Ex Parte Zagorski et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813406561 (P.T.A.B. Aug. 29, 2018) Copy Citation 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. Appeal2017-010495 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."). 2 Appeal2017-010495 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. 3 Appeal2017-010495 Application 13/406,561 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 4 Appeal2017-010495 Application 13/406,561 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 5 Appeal2017-010495 Application 13/406,561 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. 6 Appeal2017-010495 Application 13/406,561 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.") 7 Appeal2017-010495 Application 13/406,561 ( 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 8 Appeal2017-010495 Application 13/406,561 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 9 Appeal2017-010495 Application 13/406,561 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 10 Copy with citationCopy as parenthetical citation