Ex Parte Hamm

Patent Trial and Appeal Board

Dec 20, 2018

13874910 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/874,910
61654 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
05/01/2013
12/25/2018
FIRST NAMED INVENTOR
Richard Roy Hamm
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.
1510801.184US1[64236US01] 4985
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
patent@lockelord.com
swofsy@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ROY HAMM
Appeal2018-003100 1
Application 13/874,910
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Roy Hamm ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief indicates Goodrich Corporation is the real party in
interest. Appeal Br. 3.
Appeal2018-003100
Application 13/874,910
CLAIMED SUBJECT MATTER
The claims are directed to an ice protection system with a coated
heating substrate. Spec. 2:2--4. Claims 1, 2, and 13 are independent. Claim
1, reproduced below with emphasis added, is illustrative of the claimed
subject matter:
1. An ice protection system comprising:
a self-heating resistive heater substrate; and
a coating in intimate physical and thermal contact with
the self-heating substrate, wherein the thermal effusivity of the
coating is greater than that of the self-heating substrate for
interference of thermal waves reflected from the coating with
thermal waves generated in the self-heating substrate, wherein
the coating is on the order of a fraction of a micron thick.
Appeal Br. 19 (Claims App.)
REFERENCES RELIED ON BY THE EXAMINER
Zieve
Brittingham
Petrenko
US 5,143,325 Sept. 1, 1992
US 8,752,279 B2 June 17, 2014
US 2003/0155467 Al Aug. 21, 2003
REJECTIONS 2
(I) Claims 1-203 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
2 The Examiner objects to the drawings under 37 C.F.R. § 1.83(a). See Non-
Final Act. 2 (mailed Dec. 30, 2016). An objection is a petitionable matter
and not an appealable matter and is not within the jurisdiction of the Board.
See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
3 Although each of claims 1-20 is rejected as indefinite, the Examiner
withdraws an additional rejection of claims 2 and 5 as indefinite in the
Answer (dated June 12, 2017, "Ans."). Ans. 3--4.
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Application 13/874,910
(II) Claims 1 and 2 are rejected under 35 U.S.C. § 112(b) as being
incomplete for omitting essential elements, such omission amounting to a
gap between the elements.
(III) Claims 1-5, 7-9, and 11-17 are rejected under 35 U.S.C. § 103
as unpatentable over Brittingham and Petrenko.
(IV) Claims 6, 10, and 18-20 are rejected under 35 U.S.C. § 103 as
unpatentable over Brittingham, Petrenko, and Zieve.
OPINION
Rejection (I), Indefiniteness
The Examiner finds that claims 1-20 are indefinite, because
independent claims 1, 2, and 13 have no proper antecedent basis for "the
thermal effusivity." Non-Final Act. 3. For each of claims 1, 2, and 13 the
Examiner also finds that "it is unclear what range would constitute a fraction
of a micron thick." Id. For claim 1 the Examiner also finds that it is unclear
whether "there is a separate resistive heater from the self-heating substrate
that generates thermal waves in the self-heating substrate," and finds that
there is no proper antecedent for the "self-heating substrate." Id.
Thermal Effusivity
Appellant argues that because thermal effusivity is an inherent
material property, using "the thermal effusivity" is clear. Appeal Br. 13.
The Examiner responds that because Appellant's Figure 3 shows
different effusivity values, it is not clear to which thermal effusivity value
the term "'the thermal effusivity' of the coating" refers. Ans. 5.
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Application 13/874,910
We agree with Appellant on this point. Although Appellant's Figure
3 shows different effusivity values for exemplary heating substrates and
coating material, each coating material has only one effusivity. Because
each coating has only one effusivity, the term "the thermal effusivity" is
clear.
Fraction of a Micron
Although inartfully worded, we understand the limitation "a fraction
of a micron" to be some non-zero amount less than one micron. As
Appellant correctly notes, because the Examiner's "zero tenths" reads the
fraction limitation out of the claim, it is not a plausible interpretation of the
claim. See Reply Br. 12; see also Ans. 5---6. Thus, we agree with Appellant
that this term is clear. Appeal Br. 13.
Self-Heating Substrate
Although we appreciate Appellant's arguments in response to the
drawing objection that the term "self-heating" has support in the
Specification as filed (see Appeal Br. 12), Appellant does not make
arguments against the indefiniteness rejection. See Appeal Br. 12-14.
Accordingly, we summarily sustain the Examiner's rejection of claim 1 as
indefinite.
Rejection (II), Omission of Essential Element
In rejecting claims 1 and 2 under 3 5 U.S. C. § 112 (b), the Examiner
finds that claims 1 and 2 are incomplete for omitting essential elements,
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Application 13/874,910
namely, "the energy source from which the thermal waves are generated in
the self-heating substrate or the heating substrate." Non-Final Act. 4.
Appellant asserts that a claim directed to a device is not required to
recite the power source for the device. Appeal Br. 13. According to
Appellant because the claims recite a "heating substrate, and [] a particular
coating in intimate physical and thermal contact with the substrate," the
claims are complete. Appeal Br. 14.
The Examiner responds that because the claimed device recites a
"self-heating resistive heater substrate" or "a heating substrate," the device
provides heat, and thus, a source enabling the device to produce heat must be
recited. Ans. 6. According to the Examiner, the lack of an energy source
"renders the claim vague and indefinite as to how such device is capable of
producing heat as claimed." Id.
Although claim 1 requires "a self-heating resistive heater substrate"
and claim 2 requires "a heating substrate," we are not persuaded that the
particular heating source, or any source, by which the substrate is heated
need be recited inasmuch as the pertinent relationship between the thermal
waves reflected from the coating and thermal waves generated in the self-
heating substrate is recited. Accordingly, we do not sustain Rejection (II).
Rejection (III), Obviousness Based on Brittingham and Petrenko
The Examiner finds that Brittingham discloses many of the limitations
of the independent claims including a substrate 120 and a coating 130 in
contact with the substrate, but does not disclose that the coating has the
recited thickness of a fraction of a micron. Non-Final Act. 4. Nonetheless,
the Examiner finds that Petrenko discloses a coating having the claimed
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Application 13/874,910
thickness. Non-Final Act. 5 (citing Petrenko ,r,r 140 and 141; Fig. 7). The
Examiner concludes that it would have been obvious to a person having
ordinary skill in the art before the effective filing date of the claimed
invention to make Brittingham's coating a fraction of a micron to protect the
resistive heater. Id.
Appellant argues that Petrenko only discloses the thickness of the
heating layer, that is, electrically conductive layer 96, but does not disclose a
thickness for protective layer 98 ( coating). Appeal Br. 14--15.
The Examiner responds that because Petrenko' s Figure 7 shows that
protective coating 98 has a "similar thickness" to heating substrate 96, this is
sufficient to establish that coating has the recited thickness.
In reply, Appellant notes that the typical range for Petrenko's layer 96
is 50-100 microns, which is much thicker than claimed. Reply Br. 12.
According to Appellant, Petrenko' s Figure 7 "is not sufficient to prove that
Petrenko discloses the claimed coating thickness because the layer 96 in
Petrenko can vary from .1 nm to 1 mm-a range of thicknesses that varies by
a factor of 100,000." Id. at 12-13 (citing Petrenko ,r 140). Appellant
contends that the Examiner is "guessing what the thickness of the coating 98
in Petrenko is," because Petrenko does not disclose a thickness for coating
98 and does not disclose "that the thicknesses of elements 96 and 98 are
similar." Id. at 13.
Appellant has the better position. Although Petrenko 's Figure 7
shows that protective coating 98 has a similar thickness to heating substrate
96, based on the Examiner's position, all of Petrenko 's protective coatings
98 would have the same or similar thickness to that of each underlying
heating substrate 96 for the entire range of substrate thicknesses from .1 nm
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Application 13/874,910
to 1 mm. There is no evidence of this, however, as Petrenko does not
disclose a thickness for coating 98 or a relationship between the thicknesses
of layers 96 and 98. See Reply Br. 13.
"'It is impermissible within the framework of section 103 to
pick and choose from any one reference only so much of it as
will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art."'
In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (quoting In re
Wesslau, 353 F.2d 238,241 (CCPA 1965)). Moreover, as Petrenko
does not indicate that Figure 7 is drawn to scale (see Reply Br. 12), it
cannot be relied upon to establish the precise thickness of layer 98.
See Hockerson- Halbertstadt, Inc. v. Avia Group Int'!, 222 F.3d
951,956 (Fed. Cir. 2000). Therefore, a preponderance of the evidence
does not support the Examiner's position.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
5, 7-9, and 11-17 as unpatentable over Brittingham and Petrenko.
Rejection (IV), Unpatentability over Brittingham, Petrenko, and Zieve
The Examiner does not rely on Zieve in any way that would remedy
the deficiency in Rejection (III). See Non-Final Act. 6. Accordingly, we do
not sustain the rejection of claims 6, 10, and 18-20 as unpatentable over
Brittingham, Petrenko, and Zieve.
DECISION
The Examiner's decision to reject claims 1-20 as indefinite is
affirmed as to claim 1 and is reversed as to claims 2-20.
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The Examiner's decision to reject claims 1 and 2 as being incomplete
for omitting essential elements is reversed.
The Examiner's decision to reject claims 1-20 as unpatentable over
Brittingham, Petrenko, and Zieve is reversed.
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-IN-PART
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