Ex Parte McMillin et alDownload PDFPatent Trial and Appeal BoardSep 18, 201310752359 (P.T.A.B. Sep. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/752,359 01/06/2004 James McMillin 13378-068 4232 110407 7590 09/18/2013 Detroit Office/Brinks Hofer Gilson and Lione P.O. BOX 10395 Chicago, IL 60610 EXAMINER ROBINSON, DANIEL LEON ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 09/18/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES MCMILLIN, LOUIS P. STEINHAUSER, and KEVIN PTASIENSKI ____________________ Appeal 2010-002088 Application 10/752,359 Technology Center 3700 ____________________ Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002088 Application 10/752,359 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 23-37.1 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on September 12, 2013. We AFFIRM-IN-PART. The rejected claims are directed to layered heaters. Claims 23, 30, 32, 33, and 35-37 are the only independent claims. EXEMPLARY CLAIMS Claim 23, reproduced below, is representative of the claims on appeal. 23. A layered heater comprising: a plurality of resistive layers separated by a corresponding plurality of dielectric layers, wherein the plurality of resistive layers are formed on the corresponding plurality dielectric layers, and at least one of the plurality of resistive layers and the corresponding one of the plurality dielectric layers are formed by different layered processes. THE REJECTION The Examiner rejects the claims as follows: Claims 23-37 are rejected under 35 U.S.C. § 102(b) as anticipated by DeCamp (US 4,920,254, iss. Apr. 24, 1990). 1 Our decision will refer to Appellants’ Specification (“Spec.,” filed Jan. 6, 2004), Appeal Brief (“App. Br.,” filed Jun. 13, 2008), and Reply Brief (“Reply Br.,” filed Sep. 20, 2009), as well as the Examiner’s Answer (“Ans.,” mailed Jul. 20, 2009). Appeal 2010-002088 Application 10/752,359 3 ANALYSIS With respect to independent claim 23, Appellants argue the Examiner’s rejection is in error because DeCamp does not teach the limitation of “a plurality of resistive layers separated by a corresponding plurality of dielectric layers” (App. Br. 6; Reply Br. 1). Although the Examiner identifies in DeCamp layers that correspond to various layers recited in claim 23, we agree with Appellants that the Examiner has not established that DeCamp discloses a plurality of resistive layers separated by a plurality of dielectric layers. We note, for example, that although the Answer identifies layers 12 and 13 of DeCamp as teaching the claimed dielectric layers, and layers 16 as teaching the claimed resistive layers, layer 13 does not separate heaters 16 from one another as required by the claim. Thus, we do not sustain the rejection of independent claim 23. Inasmuch as we do not sustain the rejection of claim 23, we also do not sustain the rejection of claims 24-29 that depend from claim 23. With respect to independent claim 30, Appellants argue the rejection is in error because the claim “requires four layers: 1) a dielectric layer; 2) a resistive layer; 3) a protective layer; and 4) a functional layer. The Examiner’s Answer does not address each of these limitations. Rather, in a broad-brush statement, it is asserted that ‘ . . . please note that DeCamp is comprised of functional layers’” (Reply Br. 2, underlining original). We agree with Appellants that the Examiner has not adequately identified which layers in DeCamp correspond to each of the claimed layers. For example, we note that the Examiner’s Answer does not appear to address the claimed protective layer. We also note that although the Examiner’s Answer seems Appeal 2010-002088 Application 10/752,359 4 to state that layer 13 of DeCamp teaches the claimed functional layer, the Answer previously states that layer 13 teaches the claimed dielectric layer (Ans. 3). Thus, we cannot determine which layers of DeCamp teach the protective and functional layers required by claim 30, and thus we do not sustain the rejection. Claim 31 depends from claim 30. Thus, because we did not sustain the rejection of the independent claim, we also do not sustain the rejection of the dependent claim. With respect to independent claim 32, Appellants argue the rejection is in error because the claim “includes a dielectric layer formed by a thermal spray process and a resistive layer formed by a thin film process. DeCamp does not disclose any thermal spray process” (App. Br. 7). We note that “[w]here a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (citation omitted). In this case, we have fully considered the Declaration under 35 U.SC. § 132 of Kevin Ptasienski dated March 8, 2006, but the Declaration is not deemed persuasive that the rejection is improper, after evaluating and weighing all the evidence relied upon by the Examiner and provided by Appellants. We note, for example, that while the Declaration discusses relative structural differences between layers formed by certain processes, the Declaration does not establish structural differences between “a dielectric layer formed by a thermal spray process . . . [and] the resistive Appeal 2010-002088 Application 10/752,359 5 layer formed by a thin film process” as required by claim 32. For these reasons, we are not persuaded of error in the Examiner’s rejection of claim 32, and therefore we sustain the rejection. With respect to independent claim 33, Appellants argue the rejection is in error because the claim “includes a graded layer formed on a substrate and a dielectric layer formed on the graded layer. The Examiner’s Answer is silent as to the alleged support for a ‘graded layer’ in the DeCamp reference. And as previously set forth, DeCamp does not disclose any such graded layer” (Reply Br. 4). We agree with Appellants that the Examiner has not adequately identified which layer in DeCamp corresponds to the claimed graded layer given that we construe this feature to be structural, and as the Examiner’s Answer does not appear to address the graded layer. Thus, we do not sustain the rejection. Claim 34 depends from claim 33. Thus, we also do not sustain the rejection of the dependent claim for the same reasons that we do not sustain the rejection of the independent claim. Each of independent claims 35-37 requires at least one layer formed by a sol-gel process: i.e., “the protective layer formed by a sol-gel process” (claims 35-37), and “a dielectric layer formed by a sol-gel process” (claim 37). We agree with Appellants that the Examiner has not adequately identified any portion of DeCamp that teaches forming a protective layer or a dielectric layer from the claimed sol-gel material (App. Br. 7-8). Thus, we do not sustain the rejection of claims 35-37. Appeal 2010-002088 Application 10/752,359 6 DECISION The Examiner’s rejection of claims 23-31 and 33-37 under 35 U.S.C. § 102(b) is REVERSED. The Examiner’s rejection of claim 32 under 35 U.S.C. § 102(b) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 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