Ex Parte ASPENSON et al

Patent Trial and Appeal Board

Dec 31, 2018

13652442 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/652,442 10/15/2012
34082 7590 01/03/2019
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
MARK A. ASPENS ON
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.
P07742US1 9047
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. ASPENSON and JOHN G. CONNELL
Appeal2018-005415
Application 13/652,442
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark A. Aspenson and John G. Connell ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-7, 12-
14, 18, and 23. Claims 8-11, 15-17, 19-22, 24, and 25 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-005415
Application 13/652,442
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to building construction systems,
and particularly to a building insulation system that provides improved
insulation for maintaining more moderate temperatures and reducing energy
costs." Spec. ,r 2, Figs. 1-3. Claims 1, 14, and 23 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A building insulation system, comprising at least
one bag having:
a reflective, non-porous single ply outer covering disposed over
the entire bag;
insulation material disposed inside the at least one bag, whereby,
the bag provides a thermal barrier for conduction,
radiation and convection factors of thermal energy
transfer;
a pair of adjacent studs in a building; and
the at least one bag installed between the pair of adjacent studs,
wherein the non-porous integrity of the at least one bag is
maintained.
THE REJECTIONS 1
I. Claims 1--4, 7, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over by Gaugler (US 2,863,179, issued Dec. 9, 1958),
Cover (US 4,700,521, issued Oct. 20, 1987), and Heffelfinger (US
5,987,833, issued Nov. 23, 1999).
1 Although the Final Office Action indicates that claim 17 is rejected under 35
U.S.C. § 103 as unpatentable over Gaugler, Cover, Heffelfinger, Kalkanoglu,
Bovenkerk, and Evans, claim 17 has been canceled. See Final Office Action
8-9 ("Final Act."), dated July 24, 2017; Amendment filed May 12, 2017.
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Application 13/652,442
II. Claims 5, 6, and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gaugler, Cover, Heffelfinger, and Bovenkerk
(US 2,742,385, issued Apr. 17, 1956).
III. Claim 13 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gaugler, Cover, Heffelfinger, and Evans (US 2008/0087557
Al, published Apr. 17, 2008).
IV. Claims 14 and 23 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gaugler, Cover, Heffelfinger, Kalkanoglu (US
2007/0054129 Al, published Mar. 8, 2007), and Bovenkerk.
ANALYSIS
Rejection I - Obviousness over Gaugler, Cover, and Heffelfinger
Claims 1-4, 7, and 18
Appellants do not offer arguments in favor of claims 2--4, 7, and 18
separate from those presented for independent claim 1. See Appeal Br. 2--4. 2
We select claim 1 as the representative claim, and claims 2--4, 7, and 18
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that "Gaugler discloses an
insulation system capable of use in a building, comprising at least one bag
having: an outer covering disposed over the entire bag (30, see Fig. 3) [and]
insulation material (32, 36) disposed inside the at least one bag (see Fig. 3)."
Final Act. 2. The Examiner acknowledges that Gaugler "does not expressly
disclose the specific material of the outer covering (30) or the installation
between adjacent studs in a building as claimed." Id. The Examiner finds
2 Appeal Brief ("Appeal Br."), filed Nov. 28, 2017.
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Application 13/652,442
that "Cover teaches an insulation system wherein the outermost layers of a
multilayered insulation system comprises a reflective, non-porous single ply
(Mylar) material." Final Act. 3. The Examiner concludes that it would have
been obvious to "construct the outer covering taught by Gaugler out of
Mylar as taught by Cover, in order to greatly improve the R-value of the
insulation (col. 2, 11. 40-42)." Id. The Examiner also finds that
"Heffelfinger teaches installing an insulation batt between adjacent studs of
a building as claimed." Id. The Examiner concludes that it would have been
obvious to
place the insulation taught by Gaugler as modified above
between the studs of a building as taught by Heffelfinger, since
the location of the insulation in no way affects the other functions
of the insulation assembly and the insulation assembly can be
used in combination with the studs of a building to achieve the
predictable results of insulating the walls of the building.
Id. at 3--4. The Examiner explains that the modified bag of Gaugler would
"provide[] a thermal barrier for conduction, radiation and convection factors
of thermal energy transfer" because the modified bag has a "non-porous
outer covering compris[ing a] reflective polymeric plastic material for
reflecting thermal energy ... (Mylar) [and an] insulation material
compris[ing] ... fiberglass ... (Fiberglass; Gaugler col. 2, 11. 19)." Id. at 4.
Appellants contend that "Gaugler and Heffelfinger teach away from
each other and cannot be relied upon in combination" and that "Heffelfinger
teaches away from the claimed subject matter" because "Heffelfinger
testifies to the destruction of a mere 'transportation bag' in order to use the
insulation, whereas [Appellants'] disclosure requires the maintenance of the
bag element in order for the invention to operate." Appeal Br. 2. Appellants
further argue that "there is no disclosure whatsoever in Heffelfinger that a
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Application 13/652,442
non-porous bag is used-such a conclusion only arises from improper
hindsight" and that the Examiner's "proposed modification ... would render
the prior art unsatisfactory for its intended purpose or change the principle
operation of the reference." Appeal Br. 3; see also id. at 4 ( arguing that "in
order to modify Gaugler as modeled by Heffelfinger as suggested by the
Examiner, the purpose and integrity of the invention in Gaugler is destroyed
upon puncturing the bag containing the refrigeration insulation material
which then leaks into adjacent refrigeration components"); Reply Br. 2. 3
Appellants' arguments are not directed to the rejection as set forth by
the Examiner. In this case, the Examiner does not rely on Heffelfinger for
disclosing a non-porous bag. Rather, the Examiner relies on the
combination of Gaugler and Cover for disclosing a non-porous bag and on
Heffelfinger for disclosing an insulation batt installed between adjacent
studs of a building. See Final Act. 2--4; see also Ans. 9. 4 Further, as the
Examiner explains: (1) "Heffelfinger' s outer bag which is designed to be
punctured is a transportation bag and is not in place during installation,
opposite of what Gaugler teaches," and (2) "neither Gaugler nor Heffelinger
actually criticize[ s ], discredit[ s ], or otherwise discourage[ s] a permanently
installed outer bag being non-porous as argued by [A]ppellant[s]." Ans. 9--
10. We additionally agree with the Examiner regarding point (2) because
"[a] reference does not teach away ... if it merely expresses a general
preference for an alternative invention but does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed." DePuy
3 Reply Brief ("Reply Br."), filed May 2, 2018.
4 Examiner's Answer ("Ans."), dated Mar. 2, 2018.
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Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
We further are not persuaded that the Examiner engages in
impermissible hindsight in combining Gaugler, Cover, and Heffelfinger.
The Examiner cites specific teachings in the references themselves, not
Appellant's disclosure, in support of the Examiner's articulated reasoning
for combining the references as proposed in the rejection. See Final Act. 2-
4; see also Ans. 9-12. Additionally, the stated reason for applying Cover's
Mylar to Gaugler's bag is "in order to greatly improve the R-value of the
insulation." See supra. Any subsequent tearing or rupturing of that Mylar
would defeat or diminish that stated purpose.
Appellants argue that "Gaugler is particular in specification and
selectivity to refrigeration unit needs" and "an ordinary artisan in building
insulation would not look to refrigeration insulation." Appeal Br. 4.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Clay, 966 F.2d 656, 658---659 (Fed. Cir. 1992). Here, the second
criteria is met. As the Examiner explains, "Gaugler is reasonably pertinent
to the particular problem with which [ Appellants are] concerned, notably
insulating a wall cavity." Ans. 11.
In the Reply Brief, Appellants contend that:
• " [ t ]he [ A ]nswer identifies reference numeral 3 0 of Gaugler as the
outer covering and makes the conclusory statement, referring to Fig. 3
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that the outer covering 30 is disposed over the entire bag" (Reply Br.
3);
• "the Answer did not identify the bag required by the claim and
Appellant is left to guess as to what the Answer means by bag" (id.);
• "[e]ven if reference 34 is the referenced bag, as shown by Fig. 3, the
outer covering 30 is not disposed over the entire bag as is required by
the claim" (id.);
• "the outer covering 30 covers just a part of the bag 34 as well as a
layer of compressible insulation 32" (id.);
• "[t]he Answer also relies on Cover in support of providing a reflective
non-porous material (i.e. Mylar) for the outer covering while the
Answer points to no factual support for this combination" (id.);
• "if Gaugler and Cover were combined[,] the result would be an outer
covering 30 of Gaugler disposed only partially over an inner bag 34 or
alternatively within outer protective bag 30" (id.);
• "the Answer provides no explanation why, if such a combination was
obvious, ... Gaugler would not have used Mylar for the outer
covering when Gaugler used Mylar for construction of the inner bag
walls" (id.);
• "there is no disclosure from either Gaugler or Heffelfinger where a
bag is installed between studs in a building, let alone a bag that is left
intact and simply placed between the studs" (id. at 4); and
• claim 1 "require[ s] that the bag provides a thermal barrier for
conduction, radiation, and convection. Nowhere in the Answer are
these claim elements referenced or portions of the prior art identified
that disclose these limitations" (id.).
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We note, however, that each of these arguments was not raised in the
Appeal Brief, and does not appear to be responsive to any argument raised in
the Examiner's Answer. As stated in 37 C.F.R. § 41.4I(b)(2):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
(Emphasis added). Accordingly, we will not consider these untimely
arguments in the present appeal. However, we note the following:
• Figure 3 of Gaugler clearly shows that outer protective bag 30 forms a
complete covering enclosing the contents of the bag (see Gaugler Fig.
3);
• the Examiner finds that "Gaugler discloses an insulation system
... comprising at least one bag having: an outer covering disposed
over the entire bag (30, see Fig. 3)" (Final Act. 2; emphasis added);
• claim 1 does not exclude the bag from enclosing more than one
insulation material (Appeal Br. 7, Claims App.);
• Cover discloses "four sheets of aluminized mylar as shown in FIG. 2"
(Cover, 4:59; emphasis added);
• the Examiner concludes that it would have been obvious to "construct
the outer covering taught by Gaugler out of Mylar as taught by Cover,
in order to greatly improve the R-value of the insulation" (Final Act.
3; emphasis added); and
• the Examiner finds that the modified bag of Gaugler would "provide[]
a thermal barrier for conduction, radiation and convection factors of
thermal energy transfer" because the modified bag has a "non-porous
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outer covering compris[ing a] reflective polymeric plastic material for
reflecting thermal energy ... (Mylar) [and an] insulation material
compris[ing] ... fiberglass ... (Fiberglass; Gaugler col. 2, 11. 19)"
(Final Act. 4 ).
In view of the above and based on the record presented, we are not
persuaded the Examiner erred in rejecting independent claim 1 as
unpatentable over Gaugler, Cover, and Heffelfinger. Accordingly, we
sustain the Examiner's rejection of claim 1, as unpatentable over Gaugler,
Cover, and Heffelfinger, with claims 2--4, 7, and 18 falling with claim 1.
Rejections II and III - Obviousness over Gaugler, Cover,
Heffelfinger and either Bovenkerk or Evan
Claims 5, 6, 12, and 13
Appellants do not provide any substantive arguments against
Rejections II and III. Appeal Br. 1---6. As we find no deficiencies in the
Examiner's rejection of independent claim 1 as unpatentable over Gaugler,
Cover, Heffelfinger for the reasons discussed above, we likewise sustain the
Examiner's rejections of dependent claims 5, 6, and 12 as unpatentable over
Gaugler, Cover, Heffelfinger, and Bovenkerk, and of dependent claim 13 as
unpatentable over Gaugler, Cover, Heffelfinger, and Evans.
Rejection IV- Obviousness over Gaugler, Cover, Heffelfinger,
Kalkanoglu, and Bovenkerk
Claims 14 and 2 3
In regard to claims 14 and 23, Appellants contend that "[a]s Gaugler
and Heffelfinger teach away from each other, and a combination of these
references would render them unsatisfactory for their intended purpose, the
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Examiner has not made a prima facie case of obviousness, and no other
references cure this deficiency." Appeal Br. 5. As we do not find this
argument persuasive for the reasons discussed above for claim 1, we
likewise sustain the Examiner's rejection of independent claims 14 and 23 as
unpatentable over Gaugler, Cover, Heffelfinger, Kalkanoglu, and
Bovenkerk.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-7, 12-
14, 18, and 23 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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