Ex Parte Creasy

Patent Trial and Appeal Board

Dec 19, 2018

12821947 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/821,947 06/23/2010
28997 7590 12/21/2018
HARNESS, DICKEY & PIERCE, P.L.C.
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Larry D. Creasy JR.
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.
9062-000007-US-CPB 4854
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY D. CREASY JR.
Appeal2017-001295
Application 12/821,94 7
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-8, 10-25, 27, and 29-36. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 We refer to the Specification ("Spec.") filed June 23, 2010; Final Office
Action ("Final Act.") dated October 22, 2015; Appellant's Appeal Brief
("App. Br.") filed April 22, 2016; Examiner's Answer ("Ans.") dated
August 26, 2016, and Appellant's Reply Brief ("Reply Br.") filed October
26, 2016.
2 The real party in interest is Laird Technologies, Inc. App. Br. 5.
Appeal2017-001295
Application 12/821,94 7
BACKGROUND
The subject matter on appeal relates to electromagnetic interference
(EMI) shielding. Spec. ,r 2. Operation of electronic devices generates
electromagnetic radiation which can interfere with operation of other
proximate devices. Id. ,r 4. According to the Specification, a common
solution to ameliorate the effects of EMI has been the development of
shields capable of absorbing and/or reflecting EMI energy. Id. Appellant
describes flame retardant EMI shields that include "environmentally friendly
materials," namely, halogen-free flame retardants. Id. ,r 2. Claim 1 is
illustrative of the subject matter at issue in this Appeal:
1. An electromagnetic interference (EMI) shield
compnsmg:
a resilient core member comprising cellular polymeric
foam;
an electrically conductive layer; and
an adhesive bonding the electrically conductive layer to
the resilient core member;
wherein the electrically conductive layer has a surface
resistivity of 0.1 ohms per square or less;
wherein the adhesive includes 30% to 63% by dry weight
of halogen-free flame retardant;
wherein the adhesive is halogen free; and
wherein the EMI shield has a flame rating of V-0 under
Underwriter's Laboratories (UL) Standard No. 94.
App. Br. 28 (Claims Appendix).
Claims 17, 20, and 32 also are written in independent form and, with
regard to the issues raised in this Appeal, are essentially the same as claim 1.
Each remaining claim depends from claim 1, 17, 20, or 32.
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Appeal2017-001295
Application 12/821,94 7
REJECTI0NS 3
I. Claims 1, 3-8, 10-17, 19-22, and 36 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Bunyan. 4
II. Claims 2, 18, 23, and 30 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bunyan and Sugihara. 5
III. Claim 24 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Bunyan, Sugihara, Hall, 6 and Oertel. 7
IV. Claims 25 and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bunyan and Furumori. 8
V. Claim 31 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Bunyan, Nakano,9 and Lunt. 10
VI. Claims 32, 34, and 35 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bunyan, Nakano, and Lunt.
VII. Claim 33 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Bunyan, Nakano, Lunt, and Sugihara.
VIII. Claims 1, 3-8, 10-16, and 29 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Jones 11 and Bunyan.
3 A rejection under 35 U.S.C. § 112, second paragraph, stands withdrawn.
January 14, 2016 Advisory Action 2.
4 US 6,248,393 Bl, issued June 19, 2001 ("Bunyan").
5 WO 2008/125968 A2, published October 23, 2008 ("Sugihara"). The
Examiner identifies US 2010/0116542 Al, published May 13, 2010, as an
English language equivalent to Sugihara. Final Act. 16.
6 US 4,670,483, issued June 2, 1987 ("Hall").
7 G. Oertel, Polyurethane Handbook Chemistry- Raw Materials -
Processing Application - Properties 571 (2d ed. 1993).
8 US 2001/0018123 Al, published August 30, 2001 ("Furumori").
9 US 4,980,223, issued December 25, 1990 ("Nakano").
10 US 2005/0059754 Al, published March 17, 2005 ("Lunt").
11 US 5,804,762, issued September 8, 1998 ("Jones").
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Appeal2017-001295
Application 12/821,94 7
IX. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Jones, Bunyan, and Sugihara.
X. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Jones, Bunyan, and Furumori.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 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
the alleged error in the examiner's rejections .... "). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies a reversible error. Thus, we affirm
the Examiner's rejections for the reasons expressed in the Final Office
Action and Answer. We add the following primarily for emphasis.
Rejection I
With regard to Rejection I, Appellant argues the claims as a group,
directing the arguments to recitations common to each of the independent
claims. See App. Br. 10-16. We select claim 1 as representative of the
rejected claims. Claims 3-8, 10-17, 19-22, and 36 stand or fall with claim
1.
Relevant to Appellant's arguments on appeal, the Examiner finds that
Bunyan discloses an EMI shield that includes a flame-retardant coating 14
located between a resilient foam core 52 and a conductive fabric 12. Final
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Appeal2017-001295
Application 12/821,94 7
Act. 4 (referencing Bunyan Fig. 5). The Examiner finds that Bunyan's
coating 12 is an adhesive in light of Bunyan's teaching that the coating
"promotes bonding of the foam core layer and the electrically conductive
fabric layer." Id. at 4 ( citing Bunyan 3 :67--4:5). The Examiner further finds
that Bunyan identifies various fire-retardant additives, including non-
halogenated additives such as aluminum hydrate, each of which are
described as suitable for use in coating 14 to achieve the desired flame
retardancy. Id. at 4--5 (citing Bunyan 6:55-63). The Examiner determines
that one of ordinary skill in the art therefore would have had a reason to
select the identified non-halogenated fire-retardant additives when
formulating Bunyan's coating 14, thereby rendering the coating halogen-
free. Id. at 5.
Appellant argues that Bunyan's coating 14 is not an adhesive. App.
Br. 1-12; Reply Br. 3--4. Particularly, Appellant contends that coating 14
"functions as an interior surface 62 to block pores 22 of the fabric shielding
material 10." App. Br. 12 (emphasis to reference numerals added).
Appellant is correct that Bunyan characterizes coating 14 as providing the
above-described pore-blocking function. See Bunyan 7:57----67. That
functionality, however, does not negate Bunyan's further teaching that same
surface 62 formed by coating 10 "promotes the bonding of the foam to the
fabric." Id. at 8:3--4. Appellant does not present persuasive evidence or
argument to refute the Examiner's finding that Bunyan's coating 14 is an
adhesive because it promotes bonding.
Appellant also argues that Bunyan teaches away from using halogen-
free flame retardants because Bunyan identifies a preferred embodiment and
working example that uses halogenated compounds. App. Br. 12-13; Reply
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Appeal2017-001295
Application 12/821,94 7
Br. 4---6. Appellant's argument is unpersuasive. A prior art reference's
disclosure is not limited to its preferred embodiments or working examples.
See In re Mills, 470 F.2d 649, 651 (Fed. Cir. 1972); see also In re Susi, 440
F.2d 442,446 n.3 (CCPA 1971). Moreover, here, Bunyan provides that
"[f]lame retardancy may be imparted by loading ... one or more
conventional flame retardant additives such as aluminum hydrate, antimony
trioxide, phosphate esters, or halogenated compounds such as
polybrominated diphenyl oxides." Bunyan 6:59---63. Appellant does not
point to persuasive evidence to establish that a preference for halogenated
retardants would have discouraged use of any of the non-halogenated
retardants identified by Bunyan as suitable for the same intended purpose.
Appellant further argues that determining particular halogen-free
flame retardants and their amounts necessary to achieve the recited VO
classification would have required unreasonable experimentation. App. Br.
13-15. However, Bunyan specifies that "the material of the invention
affords UL94 V-0 protection" (Bunyan 3:30-32), and discloses that the
necessary flame retardancy may be imparted by loading "with between
about 30-50% by weight" of one or more of three listed non-halogenated
additives-namely, aluminum hydrate, antimony trioxide, and phosphate
esters (id. at 6:59---63). Appellant does not present evidence or otherwise
contend that any of the foregoing additives in the disclosed amounts would
have been inadequate to achieve the desired UL94 classification.
Appellant contends that commercial success of Appellant's halogen-
free ECOGREENâ„¢ product weighs against obviousness. App. Br. 12-26.
Particularly, Appellant submits Declaration evidence of annual unit sales of
the ECOGREENâ„¢ product spanning the years 2006-2013. App. Br. 36
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Appeal2017-001295
Application 12/821,94 7
(Evidence Appendix, Exhibits 5-8). Appellant argues that sales of the
ECOGREENâ„¢ product at a higher per-unit price than Appellant's other
commercially available EMI shielding gaskets which are not halogen free
demonstrates that "the commercial success of Apellant's ECOGREENâ„¢
gaskets can be attributed to the features claimed in the current Application."
Id. at 25.
Appellant's sales evidence is of limited probative value because there
is no indication whether the number of units sold represents a substantial
quantity in the relevant market. See Ex parte Jell a, 90 USPQ2d 1009, 1017
(BPAI 2008) (precedential); see also In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996) ("Although Huang's affidavit certainly indicates that many units
have been sold, it provides no indication of whether this represents a
substantial quantity in this market."); In re Baxter Travenol Labs., 952 F.2d
388,392 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units sold is
insufficient to establish commercial success."); Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985) (finding that sales of 5
million units represent a minimal showing of commercial success because
"[ w ]ithout further economic evidence ... it would be improper to infer that
the reported sales represent a substantial share of any definable market")
(overruled on other grounds in Midwest Indus., Inc. v. Karavan Trailers,
Inc., 175 F.3d 1356, 1358 (Fed. Cir. 1999)).
Giving careful consideration to Appellant's objective evidence of non-
obviousness together with the prior art evidence relied upon by the
Examiner, we are persuaded that the Examiner's obviousness determination
is supported by a preponderance of the evidence in this case. Accordingly,
Rejection I is sustained.
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Appeal2017-001295
Application 12/821,94 7
Rejections 11-X
Appellant does not separately argue against any of Rejections II-X
except to rely on the arguments presented against Rejection I. Accordingly,
Rejections II-X also are sustained.
DECISION
The Examiner's decision rejecting claims 1-8, 10-25, 27, and 29-36
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).
AFFIRMED
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