11261001 - (D) (B.P.A.I. Aug. 24, 2010)

Ex Parte Nelson

Board of Patent Appeals and InterferencesAug 24, 2010

11261001 - (D) (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES J. NELSON ____________ Appeal 2009-007706 Application 11/261,001 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and MICHAEL W. O'NEILL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL1 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. Â§ 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007706 Application 11/261,001 2 STATEMENT OF THE CASE James J. Nelson (Appellant) appeals under 35 U.S.C. Â§ 134 (2002) from the Examiner's decision rejecting claims 22-39 under 35 U.S.C. Â§ 103(a) as unpatentable over Williams (US 6,334,735 B1), Raymond (US 5,096,331), and Borrup (US 4,384,401). Claims 1-21 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6 (2002). Claim 22 is representative of the claimed invention: 22. A screed assembly comprising: at least one screed section that includes a screed plate that defines an upper surface and a lower surface; and a screed heating arrangement that includes a thin sheet electric heater bonded to the upper surface with an adhesive bonding material. SUMMARY OF DECISION We AFFIRM. OPINION Issue 1 - Is Borrup Analogous Art? The first issue raised by Appellant is whether Borrup is analogous art and "available" to the Examiner in making the proposed combination of the teachings of Williams, Raymond, and Borrup. Appellant argues that Borrup is not in the same field of endeavor because Borrup does not specifically discuss paving equipment and is not classified as paving equipment in the USPTO's classification system. Appeal Br. 8-9; Reply Br. 1-2. Appellant also argues that Borrup's disclosure is not reasonably pertinent to the particular problem with which the inventor was concerned, heating screed plates. Appeal Br. 9. Appeal 2009-007706 Application 11/261,001 3 Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982). Thus, Appellant's argument directed to the USPTO's classification of Borrup is not persuasive. We agree with the Examiner's finding that Borrup teaches an electric heater, bonded to a metallic substrate and used to heat that substrate. Ans. 4, 10; Borrup, col. 9, ll. 35-42 ("the heater element is bonded to a flat metal surface to form a hot plate to warm various materials"). Thus, it is plainly apparent that Borrup is relevant to the particular problem at hand: warming a metal plate (the plate being a screed plate in the case of Appellant's invention). Appellant's arguments seemingly are premised on the principle that Borrup must list every possible intended use for his device in order to be considered pertinent broadly to the problem of heating materials, but this requirement is both unrealistic and ignores common sense. "Common sense teaches â€¦ that familiar items may have obvious uses beyond their primary purposes." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Issue 2 - Has the Examiner Articulated a Reason to Combine the Identified Teachings of Williams, Raymond, and Borrup? Appellant argues that the Examiner has not identified a motivation to combine the references, apparently with respect to claim 22. Appeal Br. 9- 11. A prima facie case of obviousness, however, does not require an explicit teaching, suggestion, or motivation in the prior art; rather, there must be an Appeal 2009-007706 Application 11/261,001 4 articulated reason with rational underpinning to combine the known elements in the fashion claimed. KSR, 550 U.S. at 418. The Examiner makes the following findings, each of which is supported by a preponderance of the evidence, and which we hereby adopt as our own: Williams teaches a screed assembly having an electric screed heater "connected" to the screed plate. Ans. 3-4; Williams, col. 2, ll. 13-19, col. 3, ll. 20-24. Williams describes a concern in the art that poor screed heat control can damage the screed or lead to poor asphalt finish. Ans. 10-11; Williams, col. 1, ll. 29-39. Williams does not necessarily describe how the electric screed heater is "connected" to the screed. Ans. 3-4. Raymond teaches a screed heater with a heating system that is secured to and "in direct heat exchange relation with the screed sections." Ans. 4; Raymond, col. 3, ll. 19-24. Borrup teaches a thin, flexible sheet electric heater bonded to a metal substrate with silicone rubber. Ans. 4; Borrup, col. 1, ll. 10-13, col. 9, ll. 35-42. Given the identified teachings of Williams, Raymond, and Borrup, the Examiner concluded that it would have been obvious to modify the electric screed heater of Williams such that the heater is directly mounted to the screed, as taught in Raymond and Borrup, for the purpose of maximizing and enhancing the efficiency of the heating device. Ans. 4-5; 12. Appellant's arguments (Appeal Br. 8-12; Reply Br. 2-3) are premised on a flawed understanding of the requirements for demonstrating a prima Appeal 2009-007706 Application 11/261,001 5 facie case of obviousness2. The Examiner's proposed combination starts with Williams' device, designed to address heat control problems associated with screed heaters. This device is ready for improvement because Williams does not describe specifically how the electric heater is connected to the screed. Raymond teaches that screed heaters can transfer heat by conduction, and Borrup teaches a particular, flexible heat conduction device attached via bonding. Thus, the proposed modification merely fills in the gaps in the teachings of Williams, specifying that the heater is a conductive heater that is bonded directly to the metal screed, as taught in Raymond and Borrup. The Examiner finds that one of ordinary skill in the art would have an expectation of success combining the identified teachings and would also avoid the known problems in the art such as damaged screeds and poor asphalt finish. Ans. 12. Appellant has not argued, much less shown, that the Examiner's proposed combination would be beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 417 ("if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill"). 2 For example, Appellant argues that Borrup (or any other reference) fails to teach a heater bonded to a screed plate. Appeal Br. 11; Reply Br. 3. However, the fundamental difference between obviousness and anticipation is that no one reference needs to disclose all (or any particular subset) of the claim limitations. In other words, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2009-007706 Application 11/261,001 6 Issue 3 - Has the Examiner Made Proper Factual Findings Regarding claims 23-39? Appellant further argues that the portions of the references cited by the Examiner fail to teach the limitations of claims 23-39. Appeal Br. 12-13; Reply Br. 3-5. However, Appellant's arguments appear to be predicated on a belief that a reference must describe a limitation in haec verba. There is no such requirement. See In re Bode, 550 F.2d 656, 660 (CCPA 1977). As discussed in more detail below, the Examiner has made findings as to where Borrup describes structure satisfying the limitations at issue (Ans. 4-5), and concluded it would have been obvious to incorporate a heating element as taught by Borrup bonded to the screed plate of Williams. Appellant has not specifically pointed out why the Examiner's findings are in error, and, for the reasons discussed above, Appellant's arguments attacking the combination are not persuasive. See In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case). Regarding claims 23, 32, and 34, the Examiner found that Borrup teaches silicone rubber, which the Examiner finds is resistant to oil and solvents. Ans. 14. Appellant does not dispute this finding3. 3 Silicone rubber - "A synthetic rubber made from silicone elastomers and characterized by resistance to chemicals, weak acids, and bases; used for gaskets and electrical insulation." Silicone elastomer - "Any of various elastic silicone polymers, having excellent temperature, chemical, and oil resistance." Acad. Press Dictionary of Sci. and Tech. (1992) (retrieved from http://www.credoreference.com/entry/apdst) (last visited Aug. 4, 2010). "General-purpose silicone rubbers have moderate oil [and solvent] Appeal 2009-007706 Application 11/261,001 7 Regarding claims 24, 28, 30, and 38, the Examiner found that Borrup teaches silicone rubber as the bonding material, and that Raymond teaches that a screed plate is typically heated to 200 Â°F4. Ans. 4, 14-15; Borrup, col. 9, ll. 28-49; Raymond, col. 1, ll. 13-14. Appellant does not provide any evidence that silicone rubber is incapable of operating at 200 Â°F5. Instead, Appellant argues that the Examiner is relying on "personal knowledge" regarding the characteristics of silicone rubber, but provides no arguments that those characteristics asserted by the Examiner are incorrect. See Reply Br. 4. Silicone rubber has certain thermal characteristics, whether or not Borrup explicitly lists them. The Examiner's finding is not based on "personal knowledge" but rather on the thermal properties of silicone rubber. Appellant does not dispute the Examiner's findings with respect to the thermal properties of silicone rubber. Regarding claims 25 and 33, the Examiner found that Borrup teaches an insulation layer, and that such layers, used in screed heaters, are admitted prior art. Ans. 4, 15; Spec., para. 4; Borrup, col. 3, ll. 19-23 (describing layers 14 and 16). Appellant has not come forward with arguments and/or evidence to rebut the Examiner's finding. See Appeal Br. 12. Regarding claims 26, 29, 37, and 39, the Examiner found that Borrup's heater will flex with the screed plate because it is bonded with rubber, which is flexible. Ans. 4-5, 16; see Borrup, col. 1, ll. 10-12 ("This resistance." Rubber Technologist's Handbook Volume 2, 388 (J. White, et al. eds. 2009). 4 Appellant's Specification indicates screed plates are operated at 180 to 340 Â°F. Spec., para. 23; see also Appeal Br. 8. 5The service life of silicone rubber is known to be about 20 years at 248Â°F and 5 years at 401Â°F. See, e.g., Rubber Technologist's Handbook Volume 2 at 387. Appeal 2009-007706 Application 11/261,001 8 invention relates to flexible electric heater elements"). Appellant argues that the cited references do not describe or recognize a problem with screed plate flexing. Appeal Br. 13; Reply Br. 4. However, neither of these arguments rebuts the Examiner's finding that Borrup's heating device, adhered to the screed plate in Williams with rubber, would flex. Appellant appears to be conceding that the prior art structures would flex, but that Appellant was the first to recognize flexing as a desirable feature of a heater for a screed plate. See Appeal Br. 13-14. Such recognition does not lead to unobviousness of the existing flexible heating structure. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017 (Fed. Cir. 1986) (holding that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious). See also In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (mere recognition of an inherent property in the prior art does not render patentable a known structure). Regarding claims 27, 31, and 35, the Examiner found that Borrup's teaching of a process of priming a surface then curing rubber on it such as to adhere the rubber to the surface describes the filling of "porosities" in the upper surface of the screed plate, because that is how materials adhere6. Ans. 5, 8, 17. Appellant does not challenge this finding, but rather fixates on the explicit teachings of the prior art references. Appeal Br. 13; Reply Br. 4. 6 Adhesives - "Substances that bond surfaces to each other by mechanical Adhesion (the adhesive filling the pores of the substrate) and in some cases by chemical reaction." Illustrated Dictionary of Sci. (Andromeda 1988) (retrieved from http://www.credoreference.com/entry/andidsci/adhesives) (last visited Aug. 5, 2010). Appeal 2009-007706 Application 11/261,001 9 As we have discussed above, there is no requirement that a reference describe a limitation in haec verba in order to establish obviousness. Regarding claim 36, Appellant argues that neither reference describes heat being transferred to the screed plate through an adhesive layer. Appeal Br. 13; Reply Br. 5. Appellant, however, gives no reason why Borrup's device for transferring heat through an adhesive layer to a metal plate would fail to operate merely because the metal plate happened to be a screed plate, as in the Examiner's proposed combination. See Ans. 8-9. DECISION We affirm the Examiner's decision regarding claims 22-39. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv) (2007). AFFIRMED Appeal 2009-007706 Application 11/261,001 10 hh CATERPILLAR c/o LIELL, MCNEIL & HARPER Intellectual Property Department AH9510 100 N.E. Adams Peoria, IL 61629-9510