Ex Parte Hugo

Patent Trial and Appeal Board

Nov 30, 2016

11791825 (P.T.A.B. Nov. 30, 2016)

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.
11/791,825 05/30/2007 Gerd Hugo 214206-0001-US-530691 6560
123223 7590 12/02/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD HUGO
Appeal 2015-006512
Application 11/791,825
Technology Center 1700
Before JEFFREY T. SMITH, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision3 finally rejecting claims 1, 3, 4, 12—25, and 27—31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action mailed May 8, 2014
(“Final Act.”), the Appeal Brief filed November 28, 2014 (“Br.”), and the
Examiner’s Answer mailed April 23, 2015 (“Ans.”).
2 Appellant identifies the real party in interest as Construction Research &
Technology GmbH. Br. 3.
3 Final Act. 2—13.
Appeal 2015-006512
Application 11/791,825
The subject matter on appeal relates to a dark, flat element having low
heat conductivity, reduced density, and low solar absorption. Spec. 1 1.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A film with low heat conductivity, reduced density and low
solar absorption, the film comprising:
at least one combination of a plastic support material and
components incorporated into the plastic support material, the
components incorporated into the plastic support material
consisting of:
a) and/or b);
and at least one of c), d), and e); and
optionally f), wherein:
a) comprises inorganic and/or organic light fillers, which
reduce the density and heat conductivity of the plastic support
material;
b) comprises gases selected from the group consisting of
air, nitrogen, carbon dioxide, and noble gases, which form
cavities in the plastic support material and reduce the density and
heat conductivity of the plastic support material;
c) comprises dyes, which reflect with spectral selectivity
in the wavelength range of visible light from 400 to 700 nm and
have an average transparency of greater than 50% in the
wavelength range of the near infrared from 700 to 1,000 nm;
d) comprises first pigments, which reflect with spectral
selectivity in the wavelength range of visible light from 400 to
700 nm and have an average transparency of greater than 50% in
the wavelength range from 700 to 1,000 nm;
e) comprises second pigments, which reflect with spectral
selectivity in the wavelength range of visible light from 400 to
700 nm and have an average reflection of greater than 50% in the
wavelength range of the near infrared from 700 to 1,000 nm; and
f) comprises inorganic and/or organic nanomaterials,
which can be surface-treated or surface coated, and
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Application 11/791,825
wherein the at least one combination has the following properties:
i) an average reflection in the wavelength range of visible light
from 400 to 700 nm less than 50%;
ii) an average reflection in the wavelength range of near
infrared from 700 to 1,000 nm greater than 50%;
iii) a heat conductivity less than 0.4 (W/m K); and
iv) a bulk density that lies below 1.4 g/cm3.
Br. (Claims Appendix) 15—16.
REJECTIONS ON APPEAL4
1. Claims 4, 21, 22, 25, and 27—29 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite;
2. Claims 1,3,4, 15—25, 27—29, and 31 stand rejected under
35 U.S.C. § 103(a) as obvious over Hugo (US 2004/0018360 Al,
published Jan. 29, 2004) (hereinafter “Hugo”);
3. Claims 12—14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hugo in view of Torobin (US 4,303,736, issued Dec. 1, 1981)
(hereinafter “Torobin”);
4 The Final Office Action mailed May 8, 2014, includes an objection to the
Appellant’s amendment to the title of the application. Although Appellant
presents arguments regarding the objection in their Appeal Brief (Br. 7—8),
as the Examiner points out (Ans. 10), the objection is not appealable to the
Patent Trial and Appeal Board. Manual of Patent Examining Procedure
(MPEP) § 706.01 ((9th ed., rev. July 2015).
The rejection of claims 1, 3, 4, 12—25, and 27—31 under 35 U.S.C. § 112,
first paragraph, on page 3 of the Final Office Action was withdrawn in the
Examiner’s Answer (Ans. 10), and thus is not before us for consideration.
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Application 11/791,825
4. Claim 30 stands rejected under 35 U.S.C. § 103(a) as obvious over
Hugo in view of Krauthauser et al. (US 5,962,143, issued Oct. 5,
1999) (hereinafter “Krauthauser”);
5. Claims 1,3,4, 12—25, 27—29, and 31 stand rejected under
35 U.S.C. § 103(a) as obvious over Hugo in view of Nagashima et
al. (JP 11-323197, published Nov. 26, 1999) (hereinafter
“Nagashima”) or Takahashi et al. (JP 2000-126678, published May
9, 2000) (hereinafter “Takahashi”); and
6. Claim 30 stands rejected under 35 U.S.C. § 103(a) as obvious over
Hugo in view of Nagashima or Takahashi, and further in view of
Krauthauser.
DISCUSSION
Rejection 1
The Examiner rejects claims 4, 21, 22, 25, and 27—29 under 35 U.S.C.
§112, second paragraph, as being indefinite.
Appellant makes no substantive argument regarding the rejection.
Rather, Appellant defers responding to the § 112, second paragraph rejection
until review of the arguments presented in the Appeal Brief. Br. 9. Because
the Board does not hold rejections in abeyance, we treat Appellant’s failure
to provide substantive arguments against the § 112, second paragraph
rejection as a waiver thereof. See Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed., rev. July 2015) (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”); see also In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (affirming the Board’s decision to
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Application 11/791,825
sustain an uncontested rejection of claims under 35 U.S.C. 112, second
paragraph and finding the appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board). Thus, we summarily sustain the rejection.
Rejections 2—6
Appellant argues the claims as a group with respect to the second and
fifth grounds of rejection and do not separately contest the separate rejection
of certain dependent claims. See Br. 9-13. We select claim 1 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1. (See 37 C.F.R. § 41.37 (c)(l)(iv)).
After consideration of each of Appellant’s contentions, the applied
prior art, and Appellant’s claims, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s obviousness
rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we sustain the Examiner’s obviousness rejection for substantially the
findings and reasons set forth by the Examiner in the Final Office Action
and Answer. See generally Final Act. 4—7 and Ans. 10-18. We add the
following.
Appellant contends that their claims are directed to a film and not a
substrate (Br. 10), and argue that Hugo fails to disclose a film having a PVC
and/or polyacrylate plastic support material and a component a) incorporated
into the PVC and/or polyacrylate support material (Br. 11).
Appellant’s argument is not persuasive of reversible error in the Examiner’s
rejection. The film of claim 1 comprises a plastic support material and
components, such as inorganic and/or organic light fillers, which reduce the
density and heat conductivity of the plastic support material, incorporated
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Application 11/791,825
into the plastic support material. See claim 1. The plastic support material
of claim 1 is not limited to a PVC and/or polyacrylate plastic support
material. Rather, the plastic support material can be a polyamide, a
polyolefin, a polymethylmethacrylate (PMMA), or a polyurethane. See
claim 3. The light fillers, according to Appellant’s Specification, may be
hollow microspheres from a ceramic, glass or plastic material. Spec. 9:6—10.
Hugo discloses a flat element comprising a) substrate and b) a coating of the
substrate comprising a binder. Hugo 1113—14. Hugo discloses that the
binder for its coating may be made of plastics such as methacrylates,
substituted polyolefins, polyamides, and polyurethanes. See id. 1127-28.
Example 13 in Hugo discloses a coating made of a polyurethane binder
(APU1014 binder and U330 binder made by Alberdingk) with Luxsil hollow
(glass) microbeads made by Presperse, Inc. Id. 1127. Hugo’s coating is
applied wet to the substrate and then dried, and thus would form a film. Id.
Thus, Appellant has not adequately refuted the Examiner’s position that
Hugo’s coating is a “film” comprising a combination of a plastic support
material and inorganic and/or organic light fillers incorporated into the
plastic support material as recited in claim 1 (see Final Act. 5; see also
Ans. 10, 13).
In the second stated ground of rejection, the Examiner rejected
claim 1 under 35 U.S.C. § 103(a) as obvious over Hugo. Appellant argues
that Hugo fails to disclose that its substrate, the coating on its substrate, or a
combination of the substrate and the coating has the combination of claimed
properties i)—iv), recited in claim 1. Br. 11.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection. Hugo explicitly discloses that its coating can include
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Application 11/791,825
first pigments having a reflection in the visible light range from 380 to 720
nm of less than 50%, and having a reflection in the near-infrared range from
720 to 1500 nm exceeding 50% (Hugo Tflf 13, 14, 22, 24), meeting
property i) and ii) recited in claim 1. The Examiner admits that Hugo does
not explicitly disclose that its substrate and/or coating have the heat
conductivity and bulk density recited in claim 1 (Final Act. 5). The
Examiner, however, finds that Example 13 of Hugo discloses a coating that
appears to encompass the same materials as in claim 1, and thus, reasonably
determines that Hugo’s coating would have been expected to have the same
heat conductivity and bulk density as recited in claim 1 (see Final Act. 12;
Ans. 15). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the
Examiner establishes a reasonable assertion of inherency and thereby
evinces that the products claimed by the applicant and disclosed in the prior
art appear to be the same, the burden is properly shifted to the applicant to
show that they are not). Appellant merely lists the properties recited in
claim 1, and asserts that they are not disclosed in Hugo, but Appellant does
not contest the Examiner’s finding that Hugo uses the same materials for the
coating as disclosed by Appellant’s in their Specification (see Br. 11—12).
Because Gerd Hugo is the sole inventor of both the present application and
Hugo, Appellant is in the best position to demonstrate a patentable
distinction between Hugo’s coating and the film of claim 1. On the record
before us, Appellant has not presented sufficient evidence demonstrating
that Hugo’s coating (e.g., in Example 13) would not have the required heat
conductivity and bulk density recited in claim 1. Accordingly, we sustain
the Examiner’s second stated ground of rejection.
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In the fifth stated ground of rejection, the Examiner rejected claim 1
under 35 U.S.C. § 103(a) as obvious over Hugo in view of Nagashima and
Takahashi. Final Act. 8—10. Appellant does not identify a reversible error
in the Examiner’s findings regarding Nagashima and Takahashi or
Examiner’s reasoning in support of the alternative rejection of claim 1
(Br. 12). See Jung, 637 F.3d at 1365. Accordingly, we also sustain the
Examiner’s fifth stated ground of rejection.
DECISION
For the above reasons, the rejections of claims 1, 3—4, 12—25, and 27—
31 are 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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