Ex Parte McCormickDownload PDFPatent Trial and Appeal BoardAug 21, 201813333386 (P.T.A.B. Aug. 21, 2018) Copy Citation 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] 2 Appeal2017-010425 Application 13/333,386 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. 3 Appeal2017-010425 Application 13/333,386 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. 4 Appeal2017-010425 Application 13/333,386 ,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 5 Appeal2017-010425 Application 13/333,386 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. 6 Appeal2017-010425 Application 13/333,386 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 7 Appeal2017-010425 Application 13/333,386 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 8 Appeal2017-010425 Application 13/333,386 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 9 Appeal2017-010425 Application 13/333,386 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 10 Appeal2017-010425 Application 13/333,386 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. 11 Appeal2017-010425 Application 13/333,386 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 12 Appeal2017-010425 Application 13/333,386 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. 13 Appeal2017-010425 Application 13/333,386 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 14 Appeal2017-010425 Application 13/333,386 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 15 Appeal2017-010425 Application 13/333,386 "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 16 Appeal2017-010425 Application 13/333,386 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). 17 Appeal2017-010425 Application 13/333,386 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. 18 Appeal2017-010425 Application 13/333,386 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)). 19 Appeal2017-010425 Application 13/333,386 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. 20 Appeal2017-010425 Application 13/333,386 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 21 Appeal2017-010425 Application 13/333,386 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; 22 Appeal2017-010425 Application 13/333,386 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. 23 Appeal2017-010425 Application 13/333,386 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. 24 Appeal2017-010425 Application 13/333,386 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 25 Copy with citationCopy as parenthetical citation