Ex Parte Reusche et al

Patent Trial and Appeal Board

May 19, 2013

11414327 (P.T.A.B. May. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte THOMAS K. REUSCHE, PHILIP E. CHUMBLEY,
and JAMES R. MCHUGH
____________________
Appeal 2011-004745
Application 11/414,327
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1-6 and 17-19. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
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The claims are directed to deicing systems. Claims 1 and 17 are
independent. Claim 17, reproduced below, is illustrative of the claimed
subject matter:
17. A deicer system for heating water within a
fluid receptacle to prevent ice from forming, the system
comprising:
a main body configured to be positioned within the
fluid receptacle;
a heating element adapted to heat the water,
wherein said heating element is supported by said main
body, wherein said heating element includes a heating
coil and a plate;
a separate and distinct float adapted to make the
deicing system buoyant; and
a separate and distinct heat shield located at least
in part between said heating element and said float.
REFERENCES
The Examiner relies upon the following evidence:
Ward
Campbell
Bradford
VonArx
US 4,599,973
US 4,730,097
US 5,496,989
US 6,539,171 B2
Jul. 15, 1986
Mar. 8, 1988
Mar. 5, 1996
Mar. 25, 2003
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 1-6 and 17-19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Ans. 3-4.
2. Claims 17-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ward. Ans. 4-5.
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3. Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward, Bradford, and VonArx. Ans. 5-9.
4. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ward, Bradford, VonArx, and Campbell. Ans. 9-
10.
OPINION
Lack of written description support for claims 1-6 and 17-19
The Examiner finds that the Specification fails to provide an adequate
written description under § 112, first paragraph, for specific language recited
in claims 1-3, 17, and 19. Ans. 3-4. Appellants respond by identifying those
portions of the Specification that provide sufficient written description to
support that claim language. App. Br. 7-9; Reply Br. 2-5. Appellants also
correctly note that claims 2, 3, and 19 are originally filed claims that form
part of the Specification. Reply Br. 2, 3, 5; see, e.g., In re Wertheim, 541
F.2d 257, 262 (CCPA 1976) (finding that originally filed claims provide
written description support). We find that the portions of the Specification
that Appellants identify provide adequate written description support.
Therefore, we reverse the Examiner’s rejection of claims 1-6 and 17-19
under § 112, first paragraph, as lacking proper written description support.
Anticipation of claims 17-19 by Ward
1. Claim 17
Appellants argue that the Examiner improperly combines teachings
from two embodiments described by Ward as the basis for the finding of
anticipation. App. Br. 10 (citing Net Moneyin, Inc. v. Verisign, Inc., 545
F.3d 1359, 1370 (Fed. Cir. 2008)). We agree that Ward describes two
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distinct embodiments of a livestock water tank heater, one that sinks (Ward,
Figs. 1-3 and accompanying text) and one that floats (Ward, Figs. 4 and 5
and accompanying text). The Examiner also cites elements of both
embodiments as describing elements of claim 17. Ans. 5. Nonetheless, we
reject Appellants’ argument because the Examiner maps at least one element
from Ward’s floating embodiment (shown in Figs. 4 and 5) to each
limitation recited in claim 17. See Ans. 5 (citing elements 70, 72, 74, 84, 94
and 75 from Ward’s second embodiment as corresponding to elements of
claim 17).
Appellants also contend that Ward fails to describe two elements
recited in claim 17, the “separate and distinct float” and the “separate and
distinct heat shield.” App. Br. 10-11; Reply Br. 7-8. We address each
argument separately below.
a. Separate and distinct float
The Examiner finds that Ward’s top housing portion 94 constitutes the
claimed “separate and distinct float.” Ans. 5. The Examiner finds that
Ward’s housing 94 is a float because it has an inside surface that defines a
cavity and includes a foamed plastic liner. Ans. 14. These features of
Ward’s housing 94 cause the specific gravity of the heater shown in Figures
4 and 5 to be less than 1.0 resulting in the heater floating in water. Ans. 13-
14; Ward, 2:36-40, 4:50-59, Figs. 4 and 5.
Our own review of Ward confirms the Examiner’s finding that Ward’s
housing 94 enables the heater to float. For example, Ward describes its
housing 94 as mechanically attached and hermetically sealed to Ward’s
lower housing 72. Ward, 4:64-5:2. Ward also teaches that the cavity inside
upper housing 94 and the foamed plastic liner in that housing both ensure
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that Ward’s heater floats in water. Ward, 5:15-22. Because housing 94 is a
separate component, we consider Ward’s housing to be “separate and
distinct” from the lower housing as recited in claim 17 even though housing
94 is ultimately attached to lower housing 72.
We also note that Appellants claimed deicer system includes float
102, which is ultimately attached to its main body 105. App. Br. 5; Spec.
para. [49]. Nonetheless, to overcome the rejection of claims 1-6 and 17-19
under § 112, first paragraph, Appellants argue that the disclosure of float
102 being “not the same thing” establishes that float 102 is “separate and
distinct” from main body 105. App. Br. 7. We consider this rationale to be
persuasive. We reject Appellants’ argument for the reasons stated above and
conclude that Ward describes the claimed “separate and distinct float.”
b. Separate and distinct heat shield
The Examiner finds that Ward’s steel jacket 75, which surrounds
heating element 74, constitutes the claimed “separate and distinct heat
shield.” Ans. 5, 15. Appellants argue that because Ward describes “[a]n
electrical heating element 74, that includes a steel jacket 75,” the steel jacket
is not “separate and distinct” from the heating element 74. App. Br. 11-12;
see also Reply Br. 7-8. Appellants conclude that steel jacket 75 “is part of
the heating element 74.” Id. at 12. We disagree.
Ward illustrates steel jacket 75 as a separate element from heating
element 74. Ward, Fig. 4. Appellants rely upon their own illustrations to
establish written description support for the “separate and distinct heat
shield” limitation. E.g., App. Br. 8. Ward’s illustrations similarly describe a
steel jacket as being “separate and distinct” from the heating element.
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Therefore, we reject Appellants’ argument that Ward fails to describe the
claimed “separate and distinct heat shield.”
For the reasons described above, we affirm the rejection of claim 17.
2. Claim 18
Appellants repeat the arguments used against the rejection of claim
17. App. Br. 12. These arguments are unpersuasive for the reasons
expressed above.
The Examiner finds that because Ward’s steel jacket 75 is located
between heating element 74 and housing 94, it necessarily reduces the
transmission of heat from element 74 to housing 94. See Ans. 15 (relying
upon fundamental principles of heat transfer). Appellants argue that “[t]here
is nothing in Ward that describes, teaches, or suggests a ‘heat shield’” as
claimed. App. Br. 12; see also Reply Br. 7-8.
Where, as here, the Patent Office has reason to believe that a
functional limitation is an inherent characteristic of the prior art, Appellant
has the burden to show that the prior art does not possess that characteristic.
See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re
Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)); see also Spada, 911 F.2d at
708 (“when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” (citations omitted)); and In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an appellant to merely
assert that the prior art does not inherently possess the characteristic relied
on and challenge the PTO to prove the contrary by experiment or otherwise.
“The PTO is not equipped to perform such tasks.”). Appellants provide no
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evidence to support their contention that the Examiner erred in finding that
steel jacket 75 would reduce transmission of heat to housing 94.
We conclude that the Examiner’s finding is sufficiently supported to
establish a prima facie case of anticipation.
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We therefore find that Appellants’ argument is unpersuasive and
affirm the rejection of claim 18.
3. Claim 19
The Examiner finds that Ward describes a heating element
“positioned so that the water flows between said heating element and said
heat shield.” Ans. 15-16 (relying upon marked up version of Ward, Fig. 4.)
Appellants argue that because steel jacket 75 surrounds heating element 74,
it is impossible for water to flow between them. App. Br. 13; Reply Br. 9.
The Examiner finds that because water flows in the space between the
location of the steel jacket shown on the left side of Ward’s Figure 4 and the
location of the heating element shown on the right side of that figure, water
is flowing between the heat shield and the heating element. Ans. 15-16. We
agree with the Examiner that this type of flow meets the broadly recited
limitation “water flows between said heating element and said heat shield.”
Therefore, we affirm the rejection of claim 19.
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Obviousness of claims 1 and 3-6 over Ward, Bradford, and VonArx
Appellants argue for reversing the rejection of claims 1 and 3-6 on the
same grounds proffered for reversing the rejection of claim 1 regarding
Ward’s alleged failure to describe the separate and distinct float and heat
shield. We reject these arguments for the same reasons expressed above.
Appellants also argue that the Examiner fails to identify teachings in
the applied references of a “‘heating element [that] is powered with at least
1000 watts and wherein said plate dissipates less than 16 watts per square
inch.’” App. Br. 16. The Examiner finds that VonArx describes these
limitations as follows:
VonArx et al. (US6539171) clearly teaches (column 1,
lines 43-45), “The disclosed heating elements are capable of
generating at least 1000 watts for heating fluid such as
water and gas.”, and (column 3, lines 15-20), “The heating
element dissipates less than 20 watts per square inch and
desirably about 5-15 watts per square inch, with a target of
about 7-12 watts per square inch.”
Ans. 17.
Appellants apparently argue that the Examiner may not rely on the
combined teachings from VonArx’s background section and its detailed
description of VonArx’s invention to establish the obviousness of the
claimed limitation on the heating element. See App. Br. 16. We find this
argument unpersuasive because the “use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed.
Cir. 1983) (citation omitted). Moreover, Appellants’ own Specification
states that “typical pond heaters … operate between approximately 1000 and
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1500 watts or more.” Spec., para. [08] (emphasis added). For these reasons,
we also reject this argument and affirm the rejection of claims 1 and 3-6.1
Obviousness of claim 2 over Ward, Bradford, VonArx, and Campbell
Appellants argue for reversing the rejection of claim 2 on the same
grounds proffered for reversing the rejection of claim 1. For the reasons
expressed above, we affirm the rejection of claim 1. Therefore, we also
affirm the rejection of claim 2.
DECISION
For the reasons stated above, we reverse the rejection of claims 1-6
and 17-19 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement, and we affirm the remaining rejections
of claims 1-6 and 17-19. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

hh

1 Appellants also argue for reversing the rejection of claims 1 and 3-6
because the Examiner did not follow the PTO’s published obviousness
guidelines. App. Br. 18-20. These guidelines note that they “do not have
the force and effect of law” and that “any failure by Office personnel to
follow the guidelines is neither appealable nor petitionable.” 72 Fed. Reg.
57526 (Oct. 10, 2007). Therefore, we do not address this argument further.