Ex Parte Zupancich et al

Patent Trial and Appeal Board

Sep 19, 2014

11724490 (P.T.A.B. Sep. 19, 2014)

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.
11/724,490 03/15/2007 Ronald J. Zupancich 05-537-2 2827
34704 7590 09/19/2014
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
LE, MARK T
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
09/19/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RONALD J. ZUPANCICH and JOSEPH A. SEITER
____________________

Appeal 2012-001971
Application 11/724,490
Technology Center 3600
____________________

Before: JOHN C. KERINS, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ronald J. Zupancich and Joseph A. Seiter (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Claimed Subject Matter
Independent claim 1, reproduced below, illustrates the claimed subject
matter.
1. An insulated cargo container, comprising:
an underframe having a top surface and a bottom surface;
a floor connected to said top surface of said underframe;
a first side wall and a second side wall each having an
interior surface and an exterior surface and each of said side
walls including a door having an interior surface and an exterior
surface;
a first end wall and a second end wall each having an
interior surface and an exterior surface;
a roof having an interior surface and an exterior surface,
wherein said underframe, said floor, said first and second
side walls, said first and second end walls and said roof being
connected to form an enclosure; and
at least one insulating liner having an insulating core
attached to each of said interior surfaces and at least one
insulating liner having an insulating core attached to each of
said exterior surfaces, said insulating liners being present in an
amount sufficient to achieve a UA rating of less than about 300.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Yamamoto US 6,860,082 B1 Mar. 1, 2005
Heitmeyer US 2006/0065152 A1 Mar. 30, 2006
Barry US 7,120,413 B2 May 1, 2007

Appellants’ Admitted Prior Art (Spec. 13, ll. 10–13) (“AAPA”).

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REJECTIONS

Claims 1–12, 14, and 16–20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Heitmeyer, Yamamoto, and Barry. Ans. 4.
Claims 13, 15, and 18–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heitmeyer, Yamamoto, Barry, and AAPA. Id. at 8.

OPINION
Rejection of Claims 1–12, 14, and 16–20
Independent Claim 1
Appellants argue claim 1–3, 5, 14, and 16 as a group. App. Br. 13,
14. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claims 2, 3, 5, 14, and 16 stand or fall with claim 1.
Appellants argue that Heitmeyer fails to teach “that it is important to
provide insulating liners . . . in an amount sufficient to achieve a UA rating
of less than about 300.” App. Br. 10. The Examiner, however, finds that
Barry teaches this limitation rather than Heitmeyer. Ans. 5–6.
Appellants also argue that Heitmeyer would not want to apply an
insulating liner to the interior surfaces of the floor, sidewalls, end walls and
roof, “because to do so would reduce the size of the enclosure for the cargo
– something which Heitmeyer et al. clearly do not want to do” (App. Br. 10,
13), and because “there is no logical reason to modify Heitmeyer et al. to
have internal insulating materials” (id. at 13).
Appellants fail to explain why reducing the size of the enclosure is
something that Heitmeyer “clearly do[es] not want to do.” Further, that
Heitmeyer would not decrease its compartment size for the sake of
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insulation does not refute the Examiner’s conclusion that it would have been
obvious to apply Yamamoto’s insulation to Heitmeyer’s cargo container to
increase its insulating capability. Appellants do not challenge the benefits of
insulating a container, or that Yamamoto’s members 530A, 530B would
provide such insulation. To “teach away,” a reference must criticize,
discredit, or otherwise discourage the solution claimed or produce an
inoperable result when applied in the proposed prior art combination. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art teaching
alternatives did not “teach away” because such disclosure did not criticize,
discredit, or otherwise discourage the solution claimed); McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (references
“teach away” from the combination when the combination would produce a
seemingly inoperative device). Heitmeyer does not criticize, discredit, or
otherwise discourage adding insulation as claimed and therefore does not
teach away from the Examiner’s proposed combination.
Appellants then argue that Yamamoto does not teach “insulation on
both the interior and exterior surfaces” and because, “[i]f anything, one of
ordinary skill in the art would replace” Heitmeyer’s walls with Yamamoto’s
insulating walls “without any insulative panels on either the exterior or
interior surfaces since such insulative panels would be unnecessary in view
of the insulation panels within the Yamamoto et al. wall.” App. Br. 11.
To the extent that Appellants argue that Yamamoto’s wall 500
includes insulation panels 530A and 530B as an integral part thereof rather
than on interior or exterior (opposing) surfaces of the wall 500, we disagree.
Yamamoto’s wall is not monolithic. It includes a core comprising, for
example, a vacuum insulation member 60 and filling members 550A and
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550B, to either side of which the insulation panels 530A, 530B are adhered
via adhesive 62. Appellants provide no explanation regarding why
Yamamoto’s insulation panels 530A and 530B could not be added to the
walls of Heitmeyer.
Appellants lastly argue that Barry “teaches away from the claimed
invention” in teaching that insulation is placed between the interior and
exterior surface, rather than having insulating liners attached to interior and
exterior surfaces of the roof, sidewalls, and end walls. App. Br. 12.
As explained above, to “teach away,” a reference must criticize,
discredit, or otherwise discourage the solution claimed or produce an
inoperable result when applied in the proposed prior art combination.
Because Barry does not criticize, discredit, or otherwise discourage attaching
insulating liners as claimed, Barry does not teach away from the Examiner’s
proposed combination.
For the reasons set forth above, we sustain the rejection of claim 1 as
unpatentable over Heitmeyer, Yamamoto, and Barry. Claims 2, 3, 5, 14, and
fall with claim 1
Dependent Claim 4
The Examiner finds that Heitmeyer teaches the exterior skin being
cold rolled steel in paragraph 25. Ans. 6. Appellants argue that Heitmeyer’s
paragraph 25 teaches steel forming the skins 24, 26 for insulating panels 12,
and that Heitmeyer therefore does not teach or suggest side walls and end
walls having an exterior skin comprising cold rolled steel. App. Br. 14. The
Reply Brief clarifies Appellants’ argument as being that “[t]he reference to
16 gauge steel in Heitmeyer does not say that the steel is cold rolled.” Reply
Br. 4.
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The Examiner finds that Heitmeyer teaches a 16-gauge steel and that
cold-rolled steel “is considered to be within the scope of Heitmeyer's
teaching, which obviously covers at least conventional types of steel
including cold rolled and hot rolled types,” and concludes that “[i]t would
have been obvious to one of ordinary skill in the art to use a commercially
available cold rolled steel of 16 gauge to form [Heitmeyer’s] skins” to
achieve low cost and high strength. Ans. 6. Appellants do not argue that
cold-rolled steel is not a conventional type of steel, and we therefore are not
persuaded by Appellants’ argument. We sustain the rejection of claim 4 as
unpatentable over Heitmeyer, Yamamoto, and Barry.
Dependent Claims 6–8
The Examiner finds that Heitmeyer’s paragraph 25 teaches that skins
can alternatively be made from a fiber-reinforced composite material, and
that the alternative resin material of claims 6–8 are common components “of
conventional fiber-reinforced composite materials (Official Notice is
taken).” Ans. 6.
Appellants argue that Heitmeyer does not teach an exterior skin
comprising a resin material that is a thermoset polymer or thermoplastic
polymer, and that “there is no logical reason stated by the Examiner for
providing such materials as the external skin on Heitmeyer” where the
Examiner does not say what the expected advantages of using such
alternative resin materials “are and how they would apply to the external
skin.” App. Br. 14–15.
Regarding the use of resin materials, however, the Examiner
concluded that it would have been obvious to use such materials to form
Heitmeyer’s fiber-reinforced composite material “to achieve the expected
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advantages thereof, such as good durability and corrosion resistance.”
Ans. 7. Appellants do not argue that resins would fail to provide durability
and corrosion resistance, and we therefore are not persuaded by their
argument. We sustain the rejection of claims 6–8 as unpatentable over
Heitmeyer, Yamamoto, and Barry.
Dependent Claims 9 and 10
Appellants argue that “Examiner errs because while claim 5 may
consider the reinforcing materials and additives as being optional, claims 9
and 10 affirmatively claim them as being present.” App. Br. 15. Claims 9
and 10 depend from claim 5 and recite, respectively, lists of suitable
reinforcing materials and additives. Claims 9 and 10 do not, merely by
listing suitable reinforcing materials and additives, change claim 5’s optional
recitation of reinforcing materials and additives into an affirmative
recitation. We therefore sustain the rejection of claims 9 and 10 as
unpatentable over Heitmeyer, Yamamoto, and Barry.
Dependent Claim 11
Appellants argue that claim 11 is not discussed in the final rejection,
such that the Examiner “failed to meet his burden of identifying those
elements which render the subject matter of claim 11 obvious,” and that
Heitmeyer “is not interested in attaching an insulation liner to the interior
surfaces because to do so will reduce the enclosure size.” App. Br. 15.
The Examiner finds that the combination of Heitmeyer and
Yamamoto teaches “insulation liners attached to and disposed against the
interior surfaces, and insulation liners attached to and disposed against the
exterior surfaces” as recited in claim 11. Appellants do not challenge this
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finding. We sustain the rejection of claim 11 as unpatentable over
Heitmeyer, Yamamoto, and Barry.
Dependent Claim 12
The Examiner finds that Heitmeyer teaches a mechanical fastener 34–
36. Appellants argue that none of the cited references “use any mechanical
fastener to fasten each insulation liner to one of the interior surfaces.” App.
Br. 16. Appellants fail to explain how Heitmeyer’s fasteners 34–36, which
fasten insulating panels 12 to posts 22 (see Heitmeyer, Fig. 2 and para. 28)
do not teach “a mechanical fastener designed to fasten each said insulation
liner to one of said interior surfaces and said exterior surfaces of said
enclosure.” We therefore sustain the rejection of claim 12 as unpatentable
over Heitmeyer, Yamamoto, and Barry.
Dependent Claim 17
Claim 17 recites mechanically fastening or chemically bonding an
exterior skin to insulating liners and double bonding exterior skins where
they make contact. The Examiner finds, with respect to claims 12 and 16,
that Heitmeyer teaches mechanical fasteners 34–36. Ans. 7. The Examiner
finds that paragraph 28 of Heitmeyer teaches insulating liners 12 being
“secured directly to the side walls 14 and/or posts 22 with a desired adhesive
material, which is readable as a chemically bonding.” Id. at 8.
Appellants argue that none of the references teach or suggest double
bonding the exterior skins together where they make contact. App. Br. 16.
The Examiner fails to find that the cited references teach or suggest double
bonding the exterior skins together where they make contact, and we
therefore do not sustain the rejection of claim 17.
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Dependent Claim 18
Claim 18 recites that “disposing optionally said rub rail comprises
mechanically fastening said rub rail.” The Examiner finds that “the term
‘optionally’ indicates that the step is not being required; therefore, the
applied prior art is not required to have such step.” Ans. 8.
Appellants argue that none of the cited references teach or suggest
mechanically fastening a rub rail. App. Br. 16.
We disagree with the Examiner that mechanically fastening the rub
rail, as recited in claim 18, is not required. In this rejection, the Examiner
does not find that the references teach mechanically fastening a rub rail. We
therefore do not sustain the rejection of claim 18.
Dependent Claims 19 and 20
Claims 19 and 20 recite affixing adjacent insulating liners to each
other. The Examiner finds that, in Heitmeyer, the insulating liners 12 can be
secured “to the side walls 14 and/or posts 22 with a desired adhesive
material.” Ans. 8.
Appellants argue that none of the cited references teach or suggest
affixing the insulating liners to each other. App. Br. 16. The Examiner fails
to find that the cited references teach or suggest affixing the insulating liners
to each other, and we therefore do not sustain the rejection of claims 19 and
20.
Rejection of Dependent claims 13, 15, and 18–20
Dependent claim 13 recites “a rub rail disposed on said exterior skin
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. . . .” Dependent claims 15, 19, and 20 each recite “disposing optionally a
rub rail . . . .” Dependent claim 18 recites that “disposing optionally said rub
rail comprises mechanically fastening said rub rail.”
The Examiner finds that “the use of rub rails to cover seams of
connecting panels are generally known to one skilled in the art as stated in
lines 10-13, page 13 of the instant specification.” Ans. 8. Appellants argue
that “[w]hile the instant disclosure recognizes rub rails as being known, one
cannot use Appellants’ disclosure against Appellants.” App. Br. 16.
To the contrary, a statement by Appellants in the Specification
identifying what was known to those of skill in the art is an admission that
can be relied upon for an obviousness rejection. See In re Nomiya, 509 F.2d
566, 571 (CCPA 1975) (holding applicant’s labeling of two figures in the
application drawings as “prior art” to be an admission that what was pictured
was prior art relative to applicant’s improvement).
With respect to claims 15 and 18–20, Appellants argue that the
Examiner has not stated how the references teach or suggest the claimed
method steps. However, the Examiner concluded that, regarding the steps
“recited in the instant method claims, . . . the method of forming the
insulated cargo container of Heimeyer [sic], as modified, obviously requires
the method steps as claimed.” Ans. 7. Appellants do not refute this
conclusion.
With respect to claim 18, although the Examiner finds that
Appellants’ admitted prior art teaches the use of rub rails, the Examiner does
not additionally find that Appellants’ admitted prior art also teaches, or
renders obvious, mechanically fastening the rub rail. We therefore do not
sustain the rejection of claim 18. Further, as set forth above, the Examiner
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fails to find the cited references teach or suggest affixing the insulating
liners to each other as recited in claims 19 and 20.
We therefore sustain the rejection of claims 13 and 15 as unpatentable
over Heitmeyer, Yamamoto, Barry, and AAPA, but we do not sustain the
rejection of claims 18–20.

DECISION
We AFFIRM the rejection of claims 1–12, 14, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Heitmeyer, Yamamoto, and Barry.
We REVERSE the rejection of claims 17–20 under 35 U.S.C. § 103(a)
as unpatentable over Heitmeyer, Yamamoto, and Barry.
We AFFIRM the rejection of claims 13 and 15 under 35 U.S.C. §
103(a) as unpatentable over Heitmeyer, Yamamoto, Barry, and AAPA.
We REVERSE the rejection of claims 18–20 under 35 U.S.C. § 103(a)
as unpatentable over Heitmeyer, Yamamoto, Barry, and AAPA.

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

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