10837184 (B.P.A.I. Dec. 23, 2009)

Ex Parte Phillips

Board of Patent Appeals and InterferencesDec 23, 2009

10837184 (B.P.A.I. Dec. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PATRICK PHILLIPS ____________ Appeal 2009-002360 Application 10/837,184 Technology Center 1700 ____________ Decided: December 23, 2009 ____________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's refusal to allow1 claims 1 through 12, 14 through 24, and 26, which 1 As is apparent from page 2 of the Answer and page 4 of the Appeal Brief, the after-final amendment dated November 9, 2007, has been entered into the record. Appeal 2009-002360 Application 10/837,184 are all of the claims pending in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6. STATEMENT OF THE CASE The subject matter on appeal is directed to a thermally-enhanced component. Claim 1 is illustrative: 1. A thermally-enhanced component for use with an air handling unit comprising: a substantially enclosed structure having an interior surface and an exterior surface; at least one sheet of a non-woven ceramic material having opposed surfaces being disposed inside the structure at a predetermined distance from the exterior surface of the structure, the at least one sheet being configured to provide a thermal barrier; insulating material disposed inside the structure and in contact with at least one surface of the at least one sheet, the insulating material having a predetermined rate of smoke generation at a predetermined temperature; and wherein upon the exterior surface of the structure being subjected to the predetermined temperature sufficient to produce smoldering of the insulating material disposed inside the structure, the at least one sheet providing a sufficient temperature differential between the opposed surfaces of the at least one sheet to reduce the predetermined rate of smoke generated by the insulating material. As evidence of unpatentability of the claimed subject matter, the Examiner relies upon the following references: Sudmeier 3,302,414 Feb. 7, 1967 Cook, II (Cook) 6,716,520 B2 Apr. 6, 2004 2 Appeal 2009-002360 Application 10/837,184 The Examiner maintains the following rejections: (1) claims 1-7, 10-12, 14-21 and 26 under 35 U.S.C. § 102(b) as anticipated by Sudmeier; (2) claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Sudmeier; and (3) claims 22-24 under 35 U.S.C. § 103(a) as unpatentable over Sudmeier and Cook. ISSUE Has Appellant shown reversible error in the Examiner's determination that Sudmeier teaches an insulating material "in contact with" a sheet of a non- woven ceramic material as required by independent claims 1, 14, and 26? We decide this issue in the affirmative. FINDINGS OF FACT (FF) 1. All of the embodiments in Appellant's Specification and supporting drawings disclose a direct physical connection between a layer of an insulating material and a layer of a non-woven ceramic material. (See Spec. and Figures in their entirety). For example, Appellant's Figures 9 and 15 individually illustrate that a surface of an insulating material 322 is in direct physical connection with a surface of a thermal barrier layer 317, which may be a sheet of non-woven ceramic material. (Spec. ¶¶ [0011], [0042], [0049] and [0052]). 2. Sudmeier's Figures 3 and 6 are reproduced below: 3 Appeal 2009-002360 Application 10/837,184 Sudmeier's Figure 3 is said to depict a sectional view of the temperature control unit and Figure 6 is said to depict a sectional view along line 6--6 of Figure 5. (Sudmeier, col. 2, ll. 25-37). In this regard, Sudmeier's Figures 3 and 6 illustrate an insulating body 98, foil sheets 106 and 108, insulating plates 110 and 112, and plates 86 and 90 comprising a clamp held together by nylon studs 94. (Sudmeier, col. 4, ll. 15-50). 3. Sudmeier teaches that the foil "sheets 106 and 108 may comprise copper clad upon electrically insulating plates 110 and 112 respectively. These plates may comprise any of a variety of heat-transmissive, electrically- insulating ceramic materials for example, ceramic compositions comprising either aluminum oxide or beryllium oxide as a principal ingredient." (Sudmeier, col. 4, ll. 44-50). 4 Appeal 2009-002360 Application 10/837,184 PRINCIPLES OF LAW During examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As also stated in In re Morris: [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. 127 F.3d 1048, 1054 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631-32 (Fed. Cir. 1987). ANALYSIS AND CONCLUSION With respect to rejection (1), we begin by noting that while the term "contact" is not expressly defined in the Specification, the broadest reasonable meaning of this term in its ordinary usage is “a union or junction of surfaces.” See, e.g., Merriam-Webster's Collegiate Dictionary (Merriam-Webster, Incorporated, 1999) (contact defined as "a union or junction of surfaces"). Thus, the claim requires that a surface of an insulating material form a union or junction (i.e., direct physical connection) with a surface of a sheet of non- woven ceramic material. This is a reasonable interpretation in light of the 5 Appeal 2009-002360 Application 10/837,184 Specification as it plainly requires that a surface of an insulating material be in direct physical connection with a surface of a sheet of non-woven ceramic material. (FF 1). The Examiner finds that Sudmeier teaches at least one sheet of a non-woven ceramic material . . . (See col. 4, ll. 44-50 and Fig-6, # 106 and # 108.); insulating material disposed inside the structure and in contact with at least one surface of the at least one sheet (See FIG -3, #98 and col. 4, ll. 22-27.) (Ans. 4)(italics omitted). The Examiner explains that a person having ordinary skill in the art would understand the term "in contact" to include (1) direct contact and (2) indirect contact . . . . [and that] Appellant's claims do not state "direct contact" which infers that Applicant is selectively excluding limitations without including such language in the claims. (Ans. 8) (emphasis omitted). In other words, the Examiner finds that Sudmeier's Figures 3 and 6 illustrate an insulating body (insulating material) 98 indirectly contacting the foil sheets 106 and 108 having ceramic insulating plates 110 and 112 (at least one sheet of a non-woven ceramic material) so as to meet the “contact” feature claim requirement. (See Ans. 4 and FF 2 and 3). Given the proper construction of the term "contact" discussed above, we determine that the Examiner's interpretation of the term "contact" to include "indirect contact" is unreasonably broad. See In re Morris, 127 F.3d at 1054. The Examiner simply directs us to no evidence to support the position that a person having ordinary skill in the art would have understood Appellant’s disclosure to support this broader interpretation. To the contrary, one of ordinary skill in the art would have understood that the claim language, when 6 Appeal 2009-002360 Application 10/837,184 read in light of Appellant's Specification, requires that the insulating material directly contacts a surface of the ceramic sheet and (see FF 1). While Sudmeier teaches an insulating body (insulating material) 98 and ceramic insulating plates 110 and 112 (at least one sheet of a non-woven ceramic material), Sudmeier's insulating body 98 and ceramic insulating plates 110 and 112 do not meet the disputed claim feature. As properly construed above, “contact” requires a direct physical connection, which is missing between a surface of the insulating body and a surface of the ceramic insulating plate of Sudmeier. Indeed, Appellant correctly states that The Examiner's assertion that Sudmeier is “at least in indirect contact with the ceramic material” extends the meaning of the word contact beyond any reasonable interpretation. . . . At no point in Sudmeier are plates 110, 112 in contact with the insulating body 98. (App. Br. 11 and 12). Thus, it follows that Appellant has shown reversible error in the Examiner's determination that Sudmeier teaches an insulating material "in contact with" a sheet of a non-woven ceramic material as required by independent claims 1, 14, and 26. Because the Examiner relies on, inter alia, the findings relating to claims 1, 14, and 26 for the other rejections and does not provide any findings as to how Cook would meet the disputed claim limitation, we reverse all of the rejections made by the Examiner. ORDER In summary, all of the rejections made by the Examiner are reversed. REVERSED 7 Appeal 2009-002360 Application 10/837,184 ssl MCNEES WALLACE & NURICK LLC 100 PINE STREET P.O. BOX 1166 HARRISBURG, PA 17108-1166 8