Ex Parte Woodruff et alDownload PDFPatent Trial and Appeal BoardJan 31, 201814043663 (P.T.A.B. Jan. 31, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 14/043,663 10/01/2013 Alexa Woodruff SY-50112/710240-6749 2234 59582 7590 02/01/2018 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER ZHANG, MICHAEL N ART UNIT PAPER NUMBER 1781 MAIL DATE DELIVERY MODE 02/01/2018 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 ALEXA WOODRUFF, CASSIE M. MALLOY, DAVID A. HARRIS, and ALEKSANDR IIYIN1 ____________ Appeal 2017-004322 Application 14/043,663 Technology Center 1700 ____________ Before JULIA HEANEY, MONTÉ T. SQUIRE, and BRIAN D. RANGE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1–8 and 10–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, Federal Mogul Powertrain, Inc., which according to the Appeal Brief is also the real party in interest. App. Br. 1. 2 In our Decision, we refer to the Specification, filed October 1, 2013 (“Spec.”); Final Office Action dated March 18, 2016 (“Final Act.”); Advisory Action dated June 2, 2016 (“Adv. Act.”); Appeal Brief filed August 8, 2016 (“App. Br.”); Examiner’s Answer dated November 16, 2016 (“Ans.”); and Reply Brief filed January 17, 2017 (“Reply Brief”). Appeal 2017-004322 Application 14/043,663 2 The Claimed Invention Appellant’s disclosure relates to wrappable textile sleeves having an outer foil layer. Spec. ¶ 1; Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Exhibit A) (key disputed claim language italicized and bolded): 1. A wrappable textile sleeve, consisting of: an elongate wall extending along a longitudinal axis between opposite ends with lengthwise extending edges extending between said opposite ends; said wall including a textile layer formed of interlaced yarn, a polymeric film layer fixed directly to said textile layer and a metal foil layer, separate from said polymeric film layer, fixed directly to said polymeric film layer; and said polymeric film layer having a first thickness and said metal foil layer having a second thickness, said second thickness being greater than said first thickness. The References The Examiner relies on the following prior art references3 as evidence in rejecting the claims on appeal: Markoff US 3,148,099 Sept. 8, 1964 Gladfelter et al., US 6,309,721 B1 Oct. 30, 2001 (hereinafter “Gladfelter”) Synder US 6,610,928 B2 Aug. 26, 2003 Sellis et al., US 2004/0219846 A1 Nov. 4, 2004 (hereinafter “Sellis ’846”) 3 In both the Appeal Brief and Reply Brief, Appellant refers to the Sellis ’495 reference as “Sellis 1” and the Sellis ’846 reference as “Sellis 2,” respectively. Appeal 2017-004322 Application 14/043,663 3 Sellis et al., US 2007/0166495 A1 July 19, 2007 (hereinafter “Sellis ’495”) Serra et al., US 2008/0102240 A1 May 1, 2008 (hereinafter “Serra”) Malloy US 2012/0037263 A1 Feb. 16, 2012 Albright et al., US 2012/0118356 A1 May 17, 2012 (hereinafter “Albright”) The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1–3, 7, 8, 10, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495 in view of Synder and in further view of Sellis ’846 (“Rejection 1”). Ans. 2–4. 2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Synder, and Sellis ’846, and in further view of Markoff (“Rejection 2”). Ans. 4–5. 3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Synder, and Sellis ’846, and in further view of Albright (“Rejection 3”). Ans. 5–6. 4. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495 and Synder and in further view of Malloy (“Rejection 4”). Ans. 6–8. 5. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Synder, Sellis ’846, and Malloy, and in further view of Serra (“Rejection 5”). Ans. 8. 6. Claims 1–3, 7, 8, 10, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495 in view of Gladfelter and further in view of Sellis ’846 (“Rejection 6”). Ans. 8–10. Appeal 2017-004322 Application 14/043,663 4 7. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Gladfelter, and Sellis ’846 in view of Synder, and in further view of Markoff (“Rejection 7”). Ans. 10–11. 8. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Gladfelter, and Sellis ’846, and in further view of Albright (“Rejection 8”). Ans. 11–12. 9. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495 and Gladfelter and in further view of Malloy (“Rejection 9”). Ans. 12–14. 10. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Sellis ’495, Gladfelter, Sellis ’846, and Malloy in further view of Serra (“Rejection 10”). Ans. 14. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer and Final Office Action, which we adopt as our own. We highlight and address specific findings and arguments below for emphasis. Rejection 1 Appellant argues claims 1–3, 7, 8, 10, and 12 as a group. App. Br. 6. We select claim 1 as representative and the remaining claims subject to this rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that the combination of Sellis ’495, Synder, and Sellis ’846 suggests a wrappable textile sleeve satisfying all of the limitations of claim 1 and thus, concludes the combination would have Appeal 2017-004322 Application 14/043,663 5 rendered claim 1 obvious. Ans. 2–4 (citing Sellis ’495, Abstract, Figs. 5, 9, ¶¶ 6, 22, 28–32; Synder, Abstract, Fig. 1, col. 1, ll. 58–65, col. 2, ll. 49–60; Sellis ’846, Abstract, Fig. 1, ¶¶ 6, 24, and 25). Appellant argues that the Examiner’s rejection of claim 1 should be reversed because the cited art fails to teach or suggest the “polymeric film layer” and a separate “metal foil layer,” as claimed. App. Br. 6. In particular, Appellant contends that Sellis ’495 does not teach or suggest the inclusion of a polymeric film layer between the metal foil layer and the substrate to which it is directly attached, as required by the claim. Id. at 6. Appellant further argues that the cited art does not teach or suggest the “polymeric film layer having a first thickness and the metal foil layer having a second thickness, wherein the second thickness is greater than the first thickness,” as claimed. App. Br. 6–7; see also Reply Br. 2–3. Appellant also contends that the Examiner’s rejection is based on improper hindsight and one of ordinary skill in the art reading Sellis ’846 would not have been motivated to modify Sellis ’495’s metal foil layer to arrive at the claimed invention. App. Br. 7; see also Reply Br. 3. We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination (Ans. 2–4, 14–15) that the combination of Sellis ’495, Synder, and Sellis ’846 suggests all of the limitations of claim 1, and conclusion that the combination would have rendered the claim obvious. Sellis ’495, Abstract, Figs. 5, 9, ¶¶ 6, 22, 28– 32; Synder, Abstract, Fig. 1, col. 1, ll. 58–65, col. 2, ll. 49–60; Sellis ’846, Abstract, Fig. 1, ¶¶ 6, 24, 25. Appeal 2017-004322 Application 14/043,663 6 Contrary to what Appellant argues, we find that the cited art does suggest the “polymer film layer” and “metal film layer,” as claimed. As the Examiner finds (Ans. 2, 15), Sellis ’495 teaches a wrappable textile sleeve consisting of an elongate wall that comprises a substrate 52 formed of woven interlaced yarn (textile layer) and an outer layer of material 56 comprising either metal foil or metallized Mylar (metal foil layer) attached to the substrate 52. Sellis ’495, Abstract, ¶¶ 6, 22, 28–32, Figs. 5, 6, 9. As the Examiner finds (Ans. 15), Sellis ’495 also teaches the structure having an inner layer of polymeric film material 54 (polymer film layer) attached to substrate 52 and that the substrate 52 could have a combination of the inner layer material 54 and the outer layer material 56 stacked together on one side or on both sides of the substrate. Sellis ’495 ¶ 28 (“It should be recognized that either of these inner and outer layers of material 54, 56 could be attached on both sides [of substrate 52] . . . depending on the application.”). As the Examiner further finds (Ans. 2), Synder teaches a sleeve comprising a textile layer 12, a polymeric film layer 14 fixed directly to the textile layer 12, and a metal foil layer 16 fixed directly to the polymeric film layer 14. Synder, Fig. 1, col. 2, ll. 51–55. As the Examiner also finds (Ans. 2–3), Synder teaches that the metal foil layer 16 can be adhered to the polymeric film layer 14 and adhesive bonding of the metal foil and polymer film layers provides for “increased interlaminar shear strength” at high temperatures. Synder, col. 1, ll. 58–65, col. 2, ll. 49–60. Appellant’s arguments do not reveal any reversible error in the Examiner’s factual findings and analysis in this regard. Appeal 2017-004322 Application 14/043,663 7 The Examiner also provides a reasonable basis and identifies a preponderance of the evidence in the record to evince why one of ordinary skill would have combined the teachings of the references to arrange the textile layer, polymeric film layer, and the metal foil layer in the manner claimed, i.e., with the polymer film layer between the metal foil layer and textile layer. Ans. 3 (explaining that it would have been obvious to one of ordinary skill in the art at the time of invention to adhesively bond Sellis ’495’s metal film layer directly to the polymer film layer because Synder teaches doing so provides for increased interlaminar shear strength at high temperatures); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed); see also id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellant fails to direct us to sufficient evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. We do not find Appellant’s argument that the cited art does not teach or suggest a polymeric film layer having a first thickness and the metal foil layer having a second thickness, wherein the second thickness is greater than the first thickness (App. Br. 6–7; Reply Br. 2–3) persuasive of reversible error in the Examiner’s rejection for the well-stated reasons provided by the Examiner at pages 3–4 and 15 of the Answer. Appeal 2017-004322 Application 14/043,663 8 In particular, we concur with the Examiner’s determination and reasoning (Ans. 3) that because Sellis ’846 teaches a wrappable textile sleeve having a polymer film layer with a thickness ranging from 0.00025 inches to 0.0015 inches and metal foil layer with a thickness ranging from 0.0002 inches to 0.002 inches (Sellis ’846 ¶¶ 24, 25), it would have been obvious for one of ordinary skill in the art to have arrived at a sleeve structure having a metal foil layer with a thickness greater than the thickness of the polymer film layer. Cf. In re Petersen, 315 F.3d 1325, 1329–1330 (Fed. Cir. 2003); cf. also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”). Notably, if a metal foil layer thickness of 0.002 inches were chosen (as within the range taught by Sellis ’846), the metal foil layer thickness would be greater than the polymer film layer thickness regardless of what thickness among those taught by Sellis ’846 would have been chosen. We do not find Appellant’s argument at page 3 of the Reply Brief that Sellis ’846 discloses a PET layer 34 with a thickness of 0.0005 inches “being preferred” persuasive because the disclosure of a reference is not limited to its preferred embodiments. In re Mills, 470 F.2d 649, 651 (CCPA 1972); see also In re Susi, 440 F.2d 442, 445–46 (CCPA 1971) (disclosure of particularly preferred embodiments does not teach away from broader disclosure). Appellant’s contention that Sellis ’846 teaches the necessary inclusion of a dampening non-woven layer 20 (App. Br. 7; Reply Br. 3) is not well- taken because, as the Examiner correctly notes (Ans. 15), the test of Appeal 2017-004322 Application 14/043,663 9 obviousness is not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.”); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Appellant’s assertion that the Examiner’s rejection is based on improper hindsight (App. Br. 7) is not persuasive of reversible error because it is conclusory. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, as previously discussed above, we are persuaded that the Examiner provides a reasonable basis and identifies sufficient evidence in the record to evince why one of ordinary skill would have combined the teachings of the cited references to arrive at the claimed invention. Accordingly, we affirm the Examiner’s rejection of claims 1–3, 7, 8, 10, and 12 under 35 U.S.C. § 103 as obvious over the combination of Sellis ’495, Synder, and Sellis ’846. Rejection 2 Claim 4 depends from claim 1 and adds the limitation “wherein said first thickness is between about 0.0001 inches and 0.0004 inches and said Appeal 2017-004322 Application 14/043,663 10 second thickness is between about 0.00035 inches and 0.0010 inches.” Claims App’x to App. Br. (Exhibit A). The Examiner determines that the combination of Sellis ’495, Synder, Sellis ’846, and Markoff suggests a sleeve satisfying all of the limitations of claim 4 and thus, would have rendered the claim obvious. Ans. 4–5 (citing Sellis ’495, Abstract, Figs. 5, 9, ¶¶ 6, 22, 28–32; Synder, Abstract, Fig. 1, col. 1, ll. 58–65, col. 2, ll. 49–60, 64–67, col. 3, ll. 1–7; Sellis ’846, Abstract, Fig. 1, ¶¶ 6, 24, 25; Markoff, col. 2, ll. 4–14). Appellant argues that the Examiner’s rejection of claim 4 should be reversed for the same reasons as claim 1. App. Br. 8; Reply Br. 4. We do not find this argument persuasive of reversible error for the reasons previously stated above in affirming the Examiner’s rejection of claim 1. Appellant further argues that the Examiner’s rejection should be reversed because Markoff is non-analogous art. App. Br. 8; Reply Br. 4. In particular, Appellant contends that the teachings of Markoff are neither from the same field of endeavor as the claimed wrappable textile sleeve, nor reasonably pertinent to the particular problem with which Appellant’s claimed invention is involved. App. Br. 8. Rather, Appellant contends that Markoff is directed to the “field of endeavor pertaining to name plates” and the problem solved in Markoff involves “making a name plate that resists the tendency of edges of the name plate from lifting off the surface.” Id. at 8 (citing Markoff, Title, col. 1, ll. 34–48). Appellant’s argument is not persuasive because it too narrowly construes the scope of Markoff’s disclosure, particularly the applicable field of endeavor and relevance to the problem in which the claimed invention is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As the Appeal 2017-004322 Application 14/043,663 11 Examiner finds (Ans. 16), Sellis ’495, Synder, Sellis ’846, and Markoff are, indeed, analogous because they all concern applying aluminum foil to a curved surface using adhesive. In particular, we concur with the Examiner’s finding (Ans. 16) that Markoff recognizes the problem that curved aluminum will have tendency to lift from the edges before the adhesive has a chance to set and teaches that soft aluminum will avoid this problem (Markoff, col. 1, ll. 34–45, col. 2, ll. 60–64), which is directly pertinent to the “wherein said metal foil layer is soft aluminum” recitation of claim 4. Accordingly, we affirm the Examiner’s rejection of claim 4 under 35 U.S.C. § 103 as obvious over the combination of Sellis ’495, Synder, Sellis ’846, and Markoff. Rejection 3 Appellant does not present any additional substantive arguments in response to the Examiner’s Rejection 3, stated above. Rather, Appellant relies on the same arguments presented above in response to the Examiner’s Rejection 1 regarding claim 1 and the combination of Sellis ’495, Synder, and Sellis ’846. See App. Br. 8–9. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming the Examiner’s Rejection 1, we affirm the Examiner’s Rejection 2. Rejection 4 Claim 11 recites: A wrappable textile sleeve, comprising: Appeal 2017-004322 Application 14/043,663 12 an elongate wall extending along a longitudinal axis between opposite ends with lengthwise extending edges extending between said opposite ends; said wall including a woven textile layer formed of interlaced warp and weft yarns, a polymeric film layer fixed directly to said woven textile layer and a metal foil layer, separate from said polymeric film layer, fixed directly to said polymeric film layer; and wherein said woven textile layer has a plurality of discrete circumferentially extending annular bands formed from circumferentially extending weft yarns with adjacent bands each having a plurality of weft yarns, said weft yarns within each discrete band having substantially the same diameter, with the weft yarns in adjacent bands having different diameters from one another. Claims App’x to App. Br. (Exhibit A). The Examiner determines that the combination of Sellis ’495, Synder, and Malloy suggests all of the limitations of claim 11 and thus, would have rendered claim 11 obvious. Ans. 6–7 (citing Sellis ’495, Abstract, Figs. 5, 9, ¶¶ 6, 22, 28–32; Synder, Abstract, Fig. 1, col. 1, ll. 58–65, col. 2, ll. 49–60; Malloy, Fig. 5, ¶¶ 9, 20, claim 1). Appellant argues that the Examiner’s rejection should be reversed for essentially the same reasons previously discussed above in response to the Examiner’s rejection of claim 1. See App. Br. 9–10 (arguing that Sellis ’495 “fails to teach or suggest the claimed polymeric layer and a separate metal foil layer fixed thereto”; “there is no reason for making such a modification to [Sellis ’495], absent improper hindsight”; and the “teachings of Malloy do not remedy this shortcoming of [Sellis ’495]”). See also Reply Br. 4–5. Appeal 2017-004322 Application 14/043,663 13 We do not find these arguments persuasive of reversible error in the Examiner’s rejection for principally the same reasons previously stated above in affirming the Examiner’s Rejection 1. Accordingly, we affirm the Examiner’s rejection of claim 11 under 35 U.S.C. § 103 as obvious over the combination of Sellis ’495, Synder, and Malloy. Rejection 5 Appellant does not present any additional substantive arguments in response to the Examiner’s Rejection 5, stated above. Rather, Appellant relies on the same arguments presented above in response to the Examiner’s Rejection 4 regarding claim 11 and the combination of Sellis ’495, Synder, and Malloy. App. Br. 10. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming the Examiner’s rejection of claims 1 and 11 (Rejections 1 and 4, stated above), we affirm the Examiner’s Rejection 5. Rejections 6, 7, 8, 9, and 10 Appellant does not present any additional substantive arguments in response to the Examiner’s Rejections 6, 7, 8, 9, and 10, stated above. Rather, Appellant repeats and relies on essentially the same arguments presented above in response to the Examiner’s Rejections 1, 2, 3, 4, and 5, respectively. See App. Br. 10–13; see also Reply Br. 5–8. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming the Examiner’s Rejections 1, 2, 3, 4, and 5, stated above, we affirm the Examiner’s Rejections 6, 7, 8, 9, and 10, respectively. Appeal 2017-004322 Application 14/043,663 14 DECISION/ORDER The Examiner’s rejections of claims 1–8 and 10–13 are affirmed. It is ordered that the Examiner’s decision 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). 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