Ex Parte Powers et alDownload PDFPatent Trial and Appeal BoardMay 25, 201813646907 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/646,907 10/08/2012 20686 7590 05/30/2018 DORSEY & WHITNEY, LLP - Denver INTELLECTUAL PROPERTY DEPARTMENT 1400 W ewatta Street Suite 400 DENVER, CO 80202-5549 FIRST NAMED INVENTOR Richard M. Powers 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. P201611.US.06 8625 EXAMINER KIANNI, KA VEH C ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): docketing-dv@dorsey.com docketingDV @dorsey.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD M. POWERS and WIL McCARTHY Appeal2017-000252 Application 13/646,907 Technology Center 2800 Before MAHSHID D. SAADAT, ADAM J. PYONIN, and MICHAEL J. ENGLE, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-13, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 An oral hearing was held for this appeal on May 8, 2018. 2 According to Appellants, the real party in interest is RavenBrick LLC. App. Br. 2. Appeal2017-000252 Application 13/646,907 STATEMENT OF THE CASE Appellants' invention is directed to "a device for controlling the flow of light and radiant heat through selective absorption or reflection of light." Spec. ,r 3. Exemplary claim 1 under appeal reads as follows: 1. A window comprising a thermochromic filter device incorporated into a structure of the window and further compnsmg an order-providing, thermotropic carrier material defining a director orientation; and an orientation-dependent colorant material included within the thermotropic carrier material responsive in order to the director orientation; wherein the director orientation of the thermotropic carrier material is responsive to temperature-induced changes in the thermotropic carrier material; the orientation-dependent colorant material changes orientation with the director orientation, whereby light transmission properties of the window vary with temperature as a result. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as unpatentable over Xue (US 2010/0118380 Al; pub. May 13, 2010) and further relied on the Admitted Prior Art (Spec. ,r,r 2, 31) (AP A) to reject claims 2-13. See Final Act. 2-8. ANALYSIS In rejecting claim 1, the Examiner finds Xue discloses all the recited elements of the claim except for incorporating the disclosed thermochromic filter device into a "window structure," for which the Examiner relies on the knowledge of the ordinary skilled artisan. See Final Act. 2-5. The 2 Appeal2017-000252 Application 13/646,907 Examiner cites paragraphs 2 and 3 of Xue and reasons "it would have been obvious to a person of ordinary skill in the art when the invention was made to use - as intended use - in a 'window structure' for example in a building since such use would provide an optical structure whose change of optical property is activated by temperature." Id. at 4--5. Appellants contend Xue does not disclose "an orientation-dependent colorant" material that is '"responsive in order to the director orientation' of the carrier material," as recited in claim 1. App. Br. 5---6. With respect to the specific properties of the recited "orientation-dependent colorant" material, Appellants point to their disclosure in paragraphs 9 and 10 and contend the Examiner erred in characterizing the claimed "orientation- dependent colorant" as "merely a polymer of any type or kind." App. Br. 6- 7. Appellants reason the claimed colorant material is rather "a polymer or other material that possesses the specific properties, i.e., of being capable of being included within carrier material, of being moved into different orientations by the carrier material (i.e., is orientation dependent), and of interacting differently with light in different orientations." App. Br. 7. The Examiner finds the description of the orientation-dependent colorant indicates that such material may be a polymer that is included in a carrier material such as liquid crystal, which is disclosed in paragraphs 45 and 71 of Xue. Ans. 3--4. With respect to those teachings, the Examiner explains: As from above paragraphs it is clear that the liquid crystal material is a "carrier material" and that the polymer material that represents "orientation-dependent colorants" which together or in mixture in presence of certain wavelengths of light function to regulate heating/cooling. Such regulation in passing/transmitting light or blocking by reflecting the certain 3 Appeal2017-000252 Application 13/646,907 light wavelengths in certain temperatures are shown in figures 1-4. Ans. 4. The Examiner cites a reference to prior art in paragraph 29 of Appellants' Specification, which also is described in paragraph 31, and further finds that: Though Xue does not teach that the above thermotropic liquid crystal is a dye material, and the orientation-dependent, negative- dichroic colorant material included in the liquid crystal carrier material, and that a single colorant material produces the higher and lower light transmission for a monochromatic wavelength range, [s]uch limitations are taught by prior art admitted by the applicant. Ans. 5-6. Based on a review of Xue, we are persuaded by Appellants' contention that the Examiner has not explained how Xue' s disclosures of "a polymer mesh in the layer for the purpose of dividing the liquid crystal material into small sections with less mobility" or "polymer backbones to provide rigidity and mechanical stability to the liquid crystal layer" meets the recited "orientation-dependent colorant material." Reply Br. 3. As further pointed out by Appellants (Reply Br. 6-7), the cited portions of Xue do not describe "a polymer that changes orientation responsive to the director orientation of a liquid crystal" and instead, they describe forming a mesh layer to provide rigidity and mechanical stability to the liquid crystal layer. In other words, the Examiner has not explained how the teachings of Xue with respect to a polymer that does not change orientation or align itself with the order of the director orientation of the liquid crystal relates to the recited "orientation-dependent colorant material." 4 Appeal2017-000252 Application 13/646,907 We also agree with Appellants that the modifications suggested by the Admitted Prior Art would not be reasonably understood by one of ordinary skill in the art to result in modifying Xue to include an "orientation- dependent colorant material" in place of the polymer that is used to form a mesh layer and provide rigidity to the liquid crystal layer. See Reply Br. 4-- 5. At best, the Examiner's assertion that it would have been obvious to modify Xue to include a colorant material that is responsive in order to the director orientation is based on hindsight, and not based on the knowledge of the skilled artisan or any teaching of Xue. In other words, the Examiner's proposed rationale does not articulate why the skilled artisan would modify Xue with the polymer that aligns itself with the order of the director orientation of the liquid crystal, or how it would have resulted in the claimed invention. Such rationale does not rise to the level of an articulated line of reasoning with a rational underpinning to support the legal conclusion of obviousness. See KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Therefore, Appellants' arguments have persuaded us of error in the Examiner's position with respect to the rejection of independent claim 1. Regarding claims 2-13, the Examiner has not identified any teachings in the other applied prior art that would make up for the above-mentioned deficiencies. We therefore do not sustain the rejection of claims 1-13. DECISION We reverse the Examiner's decision to reject claims 1-13. REVERSED 5 Copy with citationCopy as parenthetical citation