Leif Hakman et al.Download PDFPatent Trials and Appeals BoardApr 10, 202014336818 - (D) (P.T.A.B. Apr. 10, 2020) Copy Citation 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. 14/336,818 07/21/2014 Leif Hakman 04190-P0260A 9606 131672 7590 04/10/2020 Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 EXAMINER GOLDEN, CHINESSA T ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 04/10/2020 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 LEIF HAKMAN, TORBJORN BRATTBERG, ANNA WAHLBERG, and LARS SCHMIDT Appeal 2019-002944 Application 14/336,818 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–8, and 12–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Because our reasoning differs from that of the Examiner, we denominate our affirmance as involving new grounds of rejection. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ABB Schweiz AG Appeal Br. 2. Appeal 2019-002944 Application 14/336,818 2 CLAIMED SUBJECT MATTER The claims are directed to an oil-impregnated electrical transformer. Claim 1, reproduced below, with the limitation most at issue highlighted, is illustrative of the claimed subject matter: 1. An oil impregnated electrical transformer, comprising: a cellulose based electrically insulating composite material in the form of a paper or pressboard, the composite material including: cellulose fibres; and an electrically insulating thermoplastic polymer material; wherein the polymer material is arranged around and between the cellulose fibres, and binds said fibres to each other; and wherein the composite material is at least partly impregnated with oil; wherein the thermoplastic polymer material has a melting point of between 140°C and 200°C. Appeal Br. 10 (Claims Appendix) (emphasis and formatting added). REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103(a): A. Claims 1, 2, 4–6, and 13–18 rejected as obvious over Palmer2 in view of Berbner3 and Kumazawa;4 2 Palmer, GB 1,127,301, published Sept. 18, 1968. 3 Berbner et al., US 5,478,640, issued Dec. 26, 1995. 4 Kumazawa et al., US 2009/0275678 A1, published Nov. 5, 2009. Appeal 2019-002944 Application 14/336,818 3 B. Claim 7 rejected as obvious over Palmer, Berbner, and Kumazawa, and further in view of Czyzewski;5 C. Claim 8 rejected as obvious over Palmer, Berbner, and Kumazawa, and further in view of Honma;6 and D. Claim 12 rejected as obvious over Palmer, Berbner, and Kumazawa, and further in view of Chung.7 OPINION As Appellant’s arguments are directed the rejections of claims 1 and 18 (Appeal Br. 4–9), we limit our discussion to those claims. Claim 1 Turning first to the rejection of claim 1, the issue raised by Appellant is whether the Examiner reversibly erred in finding a suggestion to use the electrically insulating thermoplastic polymer material of Berbner in the oil impregnated cellulose-based composite pressboard of Palmer’s oil- impregnated electrical transformer. Compare Appeal Br. 4–8, and Reply Br. 2–3, with Final Act. 3, and Ans. 12–16. We do not reach Appellant’s issue. This is because, as we explain below, Palmer itself teaches an electrically insulating thermoplastic polymer material. Palmer is directed to an insulation material (Title) for use in a transformer or other piece of electrical apparatus. Palmer p.1, ll. 13–16. The insulation material is a barrier material in the mineral oil space. Id. 5 Czyzewski et al., US 2010/0018751 A1, published Jan. 28, 2010. 6 Honma et al., US 2005/0150593 A1, published July 14, 2005. 7 Chung et al., US 2010/0125112 A1, published May 20, 2010. Appeal 2019-002944 Application 14/336,818 4 The barrier material includes board sheets or molded parts “of a material consisting of fibre and polypropylene or high density polyethylene.” Palmer p. 1, ll. 32–44. Polypropylene is an “electrically insulating thermoplastic polymer material” meeting the requirements of claim 1. This is evidenced by Palmer, which discloses that polypropylene has a low dielectric constant. Palmer p. 1, ll. 40–47 (dielectric constant of 2.1 at 25°C and power frequency). Thus, polypropylene is electrically insulating. Standard polypropylene has a melting point within the 140°C to 200°C range of claim 1. See Ullmann’s Encyclopedia of Industrial Chemistry, (2014) at 26, Table 6 (reporting a melting point of 160–167°C for standard polypropylene). We further find that Palmer teaches combining powdered electrically insulating thermoplastic polymer (polypropylene) with cellulose wood pulp or vegetable fibre and applying heat and pressure to the powder/fibre combination to form a cellulose-based electrically insulating composite material in the form of a pressboard. Palmer p. 1, ll. 48–80 (teaching forming a board from powdered plastics material and raw fibre and applying heat and pressure between platens). We add the new findings to each rejection. We conclude that the selection of standard polypropylene with a melting point of 160–167°C for the powder plastics material and mixing it with the raw cellulose fibre and applying heat and pressure to form the composite board of Palmer would have been obvious to one of ordinary skill in the art as standard polypropylene was known in the art as evidenced by Ullmann’s. Appeal 2019-002944 Application 14/336,818 5 Claim 18 Claim 18 further limits the electrical transformer of claim 1 to one with a composite material containing 85 to 99 wt% cellulose fibres. Palmer does not disclose the amount of cellulose used in the barrier material, but does provide some guidance. Specifically, Palmer discloses that “25% to 50% polypropylene by weight of the board material have been found to be satisfactory, but more (say 60%) may be advantageous if it does not cause difficulty with swelling due to oil absorption.” Palmer p. 2, ll. 24– 30. The barrier material is a mixture of the polypropylene, in the form of a powdered plastic material, with the cellulose fibre (Palmer p. 1, ll. 60–65). Thus, Palmer suggests that 50 to 75 wt% cellulose fibre is “satisfactory” and less cellulose fiber may be “advantageous” as long as the polypropylene does not cause swelling. Appellant contends that the cellulose fibres of Palmer “could only make up between 50 wt% to 75 wt% of the board, which is less than the claimed ‘85 to 99 wt%.’” Appeal Br. 8–9. But Palmer’s disclosure is not so narrow. Palmer does not articulate a lower limit, only an amount that is “satisfactory” and another example higher amount of polypropylene (lower amount of cellulose) that is “advantageous” if there no swelling. Two other facts indicate that the workable range of cellulose fibres that would have been obvious to the ordinary artisan is broader than the “satisfactory” concentration Palmer discloses for polyproplylene. First, Palmer does not disclose any workable concentrations for high density polyethylene. Thus, the ordinary artisan would have to perform routine experimentation to uncover the workable range for high density polyethylene/cellulose-containing composites. Appeal 2019-002944 Application 14/336,818 6 Second, Appellant’s own Specification provides evidence that pressboards made of unbleached sulfate pulp (cellulose) were conventionally used as insulation barriers in transformers. Spec. ¶¶ 2–4. Such pressboards would have high concentrations of cellulose, i.e., concentrations approaching 100%. Given that Palmer teaches a composite material of electrically insulating thermoplastic and cellulose fibre for the same purposes as Appellant, it is reasonable to conclude that a range of 85 to 99 wt% cellulose fibres would have been within the workable range arrived at through routine experimentation by the ordinary artisan. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). This is especially true given that 100% cellulose insulation materials were known in the art, no range of concentration is articulated by Palmer for high density polyethylene, and composites containing higher amounts of polypropylene (lower amounts of cellulose) cause swelling. Spec. ¶ 2. A preponderance of the evidence supports a determination that the range of the claim would have been within the workable range of the prior art. In such a situation, the burden shifts to the Appellant to present a showing of criticality of the range for unexpected beneficial results. See Aller, 220 F.2d at 456. Appellant presents no convincing evidence of unexpected results on this record. Appeal 2019-002944 Application 14/336,818 7 CONCLUSION The Examiner’s decision to reject claims 1, 2, 4–8, and 12–18 is affirmed, but because our reasoning differs from that of the Examiner, we denominate our affirmance as involving new grounds of rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–6, 13–18 103(a) Palmer, Berbner, Kumazawa, Ullmann’s 1, 2, 4–6, 13–18 1, 2, 4–6, 13–18 7 103(a) Palmer, Berbner, Kumazawa, Ulmann’s, Czyzewski 7 7 8 103(a) Palmer, Berbner, Kumazawa, Ullmann’s, Honma 8 8 12 103(a) Palmer, Berbner, Kumazawa, Ullmann’s, Chung 12 12 Overall Outcome 1, 2, 4–8, 12–18 1, 2, 4–8, 12–18 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2019-002944 Application 14/336,818 8 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. . . . 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)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation