11270685 (B.P.A.I. Jan. 4, 2012)

Ex Parte Schellstede

Board of Patent Appeals and InterferencesJan 4, 2012

11270685 (B.P.A.I. Jan. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte HERMAN J. SCHELLSTEDE __________ Appeal 2010-006047 Application 11/270,685 Technology Center 3700 ___________ Before: JAMESON LEE, RICHARD TORCZON, and SALLY C. MEDLEY, Administrative Patent Judges. LEE, Administrative Patent Judge, for the Board. TORCZON, Administrative Patent Judge, dissenting. DECISION ON APPEAL Herman J. Schellstede (“Appellant”), the real party in interest, appeals from a final rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appe Appl cutti ignit App 21). abov and i 4:12 indu curre conv (Spe field 13:1 14:4 nonc indu 7). al 2010-00 ication 11/ Appellan ngs. (Spec e the natur ellant’s sy An exam e. (Spec. nduction c -19). Elec ces an elec nt heats th eyor to re Accordin c. 13:10). that heats 0-14:1). A -7). Appe onductive ction coil 2 6047 270,685 AP t disclose . 1:5-2:9) al gas som stem is dir ple of the 6:22- 7:1) oil 22 tha tric curren tric curren e conveyo lease the c g to Appe Generally electricall ppellant’s llant’s hou and nonm 2 heats th PELLAN s a system . Such sys etimes rel ected to pr system is . The syst t surround t through t within th r 15, whic ontaminan llant, indu speaking, y conduct conveyor sing 14, o agnetic. ( e conveyo - 2 - T’S INVE for an on- tems typic eased by o eventing t shown by em include s the conv the coil 22 e conveyo h in turn h ts. (Spec ction heat the induct ive and ma 15 is elec n the other Spec. 14:2 r 15 but no NTION site treatm ally bear h il wells. ( hese hot sp Appellant s a convey eyor 15 an surroundi r 15. (Id. eats the cu . 4:20-21; ing is well ion coil g gnetic ma trically co hand, is e -4). Cons t the hous ent of oil ot spots th Spec. 2:2- ots. (Spe ’s Fig. 7, r or 15, ho d housing ng the con ). The ind ttings on 5:1-4). known in enerates a terials. (S nductive. lectrically equently, ing 14. (S well at can 22; 3:4-7) c. 3:18- eproduced using 14, 14. (Spec veyor uced the the art. magnetic pec. (Spec. the pec. 14:2 . . - Appeal 2010-006047 Application 11/270,685 - 3 - THE PRIOR ART The Examiner relied upon the following prior art references: Fishman US 2002/0148829 A1 Oct. 17, 2002 Robinson US 6,608,290 B1 Aug. 19,2003 McCabe US 5,216,821 June 8, 1993 Boulet US 3,976,018 Aug. 24, 1976 Clark US 2,144,618 Jan. 11, 1936 Oomoto JP 2002221863 A Aug. 2002 THE REJECTIONS ON APPEAL Claims 1-5, 12-13, 15-16, 17-20, and 27-29 were finally rejected under 35 U.S.C. § 103(a) as obvious over Robinson, Fishman, and McCabe. Claims 1-8, 10-13, 15-23, and 25-31 were finally rejected under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, and Robinson. Claims 14 was finally rejected under 35 U.S.C. § 103(a) as obvious over Robinson, Fishman, McCabe, and Boulet. Claims 14 was finally rejected under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, Robinson, and Boulet. Claims 9 and 24 were finally rejected under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, Robinson, and Oomoto. OPINION A. § 103(a) Rejection of Claims 1-5, 12, 13, 15, 16, 17-20, and 27-29 over Robinson, Fishman, and McCabe Findings – Robinson Robinson discloses a system for inductively heating stainless steel. (Robinson abstract). Robinson’s Figure 1, reproduced in part below left, shows a schematic of the system. (Robinson 5:12-13). Robinson’s Figure 2, Appe Appl exter magn 2:18 dam (Rob nonc heate al 2010-00 ication 11/ iors of the etic field -21). To p aging them inson 3:37 onductive d and ther 6047 270,685 side wall through th revent the , the cham -40; 6:12- , such that eby dama s 18, 19 (id e strip 2 to strip 2 fro ber 17 is 16). The the chamb ge the elec - 4 - reproduce section vi section (a Fig. 1). ( As strip 2 is g chamber 19. (Rob electroma .) and hav inductive m heating formed of material is er 17 doe tromagnet d above ri ew of the s sectioned Robinson shown by uided thro 17 having inson 5:35 gnets 15, e opposite ly heat the the electr a heat insu also elect s not becom s 15, 16. ght, show system’s h along lin 5:14-15). the figure ugh a hea broad side -6:2). Tw 16 run alon poles tha steel. (R omagnets lating ma rically e inducti (Id.). s a cross- eating es II-II of s, the steel ting walls 18, o broad g the t pass a obinson 15, 16, and terial. vely Appeal 2010-006047 Application 11/270,685 - 5 - Analysis Claims 1-5, 12, 13, 15, 16, 17-20, and 27-29 were rejected as obvious over Robinson, Fishman, and McCabe. Of these claims, only claims 1, 17, and 28 are independent. Each recites “an induction coil positioned around said housing, said coil configured to envelope [sic] at least a portion of said housing within an alternating electrical current.” Each of the remaining claims 2-5, 12, 13, 15, 16, 18-20, 27, and 29 respectively depend from one of claims 1, 17, and 28 and therefore incorporate this limitation. The Examiner cited Robinson’s electromagnets 15, 16 and heating chamber 17 as respectively teaching the claimed induction coil and housing. (Ans. 3:11-12). The Examiner contends that the electromagnets 15, 16 include an induction coil that, in view of the placement of the electromagnets 15, 16, is “positioned around” the chamber 17 as claimed. (Ans. 9:4-10). Appellant argues that the claims require a singular induction coil to surround the recited housing, i.e., to be “coiled around” the housing, while Robinson merely places the two electromagnets 15, 16 on opposing sides of the heating chamber 17. (Brief 9:12-10:6; Reply 2:1-4:3). Appellant contends that Robinson itself recognizes a distinction between coiling an induction coil around a material to perform “axial induction heating (AIH)” and placing electromagnets on opposing sides of a material to perform “transverse flux induction heating (TFIH).” (Brief 9:12-10:6; citing Robinson 2:10-24). Appellant’s argument is persuasive. Claim terms are properly construed according to their broadest reasonable interpretation in light of the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Though Appeal 2010-006047 Application 11/270,685 - 6 - “around” has different meanings, it typically means surrounding something.1 Further, Appellant’s written specification and figures disclose only an AIH- type coil that itself surrounds the heated material. In light of Appellant’s specification, one with ordinary skill would have understood “induction coil positioned around said housing” as referring to one coil which itself surrounds the housing and not multiple coils which are placed separately but together surround the housing. Even assuming that Robinson’s electromagnets 15, 16 are comprised of a single induction coil, the electromagnets 15, 16 neither singly nor cooperatively surround the heating chamber 17. Rather, the electromagnets 15, 16 are arranged next to only the opposing side surfaces 18, 19 of the chamber 17. They do not abut the other pair of opposing side surfaces of chamber 17. The Examiner has therefore failed to identify an induction coil that surrounds Robinson’s chamber 17, as are required by the claims. The Examiner’s reliance on Fishman and McCabe does not make up for the above-noted deficiency of Robinson. For the foregoing reasons, the obviousness rejection of claims 1-5, 12, 13, 15, 16, 17-20, and 27-29 over Robinson, Fishman, and McCabe cannot be sustained. B. § 103(a) Rejection of Claim 14 over Robinson, Fishman, McCabe, and Boulet With regard to the rejection of claim 14, the Examiner’s reliance on Fishman, McCabe, and Boulet does not make up for the deficiency of 1 “around.” Dictionary.com Unabridged. Random House, Inc. 26 Nov. 2011. . Appe Appl Robi susta C. § M claim recit and/ claim al 2010-00 ication 11/ nson. Acc ined. 103(a) Re cCabe, F s, only cl es (i) that t or (ii) that s 2-8, 10- 6047 270,685 ordingly, jection of ishman, a aims 1, 17 he housin the housin 13, 15, 16 the obviou Claims 1 nd Robin met 2:2: part syst hop 29). thro hou resp Clar coil 18. wer McC , and 28 ar g is electri g is not in , 18-23, 25 - 7 - sness reje -8, 10-13, son Clark di allic ore. ( 66-3:1:6). left, show em. As sh per 2 of a t A rotatab ugh three sing 15, w ective ind k does not s heat the o Claims e rejected abe, Fish e indepen cally nonc ductively -27, and 2 ction of cl 15-23, an Findings – scloses a Clark 1:1 Clark’s F s a perspe own, the o ubular ho le scroll 1 heating se hich are su uction coil specify w re, housin Analy 1-8, 10-13 as obvious man, and R dent. Each onductive heated. Ea 9-31 resp aim 14 can d 25-31 ov Clark system for :1-44; 1:2: ig. 1, repro ctive view re is loade using 15. 8 carries t ctions 4-6 rrounded s. (Clark hether the g 15, and/ sis , 15-23, an over Clar obinson. independ and nonm ch of the ectively de not be er Clark, heating 5-8; duced in of the d into a (1:2:26- he ore of the by 3:1:23-38) induction or scroll d 25-31 k, Of these ent claim agnetic remaining pend from . Appeal 2010-006047 Application 11/270,685 - 8 - one of claims 1, 17, and 28 and therefore incorporate limitations (i) and/or (ii). The Examiner acknowledged that Clark’s housing 15 is not disclosed as having these features (i) and (ii) of claims 1, 17, and 28. (Ans. 5:20-22). The Examiner found, however, that Robinson’s housing 17 is electrically nonconductive, nonmagnetic, and accordingly not inductively heated. (Ans. 6:8-10). The Examiner determined that it would have been obvious to one with ordinary skill in the art, in light of Robinson’s housing 17, to make Clark’s housing 15 electrically nonconductive and nonmagnetic, to avoid inductive heating of the housing and thereby increase heating efficiency. (Ans. 6:10-16). According to the Appellant, however, inductively heating only the scroll 18 would be actually less efficient than inductively heating the scroll 18 and housing 15 collectively. (Id.). In that regard, Appellant states (Reply 6:17-7:2): Having an electrically conductive housing and an electrically conductive scroll positioned within the furnace results in both the housing and the scroll getting hot. If one is taken away, the remaining element doesn’t get hot twice as fast. Rather, the remaining element must be heated longer for the same temperature to be obtained within the furnace. Eliminating inductive heating in the scroll or the housing doesn’t result in more efficiency. It results in more electricity having to be used in order to reach the same temperature, which is the definition of less efficiency. Whether heating efficiency would be increased by not heating the housing, as the Examiner asserts, is not an easy question to answer. Much complexity is involved. How much longer would the scroll have to be heated to obtain the same heating effect? How much hotter would the scroll Appeal 2010-006047 Application 11/270,685 - 9 - have to be heated to reach the same heating effect? The questions are not addressed by the Examiner. We note that removing the housing as a heating element removes a substantial amount of heating surface as well as eliminates heating from a wide range of directions. The Examiner has cited to no evidence to support the position that heating efficiency would be increased by not heating the housing. Even assuming that heating efficiency would inherently be increased, the Examiner has cited to no evidence showing that one with ordinary skill would have known that to be so. For an obviousness rejection, the Examiner must establish a sufficient factual basis for a conclusion of obviousness. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this case, the Examiner does not have adequate support for the important factual determination that heating efficiency would be increased by not heating the housing or that one with ordinary skill in the art would have known that avoiding heating the housing would increase the heating efficiency. For the foregoing reasons, the rejection of claims 1-8, 10-13, 15-23, and 25-31 as obvious over Clark, McCabe, Fishman, and Robinson cannot be sustained. D. § 103(a) Rejection of Claim 14 as obvious over Clark, McCabe, Fishman, Robinson, and Boulet The Examiner’s reliance on McCabe, Fishman, Robinson, and Boulet does not make up for the deficiency discussed above with respect to Clark. Accordingly, the rejection of claim 14 as obviousness over Clark, McCabe, Fishman, Robinson, and Boulet cannot be sustained. Appeal 2010-006047 Application 11/270,685 - 10 - E. § 103(a) Rejection of Claims 9 and 24 as obvious over Clark, McCabe, Fishman, Robinson, and Oomoto The Examiner’s reliance on McCabe, Fishman, Robinson, and Boulet does not make up for the deficiency discussed above with respect to Clark. Accordingly, the rejection of claims 9 and 24 as obvious over Clark, McCabe, Fishman, Robinson, and Oomoto cannot be sustained. DECISION The rejection of claims 1-5, 12-13, 15-16, 17-20, and 27-29 under 35 U.S.C. § 103(a) as obvious over Robinson, Fishman, and McCabe is reversed. The rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over Robinson, Fishman, McCabe, and Boulet is reversed. The rejection of claims 1-8, 10-13, 15-23, and 25-31 under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, and Robinson is reversed. The rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, Robinson, and Boulet is reversed. The rejection of claims 9 and 24 under 35 U.S.C. § 103(a) as obvious over Clark, McCabe, Fishman, Robinson, and Oomoto is reversed. REVERSED KMF Appeal 2010-006047 Application 11/270,685 - 11 - TORCZON, Administrative Patent Judge, dissenting. Robinson teaches both axial induction heating and transverse flux induction heating were well known in the art. Thus, the difference between these methods would not distinguish the clear teachings of the art to those of ordinary skill. While Robinson does not teach a coil surrounding the housing, the discussed claim language does not require such a feature, as the examiner notes. (Ans. 8-9.) Rather, the claim requires a coil that is (1) “around said housing” and (2) “configured to envelope at least a portion of said housing”. Neither “around” nor “envelop at least a portion” require a coil wrapped around the housing. “Around” can indicate proximity; “envelop at least a portion”, partial enclosure. If the applicant had amended the claim language to mean “coiled around the housing”, then his arguments would be justified. Instead, the applicant has opted to maintain vaguer language despite the examiner’s construction. The examiner’s construction is reasonable in view of the specification as read by one of ordinary skill in the art. One of ordinary skill would have understood that the art had several ways of accomplishing induction heating and would have assumed that the applicant did not intend to be limited to a single, disclosed embodiment. On these facts, there is no reason to read the disclosed embodiment into the claim. The applicant has not shown prejudicial error in the rejection of the claims.