Ex Parte Rousseau et alDownload PDFPatent Trial and Appeal BoardMay 13, 201612408659 (P.T.A.B. May. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/408,659 0312012009 74829 7590 05/13/2016 Julia Church Dierker DIERKER & KAVANAUGH, P.C. 3331 W. Big Beaver Road Suite 109 Troy, MI 48084-2813 FIRST NAMED INVENTOR Ingrid A. Rousseau 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. P002672-RD-SDJ 9890 EXAMINER NGUYEN, PHUONG T ART UNIT PAPER NUMBER 3742 MAILDATE DELIVERY MODE 05/13/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte INGRID A. ROUSSEAU and XINRAN XIAO Appeal2014-003385 Application 12/408,659 Technology Center 3700 Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Ingrid A. Rousseau and Xinran Xiao (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-5, 7-13, and 15-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is GM Global Technology Operations LLC. App. Br. 3. Appeal2014-003385 Application 12/408,659 THE CLAIMED SUBJECT MATTER Claims 1, 11, and 1 7 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A defogging or defrosting structure, comprising: at least one optically transparent member; and a substantially continuous film of an optically transparent composite laminated to the at least one optically transparent member, the optically transparent composite including: a polymer matrix; and a thermally and electrically conductive filler material having at least one dimension on the nanoscale and being embedded in the polymer matrix; wherein the substantially continuous film of the optically transparent composite is configured to heat the at least one optically transparent member when an electric current is applied thereto. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hijikata Weiss Li us 4,772,422 US 2006/0096967 Al US 2008/0028697 Al REJECTIONS2 Sept. 20, 1988 May 11, 2006 Feb. 7,2008 I. Claims 1, 2, 7-12, and 15-19 stand rejected under 35 U.S.C. § 102(b) as anticipated by Li. Non-Final Act. 3-5. II. Claims 3-5 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Li and Weiss. Id. at 5-6. 2 The rejection of claims 1-5, 7-13, and 15-22 under 35 U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the written description requirement (Non-Final Act. 2) has been withdrawn and is not before us on appeal. Ans. 2. 2 Appeal2014-003385 Application 12/408,659 Ill. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Li and Hijikata. Id. at 6-7. IV. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Li. Id. at 7. OPINION Rejection I The dispute between the Examiner and Appellants appears to hinge on the interpretation of "a substantially continuous film of an optically transparent composite ... including: a polymer matrix; and a ... filler ... embedded in the polymer matrix." App. Br. 16, Claims App. (emphasis added). More particularly, Appellants interpret this clause to mean that the polymer matrix with filler material embedded therein must be substantially continuous (see, e.g., Reply Br. 5 ("[T]he substantially continuous film of the optically transparent composite set forth in the Appellants' claims 1 and 17 is a substantially continuous film of the polymer matrix having the ... filler material embedded therein.")), whereas the Examiner interprets this clause to mean merely that an identified optically transparent composite has a polymer matrix (and filler material embedded in the polymer matrix), regardless of whether the polymer matrix itself is substantially continuous (see, e.g., Ans. 2 ("[N]owhere in claim 1 is recited the term 'a substantially continuous film of a polymer matrix ... ' as mentioned by [A ]ppellant[ s]. "). During patent examination, a claim must be given its broadest reasonable interpretation consistent with the Specification, as it would be interpreted by one of ordinary skill in the art. Because an applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once 3 Appeal2014-003385 Application 12/408,659 issued, will be interpreted more broadly than is justified. Jn re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."). The Specification describes that "[t]he optically transparent composite 14 is a polymer including a thermally and electrically conductive filler material 16 embedded in a polymer matrix 18." Spec. iJ 13 (emphasis added). However, this embodiment described in the Specification is narrower than the language of the claims, which use the broader, open-ended wording "including" in connection with the polymer. Although the claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims. We must be careful not to read a particular embodiment appearing in the Specification into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In this case, we agree with the Examiner that the claimed optically transparent composite must be substantially continuous and merely include a polymer matrix (and a conductive filler embedded in the polymer matrix) and we also agree that the polymer matrix itself need not be substantially continuous. The Examiner identifies Li's transparent substrate 34, ink layer 44, and weathering layer 46' as the substantially continuous film of an optically transparent composite, and the Examiner identifies Li's conductive filler material 16 embedded in a polymer matrix as being included in the substantially continuous film of the optically transparent composite. Non- Final Act. 3 (citing Li iii! 29-32, Fig. 3A); see also id. at 8 ("Additionally, the heater grip (16, [F]ig. 3A of Li) absolutely is an electrically conductive 4 Appeal2014-003385 Application 12/408,659 material."). Li describes heater grid 16 formed from conductive particles (and nano-particles) dispersed in a polymeric matrix. Li iJ 30. Li further describes that heater grid 16 is disposed between substrate 34 and light control assembly 39 with weathering layer 46 placed above light control assembly 39. Li iii! 29, 33. In connection with independent claims 1 and 17, Appellants argue that "Li does not teach or suggest a substantially continuous film of a polymer matrix with a thermally and electrically conductive filler material embedded therein," and more particularly, that "Appellants disagree that ... layers [34, 44, and 46'] are a substantially continuous film of a polymer matrix with a thermally and electrically conductive filler material embedded therein." App. Br. 8. Even if these statements are true, they are not persuasive of Examiner error because they are not based on a limitation appearing in claim 1 in accordance with our interpretation of the relevant claim language above. Appellants also argue that, even if elements 34, 44 are substantially continuous films of a polymer material, the failure of these elements to include a filler material is fatal to the premise of the Examiner's rejection. App. Br. 8. We are not persuaded of Examiner error because this argument does not address the rejection as articulated by the Examiner, which is not based on either of layer 34 or 44 having filler material embedded within, but rather is based on Li's polymeric matrix and conductive particles described in connection with heater grid 16 being included between substrate 34 and weathering layer 46. Appellants additionally argue that, even assuming arguendo that ink layer 44 could be a thermally and electrically conductive ink such as the one used to form heater grid 16, ink layer 44 is not a filler within elements 34, 5 Appeal2014-003385 Application 12/408,659 46'. App. Br. 9; Reply Br. 6. Again, we are not persuaded of Examiner error because this argument does not address the rejection as articulated by the Examiner, which refers specifically to the polymeric matrix and electrically conductive filler material of heater grid 16 in connection with the rejection. Non-Final Act. 3; Ans. 3 (each citing Li iJiJ30-3 l ). Appellants further argue that identified elements 34, 44, and 46' are not configured to heat the optically transparent member as required by the claims because element 34, 46' merely support heater grid 16, which is the actual component of Li that performs the heating. App. Br. 10. We are not persuaded of Examiner error in that the Examiner-identified elements do indirectly heat the optically transparent member through their support of heater grid 16 and are, therefore, sufficient to meet the broad language of the claims. Appellants further argue "the Office ... seems to equate Li's heater grid 16 with Appellants' thermally and electrically conductive filler material," but that "neither the grid 16 nor the grid lines 18 of Li are a filler material embedded in a polymer matrix, which is in the form of a substantially continuous film." App. Br. 10. Although we appreciate that "[c]learly, Li's heater grid 16 and respective grid lines 18 are not the same as Appellants' filler material 16" (id.), we are not persuaded of Examiner error. As described in more detail above, the claim, as currently written, does not require that the polymeric matrix itself be substantially continuous. As to Appellants' statements regarding the stated advantages of "heating the entire surface of the structure at substantially the same time" as compared to gradual heating through the use of "electrical leads or wires embedded in a grid in the structure" (App. Br. 12), we are not persuaded of 6 Appeal2014-003385 Application 12/408,659 Examiner error because the arguments are not based on limitations that appear in the claim and unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671F.2d1344, 1348 (CCPA 1982). In connection with independent claim 11, Appellants "reiterate the arguments set forth" above and further argue that "[p ]rinting of the heater grid results in the creation of the separate grid lines 18, not a substantially continuous film of a polymer matrix having a thermally and electrically conductive filler material embedded therein" such that Li does not teach the steps of the method. App. Br. 12. Again, we are not persuaded of Examiner error where independent claim 11 (as with independent claims 1 and 17) does not require that the polymeric matrix itself be substantially continuous. Appellants also raise an additional argument in the Reply Brief that was not presented in the Appeal Brief. See Reply Br. 6 (arguing that the Examiner-identified elements 34, 44, 46' do not form an optically transparent composite because ink layer 44 is meant to be opaque). This argument is not timely, and Appellants do not present evidence or explanation to show good cause why this argument should be considered by the Board at this time. See 37 C.F.R. § 41.4l(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board ... unless good cause is shown."). For the foregoing reasons, we are not persuaded that the Examiner's rejection of independent claims 1, 11, and 1 7 was in error. We also are not persuaded that the Examiner's rejection of dependent claims 2, 7-10, 12, 15, 16, 18, and 19, for which Appellants rely on the same arguments and 7 Appeal2014-003385 Application 12/408,659 reasoning we found unpersuasive in connection with the independent claims, 1s m error. See App. Br. 12-13. Re} ections II-III In contesting the rejection of claims 3-5 and 13 as unpatentable under 35 U.S.C. § 103(a) over Li and Weiss, Appellants merely add that Weiss fails to cure the asserted deficiencies in Li. App. Br. 13. In contesting the rejection of claims 20 and 21 as unpatentable over Li and Hijikata, Appellants merely add that Hijikata fails to cure the asserted deficiencies in Li. Id. at 13-14. Because we do not agree with Appellants as to the asserted deficiencies of Li, we also sustain the rejection of dependent claims 3-5, 13, 20, and 21. Rejection IV Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Li. Non-Final Act. 7. Appellants argue that it would not have been obvious to make a substantially continuous film that is free of breaks, gap or spaces in order to make each layer compact because "[i]f the[] grid lines [of heater grid 16] were not spaced apart as described by Li, ... the grid lines could not be used for their intended purpose (e.g., on a windshield, as shown in Fig. 1 of Li)." App. Br. 14. We are not persuaded of Examiner error because we are not persuaded that the grid lines of heater grid 16 must be modified as part of the Examiner's rejection (Non-Final Act. 7) to meet the language of the claim as we have interpreted it. DECISION The Examiner's decision to reject claims 1-5, 7-13, and 15-22 under 35 U.S.C. § 103(a) is affirmed. 8 Appeal2014-003385 Application 12/408,659 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § l.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation