13587989 - (D) (P.T.A.B. Aug. 28, 2020)

Bates, Kenn S. et al.

Patent Trials and Appeals BoardAug 28, 2020

13587989 - (D) (P.T.A.B. Aug. 28, 2020)

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. 13/587,989 08/17/2012 Kenn S. Bates RAYTP0605US 1067 86009 7590 08/28/2020 Renner, Otto, Boisselle & Sklar, LLP (Raytheon) 1621 Euclid Avenue - 19th Floor Cleveland, OH 44115 EXAMINER TALLMAN, ROBERT E ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 08/28/2020 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENN S. BATES and ROBERT L. PEIRCE Appeal 2019-001817 Application 13/587,989 Technology Center 2800 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and LILAN REN, Administrative Patent Judges. Opinion for the Board filed by FRANKLIN, Administrative Patent Judge. Dissenting opinion filed by REN, 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 1–13 and 15–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Raytheon Company. Appeal Br. 2. Appeal 2019-001817 Application 13/587,989 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below (with text in bold for emphasis): 1. An infrared camouflage textile, comprising: an emissivity layer disposed on an outer surface of the textile and comprised of a predetermined pattern of at least two different infrared emissivity, the emissivity layer adapted to create multiple effective temperatures on a large scale while maintaining a constant temperature across the predetermined pattern; a heating layer disposed below the emissivity layer, the heating layer adapted to provide the constant temperature across the predetermined pattern; and a power source operably linked to the heating layer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Conway et al. (“Conway”) US 5,077,101 Dec. 31, 1991 Hughes US 7,102,814 B1 Sept. 5, 2006 Sprague US 2010/0165448 A1 July 1, 2010 Olson et al. (“Olson”) US 2012/0185109 A1 July 19, 2012 Bates US 8,368,760 B1 Feb. 5, 2013 Appeal 2019-001817 Application 13/587,989 3 REJECTIONS 1. Claims 1–9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hughes in view of Conway, in further view of Olson. 2. Claims 10–13 and 16–19 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Bates in view of Sprague, in further view Hughes. 3. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Bates in view of Sprague, in further view of Hughes, in further view of Conway. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are persuaded of reversible error in the appealed rejections essentially for the reasons provided by Appellant, with the following emphasis. Rejection 1 Appellant’s claim 1 is directed to an infrared camouflage textile, depicted in Appellant’s Figure 1, shown below. Appeal 2019-001817 Application 13/587,989 4 Figure 1 (with annotations) is a schematic diagram depicting one embodiment of an infrared camouflage textile. We refer to the Examiner’s statement of the rejection made on pages 4–8 of the Non-final Office Action mailed February 14, 2018. Therein, the Examiner states that Hughes does not teach the claimed elements of an “emissivity layer adapted to create multiple effective temperatures on a large scale while maintaining a constant temperature across the predetermined pattern” that is “comprised of a predetermined pattern of at least two different infrared emissivities”. Non-final Act. 4–5. The Examiner relies upon Conway for teaching an IR camouflage system having an emissivity layer adapted to create multiple effective temperatures on a large scale (Conway, col. 3, ll. 55–63), and comprised of a predetermined pattern of at least two different infrared emissivities (Conway, cols. 3, 4, 7). Non- final Act. 5. Appeal 2019-001817 Application 13/587,989 5 The Examiner then states that Olson in view of Conway teaches a heating layer adapted to provide a constant temperature across a predetermined pattern (Olson, para. 0030, lines 15–22), where the emissivity layer maintains a constant temperature across the predetermined pattern (Olson, para. 30, ll. 15–22). Non-final Act. 5.2 Appellant argues that Olson does not disclose such teachings in the passages cited by the Examiner, or anywhere else in the entire disclosure. Appeal Br. 7. Appellant reproduces paragraph 30 of Olson on page 7 of the Appeal Brief. Appellant argues that the term “constant” does not appear once in Olson, and that the term “pattern” does not appear once in Olson. Appellant argues that Olson fails to disclose or suggest an emissivity layer. Appellant argues that while Olson does discuss emissivity with respect to various materials, there is nothing in Olson to suggest the claimed feature of Appellant’s invention of “an emissivity layer disposed on an outer surface of the textile and comprised of a predetermined pattern of at least two different infrared emissivities, the emissivity layer adapted to create multiple effective temperatures on a large scale while maintaining a constant temperature across the predetermined pattern”. Appeal Br. 8. With regard to Conway, Appellant argues that the rejection lacks sufficient fact findings in support of how the combination of Olson, Conway, and Hughes suggests the same structure as claimed for the reasons presented on pages 9–12. Therein, Appellant argues, inter alia, that neither 2 The Examiner does not discuss any teachings of Conway when combined with Olsen so it is assumed that the teachings of Conway are applied as discussed above with regard to the combination of Hughes in view of Conway, discussed, supra. Non-final Act. 5. Appeal 2019-001817 Application 13/587,989 6 Hughes nor Conway provide details regarding transmitting an underlying temperature to the outermost layer. Appeal Br. 11. Appellant argues that neither Conway nor Hughes even suggests any relationship to an underlying layer transmitting temperature to an outer layer. Appellant submits that therefore, the Conway/Hughes emissivity must necessarily be dominated by the outer layer and there is no suggestion of a constant temperature across the predetermined pattern, as claimed. Id. Appellant submits that neither Conway nor Hughes discloses any suggestion to maintain thermal contact or any recognition of the importance of good thermal contact with the underlying layers for the outer layer to display any infrared signature related to the underlying layers. Appellant submits that since neither reference discloses or suggests any relation between temperature of inner and outer layers, there is no suggestion of the claimed constant temperature across the predetermined pattern. Appeal Br. 11. In response, the Examiner states that the modification of Hughes with Conway and Olson results in a combination that satisfies the functional limitation. Ans. 5. The Examiner states that Olson is directed to a thermal control of a system to adjust the temperature of a heating layer to modify the emissivity layer to produce a desired IR spectra. The Examiner states that Olson teaches “[i]n other words, the controller 120 is configured to adjust the temperature of the heating and cooling device 110 such that the adjusted IR signature of the heating and cooling device 110 at least substantially matches the IR signature of the background environment 140. As a result, the object 102 may be effectively masked from detection from the IR camera 101.” Olson, para. 36 (bolding omitted). Ans. 5. Appeal 2019-001817 Application 13/587,989 7 The Examiner states that Olson teaches an emissivity layer but not about the structure or pattern. Id. The Examiner states that Conway teaches that the emissivity layer has a pattern with a thermal layer. The Examiner refers to case law quoting that “[w]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function”. Ans. 5. The Examiner states that because the structure is the same as that claimed, it inherently performs the same function. Ans. 6. We agree with Appellant’s reply in the Reply Brief that the Examiner’s fact finding and response fail to show how the structure of the combination of applied references is the same such the claimed function of a “emissivity layer adapted to create multiple effective temperatures on a large scale while maintaining a constant temperature across the predetermined pattern” is met, for the reasons reiterated therein. In particular, Appellant reiterates the position that the multiple layers disclosed by Hughes and Conway would not provide the same structure because they would not have good thermal contact and thus would not provide the emissivity and controlled temperature as claimed (Reply Br. 10–12), and that Olson is silent about constant temperature (Reply Br. 3–5). Notably, the response to argument section in the Answer does not adequately address these points raised by Appellant. We thus reverse Rejection 1. Rejection 2 We refer to pages 9–13 of the Non-final Office Action mailed February 14, 2008. Therein, the Examiner relies upon Bates for certain teachings (Non-final Act. 9), but acknowledges that Bates does not teach Appeal 2019-001817 Application 13/587,989 8 each pixel comprising a plurality of subpixel elements. The Examiner relies upon Sprague for teaching this claim element (Non-final Act. 9). Appellant argues that Sprague’s subpixels cannot be used in the present invention for the reasons presented on pages 15–18 of the Appeal Brief. Appellant states that there is nothing in Sprague that would suggest that the sub-pixels used to create different colors could create multiple effective temperatures in the subpixel elements to create multiple effective temperatures on a scale of the pixels. In other words, Appellant submits that all subpixels are not created equal, and the mere fact that somewhere in the prior art subpixels are disclosed cannot have rendered obvious the specifically described subpixels in the present application. Appeal Br. 16. Appellant explains that regarding claim 10 (as well as claims 6, 7, and 15) each relate to the IR, not to visible as in Sprague. Reply Br. 17. Appellant explains that Sprague discloses distinct visible colors that can be combined to create some new colors, but hues of color do not behave like Applicant’s claimed sub-pixels which blend together emissivity. Appellant explains that emissivity does not have a color or wavelength associated with it. Id. The Examiner’s response is set forth on page 18 of the Answer. Therein, the Examiner believes that when Sprague’s subpixel structure is added, Bates’ electrophoric IR cloak would yield a system with a greater range of possible IR hue. However, this response does not adequately address the point raised by Appellant that there is nothing in Sprague that would suggest that the sub-pixels used to create different colors (visible sptecrum) could create multiple effective temperatures in the subpixel elements to create multiple effective temperatures on a scale of the pixels. Appeal 2019-001817 Application 13/587,989 9 In further regard to this point, on pages 17–18 of the Reply Brief, Appellant further explains that while in the visible, the pigment only needs to have a reflectivity, in the infrared, both emissivity and a temperature are needed in order to provide an IR signature. Reply Br. 17. We are persuaded by this line of argument and reverse Rejection 2. Rejection 3 Claim 15 depends upon claim 10 and therefore we reverse Rejection 3 for the same reasons that we reverse Rejection 2. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1–9 103(a) Hughes, Conway, Olson 1–9 10–13, 6–19 103(a) Bates, Sprague, Hughes 10–13, 6– 19 15 103(a) Bates, Sprague, Hughes, Conway 15 Overall Outcome 1–13, 15– 19 REVERSED Appeal 2019-001817 Application 13/587,989 10 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENN S. BATES and ROBERT L. PEIRCE Appeal 2019-001817 Application 13/587,989 Technology Center 2800 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge, dissenting. I respectfully dissent from the majority’s decision to reverse the rejections in this case. The record supports the Examiner’s fact findings. Appellant’s arguments do not identify reversible errors in the Examiner’s fact findings, nor do they structurally distinguish the prior art structure. Such arguments, based on bodily incorporation of the prior art structures and other flawed reasoning, do not persuade me of reversible error.