Ex Parte Schwan

Patent Trial and Appeal Board

Feb 12, 2014

10518369 (P.T.A.B. Feb. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPH SCHWAN
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Appeal 2012-003320
Application 10/518,369
Technology Center 3600
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Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Christoph Schwan (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 9,
10, 13, and 15-21 as unpatentable over Vatet (US 2,298,319, issued Oct. 13,
1942), Miele (US 3,999,349, issued Dec. 28, 1976), and Riegler (US
5,529,624, issued Jun. 25, 1996) and claims 9, 10, 12, 13, and 15-21 as
unpatentable over Vatet, Kotrotsios (US 6,397,554 B1, issued Jun. 4, 2002),
and Riegler. Claims 1-8, 11, and 14 have been canceled. Appellant’s
representative presented oral argument on February 6, 2014. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

CLAIMED SUBJECT MATTER
Claim 9 is illustrative of the claimed invention and reads as follows:
9. A wall construction for an exterior brick wall of a
building, comprising an interior masonry wall and an exterior
masonry wall, characterized in that the exterior masonry wall
(2) is made at least in part of constructional elements (11)
which only at their side facing the interior masonry wall (5) are
provided with a heat reflective layer directly thereon, wherein a
stationary air layer is formed filling a space defined extending
from said reflective layer on the exterior masonry wall to the
facing side of the interior masonry wall, the space being
otherwise free of insulating materials.

SUMMARY OF DECISION
We REVERSE.

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ANALYSIS
The obviousness rejection based upon Vatet, Miele, and Riegler
Independent claim 9 requires, inter alia, an “exterior masonry wall . . .
made at least in part of constructional elements (11) which only at their side
facing the interior masonry (5) are provided with a heat reflective layer
directly thereon.” Br. 17, Clms. App’x. Similarly, independent claim 17
requires, inter alia, “that the constructional element [11], on the side of the
exterior masonry wall . . . is provided with a layer of a metal (8) which is
reflective for heat radiation directly on the inwardly facing side of the
exterior masonry wall.” Id. at 18.
The Examiner found that because “applicant provides no criticality for
the positioning of the reflective layer on the exterior wall (rather than the
interior wall) . . . a reflective layer [as taught by Miele] on either wall [of
Vatet’s cavity wall as modified by Riegler] is capable of reflecting heat
towards the interior of a building as suggested by applicant.” Ans. 5-6.
Appellant argues that the Examiner’s finding is erroneous because the
last full paragraph on page 13 of Appellant’s Specification describes placing
reflection layer 8 on the backside of brick front wall 2 in order to avoid
“reflection into the front brickwork 2.” Br. 7. Appellant further contends
that if a reflective layer is placed on the exterior side of the inner wall, as the
Examiner proposes, “it will not reflect heat inward and no matter which way
it faces, it will not act to cause heat energy ‘to be completely maintained
within the cross-sect[i]on of the wall construction’ (page 12, lines 8 & 9) as
does the present invention.” Id. at 7-8.

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The last full paragraph on page 13 of Appellant’s Specification states
that:
Similarly, the reflection layer 8 does not impede
the emission, because it is positioned closely to the
back side of the brick of the front wall and thus a
reflection into the front brickwork 2 is impossible.
However, it has to be taken into account that the
reflection layer 8 on the rule is a relatively poor
emitter, so that the emission process towards the
rear brickwork 5 is slightly delayed. This effect,
however, is desired, because it accords with the
very good thermal capacity of the brickwork.

In this case, because Appellant’s Specification clearly describes that
reflection layer 8 is located such that heat transfer into front brick wall 2 is
impossible, we agree with Appellant that positioning the reflection layer
onto the exterior surface of the interior wall “would have the effect of
reflection toward the front brickwork,” which is contrary to Appellant’s
Specification. Br. 7. We thus do not agree with the Examiner’s position that
“whether the layer is attached to the exterior or interior wall is not critical”
because if the reflection layer is provided on the interior wall it would not be
“capable of reflecting heat toward the interior of the building,” as the
Examiner proposes. See Ans. 10, 14. As such, not only does Appellant’s
Specification clearly sets forth exclusively providing the reflection layer on
the interior surface of the exterior masonry wall, but independent claims 9
and 17 specifically require that the reflection/metallic layer is provided
“only” or “directly” on the interior side of the exterior wall, respectively.
See Br. 18, Clms. App’x.
Hence, because the Examiner’s conclusion of obviousness is based on
the erroneous finding that there is no criticality to the location of the
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reflection layer in the wall structure of Vatet, Miele, and Riegler, we do not
sustain the rejection under 35 U.S.C. § 103(a) of claims 9, 10, 13, and 15-21
as unpatentable over Vatet, Miele, and Riegler. See In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988).

The obviousness rejection based upon Vatet, Kotrotsios, and Riegler
The Examiner found that the combined teachings of Vatet and Riegler
disclose nearly all the limitations of independent claims 9 and 17, but fail to
disclose a “metal heat reflective layer applied directly on the exterior
masonry wall.” Ans. 8. Nonetheless, the Examiner found that “Kotrotsios
discloses a cavity wall, wherein the exterior wall (8f, 9f, Fig. 13) has a
reflective layer provided directly thereon (6f; c. 4, 54-61) and comprising
metal (c. 4, 6-61).” Id.
Appellant argues that in contrast to the wall construction of
independent claims 9 and 17, the wall construction in the embodiments of
Figures 12 and 13 of Kotrotsios “is not a double wall” and “the specific
insulation layers are provided within the wall construction.” Br. 12.
In response, the Examiner opines that although “Kotrotsios does not
provide the same walls as the instant invention,” nonetheless, Kotrotsios “is
relied upon only to teach a reflective layer on an exterior wall.” Ans. 15.
Using the ordinary meaning of “wall,” namely, “one of the sides of a
room or building connecting floor and ceiling or foundation and roof,” we
disagree with the Examiner’s finding that brick layer 8f of Kotrotsios
constitutes an “exterior wall.” See Merriam Webster’s Collegiate
Dictionary (10th Ed. 1997). The Examiner has indiscriminately and
arbitrarily divided the external masonry of Figure 13 in Kotrotsios so as to
obtain an “exterior wall.” Kotrotsios discloses the layers of an external
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masonry, such that brick layer 8f is merely a layer or component of the
external masonry. Kotrotsios, col. 8, l. 61 - col. 9, l. 3. Hence, like
Appellant, we find that reflective layer 6f is provided as a layer within an
external masonry wall and not “only” or “directly” on the interior side of the
exterior wall, as called for by independent claims 9 and 17, respectively.
See Br. 12.
Accordingly, because the Examiner’s conclusion of obviousness is
based on the erroneous finding that Kotrotsios discloses a reflective layer on
an exterior wall, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 9, 10, 12, 13, and 15-21 as unpatentable over Vatet, Kotrotsios, and
Riegler. See In re Fine, 837 F.2d at 1076.

SUMMARY
The Examiner’s decision to reject claims 9, 10, 12, 13, and 15-21 is
reversed.

REVERSED

rvb