Ex Parte Zagorski et al

Patent Trial and Appeal Board

Aug 29, 2018

13406561 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/406,561 02/28/2012
29281 7590 09/05/2018
JAMES D. PETRUZZI
4900 WOODWAY SUITE 745
HOUSTON, TX 77056
FIRST NAMED INVENTOR
Kenneth L. Zagorski
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.
RIL-500-001 9648
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
j dpetruzzi@ gm ail. com
jim@petruzzi.com
j ai ynance@ gm ail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH L. ZAGORSKI,
JOSEPH DONOGHUE, and MIKE BOCK
Appeal2017-010495
Application 13/406,561 1
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, Rilco Manufacturing Company, Inc., is the real
party in interest. Appeal Br. 4.
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Application 13/406,561
STATEMENT OF THE CASE2
Appellants describe the invention as relating to "a method and system
for insulating pipes with flexible reinforced material." Spec. ,r 5. Claim 1,
reproduced below with emphases added to certain key recitations, is
illustrative of the claimed subject matter:
1. A reinforced insulation material for supporting a pipe or
tank, said material comprising:
a. A plurality of flexible sheets of the same insulation
material having a plurality of voids in each sheet, wherein said
sheets are operably connected to each other in a layered
configuration via mating voids in said sheets; said layered
configuration has exposed upper and lower surfaces;
b. Said voids on each sheet oriented in a mating pattern
that generally forms cylindrical or multi-sided regions through
said layered configuration; and
c. A synthetic flowable material inserted into said voids of
each sheet that substantially solidifies to connect said sheets to
each other and form a noncompressible unified solid body,
having exposed surfaces defined by said upper and lower
surfaces of the layered configuration wherein said unified
solid body is rigid and adapted to support and insulate the pipe
or tank.
Appeal Br. 19 (Claims App.).
2 In this Decision, we refer to the Final Office Action dated November 2,
2016 ("Final Act."), the Appeal Brief filed February 28, 2017 ("Appeal
Br."), the Examiner's Answer dated June 14, 2017 ("Ans."), and the Reply
Brief filed August 3, 2017 ("Reply Br.").
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Application 13/406,561
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Ou et al.
("Ou")
Leeser et al.
("Leeser")
Kim
US 2006/0263587 Al Nov. 23, 2006
US 2011/0252739 Al Oct. 20, 2011
KRI00967421 July 1, 20103
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-6 under 35 U.S.C. § 103 as unpatentable over
Kim in view of Ou. Ans. 2.
Rejection 2. Claim 7 under 35 U.S.C. § 103 as unpatentable over Kim
and Ou further in view of Leeser. Id. at 5.
Rejection 3. Claims 8-14 under 35 U.S.C. § 103 as unpatentable over
Kim in view of Ou and Lesser. Id. at 6.
Rejection 4. Claims 15-20 under 35 U.S.C. § 103 as unpatentable
over Kim in view of Ou and Lesser. Id. at 10.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
("[I]t has long been the Board's practice to require an applicant to identify
3 We refer to the same machine-translation of Kim as the Examiner.
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the alleged error in the examiner's rejections."). After considering the
evidence presented in this Appeal and each of Appellants' arguments, we are
not persuaded that Appellants identify reversible error except where
otherwise explained below. Thus, where we affirm the Examiner's
rejections, we do so for the reasons expressed in the Final Office Action and
the Answer. We add the following primarily for emphasis.
Rejection 1, claims 1-6. The Examiner rejects claims 1-6 under 35
U.S.C. § 103 as unpatentable over Kim in view of Ou. Ans. 2. Appellants
do not separately argue claims 2-5. We therefore limit our discussion to
claim 1. Claims 2-5 stand or fall with that claim. 3 7 C.F .R.
§4I.37(c)(l)(iv) (2016).
The Examiner finds that Kim teaches a heat insulation sheet
comprising a middle aero gel sheet 110 covered in polyurethane, epoxy, or
Kevlar fiber sheets 120 and 130. Ans. 2. The Examiner finds that Kim
teaches holes 140 (mating voids) in said sheets that are filled with
polyurethane or epoxy adhesive for sticking the upper and lower sheets to
the aerogel layer. Id. at 2-3. The Examiner further finds:
Kim fails to teach the insulation material is a plurality of sheets of the
same insulation material having exposed surfaces of said insulation
defined by said upper and lower surfaces of the layered configuration;
and, the insulation material is for supporting a pipe or tank or wherein
said unified solid body is rigid and adapted to support and insulate the
pipe or tank.
Id. at 3.
The Examiner finds that Ou teaches high strength aerogel panels
where aerogel layers are sandwiched with a binder layer. Id. The Examiner
determines that "it would have been obvious to one of ordinary skill in the
art to use the voided mating structure of Kim with the multiple layers of
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aero gel and binders of Ou for hybrid aero gel blankets that can resist high
compression and flexural stress." Ans. 16.
Appellants argue that Kim's sheets 120 and 130 are non-insulating
material. Appeal Br. 7. Appellants also argue that Kim does not teach
multiple aero gel sheets. Id. at 7-8; see also Reply Br. 2. Neither of these
arguments is persuasive of reversible error because the Examiner's rejection
is based upon combining teachings of both Kim and Ou as explained above.
The stated rejection does not rely upon Kim's sheets 120 and 130 as being
insulating or Kim teaching multiple aerogel sheets.
Appellants argue that the Examiner does not provide a proper
rationale for combining the teachings of Kim and Ou and argue that it would
not have been obvious to remove sheets 120 and 130 of Kim (so that the
layer configuration has exposed upper and lower surfaces as recited by claim
1) because Kim teaches that its sheets 120 and 13 0 are necessary to protect
the "keeping warm material" 110. Appeal Br. 8-9; see also Reply Br. 2--4.
In the Answer, the Examiner provides an expansive explanation as to
why it would have been obvious to combine the teachings of Kim and Ou,
and the Examiner better explains how the teachings of the references would
have been combined. Ans. 15-19. Appellants do not persuasively dispute
the Examiner's stated rationale to combine (see e.g. Ans. 16) in the Reply
Brief. Moreover, the Examiner finds that Ou teaches that sheets 120 and
130 of Kim are optional. Ans. 17 (citing Ou ,r 37). Appellants do not
persuasively dispute this finding, and this finding is supported by the
preponderance of the evidence. See Kim 2 ( teaching that its upper and lower
sheets may be formed, for example, from Kevlar fiber); Ou ,r 37 (suggesting
a fibrous Kevlar layer in one embodiment and thereby suggesting that other
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embodiments do not require such a layer). The Examiner's finding
regarding Ou teaching the optional nature of Kim's sheets 120 and 130
undermines Appellants' argument that a person of skill in the art would have
understood that these sheets are essential.
Appellants also argue that Kim requires workability/flexibility and
that the Examiner's combination would not meet this goal. Appeal Br. 9. It
is not clear, however, from Kim that flexibility is an essential property of the
Kim insulation or that the Examiner's stated combination would be unduly
inflexible. Moreover, this argument does not persuasively rebut the
Examiner's rationale that, e.g., "resist[ing] high compression and flexural
stress, before rupture" would provide reason to combine the reference's
teachings. Ans. 16. At most, the evidence indicates that a person of
ordinary skill in the art would have understood that combining the teachings
of Kim and Ou would have certain predictable trade-offs. Expected trade-
offs do not negate obviousness. See Medichem, S.A. v. Rolabo, S.L., 437
F .3d 1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.").
In the Reply Brief, Appellants argue that the combined teachings of
Kim and Ou would not meet the "said rigid unified body is adapted to
support and insulate the pipe or tank" recitation of claim 1. Reply Br. 4. We
decline to consider this argument because it is raised for the first time in the
Reply Brief without a showing of good cause why it could not have been
raised in the principal Appeal Brief. 37 C.F.R. § 4I.41(b)(2) (2013).
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejection of claims 1---6.
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Rejection 2, claim 7. The Examiner rejects claim 7 under 35 U.S.C.
§ 103 as unpatentable over Kim and Ou further in view of Leeser. Ans. 5.
Claim 7 recites, "[ t ]he reinforced insulation material of claim 1 further
comprising stiffening rods inserted into said voids." Appeal Br. 19 (Claim
App.).
The Examiner finds that Kim as modified by Ou fails to suggest
stiffening rods inserted into said voids. Ans. 5. The Examiner finds,
however, that Leeser teaches insulated aerogel building materials fastened
by adhesives or mechanical means such as staples or pins (i.e., stiffening
rods). Id. ( citing Leeser ,r,r 24--25). The Examiner finds that it would have
been obvious to combine this teaching with Kim as modified by Ou to
combine two means of fastening "to form a stronger or more durable final
structure and in case one of the fastening means fails." Ans. 6.
Appellants argue that Leeser does not teach both adhesives and
mechanical fasteners and that it would have been redundant, would increase
costs, and would make Kim less workable/flexible. Appeal Br. 10.
Appellants, however, do not persuasively rebut the Examiner's stated reason
as to why it would have been obvious to use both adhesives and pins. Ans.
6, 20. A person of skill in the art would have understood that using two
means of fastening would present both advantages (backup durability as
stated by the Examiner) and disadvantages (cost and/or lack of flexibility).
Simultaneous advantages and disadvantages do not negate obviousness. See
Medichem, S.A., 437 F.3d at 1165. Moreover, Leeser suggests that both
adhesive and mechanical fastening could be used. Leeser ,r 25 ("Such
structures can be manufactured through lamination of all said layers. A
mechanical fastening means can also be used to hold the layers together.")
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( emphasis added.). Because Appellants' argument does not identify
reversible error, we sustain this rejection.
Rejection 3, claims 8-14. The Examiner rejects claims 8-14 under
35 U.S.C. § 103 as unpatentable over Kim in view of Ou and Lesser. Id. at
6. Claim 8 is an independent claim, and claims 9-14 depend from claim 8.
Appellants' arguments with respect to claims 8-12 are, except as addressed
below, substantively the same as those presented with respect to claims 1
and 7. Appeal Br. 10-14. Those arguments are unpersuasive for the reasons
explained above.
Appellants additionally argue that claim 8 requires a "dowel inserted
into said voids," and the Examiner also finds that Leeser teaches staples or
pins. Appeal Br. 13. The Examiner explains in the Answer that Leeser' s
teaching regarding use of staples or pins would have suggested to a person
of ordinary skill in the art the use of stiffening rods or dowels. Ans. 26.
Appellants do not dispute this determination in the Reply Brief. Appellants'
argument therefore does not identify reversible error.
Claim 13 recites, "[ t ]he reinforced insulation material of claim 8
further comprising an end block on at least one edge of said sandwiched
sheets." Appeal Br. 16 (Claims App.). The Specification refers to end
stops 4 but does not explicitly refer to an end block. Spec. ,r 52, Fig. 16A.
Given the context of claims 8 and 13 and the Specification, end stops and the
recited end block are the same structure.
Appellants argue that the Examiner has not adequately explained why
it would have been obvious to make use of an end block given that the
Examiner cites no evidence in the prior art that teaches an end block.
Appeal Br. 14; Reply Br. 5. The Examiner appears to take the position that
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use of adhesives at the ends of the insulation sheet would form an end block.
Ans. 27. The Examiner's position is reversible error because it construes
"end block" too broadly. Figure 16A indicates that the end block/end stop is
a structure separate from the sheets with adhesive. Although not a
definition, this disclosure is incompatible with an end block being a mere
adhesive layer on top of a sheet. Accordingly, we do not sustain the
Examiner's rejection of claim 13.
Claim 14 recites, "[ t ]he reinforced insulation material of claim 8
further comprising a plurality of voids on each sheet in a honeycombed
pattern." Appeal Br. 16 (Claims App). As in regard to claim 13, Appellants
argue that the Examiner has not adequately explained why this feature would
have been obvious because the prior art does not teach a honeycombed
pattern.
The Examiner finds that the prior art teaches that the purpose of the
voids and adhesive of the voids is to add rigidity and prevent flow of aero gel
powder out from the aerogel layer. Ans. 28. The Examiner determines that
it would have been obvious to adjust the placement or pattern of the voids to
adjust these properties. Appellants do not persuasively dispute the
Examiner's findings, and the Examiner's findings are sufficient to establish
that placement and pattern of the voids is a result effective variable that
would have been obvious to optimize. See In re Boesch, 617 F.2d 272,276
(CCPA 1980) ("[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art."); In re
Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
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optimum or workable ranges by routine experimentation."). We thus sustain
the Examiner's rejection of claim 14.
Rejection 4, claims 15-20. The Examiner rejects claims 15-20 under
35 U.S.C. § 103 as unpatentable over Kim in view of Ou and Lesser.
Ans. 10. Claim 15 is an independent claim, and claims 16-20 depend from
claim 15. Appellants' arguments with respect to claims 15-20 are
substantively the same as those presented with respect to claims 1 and 7.
Appeal Br. 15-18. Those arguments are unpersuasive for the reasons
explained above.
DECISION
For the above reasons, we affirm the Examiner's rejection of
(1) claims 1---6 under 35 U.S.C. § 103 as unpatentable over Kim in view of
Ou, (2) claim 7 under 35 U.S.C. § 103 as unpatentable over Kim and Ou
further in view of Leeser, (3) claims 8-12 and 14 under 35 U.S.C. § 103 as
unpatentable over Kim in view of Ou and Lesser, and (4) claims 15-20
under 35 U.S.C. § 103 as unpatentable over Kim in view of Ou and Lesser.
We reverse the Examiner's rejection of claim 13 under 35 U.S.C. § 103 as
unpatentable over Kim in view of Ou and Lesser.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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