Ex Parte Wheaton

Patent Trial and Appeal Board

May 17, 2018

12593349 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/593,349 11/10/2009
279 7590 05/21/2018
IP Docket
Clark Hill PLC
130 East Randolph Street
Suite 3900
Chicago, IL 60601
FIRST NAMED INVENTOR
Christopher Simon Courtenay Wheaton
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.
139992/PB 123 736US 5379
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
IPDocket@clarkhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER SIMON COURTENAY WHEATON
Appeal2016-004602
Application 12/593,349
Technology Center 1700
Before CHRISTOPHER L. OGDEN, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 5, 6, 9--11, and 15-17. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Cypherco Limited. Appeal Brief
of September 5, 2012 ("Br."), 3.
Appeal2016-004602
Application 12/593,349
CLAIMED SUBJECT MATTER
Claim 5, reproduced below, is illustrative of the claimed subject
matter:
5. A method of fusing thermoplastics components together
compnsmg:
positioning an electrically conductive member on a first
surface of a first thermoplastic component, the electrically
conductive member comprising a solid material having
perforations forming spaces;
positioning a second thermoplastic component such that a
second surface of the second thermoplastic component is in
contact with the electrically conductive member so as to trap the
electrically conductive member between the first and second
surfaces, the perforations of the electrically conductive member
being distributed across the electrically conductive member and
having sizes that vary across the electrically conductive member
to provide a predetermined profile of heating and melting of the
thermoplastics components;
inducing a high frequency alternating electric current to
flow in the electrically conductive member so as to heat the
electrically conductive member and melt at least some
thermoplastic material forming the thermoplastic components
adjacent the first and second surfaces; and
applying a force urging the first and second thermoplastic
components together as to create a pressure in the molten
thermoplastic materials, which urges the molten thermoplastic
material into the perforations of the electrically conductive
member and fuses the first and second thermoplastic components
together with the electrically conductive member trapped
there between.
Br. 17-18 (Claims App.) ( emphasis added).
2
Appeal2016-004602
Application 12/593,349
REFERENCES
The prior art relied references upon by the Examiner in rejecting the
claims on appeal are:
Carpino
Feeney
Hettinga
Schulte-Ladbeck
US 2006/0201933 Al
GB 2 194915 A
EP O 819 515 Al
WO 03/03 6149 A2
REJECTIONS
Sept. 14, 2006
Mar. 23, 1988
Jan.21, 1998
May 1, 2003
Claims 5, 6, 9-11, and 15-17 are rejected under 35 U.S.C. § I03(a)
(pre-AIA) as being unpatentable over Schulte-Ladbeck. Final Act. 2. 2
Claims 5, 6, 9-11, and 15-17 are rejected under 35 U.S.C. § I03(a)
(pre-AIA) as being unpatentable over Hettinga and Carpino. Final Act. 3.
Claims 5, 6, 9-11, and 15-17 are rejected under 35 U.S.C. § I03(a)
(pre-AIA) as being unpatentable over Feeney and Carpino. Final Act. 4.
OPINI0N3
Obviousness Based on Schulte-Ladbeck
The Examiner finds that Schulte-Ladbeck teaches or suggests each
and every limitation of claim 5 and specifically cites figures 1 and 10 of
Schulte-Ladbeck for teaching "perforations of the electrically conductive
member ... having sizes that vary across the electrically conductive
2 We refer to the Final Office Action of February 6, 2012 ("Final Act.") and
the Examiner's Answer of February 20, 2014 ("Ans."). No Reply Brief was
submitted.
3 Appellant does not present separate arguments for independent claim 6 and
instead argues claims 5 and 6 together. Br. 12-16. Consistent with the
provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), claims 6, 9-11, and 15-17
stand or fall with claim 5.
3
Appeal2016-004602
Application 12/593,349
member" as recited in claim 5. Final Act. 2-3; Ans. 5---6 (additionally
referring to Figures 2--4 and 11). In response to Appellant's argument that
these prior art figures show a constant size of perforations - contrary to the
"perforations ... having sizes that vary across the electrically conductive
member" as recited in claim 5, the Examiner states that "Figure 10 shows a
perforated metal disc (82), each of which is clearly shown having
perforations of smaller size and different shape at its edges as compared to
other areas of the insert." Ans. 5. The Examiner states that Figures 1, 2--4
also show "both large and small" openings in a conductive wire insert. Id.
Figures 1, 10, and 11 of Schulte-Ladbeck are reproduced below,
respectively.
FIG. 1·
.,.--·4 - -,_/
~\ ,_.--42
', / ,:.c •. :Q1 ... -1
/ \~--44 ) Y
_/ 46··-·' 2
44·-.
r·······-~----~------.-.-.-
r , 42-.,...
2 '·'"46
"-·-22
Schulte-Ladbeck Figure 1 showing "a view of the front or face of a weld
insert comprising an annular disc including a heating element." ,r 13.
4
Appeal2016-004602
Application 12/593,349
44,--/
FIG. 10
Schulte-Ladbeck Figure 10 showing "a view of the front or face of ... a
weld insert ... comprising an annular disc of a perforated, electrically
conductive metal." ,r 22.
46·-.."
:0
96 __ ..,,/ "'--- 4;·.
FIG. 11
Schulte-Ladbeck Figure 10 showing "a view of the front or face of
... a weld insert ... comprising an annular disc of an electrically conductive
metal screen." ,r 23.
5
Appeal2016-004602
Application 12/593,349
Because each of the figures shows a constant size of perforation, we
find that the Examiner reversibly erred in finding that these figures teach or
suggest "perforations ... having sizes that vary across the electrically
conductive member" as recited in claim 5. We cannot sustain the
obviousness rejection on this basis.
Obviousness Based on Hettinga and Carpino
For the rejection based on Hettinga and Carpino, Appellant
acknowledges that Carpino "teaches various configurations of an electrical
heating element design" including those "which have variable sizes of
openings such that the resistivity of the element varies across it." Br. 15
(while arguing that this limitation is missing from Hettinga). Appellant,
however, argues that Carpino does not teach the use of "induction heating."
Id.
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references .... [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole."
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The record before us shows that Hettinga teaches using "induction
energy" to "form the metal reinforced plastic article." Hettinga 5:44--45,
49--53; Ans. 9. Appellant's argument that "Hettinga is ... not relevant
because it teaches a method in which a metal reinforcing member is heated
before it is placed between the surfaces to be fused" does not identify
reversible error in the Examiner's fact findings or reasoning. See Br. 13.4
This argument incorrectly assumes that claim 5 requires the steps to be
4 This line of argument does not apply to claim 6 which is a product claim.
6
Appeal2016-004602
Application 12/593,349
performed in the order written. However, under the broadest reasonable
interpretation of claim 5, the "inducing" step may be performed prior to the
two "positioning" steps, so long as melting ultimately occurs in at least some
thermoplastic material adjacent the first and second surfaces. See Altiris Inc.
v. Symantec Corp., 318 F.3d 1363, 1369--1370 (Fed. Cir. 2003) (the
sequence in which steps are written is not a requirement of the claim unless
it is "a matter of logic or grammar" or required by the specification).
The remainder of Appellant's argument states a disagreement with the
Examiner's findings without explanation as to why the Examiner reversibly
erred. See Br. 15 (stating "Hettinga also fails to disclose or suggest these
limitations" without presenting sufficient explanation or evidence). To
prevail in an appeal to this Board, Appellant must adequately explain or
identify reversible error in the Examiner's§ 103(a) rejections. See 37
C.F.R. § 4I.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011). We, accordingly, sustain the obviousness rejection based
on Hettinga and Carpino.
Obviousness Based on Feeney and Carpino
For the rejection based on Feeney and Carpino, Appellant
acknowledges that Carpino "teaches various configurations of an electrical
heating element design" including those "which have variable sizes of
openings such that the resistivity of the element varies across it." Br. 15
(while arguing that this limitation is missing from Feeney). Appellant,
however, argues that Carpino does not teach the use of "induction heating"
and that "Feeney does not disclose or suggest using perforations." Id. at 14,
15.
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Appeal2016-004602
Application 12/593,349
Appellant's argument, directed to the individual reference in isolation,
is not persuasive of reversible error. Merck, 800 F.2d at 1097 ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references .... [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole"). We
accordingly sustain the obviousness rejection based on Feeney and Carpino.
DECISION
The Examiner's rejection of claims 5, 6, 9-11, and 15-17 over
Schulte-Ladbeck is reversed.
The Examiner's rejection of claims 5, 6, 9-11, and 15-17 over
Hettinga and Carpino is affirmed.
The Examiner's rejection of claims 5, 6, 9-11, and 15-17 over Feeney
and Carpino is affirmed.
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)(l )(iv).
AFFIRMED
8