Ex Parte Riccelli et al

Patent Trial and Appeal Board

May 9, 2017

12642714 (P.T.A.B. May. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/642,714 12/18/2009 Joseph Riccelli InnovDesign-0801 3086
36787 7590
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
05/11/2017 EXAMINER
VONCH, JEFFREY A
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
05/11/2017 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):
patents @ BLKLawGroup.com
cbelleci @ BLKLawGroup .com
blynn @ BLKLawGroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH RICCELLI and RANDOLPH LOEW
Appeal 2015-006289
Application 12/642,714
Technology Center 1700
Before JEFFREY W. ABRAHAM, AVELYN M. ROSS, and
BRIAN D. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This Decision on Rehearing responds to Appellants’ March 3, 2017,
Request for Rehearing (hereinafter “Req. Reh’g”) of our Decision on Appeal
mailed January 3, 2017 (hereinafter “Decision”). In that Decision, we
affirmed the Examiner’s decision to reject: (1) claims 1, 2, 4, 6, 9-12, 14,
15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Maynard,1 Shin,2 Shepherd,3 and Lubker4; (2) claims 3, 7, 8,
1 Maynard et al., WO 99/14037, published March 25, 1999 (“Maynard”).
2 Yong W. Shin, US 4,952,352, issued August 28, 1990 (“Shin”).
3 Shepard et al., US 2005/0260904 Al, published November 24, 2005
(“Shepard”).
4 John W. Lubker, US 6,550,212 B2, issued April 22, 2003 (“Lubker”).
Appeal 2015-006289
Application 12/642,714
13, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Maynard, Shin, Shepherd, Lubker, and Altman; and (3)
claims 6 and 16 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Maynard, Shin, Shepherd, Lubker, and Tai. See generally
Decision 6—15; see also Req. Reh’g 4.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in briefs before the Board and evidence not previously
relied on in the briefs are not permitted in a request for rehearing, except as
permitted by 37 C.F.R. §§ 41.52(a)(2) through (a)(4). We review the points
of the Decision contested by Appellants and determine whether we erred in
fact finding or applying the law, and further determine whether any such
error changes the outcome of the Decision when viewing all the evidence
and arguments anew in light of the preponderance of the evidence standard.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument”); Gardner v. TEC
Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (any error concerning
nonessential facts is harmless and not a basis for reversal).
Appellants contend that the Board Decision “addresses essentially
only the first step of the applicants arguments that the applied prior art
when considered as a whole fails to teach or suggest the present claimed
invention and [that the] Board has ignored or misconstrued the remaining
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Application 12/642,714
aspects of this argument.” Req. Reh’g 5. Appellants broadly request
“reconsideration to address applicant’s arguments in the entirety.” Id.
Appellants in this Request for Rehearing persist in treating the
teachings of the secondary references as subject matter that must be bodily
incorporated into the disclosure of the primary reference. In doing so,
Appellants build up a straw man to attack, as opposed to addressing the
actual combination forming the basis of the Examiner’s rejection and
affirmed by this Board. Appellants also pursue several arguments in this
Request for Rehearing that are new and were not previously presented.
Accordingly, we will not modify our prior Decision. We add the following
primarily for emphasis.
Step 1 (Application of Maynard)
Appellants maintain their previous argument that one skilled in the art
reading Maynard “would be directed to use the 15 layer example actually
used in practice with the clothing as shown in figures 1-2 rather than the
extreme example of the two layer construct shown above.” Req. Reh’g 7.
Appellants contend that the Board ignored the only representative example
of Maynard in favor of a two layer design. Id.
As we previously explained, the teachings of Maynard are not limited
to the preferred embodiment using a 15-layer design. Decision 8—9. Rather,
“[a] reference must be considered for everything that it teaches, not simply
the described invention or a preferred embodiment.” In re Applied
Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); see also In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosure of the prior art,
including unpreferred embodiments, must be considered”). Here, Maynard
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Application 12/642,714
teaches that "ft] he essence of the present invention is the use of a foam
based sheet material. . . with at least one protective layer” and that “[t]he
sheet material preferably comprises a single layer of said relatively low
density foam with a protective layer laminated to one or both sides thereof.”
Maynard 2—3 (emphasis added). Therefore, Maynard teaches, at a
minimum, a two-layered structure. That Maynard also teaches multi-layered
structures—including an exemplary 15-layer design—does not supplant
Maynard’s broader teachings. In re Mercier, 515 F.2d 1161, 1165 (CCPA
1975) (“[A]ll of the relevant teachings of the cited references must be
considered in determining what they fairly teach to one having ordinary skill
in the art.”).
Step 2 (Application of Shepard and/or Lubker to Maynard)
Appellants stress that each embodiment of Shepard teaches at least
two layers, i.e., an open mesh layer with a barrier layer on one or both sides.
Req. Reh’g 9. “Thus even if one of ordinary skill in the art were to focus on
ONLY the two layer embodiment of the Shepard patent and use this with
ONLY the two layer embodiment of the Maynard reference the result is a
FOUR layer structure and not the three layer construct of the present
claimed invention.” Id.
Appellants’ argument is unpersuasive as the arguments fail to address
the combination as presented by the Examiner. Appellants begin with the
incorrect assumption that the combination of Maynard and Shepard
necessarily results in a four-layer configuration. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . .” In re Keller,
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Application 12/642,714
642 F.2d 413, 425 (CCPA 1981). Here, the combination as presented
combines the polyethylene film of Maynard with the LDPE foam of
Maynard/Shin, and an open mesh/scrim layer taught by Shepard/Lubker, i.e.,
three layers. Non-Final 8—11; see also Decision 6—7. Appellants identify no
teaching in Shepard which requires the open mesh to be coupled to the
specific foam layer of Shepard, as opposed to the foam layer of
Maynard/Shin.
Appellants also urge that Shepard teaches coupling the foam layer to
the mesh so that when combined with the two-layer structure of Maynard,
the resulting structure would “teach[] away from the location of the foam on
the other side of a [bjarrier layer in the three layer structure of the present
invention.” Req. Reh’g. 10. Additionally, Appellants argue that if the
substrate 18 of Shepard is “analogous to the embodiment of the Maynard
reference then the Shepard patent teaches the addition of the mesh layer with
a barrier layer on both sides thereof.” Id.
These arguments regarding the position of the barrier layer in relation
to other structures of the wrap are presented for the first time in the Request
for Rehearing and do not fall within applicable exceptions permitting
consideration. See 37 C.F.R. § 41.52(a)(1). Accordingly, we will not
consider these new arguments here.
Lastly, Appellants contend that each of the embodiments of the
Lubker patent require “two critical components.” Req. Reh’g. 11. And, if
combined with the two-layer structure of Maynard, a four layered structure
results. Id. Therefore, Appellants urge that “[t]he Lubker patent, considered
as a whole, teaches away from he claimed three layer house wrap structure.”
Id.
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Appellants again fail to address the Examiner’s rejection. The
Examiner relies on Lubker (and Shepard) for the disclosure of a mesh/scrim
layer for drainage. Non-Final 10; see also Decision 8—9. This single mesh
layer of Lubker is combined with the two-layer structure of Maynard to
yield the three layer construct of the instant invention. Non-Final 10; see
also Decision 8—9. Appellants do not cite any teachings of Lubker regarding
the “criticality” of the fiber layer being used together with the Lubker sheet
layer; nor do Appellants provide any explanation why the fiber/mesh layer
cannot be used with the film layer of Maynard. See Req. Reh’g. 11.
Furthermore, Appellants fail to cite any teaching in Lubker that teaches
away from a three layer house wrap. Id. Without something more than
conclusory allegations, we remain unpersuaded that we misapprehended or
overlooked any point made by Appellants.
Step 3 (Application of Shin to the Combination)
On Appeal, Appellants urged that there was no reason to replace the
foam of Maynard with the foam of Shin. Appeal Br. 17—18. The Examiner
explained that “[o]ne is not seeking to replace the foam but merely provide
the foam as described in Ma[yn]ard ... so one would have been motivated
to look to the art to find particular methods of making foams that would
have the same chemical composition, physical structure, thickness, and
density as related in Ma[yn]ard.” Ans. 15—16. The Examiner further found
that Shin met all the chemical and physical characteristics of Maynard and
would necessarily possess the R-value claimed. Id. at 16. Appellants did
not dispute these findings, asking instead, “WHY would one of ordinary
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skill in the art seek to replace the original foam?” See generally Appeal Br.
17—18 and Reply Br. 7.
Here, however, Appellants, for the first time in this Request for
Rehearing, argue that the teachings of Shin, when combined with the
structure of Maynard/Shepard/Lubker, would not yield the claimed
invention. See Req. Reh’g. 12—13. In particular, Appellants urge that Shin
would suggest to the skilled artisan use of LDPE foam sheets having
thicknesses greater than claimed—i.e., where the total thickness is less than
30 mils or less than 40 mils—because the applications of Shin that are
similar to house wraps, that is, tents or liners, have thicknesses of “up to
about 196 mils.” Id. at 13—14. As a new argument, which is not permitted
in a Request for Rehearing, it will not be considered. See 37 C.F.R. §
41.52(a)(1) (“Arguments not raised, and Evidence not previously relied upon
... are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4).”).
Step 4 (Application of Altman to the Combination)
Appellants urge that “[ijncorporating the two layer structure in the
four layer structure represented in the modified Maynard/Shin/Shepard/
Lubker structure discussed above also fails to yield the claimed three layer
house wrap.” Req. Reh’g 14.
Appellants’ argument is unpersuasive because Appellants begin from
a false position that the Maynard/Shin/Shepard/Lubker is a four layer, as
opposed to three layer, construct. The Examiner clearly explains that the
combination presented includes the protective layer of Maynard, the LDPE
foam of Maynard and Shin, and an open mesh/scrim layer of Shepard and
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Application 12/642,714
Lubker, i.e., three layers. Non-Final 8—11; see also Decision 6—7. The
Examiner then uses Altman, not to add an additional two layers, but rather
to show that “when having a breathable, waterproof barrier layer, it is
suitable to use polyethylene [like the polyethylene film of Maynard (see
Maynard 3)] and preferable to use PTFE.” Ans. 15; see Non-Final 12; see
also Altman 131 (teaching that “barrier layers suitable for use . . . include
polytetrafluoroethylene (PTFE). . . and polyethylene . . . .”). Thus, contrary
to Appellants assertions, the Examiner does not “start with the Maynard
reference and replace EVERY element of the embodiment used in this
teaching.” Req. Reh’g 15.
Appellants also argue that “[regarding claims 3, 7-8, and 17-18 the
claims define the total thickness of the house wrap of less than 30 mils that
the references considered as a whole clearly TEACH AWAY FROM as
noted above.” Req. Reh’g 15. The Examiner finds, the laminate resulting
from the combination of Maynard/Shin/Shepard/Lubker would have a
thickness of between 28.1 and 62 mils. Non-Final 10—11; see also Decision
6—7. And, as discussed in our Decision, Appellants have failed to establish
any teaching away. Decision 12—13.
Step 4 ’ (Application of Tai to the Combination)
Appellants additionally argue, with respect to claims 6 and 16, that the
RFS panels of Tai are “distinct from house wraps in that they are generally
panels or blocks as described.” Req. Reh’g 16. Asa result, “[o]ne looking
at [Tai] as a whole would look to the construction of insulating panels of
RFS systems and not house wraps as in the claimed invention. Id.
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Appellants stress that there is no teaching in the art of using an adhesive
layer with a house wrap. Id.
Appellants’ contention that the skilled artisan, considering the
teachings of Tai, would not have reason to use the continuous adhesive of
Tai because Tai relates to insulating panels as opposed to house wraps is a
new argument. Compare Appeal Br. 20 and Reply Br. 9 with Req. Reh’g
16. Appellants previously argued that one of ordinary skill in the art “must
IGNORE the express teachings of most references” including “the preferred
thickness of the FIFTH RFPC Reference of preferably 0.25 inches or more.”
Appeal Br. 20. Except in certain situations not applicable here, arguments
not previously raised are not permitted in the request for rehearing. See 37
C.F.R. § 41.52(a)(1). Thus, we decline to address any new arguments not
originally presented.
Appellants additionally contend that “claims 6 and 16 also include the
total thickness limitations not fairly taught in the prior art considered as a
whole as discussed above.” Req. Reh’g 16—17 (emphasis added). As
discussed above, and in our Decision (Decision 12—14), Appellants have
failed to identify any reversible error by the Examiner in this regard.
DECISION
Appellants have not sustained their burden of showing that we
misapprehended or overlooked relevant points of fact or law in arriving at
our Decision. We therefore decline to modify our Decision. The Request
for Rehearing is granted to the extent we have considered Appellants’
arguments, but denied in that the Decision will not be modified.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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