
references is "illogical and improper." This argument is reminiscent of the
substantially similar arguments that were raised in connection with the
rejection of claim 21 that we found unpersuasive and are equally
unpersuasive here. The issue here again is selecting a known, suitable
material for an intended use, which is obvious. Sinclair, supra; Leshin,
supra.
We sustain the Examiner's unpatentability rejection of claim 29 over
Rusek, AP A, and TCCM.
Unpatentability of Claims 20, 22, 24, 25, 27, 28, 30, 31, and 33
over either Rusek, Kirby, and Phan; or
Rusek, APA, and Phan
Claims 20 and 24
Claim 20 is an independent claim that shares several elements in
common with independent claim 21 discussed hereinabove. Claims App.
Claim 20 differs from claim 21 in that it recites a plurality of panels that are
sized and disposed in relation to each other to provide added thickness and a
complex edge profile. Id. In particular, Claim 20 contains the following
claim language: "a first ... panel having a first perimeter and second ...
panel having a second perimeter that is larger than the first perimeter."
Claims App. Claim 24 depends from claim 20 and is not separately argued.
Id.
The Examiner relies on Phan as teaching walls with adjacent edges
that have complimentary stepped shapes corresponding to Appellant's
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"complex edge profile." Non-Final Action 9. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Rusek with Phan's shape and wall
structure. Id. at 10. According to the Examiner, a person of ordinary skill in
the art would have done this to create a secure connection between adjacent
container walls. Id.
Appellant argues that Rusek fails to disclose wall panels where a
second panel has a perimeter that is larger than the perimeter of a first panel
and such that the first perimeter lies "entirely within" the second perimeter.
Appeal Br. 26. Relying primarily on Figure 2 of Rusek, Appellant argues
that Rusek' s individual plies have the same shape and therefore, identically
sized perimeters. Id.
In response, the Examiner finds that Rusek discloses a second
perimeter that is "within" a first perimeter toward the inside of the storage
space." Ans. 13.
Rusek discloses a three-dimensional vacuum insulation core in the
form of a box. Rusek, ,r 28, Fig. 8. As depicted in Figure 8, the top or "lid"
of the box is comprised of at least two panels where the upper-most panel is
larger than the lower panel and, therefore, also has a larger perimeter. Id.
The Examiner's finding of fact is supported by a preponderance of the
evidence.
Appellant next argues that the Examiner's reasoning for combining
the prior art lacks a factual basis. Appeal Br. 27. Appellant argues that
"there is no indication in Phan" that edge profiles create a more secure
connection. Id. "It is ... unclear where the Examiner arrived at the idea
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that the Phan wall edges somehow provide a more secure connection." Id.
at 28.
In response, the Examiner finds that it is well known that increased
surface area provides for more friction points; and, therefore, an improved
connection. Ans. 13. This constitutes sound articulated reasoning with a
rational underpinning that is sufficient to support the Examiner's rejection.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) ( cited with approval in KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007)).
Appellant's argument that the proposed combination requires
"elimination" of certain features is without merit. Appeal Br. 28-29. The
obviousness inquiry does not ask "whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en bane).
We sustain the Examiner's unpatentability rejection of claims 20
and 24 over Rusek, AP A, and Phan. 4,5
Claim 25
Claim 25 depends from claim 20 and adds the limitation: "an
adhesive layer located where at least some of the complex edge profiles join
4 Claim 24 falls with claim 20. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to
separately argue claims).
5 We do not reach the alternative grounds over Rusek, Kirby, and Phan. See
37 C.F.R. § 4I.50(a)(l) (The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed).
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one another, wherein the adhesive layer is an insulating material having a
thermal conductivity of0.1 W /m-K or less." Claims App. Appellant argues
that the Examiner ignores the limitations of claim 25 in the final rejection.
Appeal Br. 30.
In response, the Examiner maintains that the features of claim 25 are
addressed in the logical flow of the rejection. Ans. 14. "The modified
device of Rusek teaches an adhesive layer located between the panels and
edges of the panels and a complex edge profile between panels." Id.
However, our previous determination that the Examiner's finding regarding
fiberglass as an adhesive is erroneous in connection with the rejection of
claim 26, controls the outcome of the rejection of claim 25.
We do not sustain the Examiner unpatentability rejection of claim 25
over Rusek, AP A, and Phan. 6
Claim 27
Appellant does not argue for the separate patentability of claim 27,
which depends from claim 20. Claims App. Claim 27 falls with claim 20,
and we sustain the Examiner's rejection. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 28
Claim 2 8 depends from claim 2 7 and adds the limitation: "each
super-insulating panel has one or more apertures defined through the panel,
the insulating material extending into the one or more apertures." Claims
App. The Examiner finds that this limitation is met by the stepped structure
6 The alternative grounds over Rusek, Kirby, and Phan suffers from the same
infirmity as the rejection contains no finding that Kirby teaches the claimed
adhesive. See Non-Final Action 9--10.
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that defines apertures in the cross-view of the proposed modification to
Rusek. Non-Final Action 11.
Appellant argues that Rusek does not disclose apertures. Appeal
Br. 30. The Examiner responds by pointing out that the cross-view of Phan
depicts the apertures on which the rejection is based. Ans. 14. In reply,
Appellant questions whether any apertures are depicted in Phan. Reply
Br. 9.
Appellant's Specification teaches that panels include one or more
apertures 114 formed "through" its thickness. Spec. ,r 49. Such apertures
are depicted in Figure 7 of Appellant's disclosure. See Fig. 7. We do not
agree with the Examiner's finding that the stepped joints depicted in Phan
constitute "apertures defined through the panel" as claimed in claim 28.
Claims App. ( emphasis added).
The Examiner's findings of fact are not supported by a preponderance
of the evidence and, therefore, we do not sustain the Examiner's
unpatentability rejection of claim 28 over Rusek, APA, and Phan.
Claim 22
Claim 22 is an independent claim that is substantially similar in scope
to independent claim 21, except that it contains a limitation directed to a
thermal leak path that is at least 7 5 percent greater than the thickness of an
individual wall. Claims App. The Examiner finds that Phan provides a stair
stepped thermal leak path. Non-Final Action 10. The Examiner further
finds that designing a thermal leak path that is at least 7 5 percent greater
than the individual thickness of two walls would have entailed no more than
an obvious change in size. Id. (citing In re Rose, 220 F.2d 459 (CCPA
1955)).
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Appellant argues that the Examiner's rejection failed to identify which
prior art component must be changed in size to arrive at the recited thermal
leak path dimension. Appeal Br. 32. Appellant characterizes the
Examiner's reasoning as "laughable." Id.
In response, the Examiner maintains that any change in size needed to
satisfy the claim language would have been obvious. Ans. 15. In reply,
Appellant alleges that the Examiner's Answer does not dispute that making a
thermal leak path with the claimed dimension is more than a mere change in
size. Reply Br. 9.
Figure 3 of Phan depicts, among other things, a number of stair
stepped panel joints. Phan, Fig. 3. As we understand the Examiner's
rejection, each stair step corresponds to a panel ply thickness of Rusek.
Thus, the proposed combination contemplates a thickness of three plies with
two intermediate stair steps. Id. The run and rise of each stair step appear to
be about equal in Figure 3. 7 Id. Using each rise and run length as a single
unit, the thickness of each wall would be three units and the total length of
the leak path would be five units. This results in a leak path that is about 60
percent greater than the wall thickness.
7 We are mindful that patent drawings do not define the precise proportions
of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue. Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000), citing In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977). Nevertheless, drawings can be
relied on for what they reasonably disclose and suggest to one of ordinary
skill in the art. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Because the step profile needs to match on either side of a perpendicular
leak path joint, concluding that the rise and run lengths are identical is
reasonable.
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There is at least one obvious way to increase the length of the leak
path to be 7 5 percent greater than the wall thickness. This would entail
adding one step to the stair step profile by adding an additional ply or panel
to the wall thickness. This would result in a thickness of four units and a
total length of the leak path of seven units. The result is a leak path that
is 7 5 percent greater than the wall thickness. Such a modification involves
simple and elementary principles of arithmetic and geometry.
One of the ways in which a patent's subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent's claims. KSR, 550 U.S. at 419-420. Merely increasing the number
of steps in a stepped edge profile to increase the length of the leak path is an
obvious solution to the problem of heat loss through a leak path in the comer
of an insulated container. The Examiner's rejection and Answer describes
this increase in terms of an "increase of size" and/or a "change in shape."
This terminology adequately describes the phenomenon of increasing the
proportional length of the leak path vis-a-vis the wall thickness by adding a
step to the step profile. Appellant provides neither evidence nor persuasive
technical reasoning that increasing the number of steps in the edge profile
from three to four steps requires more than ordinary skill or produces
unexpected results.
Accordingly, we sustain the Examiner's unpatentability rejection of
claim 22 over Rusek, AP A, and Phan.
Claim 33
Claim 3 3 depends from claim 22 and adds the limitation: "wherein at
least one wall is curved." Claims App. We note that claim 32 contains the
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identical limitation. Id. In traversing the rejection, Appellant relies on the
same arguments that we found unpersuasive with respect to the rejection of
claim 32 and are equally unpersuasive here. Appeal Br. 32-33. We sustain
the Examiner's unpatentability rejection of claim 33 over Rusek, APA, and
Phan.
Claim 30
Claim 30 has a limitation directed to apertures. Claims App. In
rejecting claim 30, the Examiner relies on the same erroneous findings of
fact regarding apertures that caused us to reverse the rejection of claim 28.
For essentially the same reasons, we do not sustain the Examiner's
unpatentability rejection of claim 30 over Rusek, APA, and Phan.
Claim 31
Appellant does not argue for the separate patentability of claim 31,
which claim depends from claim 20 and, therefore, falls with claim 20. We
sustain the Examiner's unpatentability rejection of claim 31 over Rusek,
APA, and Phan. 37 C.F.R. § 4I.37(c)(l)(iv).
Unpatentability of Claim 23
Claim 23 is an independent claim that is substantially similar in scope
to claims 20, 21, and 23 except for specific limitations directed to the stair
stepped edge profile and distance along the adjoining panel interface.
Claims App.
Appellant traverses the rejection by arguing that Dietrich does not
cure deficiencies in the other references in the rejection. Appeal Br. 34. In
particular, Appellant argues that the prior art fails to disclose:
1. the perimeter of the interior surface lying entirely within the
perimeter of the exterior surface;
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2. a foam material that encapsulates each of the insulating panels;
3. the number of step surfaces is one less than the number of super-
insulating panels; and
4. each step surface lies in a plane between two super-insulating
panels.
Appeal Br. 34--35.
1. The perimeter of the interior surface
Appellant's contentions as to this issue are without merit. As
previously discussed, Rusek discloses a lid that exhibits the claimed feature.
See Rusek, Fig. 8.
2. Foam material that encapsulates each of the insulating panels
Appellant's arguments regarding this issue are not persuasive. As we
previously discussed in connection with rejection of claim 29, Rusek teaches
encapsulation. See Rusek, Fig. 2 ( element 20); ,r 45 ( enclosure which is
impervious to the passage of air and other gases). TCCM teaches that
expanded polystyrene (i.e., foam) is a known insulating material. TCCM,
p. 3. Dietrich discloses the use of foam material in encapsulation of an
insulating panel. Dietrich, col. 2, 11. 15-19 ("liquid polyurethane foam
reaction mixture ... added around the vacuum insulation panel"). The
Examiner's proposed combination discloses Appellant's "foam material"
limitation.
3. Number of step surfaces
Appellant's contention is without merit. Figure 8 of Rusek depicts a
top or lid comprised of two panels with one step surface. Rusek, Fig. 8.
4. Step swface in a plane between two super-insulating panels.
Appellant's contentions are, once again, without merit. Figure 8 of
Rusek depicts a top or lid comprised of two panels with one step surface.
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Rusek, Fig. 8. The step surface is depicted as being in the same plane
between the two panels. Id.
Combinability of the References
With respect to combinability of the reference to achieve the claimed
invention, Appellant argues that
[E]ven if a skilled artisan had reason to construct a storage
container with walls using Rusek's oriented glass fibers and
Phan's stepped edges, there is no teaching or suggestion that
each step surface should lie in a plane between two super-
insulating panels as recited in claim 23 (limitation D, above).
Only the Appellant's disclosure provides any reason to
construct a storage container wall with such specificity with
respect to the relative locations of multiple different wall
features.
Appeal Br. 36. This argument is not persuasive. Forming a stair step edge
profile of a wall by laminating flat panels of decreasing surface area and
perimeter length will naturally tend to place the step surface in the plane
created by the contact surfaces of the two adjoining panels. Appellant is
merely claiming the obvious and natural result of laminating two flat panels
together where a first panel has a larger surface area than a second panel.
We sustain the Examiner's unpatentability rejection of Claim 23.
DECISION
The decision of the Examiner to rejection claim 20, 24, 25, 27, and 31
as failing to comply with written description requirement of 35 U.S.C.
§ 112, first paragraph, is reversed.
The decision of the Examiner to reject claims 20, 21-24, 27, 29,
and 31-33 as unpatentable under 35 U.S.C. § 103 is affirmed.
The decision of the Examiner to reject claims 25, 26, 28, and 30 as
unpatentable under 35 U.S.C. § 103 is reversed.
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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-IN-PART
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