Ex Parte Vanderzwet et al

Patent Trial and Appeal Board

May 27, 2016

12515831 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/515,831 05/21/2009
26096 7590 06/01/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Daniel P. Vanderzwet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67038-059PUS 1 2995
EXAMINER
SINGH, AMIT K
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL P. VANDERZWET, ZYGMUNT BARAN, and
GERALD MILLS
Appeal2014-003357 1
Application 12/515,831 2
Technology Center 3700
Before: BRUCE T. WIEDER, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Oct. 17, 2013), the Reply Brief ("Reply Br.," filed Jan. 22, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 21, 2013), the Final Office Action
("Final Act.," mailed Mar. 15, 2013), and the Specification ("Spec.," filed
May 21, 2009).
2 According to the Appellants, the real party in interest is Doben Limited.
Appeal Br. 1.
Appeal2014-003357
Application 12/515,831
STATEMENT OF THE CASE
The Appellants' invention is directed to "a multi-passage heater
assembly suitable for use with, for example, a gas dynamic cold spray gun."
Spec. 1, 11. 5-6.
Claims 1, 11, and 14 are the independent claims on appeal, are
reproduced below, and are illustrative of the subject matter on appeal:
1. A heater assembly comprising:
a non-metallic heater core providing multiple concentric
passages converging to a common outlet, at least two of the
concentric passages including a heating element, the heater core
including radially spaced apart walls providing the concentric
passages.
11. A heater assembly comprising:
a heater core providing a passage having a heating
element;
a heater housing at least partially surrounding the heater
core; and
a biasing member urging the heater core to an end of the
heater housing.
14. A heater assembly comprising:
a ceramic heater core providing parallel nested passages
having a heating element; [and]
a non-metallic insulating cone receiving an end of the
heater core, the cone in fluid communication with the nested
passages to converge flow there from to an outlet.
Appeal Br. 8-9 (Claims App.).
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Application 12/515,831
REJECTIONS
Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. 3
Claims 1-3, 10, and 19 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by Maev (US 2007/0160769 Al, pub. July 12, 2007).
Claims 4, 7, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev and Leventhal (US 7,047,660 B2, iss. May 23,
2006).
Claims 8, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev and Wilkinson (US 4,090,643, iss. May 23, 1978).
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev, Leventhal, and Tsutsumi (US 4,704,516, iss. Nov.
3, 1987).
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev, Wilkinson, and Leventhal.
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev, Leventhal, and Dillon (US 6, 726,884 B 1, iss. Apr.
27, 2004).
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev and Tsutsumi.
3 The Appellants state that the Examiner rejects claims 1-10, 17, and 18
under 35 U.S.C. § 112, second paragraph. Appeal Br. 3. However, the Final
Action (the Office Action from which the appeal is taken) provides only a
rejection of claim 7 under 35 U.S.C. § 112. Final Act. 4. Therefore, we
consider only the rejection of claim 7 under§ 112 as pending on appeal.
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ANALYSIS
Preliminary Matters
We note that review of the objections to the Drawings and
Specification (see Appeal Br. 6-7) must be requested by petition to the
Director. 37 C.F.R. § 1.113. Accordingly, we do not address the merits of
the objections.
Indefiniteness - Claim 7
The Examiner determines that claim 7 is indefinite under 35 U.S.C.
§ 112, second paragraph, because "[i]t is unclear as to what is meant from
'adjoining layers with the metallic deflecting cone and the insulating cone'
in claim 7 (line 3)." Final Act. 4.
The Appellants do not present any arguments against this rejection.
See Appeal Br. 3--4; see also Reply Br. 1. Therefore, we summarily affirm
the rejection of claim 7 under 35 U.S.C. § 112.
Anticipation - Claims 1-3, 10, and 19
The Appellants contend the Examiner's rejection of claim 1 is in error
because Maev does not disclose "at least two of the concentric passages
including a heating element" as recited in claim 1. Appeal Br. 4.
Specifically, the Appellants argue that Figure 4A of Maev does not depict
multiple passages having heating elements, but "clearly shows only one
annular passage hav[ing] a heating element" and that the heating elements
are in the same annular passage. Reply Br. 1.
The Examiner finds, in relevant part, that Maev, at paragraph 33 and
Figure 4A, discloses "multiple concentric passages[] converging to a
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common outlet" in that the "passages [are those] made by pipeline 54,
internal chamber housing 26, and ceramic tube 53" and converge to a
common outlet of the ceramic insert 7 of Figure 4A. Final Act. 5. The
Examiner further finds that at least two of the passages, i.e., the ceramic tube
and the pipeline, include a heating element (helical coil heating element 23).
Id.
Maev discloses at paragraph 33 (in discussing Figure 4A):
The air flows in from the line 14 forwardly (to the right in FIG.
4A) between the internal chamber housing 26 and the pipeline
54. The air then enters the forward end of pipeline 54 and
flows rearwardly within the helical coil-heating element 23. At
the rearward end of the pipeline 54, the air enters the ceramic
tube 53 and then travels forwardly through the ceramic tube 53
the tapered chamber 30 and the converging ceramic insert 7.
Thus, the air gathers heat from the helical coil-heating element
23 on three serpentine passes.
Figure 4A, reproduced below, depicts the heating chamber with the
elements.
As such, Maev discloses one passage as air flows forwardly (to the
right in Figure 4A) between the housing 26 and pipeline 54, a second
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passage as air flows rearwardly through pipeline 54 within the heating
element, and a third passage as air travels forwardly through ceramic tube
53, i.e. multiple concentric passages. Maev i-f 33. Maev discloses that the
passage through the pipeline includes a heating element. Id. However, it is
not clear from the cited portions of Maev that the passage through the
ceramic tube includes a heating element; the Examiner does not explain or
show persuasively how Maev' s ceramic tube provides a concentric passage
including a heating element. Thus, the Examiner has not shown how Maev
discloses "at least two of the concentric passages including a heating
element," as required by claim 1.
Therefore, we are persuaded of error on the part of the Examiner in
rejecting claim 1 as anticipated by Maev, and do not sustain the rejection.
We also do not sustain the rejections of dependent claims 2, 3, 10, and 19 as
they stand with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness
Claims 4--9, 1 7, and 18
Claims 4--9, 1 7, and 18 depend from claim 1. The Examiner's
rejections of claims 4--9, 17, and 18 under 35 U.S.C. § 103(a) based on
Maev, in combination with Leventhal, Wilkinson, or Leventhal and
Tsutsumi, do not cure the deficiency in the Examiner's rejection of claim 1
under 35 U.S.C. § 102(e). Therefore, we do not sustain the Examiner's
rejection of claims 4--9, 17, and 18 under 35 U.S.C. § 103(a) forthe same
reasons set forth above with respect to claim 1.
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Claims 11-134
The Appellants contend the rejection of independent claim 11 is in
error because the Examiner impermissibly uses hindsight. Appeal Br. 5---6.
Specifically, the Appellants argue "there is no indication in view of the
references as to how assembly, disassembly or maintenance would be
improved in Maev. Wilkinson does not use the spring for ease of assembly
or maintenance." Id. at 5.
The Examiner finds Maev discloses a heater core and heater housing
as recited in claim 11. See Final Act. 9. The Examiner further finds Maev
does not disclose a biasing member, but finds Wilkinson discloses a biasing
member as claimed. See id. The Examiner determines one of ordinary skill
in the art "can readily use the teaching of Wilkinson to arrange the claimed
urging structure," and "to combine the disclosure of Maev for a gas dynamic
spray gun, to the hot melt applicator as taught by Wilkinson, for an easier
assembly, disassembly, and maintenance." Id. at 9-10.
We find that the Examiner's rationale is deficient. The Examiner does
not explain why one of ordinary skill in the art would modify the heater
assembly in the apparatus of Maev with the biasing member (coil spring) of
Wilkinson. The Examiner's finding that one of ordinary skill in the art "can
readily contemplate that the coil spring 136 (FIG. 2) of Wilkinson can
simplify assembly, disassembly, and maintenance because the coil spring
136 will urge a component to its preferred location" (Ans. 17-18) is not
adequately supported by evidence.
4 The claims are addressed in numerical order.
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Thus, we are persuaded of error on the part of the Examiner in
rejecting claim 11 as unpatentable over Maev and Wilkinson, and do not
sustain the rejection. Because we do not sustain the rejection of independent
claim 11, we also do not sustain the rejection of dependent claims 12 and 13.
Cf In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Claim 14
The Appellants' contention that the Examiner's rejection of claim 14
is in error (Appeal Br. 5; see also Reply Br. 2) is not persuasive.
The Appellants' argument that "[i]n Maev, there are no nested
passages that include a heating element, as set forth in amended claim 14"
(Appeal Br. 5) is not persuasive at least because, as discussed above with
respect to claim 1, Maev discloses at least one passage including a heating
element. The Appellants' further argument that "[i]n Maev, there are no
nested passages that 'converge' into the outlet" as required by the claim
(Reply Br. 2) is not persuasive at least because it is not commensurate with
the claim. Claim 14 does not require that the passages converge to the
outlet, but rather that the flow from the passages converge to an outlet.
Appeal Br. 9, Claims App. ("the cone in fluid communication with the
nested passages to converge flow there from [sic] to an outlet.") (emphasis
added). To the extent the Appellants argue that the passages are not
"nested" (see Appeal Br. 5), this argument is not persuasive. The term
"nested" is not defined in the Specification, and the Appellants do not
provide adequate evidence or reasoning why the Examiner's finding that the
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passages of Maev are nested is in error. See Appeal Br. 2 ("Maev arguably
has passages that might be considered 'nested'").
Thus, we are not persuaded of error on the part of the Examiner in
rejecting claim 14 as unpatentable over Maev and Leventhal, and we sustain
the rejection.
Claims 15 and 16
The Appellants contend the Examiner's rejection of claims 15 and 16
is in error because Dillon does not disclose that the insulating cone is
ceramic as required by the claims (see Appeal Br. 6; see also Ans. 18
(interpreting argument as against claims 15 and 16)) and because the
Examiner fails to provide adequate reasoning for a prima facie case (see
Reply Br. 3).
The Examiner finds, in claim 14 from which claims 15 and 16 depend,
that Maev discloses a ceramic heater core as claimed and a cone in
communication with the passages to converge flow (see Final Act. 8), and
that Leventhal teaches a non-metallic insulating cone receiving an end of the
heater core (id.). The Examiner further finds that the combination of Maev
and Leventhal does not teach the cone being ceramic, as recited in claim 15.
Id. at 11. The Examiner finds Dillon teaches a ceramic insulating cone (see
id.) and that selecting ceramic from the materials disclosed by Dillon is an
obvious design choice (Ans. 18). Thus, the Examiner has established a
prima facie case of obviousness as the Examiner has provided articulated
reasoning with rational underpinning to support a legal conclusion of
obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellants' argument that Dillon does not disclose a ceramic
insulating cone (Appeal Br. 6), is not persuasive because it is not supported
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by the evidence. Dillon discloses that the insulating cone can be formed
from ceramic powders, beads, and spheres, i.e., a ceramic insulating cone.
See Ans. 18 (citing Dillon, col. 3, 11. 45--49); see also Dillon, col. 3, 11. 11-
17.
The Appellants' argument that the Examiner's reasoning of design
choice is not sufficient under KSR (Reply Br. 3) is not persuasive because
the Appellants do not provide adequate evidence or reasoning why the
Examiner's reason for modifying Maev and Leventhal with Dillon is in
error. For example, the Appellants do not set forth any reasons why the
differences between the claimed invention and prior art would result in a
different function or give unexpected results. See In re Rice, 341F.2d309,
314 (CCPA 1965); and In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) ("Use
of such a means of electrical connection in lieu of those used in the
references solves no stated problem and would be an obvious matter of
design choice within the skill in the art.").
Thus, we are not persuaded of error on the part of the Examiner in
rejecting claims 15 and 16 as unpatentable over Maev, Leventhal, and
Dillon, and we sustain the rejection.
DECISION
The Examiner's rejection of claim 7 under 35 U.S.C. § 112, second
paragraph, is summarily AFFIRMED.
The Examiner's rejection of claims 1-3, 10, and 19 under 35 U.S.C.
§ 102(e) is REVERSED.
The Examiner's rejections of claims 4--9, 11-13, 17, and 18 under
35 U.S.C. § 103(a) are REVERSED.
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The Examiner's rejections of claims 14--16 under 35 U.S.C. § 103(a)
are AFFIRMED.
No time period of 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)(l )(iv).
AFFIRMED-IN-PART
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