Ex Parte Shaffer

Board of Patent Appeals and Interferences

Sep 2, 2009

09737051 (B.P.A.I. Sep. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROY E. SHAFFER
____________

Appeal 2009-006163
Application 09/737,051
Technology Center 1700
____________

Decided: September 02, 2009
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO,
and KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 5, 7-15, 19, and 21 (Amended Appeal Brief filed April 20, 2008,
hereinafter “Br.,” 5; Final Office Action mailed October 9, 2007). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2009-006163
Application 09/737,051

2
STATEMENT OF THE CASE
Appellant’s invention is said to be directed to “an insulation article for
a cold pipe exhibiting a wicking ability to readily transport moisture from
the interior to the outside of the pipe and insulation article assembly, where
the moisture can evaporate without causing damage to the pipe or
insulation” (Specification, hereinafter “Spec.,” 1, ll. 6-9).
Claim 1 reads as follows:
1. An insulation system which comprises:
a tubular layer of insulation having an inner periphery
and an outer periphery including a longitudinal slit therein for
allowing a pipe to be received within the inner periphery of the
insulation;
a wick disposed within the inner periphery of the
insulation and extending through the slit to the outer periphery
of the insulation;
a vapor retarder on the outer periphery of the insulation,
wherein a portion of said vapor retarder forms a perforated flap
initiating on a first side of the slit extending over the slit,
wherein the perforated flap is not an additional element
of said insulation system,
wherein the perforations of said perforated flap are of
sufficient size to allow vapor to evaporate from the wicking
material at a rate equal to or greater than the allowed ingress of
water vapor condensing on said pipe.
(Br. 18; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed July 10, 2008, hereinafter
“Ans.,” 3):
Korsgaard 5,441,083 Aug. 15, 1995
Cridland et al. (“Cridland”) 5,690,147 Nov. 25, 1997

Appeal 2009-006163
Application 09/737,051

3
The Examiner rejected the claims as follows:
I. Claims 1, 4, 5, 7-15, 19, and 21 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement (Ans. at 7-8);
II. Claims 1, 4, 5, 7-11, and 211 under 35 U.S.C. § 103(a) as
unpatentable over Cridland (id. at 3-4); and
III. Claims 12-15 and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Cridland
and Korsgaard (id. at 5-7).
We reverse with respect to the lack of written description rejection
under § 112, ¶ 1, but affirm with respect to the rejections under § 103(a).

ISSUES
I. Claims 1, 4, 5, 7-15, 19, and 21: Lack of Written Description
The Examiner asserts that claim 1, as now amended to recite “wherein
the perforated flap is not an additional element of said insulation system,”
violates the written description requirement of 35 U.S.C. § 112, ¶ 1, because
the “mere absence of a positive recitation [in the originally filed description]
is not [a] basis for an exclusion [i.e., a negative limitation]” (Ans. 7-8).
Appellants, on the other hand, argue that the drawings provide support
for the later-claimed invention (Br. 14).
Thus, the dispositive issue arising from the contentions of the
Examiner and Appellant is:

1 The Examiner erroneously included canceled claim 20 as rejected under
this ground of rejection (Ans. 3-4; Amendment filed on December 10, 2007;
Advisory Action mailed on December 27, 2007).
Appeal 2009-006163
Application 09/737,051

4
Has Appellant shown reversible error in the Examiner’s finding that
the disclosure, as originally filed, does not reasonably convey to one skilled
in the relevant art that Appellant had possession of the invention now recited
in claim 1 including the limitation “wherein the perforated flap is not an
additional element of said insulation system”?

II. Claims 1, 4, 5, 7-11, and 21: Obviousness over Cridland
The Examiner finds, inter alia, that Cridland discloses “a vapor
retarder . . . wherein a portion of said vapor retarder forms a perforated
flap,” as recited in claim 1 (Ans. 3-4). In particular, the Examiner relies on
Figures 2, 4, and 8 and specifically refers to elements 16 (Figures 2 and 4),
32 (Figure 4), and 62 (Figure 8) (id.).
Appellant’s only argument is that the limitation “wherein the
perforated flap is not an additional element of the insulation system”
distinguishes the invention recited in claim 1 over Cridland (Br. 9-11).
Thus, the issue arising from the contentions of the Examiner and
Appellant is:
Has Appellant shown reversible error in the Examiner’s finding that
Cridland describes a perforated flap that is part of a vapor retarder as
required by the language “wherein a portion of said vapor retarder forms a
perforated flap . . . wherein the perforated flap is not an additional element
of said insulation system” in claim 1?

Appeal 2009-006163
Application 09/737,051

5
III. Claims 12-15 and 19: Obviousness over Cridland and Korsgaard
With respect to the rejection of claims 12-15 and 19 over Cridland and
Korsgaard, Appellant relies on the same arguments made against the
rejection of claim 1 over Cridland (Br. 13).
Thus, the issue is the same as in Rejection II.

FINDINGS OF FACT (“FF”)
1. Appellant’s disclosure, as originally filed, describes “a
tubular layer of insulation” (hereinafter element (a)), “a
wick” (hereinafter element (b)), and “a vapor retarder . . .
including a flap” (hereinafter element (c)) as elements of
the insulation system (original claim 1, Spec. 12).
2. After filing of the Application, Appellant amended
independent claims 1 and 21 by adding the limitation
“wherein the perforated flap is not an additional element
of said insulation system” (Amendment submitted July
26, 2007).
3. Appellant’s Figures 1A, 1B, 1C, and 1D are reproduced
below:
Appeal 2009-006163
Application 09/737,051

6

Figures 1A, 1B, 1C, and 1D depict embodiments of an
insulation system 1 in accordance with the claimed
invention including a vapor retarder 10 in combination
with a perforated flap 30, wherein, in Figures 1A, 1C,
and 1D, the perforated flap is shown as one piece with
the vapor retarder 10, while in Figure 1B, “flap 30 is an
integral part of the vapor retarder 10” (emphasis added;
Spec. 8, l. 8 to 9, l. 2).
4. Cridland’s Figures 2, 4, and 8 are reproduced below:
Appeal 2009-006163
Application 09/737,051

7

Figures 2, 4, and 8 depict two embodiments of a heat-
insulating assembly comprising an annular heat-
insulating body, wherein: element 16 is an aluminum foil
that serves the purpose of providing a vapor and water
barrier preventing vapor and water from permeating into
the heat-insulated material of the segments 12 and 14 of
the heat-insulating body; element 32 is a perforated
adhesive foil; and element 62 is a perforated tape similar
to element 32 (col. 5, ll. 55-65; col. 6, ll. 18-23; col. 7, ll.
11-14; col. 8, ll. 1-5).

Appeal 2009-006163
Application 09/737,051

8
PRINCIPLES OF LAW
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, the disclosure of the application as originally filed must
reasonably convey to those skilled in the relevant art that the applicant, as of
the filing date of the original application, had possession of the claimed
invention. In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).
The subject matter of the claims need not be described identically or
literally to satisfy the written description requirement of 35 U.S.C. § 112, ¶
1. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification.
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”) (Citation omitted).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).

Appeal 2009-006163
Application 09/737,051

9
ANALYSIS
I. Claims 1, 4, 5, 7-15, 19, and 21: Lack of Written Description
We agree with Appellant that the Examiner’s rejection is not well
founded. Appellant’s drawings all show that the flap is part of the vapor
retarder element of the insulation system (FF 3). Indeed, originally filed
claim 1, which is part of Appellant’s original disclosure, explicitly describe
the “flap” as part of a recited, not “an additional,” element of the claimed
insulation system (i.e., element (c)) (FF 1). Thus, the newly added limitation
“wherein the perforated flap is not an additional element of said insulation
system” (FF 2) merely recites subject matter that was necessarily present in
the original disclosure.
For these reasons, we cannot uphold this rejection.

II. Rejection of Claims 1, 4, 5, 7-11, and 21 Under 35 U.S.C. § 103(a) As
Unpatentable over Cridland
While Appellant refers to claims 1 and 21, Appellant relies on the
same argument for all the claims subject to this rejection. Accordingly, we
select claim 1 as representative and confine our discussion to this selected
claim. 37 C.F.R. § 41.37(c)(1)(vii).
We start with claim construction. Claim 1 recites “a vapor
retarder . . . wherein a portion of said vapor retarder forms a perforated
flap.” Appellant does not direct us to any special definition in the
Specification that restricts this phrase to any particular structure or structures
(Br. 9-17). Indeed, Appellant’s Specification would have indicated to one
skilled in the relevant art that the recitation “wherein a portion of said vapor
retarder forms a perforated flap” reads on each embodiment as depicted in
Appeal 2009-006163
Application 09/737,051

10
Figures 1A, 1B, 1C, and 1D (FF 3). Significantly, in describing the
embodiment shown in Fig. 1B, the Specification explicitly states that “flap
30 is an integral part of the vapor retarder 10” (FF 3). Therefore, we
construe the phrase “wherein a portion of said vapor retarder forms a
perforated flap” to encompass the vapor retarder and flap combination of the
type as shown in Fig. 1B.
Having construed claim 1, we consider the teachings of the principal
prior art reference, Cridland. Cridland describes a heat-insulating body that
corresponds to an embodiment within the scope of appealed claim 1, i.e.,
Fig. 1B (FF 4). Thus, Cridland discloses a structure in which “a portion of
[the] vapor retarder forms a perforated flap,” as required by claim 1.
Appellant argues that “Cridland clearly teaches and depicts in the
figures that the perforated foil is an additional component” and “that the foil
is to be applied to the vapor barrier layer” (Br. 10). This argument fails at
the outset. In view of the proper claim construction, as discussed above,
Cridland’s flap is not an “additional component” of the claimed insulation
system. Rather, Cridland’s flap, like the flap shown in Appellant’s Fig. 1B,
is an integral part of the vapor retarder and is therefore a portion of the vapor
retarder, which is an element that is recited (not “additional”) in claim 1.

III. Rejection of Claims 12-15 and 19 Under 35 U.S.C. § 103(a) As
Unpatentable over Cridland and Korsgaard
Appellant relies on the same argument as discussed above with
respect to claim 1 for patentability of claims 12-15 and 19 (App. Br. 13).
Thus, for the same reasons as discussed above, we find that Appellant has
Appeal 2009-006163
Application 09/737,051

11
not shown reversible error in the Examiner’s obviousness rejection of claims
12-15 and 19 over Cridland and Korsgaard.

CONCLUSION
Written Description
Appellant has shown reversible error in the Examiner’s lack of written
description rejection because the original drawings reasonably convey to one
skilled in the relevant art that Appellant had possession of the claimed
invention including the limitation “wherein the perforated flap is not an
additional element of said insulation system.”

Rejections Under 35 U.S.C. § 103(a)
Appellant has not shown reversible error in the Examiner’s finding
that Cridland discloses a perforated flap that is part of the claimed vapor
retarder “wherein a portion of said vapor retarder forms a perforated flap”
and “wherein the perforated flap is not an additional element of said
insulation system,” as recited in claim 1.

DECISION
We reverse the Examiner’s decision to reject claims 1, 4, 5, 7-15, 19,
and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
However, we affirm the Examiner’s decision to reject:
claims 1, 4, 5, 7-11, and 21 under 35 U.S.C. § 103(a) as unpatentable
over Cridland; and
Appeal 2009-006163
Application 09/737,051

12
claims 12-15 and 19 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Cridland and Korsgaard.

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)(v).

AFFIRMED

MAT

Owens Corning
2790 Columbus Road
Granville OH 43023