Ex Parte PRYNEDownload PDFPatent Trial and Appeal BoardAug 28, 201814340958 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/340,958 07/25/2014 23117 7590 08/30/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Scott H. PRYNE 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. FPP-6008-17 5418 EXAMINER BASICHAS, ALFRED ART UNIT PAPER NUMBER 3743 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT H. PR YNE (Applicant: American Felt & Filter Company) Appeal2018-000404 Application 14/340,958 Technology Center 3700 Before LINDA E. HORNER, STEVEN D.A. McCARTHY and RICHARD H. MARSCHALL, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE 2 The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's 3 decision finally rejecting claims 1-10. We have jurisdiction under 35 U.S.C. 4 § 6(b). 5 We sustain the rejection of claims 1-5, but not that of 6-10, under 35 6 U.S.C. § 102(a)(l) as being anticipated by Harris (US 3,104,174, issued 7 Sept. 17, 1963). The Appellant identifies American Felt and Filter Company of New Windsor, New York, the applicant under 37 C.F.R. § 1.46, as the real party in interest. (See Appeal Brief, dated July 11, 2017, at 3). Appeal2018-000404 Application 14/340,958 1 We do not sustain the rejection of claims 1-10 under 35 U.S.C. § 103 2 as being unpatentable over Foster (US 2,413,964, issued Jan. 7, 1947). 3 4 THE CLAIMED SUBJECT MATTER 5 Claims 1 and 6 are independent and self-explanatory: 6 1. A device for removing hot molten wax from a 7 receptacle, comprising: 8 a wafer with a heat resistant body formed of a material that 9 is of sufficient porosity to absorb or soak up the hot molten wax 10 in the receptacle when the wafer is moved to the receptacle and 11 positioned therein and to retain the structural integrity of the 12 wafer so that the wafer can be removed from the receptacle and 13 disposed of after the wafer has absorbed or soaked up the hot 14 wax. 15 6. A method of removing hot molten wax from a 16 receptacle for a wax tart or fuel holder, comprising: 17 positioning in the receptacle having the hot molten wax 18 therein a heat resistant cleanout wafer that is formed of a material 19 that absorbs or soaks up the hot molten wax in the receptacle, and 20 removing the clean out wafer from the receptacle after the 21 clean out wafer has absorbed or soaked up all of the hot molten 22 wax in the receptacle. 23 24 ISSUES 25 The Appellant argues the patentability of the dependent claims on the 26 basis of the asserted patentability of the independent claims. This appeal 27 turns on three issues: 28 First, does Harris anticipate device claim 1? 29 Second, does Harris anticipate method claim 6? 2 Appeal2018-000404 Application 14/340,958 1 Third, would the subject matter of claims 1 and 6 have been obvious 2 from the teachings of Foster? 3 4 FINDINGS OF FACT 5 The record supports the following findings of fact ("FF") by a 6 preponderance of the evidence. 7 8 Harris 9 1. Harris describes a friction facing made from a fibrous material 10 for use in a wet automotive clutch. (See Harris, col. 1, 11. 13-17). 11 2. Harris teaches fabricating the fibrous material by suspending 12 cellulose fibers, linen fibers, cotton linters, asbestos fibers or the like in a 13 fluid vehicle and then depositing the fibers on a screen to form a mat. (See 14 Harris, col. 1, 1. 68- col. 2, 1. 13). Harris additionally teaches punching the 15 mat to form annuli, that is, wafers, of the fibrous material. (See Harris, col. 16 2, 11. 14--19 & Fig. 2). Harris' s wafers of fibrous material anticipate the 17 device of claim 1. 18 3. The Examiner has a sound basis for belief that Harris' s annuli 19 of fibrous material are heat resistant bodies. (See Final Office Action, 20 mailed Apr. 13, 2017 ("Final Act."), at 2). Even though Harris teaches that 21 the use of the friction facings described in Harris reduce the operating 22 temperatures of transmissions including the facings (see Harris, col. 1, 11. 23 58---65), transmissions are high temperature environments. The capacity of 24 Harris' s friction facings to maintain sufficient dimensional stability in that 25 high temperature environment indicates that the annuli of fibrous material 26 from which the facings are made are heat resistant. The Appellant does not 3 Appeal2018-000404 Application 14/340,958 1 appear to challenge the Examiner's finding that Harris's annuli of fibrous 2 material are inherently heat resistant bodies. 3 4. The Examiner has a sound basis for belief that Harris' s annuli 4 of fibrous material are formed of a material that is of sufficient porosity to 5 absorb or soak up the hot molten wax in a receptacle when the wafer is 6 moved to the receptacle and positioned therein. (See Final Act. 5). Harris 7 teaches dipping the annuli of fibrous material in a wax emulsion, such as an 8 aqueous emulsion of camauba wax, beeswax or microcrystalline waxes of 9 the hydrocarbon series, as a preparatory step before impregnating the annuli 10 with polymeric resins. (See Harris, col. 2, 11. 53 - col. 3, 1. 2). Harris also 11 teaches heating the annuli after dipping the annuli in the wax emulsions, so 12 as to drive off the water and coat the fibers of the annuli with the wax. (See 13 Harris, col. 3, 11. 6-14). Harris therefore teaches that the annuli absorb the 14 hot wax emulsions. 15 5. Finally, Fig. 2 of Harris teaches the steps of dipping the annuli 16 of fibrous material in a wax emulsion and then removing the annuli from the 1 7 wax emulsion. Harris therefore teaches that Harris' s annuli of fibrous 18 material would retain sufficient structural integrity after absorbing hot 19 molten wax to remove the annuli from receptacles containing hot wax, and 20 to dispose of the annuli, after absorbing or soaking up the hot wax. 21 Likewise, the fact that the annuli retain sufficient structural integrity for later 22 use as friction facings indicates that the annuli would retain sufficient 23 structural integrity after absorbing hot molten wax to remove the annuli from 24 receptacles containing hot wax, and to dispose of the annuli, after absorbing 25 or soaking up the hot wax. (See Final Act. 2, citing Harris, col. 1, 11. 58---65). 4 Appeal2018-000404 Application 14/340,958 1 6. Thus, the Examiner has a sound basis for belief that Harris' s 2 annuli of fibrous material satisfy each limitation of claim 1. 3 7. We take Official Notice that beeswax is a wax that might be 4 used to fabricate a candle tart. 5 6 Foster 7 8. Foster describes a dish towel made from yam comprising a 8 fabric woven from yam comprising a mixture of cotton and asbestos fibers. 9 (See Foster, col. 1, 11. 41--46). Foster teaches that the addition of the 10 asbestos fibers improves the wicking properties of the towels as compared 11 with towels made from yams comprising cotton fibers alone. Foster also 12 teaches that the addition of the asbestos fibers provides mild abrasive 13 properties. (See Foster, col. 1, 11. 19-28; col. 2, 11. 27--41). According to 14 Foster, the improved dish towel "is superior to an all cotton towel or a linen 15 towel in its ability to dry and polish glassware, dishes and silverware." 16 (Foster, col. 1, 11. 14--18). Foster does not describe using the improved dish 17 towel to absorb hot molten wax. 18 19 ANALYSIS 20 First Issue 21 The Appellant argues that Harris describes a friction facing that is 22 completely unrelated to the subject matter of claims 1-5. (See Appeal Brief, 23 dated July 11, 2017 ("App. Br."), at 6 & 7; Reply Brief, dated Oct. 12, 2017, 24 at 2). The argument is not persuasive. The Examiner has a sound basis for 25 belief that Harris describes an annulus of fibrous material that satisfies each 26 and every limitation of claim 1. (See FF 2-6). The Appellant does not rebut 5 Appeal2018-000404 Application 14/340,958 1 this belief. The fact that the device Harris discloses is used for different 2 purposes does not support a finding of no anticipation if all of the limitations 3 are disclosed by Harris. Therefore, we sustain the rejection of claims 1-5 4 under § 102( a)( 1) as being anticipated by Harris. 5 6 Second Issue 7 Claim 6 recites the step of "removing the clean out wafer from the 8 receptacle after the clean out wafer has absorbed or soaked up all of the hot 9 molten wax in the receptacle." Although Figure 2 of Harris describes 10 dipping an annulus of fibrous material in an emulsion having hot molten 11 wax therein and then removing the annulus from the emulsion (see FF 5), 12 Harris does not describe absorbing all of the wax in the emulsion. Indeed, it 13 is unlikely that Harris would describe absorbing all of the wax in the 14 emulsion, since this might result in the absorption of insufficient wax to 15 facilitate a subsequent resin impregnation step. Thus, Harris fails to describe 16 removing the annulus from the wax emulsion after the annulus has absorbed 17 or soaked up all of the hot molten wax in a receptacle containing the wax 18 emulsion. Because Harris does not recite a method including all of the steps 19 recited in claim 6, we do not sustain the rejection of claims 6-10 under 20 § 102(a)(l) as being anticipated by Harris. 21 22 Third Issue 23 Claim 1 recites a device including a wafer. Claim 6 recites a method 24 including the step of "positioning in [a] receptacle having ... hot molten 25 wax therein a heat resistant cleanout wafer." The Examiner defines a 26 "wafer" as "any small, thin disk." (Final Act. 5). Foster describes a dish 6 Appeal2018-000404 Application 14/340,958 1 towel (see FF 8) but does not describe a small, thin disk. The Examiner 2 seeks to remedy this deficiency by concluding that the distinction between a 3 dish towel and a wafer is one of size or shape; and that it would be a matter 4 of obvious design choice to reduce Foster's dish towel to a small, thin disk 5 or wafer. (See Final Act. 6; Examiner's Answer, mailed Sept. 13, 2017, at 4 6 & 5). 7 A finding of "obvious design choice" is precluded where the claimed 8 structure and the function it performs are different from the prior art. In re 9 Chu, 66 F.3d 292,299 (Fed. Cir. 1995), citing In re Gal, 980 F.2d 717, 719 10 (Fed. Cir. 1992). As noted earlier, Foster's dish towel is a different structure 11 than a wafer as recited in claim 1, and as used in the method of claim 6. 12 Likewise, Foster does not describe the use of its dish towel to absorb or soak 13 up hot molten wax. Reducing Foster's dish towel to a wafer, that is, to a 14 small, thin disk, likely would reduce its absorbent capacity and its ability to 15 be manipulated by hand, thereby affecting its ability to dry and polish 16 glassware, dishes and silverware. Because the structure and function of the 17 claimed subject matter differs from that of Foster's dish towel, the 18 Examiner's reliance on obvious design choice is not persuasive. We do not 19 sustain the rejection of claims 1-10 under§ 103 as being unpatentable over 20 Foster. 21 22 DECISION 23 We AFFIRM the Examiner's decision rejecting claims 1-5 under 24 § 102(a)(l) as being anticipated by Harris. We do not sustain the rejection 25 of claims 1-5 under§ 103 as being unpatentable over Foster. 7 Appeal2018-000404 Application 14/340,958 1 We REVERSE the Examiner's decision rejecting claims 6-10, either 2 under§ 102(a)(l) as being anticipated by Harris; or under§ 103 as being 3 unpatentable over Foster. 4 No time period for taking any subsequent action in connection with 5 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6 § 1.136(a). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation