Ex Parte Thiagarajan et alDownload PDFPatent Trial and Appeal BoardSep 16, 201412263719 (P.T.A.B. Sep. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHINNIAH THIAGARAJAN and FRANS ADRIAANSEN ____________ Appeal 2012-012024 Application 12/263,719 Technology Center 1700 ____________ Before CHARLES F. WARREN, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 1-3, 5-17, and 19-22. In the Answer, the Examiner has withdrawn the rejection of claim 21, leaving claims 1-3, 5-17, 19, 20, and 22 for consideration on appeal. Ans. 3-4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm-in-part. 1 The Real Party in Interest is SABIC GLOBAL TECHNOLOGIES B.V. (as recorded by the USPTO at Reel/Frame No. 033649/0529). At the time the Appeal Brief was filed, the assignee of the application on appeal was SABIC Innovative Plastics IP B.V. (Br. 2), which subsequently changed its name to Sabic Global Technologies B.V. as recorded on August 22, 2014). Appeal 2012-012024 Application 12/263,719 2 CLAIMED SUBJECT MATTER Appellants’ invention is directed to sheets having protrusions with a first portion extending from a base by a second portion, where a second portion diameter is less than a first portion diameter (Spec. ¶ 3). The protrusions may also be present in specific patterns (e.g., Spec. ¶ 4). The claims also recite that the sheet stiffens when an external force is applied. The structure of the claimed protrusions may be understood with reference to the following annotated version of FIG. 1 from the Specification: Annotated FIG. 1 shows a front profile view of an embodiment of the claimed protrusions. Independent claim 1 is representative and is reproduced below from the Claims Appendix to the Brief: 1. A sheet comprising: protrusions comprising a first portion extending from a base by a second portion, wherein a second portion diameter is less than a first portion diameter; wherein the sheet stiffens when an external force is applied. Appeal 2012-012024 Application 12/263,719 3 REJECTIONS The following rejections are appealed: (1) Claims 1, 16, 17, and 19 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over, Wilber.2 (2) Claims 1-3, 5, 6, 15, and 17 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over, Andreiko.3 (3) Claims 1-3 and 5 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Battrell.4 (4) Claims 1-3, 5-17, 19, 20 and 22 under 35 U.S.C. §103(a) as being unpatentable over Luke5 in view of Andreiko. DISCUSSION Rejection (1): The Examiner finds that Wilber describes a sheet comprising a plurality of protrusions, each having a first portion extending from a base by a second portion, wherein the second portion has a diameter less than the first portion (Ans. 6, citing Wilber Figs. 2 and 3). With regards to the claimed phrase “wherein the sheet stiffens when an external force is applied,” the Examiner finds this is inherently disclosed because Wilber describes the same structure as claimed, and Appellants’ Specification 2 Wilber, U.S. Patent No. 1,278,270, issued September 10, 1918. 3 Andreiko et al., U.S. Patent No. 6,190,165 B1, issued February 20, 2001. 4 Battrell, U.S. Patent No. 4,946,527, issued August 7, 1990. 5 Luke, U.S. Patent No. 3,528,196, issued September 15, 1970. Appeal 2012-012024 Application 12/263,719 4 discloses that the claimed stiffening effect6 is caused by the presence of that structure (Ans. 6, citing Spec. ¶ 19). Appellants do not dispute that the protrusions disclosed by Wilber meet the “protrusions” limitation set forth in the rejected claims (see, Appeal Br. 5). Instead, Appellants argue that the Examiner has not shown that Wilber’s materials have the claimed stiffening feature (id. at 5-7). These arguments are not persuasive of error in the Examiner’s position. We find that, as the Examiner points out, Appellants’ Specification discloses that structures such as that described by Wilber would have the claimed “sheet stiffens” functional limitation. Thus, the Examiner has established that the claimed sheet and that described by Wilber reasonably appear to be identical even though Wilber does not describe the sheet therein as having the claimed stiffen property. Accordingly, the burden shifted to Appellants to establish the patentability of the claimed sheet over that of Wilber by objective evidence or technical argument. See, e.g., In re Schreiber 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977). We are of the opinion that Appellants have not provided persuasive evidence or arguments to refute the Examiner’s position. Appellants argue that Wilber is directed to roofing materials, and, therefore, would not have the stiffening property recited in the claims because, rather than stiffening, roofing materials are blown off of roofs when subjected to high winds (Appeal Br. 6). However, as noted by the Examiner (Ans. 10), before a Wilber shingle would be 6 We note that none of claims 1, 16, 17, and 19 requires any particular amount of stiffening. Appeal 2012-012024 Application 12/263,719 5 blown off by an external force, it would inherently resist being bent (i.e. it would stiffen in response to an external force), as required by the claims. With regard to claim 19, which recites that claimed sheet “is configured for use in a glazing application,” Appellants contend that Wilber’s roofing materials “cannot be used in glazing applications” (Appeal Br. 8). We agree with the Examiner that in the same way that the Specification discloses plywood is typically applied as a glazing during hurricanes to cover windows (Spec. ¶¶ 36, 60), Wilber’s materials can be used in glazing applications, even if such use might not be aesthetically pleasing (Ans. 11). For the foregoing reasons, we determine that Appellants have not shown reversible error in the Examiner’s finding of anticipation. Because a lack of novelty is the ultimate form of obviousness, we also affirm the rejection under §103(a) over Wilber. See, e.g., In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed.Cir.1992); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[L]ack of novelty is the ultimate of obviousness”) Rejection (2): The Examiner finds that Andreiko describes a sheet comprising a plurality of protrusions with a first portion extending from a base by a second portion, wherein the second portion has a diameter less than the first portion (Ans. 6, citing Andreiko, FIGS. 1, 2, 3, 10A and 10C). The Examiner finds that Andreiko’s structure inherently provides the claimed property of stiffening when an external force is applied (Ans. 7). The Examiner bases this finding on the disclosure in Appellants’ Specification that Appeal 2012-012024 Application 12/263,719 6 the stiffening property is a function of the structure, and the fact that Andreiko’s sheet is made of polycarbonate, which is Appellants’ preferred material (Ans. 7, citing Spec. ¶ 19). Therefore, the Examiner has established that the claimed sheet and that described by Andreiko reasonably appear to be identical, even though Andreiko does not describe the sheet therein as having the claimed stiffening property. Accordingly, the burden shifted to Appellants to establish the patentably of the claimed sheet over that of Andreiko by objective evidence or technical argument. See, e.g., Schreiber 128 F.3d at 1478; Spada, 911 F.2d at 708; Best, 562 F.2d at 1254-56. We are of the opinion that Appellants have not provided persuasive evidence or arguments to refute the Examiner’s position Appellants make two arguments urging reversal of the rejections over Andreiko. First, Appellants argue that Andreiko does not disclose the claimed stiffening property of the sheet, and that the Examiner’s inherency argument with regards to this limitation is legally insufficient because the Examiner has not met the required “burden of providing a basis in fact or technical reasoning as to why an element is necessarily present in a reference” (Br. 10). We are not persuaded by this argument because the Examiner has shown that Appellants’ Specification, in particular ¶ 19, discloses that the claimed stiffening property is a function of the claimed structure. Therefore, the Examiner has provided a technical basis for the finding that Andreiko inherently discloses the claimed stiffening property because of the finding that Andreiko’s structure is the same as the claimed structure. Appeal 2012-012024 Application 12/263,719 7 Second, Appellants argue that Andreiko does not disclose a “sheet” as set forth in the claims, because Andreiko is directed to a “plastic orthodontic appliance with a mechanical bonding base” (Br. 9). We are not persuaded by this argument, either. As correctly noted by Appellants, during examination “the 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.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. In this instance, we agree with the Examiner (Ans. 11) that a layer of anything can be considered a sheet. Appellants have not pointed to anything in their Specification or elsewhere which would exclude Andreiko’s bracket base 14 from a reasonably broad interpretation of the term “sheet” as used in the claims. For the foregoing reasons, we determine that Appellants have not shown reversible error in the Examiner’s finding of anticipation over Andreiko. We also affirm the rejection under §103(a) over Andreiko because the claimed sheet lacks of novelty over the reference. See, e.g., Baxter Travenol Labs, 952 F.2d at 391; Fracalossi, 681 F.2d at 794. Rejection (3): The Examiner finds that Battrell describes a sheet comprising a plurality of protrusions with a first portion extending from a base by a second portion, wherein the second portion has a diameter Appeal 2012-012024 Application 12/263,719 8 less than the first portion (Ans. 7, citing Battrell, FIGS. 1 and 2). The Examiner finds that Battrell’s structure inherently provides the claimed property of stiffening when an external force is applied (Ans. 7-8). The Examiner bases this finding on the disclosure in the Specification that the stiffening property is a function of the structure (Ans. 8, citing Spec. ¶ 19). Appellants argue that Battrell is explicitly directed to a disposable article with decreased stiffness, and therefore cannot inherently disclose the claimed stiffening property (Br. 11, citing Battrell, col. 5, ll. 45-62). However, we agree with the Examiner that while Battrell discloses a device having decreased stiffness, it is silent with respect to whether application of an external force would result in the sheet stiffening (albeit from a less-stiff starting point), and that Appellants’ Specification explicitly discloses that sheets which have Battrell’s described structure would have the stiffening property (Ans. 11). Accordingly, the Examiner has established that the claimed sheet and that described by Battrell reasonably appear to be identical even though Battrell does not describe the sheet therein as having the claimed stiffen property. Accordingly, the burden shifted to Appellants to establish the patentably of the claimed sheet over that of Battrell by objective evidence or technical argument. See, e.g., Schreiber 128 F.3d at 1478; Spada, 911 F.2d at 708; Best, 562 F.2d at 1254-56. We are of the opinion that Appellants have not provided persuasive evidence or arguments to refute the Examiner’s position. In particular, we do not agree with Appellants that Battrell’s disclosure that its backing web is less stiff than other backing webs Appeal 2012-012024 Application 12/263,719 9 refutes the Examiner’s explanation – based on the technical disclosure in Appellant’s Specification (¶19) – that Battrell’s structure would necessarily have the claimed stiffening property. For the foregoing reasons, we determine that Appellants have not shown reversible error in the Examiner’s finding of anticipation over Battrell. We also affirm the rejection under §103(a) over Battrell because the claimed sheet lacks of novelty over the reference. See, e.g., Baxter Travenol Labs, 952 F.2d at 391; Fracalossi, 681 F.2d at 794. Rejection (4): The Examiner finds that Luke would have disclosed a sheet (i.e., a hurricane window panel) containing ribs used to stiffen the panel (Ans. 8, citing Luke, FIG. 5, and col. 3, l. 68 – col. 4, l. 4). The Examiner also finds that Luke does not teach the ribs as being a plurality of protrusions with a first portion extending from a base by a second portion, wherein the second portion has a diameter less than the first portion, as required by the claims, but does disclose that other patterns can be used for the ribs (Ans. 8, citing Luke, col. 3, l. 75 – col. 4, l. 1). The Examiner concludes that it would have been obvious to substitute Andreiko’s protrusions for Luke’s ribs because “this would merely involve a change in shape and/or size of the ribs from one known shape to another,” which is generally within the ordinary skill in the art (Ans. 9). We reverse this rejection because, as noted by Appellants (Br. 14), the Examiner has not provided a persuasive explanation of why a person of skill in the art would have replaced Luke’s ribs with Appeal 2012-012024 Application 12/263,719 10 protrusions which satisfy the requirements of the claims on appeal. Although Luke does disclose that its ribs may be of varied shapes, the Examiner has not explained why a person of ordinary skill in the art would have selected Andreiko’s protrusions to substitute onto Luke’s hurricane window panel. To support an obviousness rejection, the Examiner must “identify a reason that would have prompted a person of ordinary skill in the art in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). In this case, the Examiner has not adduced such a reason, requiring reversal of the obviousness rejection over Luke in view of Andreiko. CONCLUSION We AFFIRM the rejection of claims 1, 16, and 17, and 19 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Wilber. We AFFIRM the rejection of claims 1-3, 5, 6, 15, and 17 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Andreiko. We AFFIRM the rejection of claims 1-3, and 5 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Battrell. We REVERSE the rejection of claims 1-3, 5-17, 19, 20 and 22 under 35 U.S.C. §103(a) as being unpatentable over Luke in view of Andreiko. Appeal 2012-012024 Application 12/263,719 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART lp Copy with citationCopy as parenthetical citation