Ex Parte Shaw

Patent Trial and Appeal Board

Apr 12, 2018

13083569 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/083,569 04/10/2011
22922 7590 04/16/2018
REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
IOOONORTHWATER STREET
SUITE 2100
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Alan Shaw
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.
048506-0112 8462
EXAMINER
HWU,DAVISD
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/16/2018 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):
IP Admin@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN SHAW
Appeal2017-007515
Application 13/083,569
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's rejection of claims 2, 4--11, and 14--20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention relates to "mirrored and two-
sided fire-barriers for use in expansion-joint spaces between structural
1 According to Appellant, the real party in interest is InPro Corporation.
Appeal Br. 2.
2 Although claim 13 remains pending, "[ c ]laim 13 [is] allowed." Final
Office Action 4.
Appeal2017-007515
Application 13/083,569
units." Spec. i-f 1. Claims 5, 10, and 19 are the independent claims on
appeal. Below, we reproduce claim 5 as illustrative of the appealed claims.
5. A fire barrier, comprising:
a two-sided fire barrier having each of its two sides
defined as a section,
each of said sections including:
an outer section having an outer-most layer
and
an inner section common to both of said outer
sections,
said outer-most layer consisting of one or more protective
cloth layers, said one or more protective cloth layers being a
woven fabric heat-resistant to 2000 degrees F,
wherein each of said two outer sections further
comprises one or more layers of metallic foil,
said inner section comprising one or more ceramic
insulation blanket layers,
with each of said two sides equally fully fire barrier
functional.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 2, 4--6, 8-11, 14--16, and 18-20 under
35 U.S.C. § 103(a) as unpatentable over Heitkamp (US 5,460,864, iss.
Oct. 24, 1995) and Shockey (US 6,951, 162 B 1, iss. Oct. 4, 2005). 3
The Examiner rejects claims 7 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Heitkamp, Shockey, and Gestner (US 6, 153,668, iss.
Nov. 28, 2000).
3 Inasmuch as Appellant canceled claim 1, we recognize the Examiner's
apparent rejection of the claim as a typographical error. See, e.g., Appeal
Br., Claims App.; Answer 2.
2
Appeal2017-007515
Application 13/083,569
ANALYSIS
With respect to independent claim 5, the claim recites, in part,
a two-sided fire barrier having each of its two sides
defined as a section,
each of said sections including:
an outer section having an outer-most layer and
an inner section common to both of said outer sections,
said outer-most layer consisting of one or more protective
cloth layers ... ,
wherein each of said two outer sections further comprises
one or more layers of metallic foil, [and]
said inner section comprising one or more ceramic
insulation blanket layers.
Appeal Br., Claims App. Appellant argues that "[t]here is no teaching or
rationale in the prior art for modifying Heitkamp in light of Shockey ... in
the specific layering arrangement recited in [ c ]laim 5," in which "each
section is arranged with ... an outer section having ... a metallic foil layer
and ... an outer-most layer consisting of cloth; and ... an inner section
comprising a ceramic insulation blanket." Id. at 8 (emphases omitted).
Based on our review of the record, we agree.
In the rejection of independent claim 5, with respect to the claimed
metallic-foil layer that is between an outer-most cloth layer and a
ceramic-insulation-blanket layer, the Examiner states that "Shockey ...
teaches an outer layer comprising a layer of metallic foil. It would have
been obvious ... to have modified the device of Heitkamp ... by replacing
the outer sections with layers of metallic foil as taught by Shockey."
Answer 2-3. It is not clear, however, that the Examiner's proposed
modification includes a foil layer between an outer cloth layer and an inner
insulation layer, and the Examiner does not provide any reason for such a
placement of the foil layer.
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Application 13/083,569
Later in the Answer, the Examiner makes a similar statement-i.e.,
"[i]t would have been obvious ... to have modified the device of
Heitkamp ... by using metallic foil layers, since ... [this] material[] ha[ s]
been taught by Shockey ... for making a fire barrier" (id. at 4 }-but here the
Examiner neither states that it would have been obvious to place the foil
layer between cloth and insulation layers, nor provides a reason for doing so.
Further, in the Response to Arguments section of the Answer, the Examiner
finds that it is the outermost layer of Heitkamp that is a foil layer, contrary
to the recitations of claim 5. Id. at 5 ("Heitkamp also discloses that the
layers 4 and 6 of the outer sections comprise metallic foil (aluminum,
column 3, line 1 O).").
Thus, based on the foregoing, it is not clear that the Examiner's
proposed modification includes a foil layer between an outer cloth layer and
an inner insulation layer, and the Examiner does not provide any reason for
placing a foil layer between the noted layers. Therefore, we do not sustain
independent claim 5 's rejection.
Independent claims 10 and 19 include similar recitations, and are
rejected for similar reasons, as claim 5. Therefore, we also do not sustain
the rejection of claim 10 or claim 19. Further, inasmuch as the Examiner
does not rely on any other reference to remedy the deficiencies in the
rejections of claims 5, 10, and 19, we also do not sustain the rejections of
dependent claims 2, 4, 6-9, 11, 14--18, and 20.
4
Appeal2017-007515
Application 13/083,569
DECISION
We REVERSE the Examiner's obviousness rejections of claims 2,
4--11, and 14--20.
REVERSED
5