Ex Parte PRYNE

Patent Trials and Appeals Board

Aug 28, 2018

14340958 - (D) (P.T.A.B. Aug. 28, 2018)

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