Ex Parte Powers et al

Patent Trial and Appeal Board

May 25, 2018

13646907 (P.T.A.B. May. 25, 2018)

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
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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
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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."
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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
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