Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardSep 25, 201313349900 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 13/349,900 01/13/2012 JAMES DAVID BLACKHALL SMITH 2005P09158US01 1331 28524 7590 09/26/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 09/26/2013 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 JAMES DAVID BLACKHALL SMITH, GARY STEVENS, and JOHN WILLIAM WOOD __________ Appeal 2013-008131 Application 13/349,900 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and KAREN M. HASTINGS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-008131 Application 13/349,900 2 A. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1-17. Claims 18-20 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief dated March 15, 2013 (“App. Br.”), is representative of the subject matter on appeal. The limitations at issue have been italicized. 1. An impregnated electrical insulating tape comprising: a backing layer; a mica paper layer bonded to the backing layer; a resin comprising high thermal conductivity fillers dispersed therein, the resin impregnated through the mica paper layer and the backing layer; wherein the high thermal conductivity fillers comprise surface functional groups that are disposed on or grafted to the high thermal conductivity fillers, the high thermal conductivity fillers forming covalent bonds between the fillers and the resin to form an intimate interface between the high thermal conductivity fillers and the resin. The only rejection on appeal is the rejection of claims 1-17 under 35 U.S.C. § 102(e) as anticipated by Smith1 and as evidenced by McCullough.2 There is no dispute on this record that Smith describes an impregnated electrical insulating tape as recited in claims 1-17. The issue on appeal is whether the instant application is entitled to benefit under 35 U.S.C. § 119(e) of the June 1 US 2005/0274450 A1 published December 15, 2005. 2 US 6,251,978 B1 issued June 26, 2001. Appeal 2013-008131 Application 13/349,900 3 15, 2004, filing date of provisional application 60/580,023, which serves to eliminate Smith as prior art under 35 U.S.C. § 102(e).3 The Examiner finds provisional application 60/580,023 does not provide written description support under 35 U.S.C. § 112, first paragraph, for a tape comprising (1) “a backing layer” and (2) “a mica paper layer bonded to the backing layer” as recited in claims 1 and 14. Ans. 4.4 For this reason, the Examiner contends that the instant application is not entitled to benefit under 35 U.S.C. § 119(e) of the June 15, 2004, filing date of the provisional application. Id. at 3. The Appellants contend that the description of a “mica-glass tape construction,” “mica tape,” and/or “mica tape construction” in paragraphs [0007], [0016], and [0028] of provisional application 60/580,023 provide written description support for the claim limitations at issue. In particular, the Appellants argue that one of ordinary skill in the art would have understood that a “mica-glass tape construction,” “mica tape” and/or “mica tape construction” “require the inclusion of a material comprising a mica paper layer bonded to a backing layer as required in independent claim 1 . . . and as required in independent claim 14.” App. Br. 6. For support, the Appellants rely on ten “exemplary” references. Id. at 9-12. As explained by the Court in In re Wertheim, 541 F.2d 257, 262 (CCPA 1976): 3 US 2005/0274450 A1 to Smith was filed on April 15, 2005, and is said to claim benefit under 35 U.S.C. § 119(e) of the same provisional Application 60/580,023, filed on June 15, 2004. 4 Examiner’s Answer dated April 3, 2013. Appeal 2013-008131 Application 13/349,900 4 The function of the description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material. . . . It is not necessary that the application describe the claim limitations exactly . . . but only so clearly that persons of ordinary skill in the art will recognize from the disclosure that appellants invented [the later claimed subject matter]. [Citations omitted.] According to the evidence relied on by the Appellants, mica tape comprises a mica layer bonded to a backing layer. See, e.g., Hakamada, col. 3, ll. 4-145 (backing material is necessary to reinforce mica in a mica tape); Smith 382, col. 1, ll. 30-326 (mica tape is made from a mica paper bonded to a backing); Smith 775, col. 4, ll. 7-147 (mica tape comprises a flexible backing and a mica matrix structure bonded to the backing). However, relying on Foster,8 the Examiner contends that a “mica tape construction” does not necessarily require that the mica layer be bonded to a backing layer. Ans. 4. Foster discloses that a mica tape “may be prepared from a porous sheet backing material 14 upon which is disposed a layer of mica flakes 16.” Foster, col. 4, ll. 63-66. The backing material and the mica flakes are subsequently impregnated with a liquid epoxy resin adhesive. Id. at col. 4, ll. 66-68. Foster also discloses: While mica flake insulation is preferred for high voltage machines, other types of mica containing tape can be used for less rigorous applications. For example, mica paper, comprising small 5 US 4,239,998 issued December 16, 1980. 6 US 6,103,382 issued August 15, 2000. 7 US 6,190,775 B1 issued February 20, 2001. 8 US 4,013,987 issued March 22, 1977. Appeal 2013-008131 Application 13/349,900 5 mica particles bound together in a paper making process can be used, with or without a backing, in place of the composite mica flake tape shown. This paper would similarly be treated with the liquid epoxy resin adhesive. Id. at col. 5, ll. 16-23 (emphasis added). Based on the foregoing, we find that one of ordinary skill in the art would have understood that, by definition, a “mica tape” may or may not comprise a backing layer to which a mica layer is bonded. Thus, the description of a “mica tape” in the Appellants’ provisional application provides written description support under 35 U.S.C. § 112, first paragraph, for the limitations at issue in claims 1 and 14 (i.e., a tape comprising “a backing layer” and “a mica paper layer bonded to the backing layer”).9 As for the rejection under 35 U.S.C. § 102(e), the instant application is entitled to benefit under 35 U.S.C. § 119(e) of the June 15, 2004, filing date of provisional application 60/580,023. Therefore, the 35 U.S.C. § 102(e) is not sustained. C. DECISION The decision of the Examiner is reversed. REVERSED bar 9 The Examiner does not raise the issue of enablement under 35 U.S.C. § 112, first paragraph, for the limitations at issue in claims 1 and 14. See App. Br. 12 (arguing that the claims on appeal are also enabled by the disclosure of provisional application 60/580,023). Copy with citationCopy as parenthetical citation