Ex Parte Balsells et al

Patent Trial and Appeal Board

Jul 21, 2016

12767421 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121767,421 04/26/2010
22145 7590 07/25/2016
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
FIRST NAMED INVENTOR
Pete Balsells
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.
1129-032.101 3633
EXAMINER
LANE, NICHOLAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETE BALSELLS, MAJID GHASIRI,
DANIEL POON, RUSSELL BEEMER,
and DICK SHEPARD
Appeal2014-005381
Application 12/767,421
Technology Center 3600
Before: LINDA E. HORNER, ERIC C. JESCHKE, and GORDON D.
KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4-18, 20, 21, and 24. Claim 3 is canceled and claims 19, 22, 23, and
25-28 are withdrawn from consideration. Final Act. 1-2; Appeal Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-005381
Application 12/767,421
CLAIMED SUBJECT MATTER
The claims are directed to canted coil springs and a method of making
the same. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A method of forming a multilayered canted coil spnng,
compnsmg:
forming a layer of a material having an electrical
conductivity around a hollow inner core to form a spring wire,
the electrical conductivity of the material being less than the
electrical conductivity of the hollow core;
coiling the spring wire into a plurality of helical coils;
and
canting the coils to form the canted coil spring.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yamamoto
Keswani
Balsells (Balsells '964)
Ewes
Balsells (Balsells '145)
us 4,537,808
US 6,784,370 Bl
US 7,274,964 B2
US 2006/0087816A1
US 2010/0029145 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 27, 1985
Aug. 31, 2004
Sept. 25, 2007
Apr. 27, 2006
Feb.4,2010
1. Claims 1, 2, 4, 5, 7, and 8 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Balsells '145 and Keswani.
2. Claims 1, 2, and 4-8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Balsells '145 and Ewes.
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Application 12/767,421
3. Claims 1, 2, 4, 5, 7, and 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Balsells '964, Yamamoto, and Keswani.
4. Claims 1, 2, and 4-8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Balsells '964, Yamamoto, and Ewes.
5. Claims 9-12, 14-17, 201, 21, and24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Balsells '964, Yamamoto, and
Keswani.
6. Claims 9-18 1, 20, 21and24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Balsells '964, Yamamoto, and Ewes.
7. Claims 9-12, 14-17, 20, 21, and 24 stand rejected under
35 U.S.C. §103(a) as being unpatentable over Balsells '145 and Keswani.
8. Claims 9-18, 20, 21, and 24 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Balsells '145 and Ewes.
OPINION
Rejections 1, 2, 7, and 8
Summarily affirmed.
Appellants initially sought review of all the rejections. Appeal Br. 2,
7-13. In particular, Appellants sought to remove Balsells '145 as prior art
by filing a Declaration under 37 C.F.R. § 1.131 along with a Pre-Appeal
Brief Conference Request on October 4, 2013. Appeal Br. 7-8; Ans. 2. The
Examiner refused entry of the Declaration as untimely. Miscellaneous
Communication, dated November 15, 2013. Appellants sought, in the
Appeal Brief, to have the Board consider the unentered Declaration. Appeal
1 The Examiner includes claim 19 in two rejections under 35 U.S.C.
§ 103(a). Final Act. 13, 16. We omit withdrawn claim 19 from the grounds
of rejection on appeal.
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Application 12/767,421
Br. 7-8. In their Reply, however, Appellants withdrew their arguments and
opposition to rejections numbered 1, 2, 7, and 8. Reply Br. 3-5.
Accordingly, Rejections 1, 2, 7, and 8 are summarily affirmed.2
Rejection 3 - Claims 1, 2, 4, 5, 7, and 8
Obvious in view of Balsells '964, Yamamoto, and Keswani.
Appellants argue these claims as a group. Appeal Br. 9-10. We select
claim 1 as representative, and claims 2, 4, 5, 7, and 8 stand or fall with claim
1.3 37 C.F.R. § 41.37(c)(l)(iv).
Appellants challenge the Examiner's finding in the Final Action, p. 7,
that it would have been obvious, starting with a spring made following the
combined teachings of Balsells '964 and Yamamoto, to modify it by making
the core of the spring hollow so as to reduce the amount of material without
reducing the surface contact area of the spring. Appeal Br. 9. Appellants
urge that Yamamoto discloses a chrome-plated spring wire that has both
strength and good conductivity (Appeal Br. 9, citing Yamamoto 1 :27-29,
2:8-13), and they argue that one of ordinary skill in the art would know
inherently that chrome plating is expensive. Appellants also argue that one
of ordinary skill in the art would not apply the hollow wire teaching of
Keswani to Yamamoto because ( s )he would inherently understand that to do
so would reduce strength and conductivity of the wire. Appeal Br. 10.
The Examiner responds that the teachings of Yamamoto and Keswani
are not contradictory because both represent improvements relative to a
2 Refusal to admit a declaration is petitionable to the Director, and cannot be
addressed on appeal to this Board. See 37 C.F.R. § 1.181.
3 Claim 4 depends from canceled claim 3. In the event of further
prosecution the Appellants may wish to correct this error.
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Appeal2014-005381
Application 12/767,421
similarly sized, standard spring wire, in the case of Yamamoto a standard
spring wire without a chrome coating, and in the case of Keswani, a standard
spring wire solid though its cross section. Ans. 5-6.
Here, the Examiner has articulated reasoning with rational
underpinning for his conclusions. Appellants have not provided sufficient
evidence to the contrary, and they have not persuaded us that the Examiner's
reasoning is incorrect. We note that one of ordinary skill in the art would
appreciate the addition of an expensive manufacturing process (chrome
plating of Yamamoto) is likely to stimulate a search for cost savings
elsewhere (hollowing core of Keswani) in order that the final product price
would increase as little as possible.
Appellants make their arguments concerning cost and physical
properties without any evidentiary support. Appellants speculate that a
skilled artisan would not hollow the core of Yamamoto because to do so,
(s)he would inherently know, would reduce the conductivity of the wire.
Appeal Br. 10. Further, Appellants speculate that a skilled artisan would not
hollow the core of Yamamoto because to do so, (s)he would inherently
understand, would reduce the mechanical strength of the spring. Id.
Appellants must support such positions with evidence rather than simply
attorney argument. In re Pearson, 494 F.2d 1399, 1404 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence."). As
Appellants' argument about conductivity and strength lacks adequate
evidentiary support, we do not find it persuasive.
For the first time in their Reply, Appellants challenge the
Yamamoto/Balsells '964 combination. Reply Br. 6-11. In their Appeal
Brief, Appellants challenged only whether it was obvious to combine the
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Application 12/767,421
hollow core of Keswani with the Balsells '964/Yamamoto combination.
Appeal Br. 9-10. They did so on the basis of countervailing economic and
physical consequences of pursuing further modification of the
Balsells '964/Yamamoto combination with Keswani. Appeal Br. 9-10. In
his Answer, the Examiner addressed the issue raised by Appellants. Ans. 4-
6. Arguments outside this issue are improper in a reply. Appellants have not
shown any cause why the many new arguments found in their Reply were
not raised earlier, and we decline to consider them. 37 C.F.R. § 41.4l(b)(2).
Rejection 4- Claims 1, 2, and 4-8
Obvious in view of Balsells '964, Yamamoto, and Ewes.
Appellants argue claims 1, 2, and 4-8 as a group. Appeal Br. 10-12.
We select claim 1 as representative and claims 2, and 4-8 stand or fall with
claim 1.4 37 C.F.R. § 41.37(c)(l)(iv).
Appellants repeat their arguments discussed above in relation to the
combination of Yamamoto and Balsells '964 in the Appeal Brief, and we
find them not persuasive for the reasons stated above.
Appellants also argue that a skilled artisan would not combine Ewes
with the Balsells '964/Yamamoto combination because Ewes "requires two
spaced apart ends to provide wicking, i.e., a cool end and a hot end." Appeal
Br. 11. While it is true that Ewes shows a helical coil configuration for a
heat pipe and having two ends, there is no indication that this two-ended
configuration is "required" as Appellants assert. "In the prosecution of a
patent, the initial burden falls on the PTO to set forth the basis for any
4 Appellants Brief also list claims 9-21 and 24 as subjects of this argument
(Appeal Br. 10), but these claims are not subject to Rejection 4. Final Act.
8-9. We assume their inclusion in this portion of the Appeal Brief was in
error.
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Application 12/767,421
rejection, i.e., a prima facie case .... Once the applicant is so notified, the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument." Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007)
(internal citations omitted.) Appellants must support their position with
evidence rather than speculation or conjecture. In re Pearson, supra.
The Examiner found that it "would have been obvious to form a
hollow core in the spring of Balsells '964 to allow space for a heat
conducting liquid to provide a cooling effect for the electrical connector
spring ofBalsells '964 (see e.g. Ewes, iJ 0051)." Final Act. 9. Appellants
argue that Ewes only shows a heat pipe with two ends and that two ends are
required for a heat pipe. Appeal Br. 11. Therefore, Appellants argue, the
point-to-point cooling operation of Ewes cannot be combined with a
continuous, coiled spring. Id. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). "Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art." Id. Appellants
have offered no evidence that the teaching of Ewes could not be combined
with the teaching of Balsells '964 to form a functioning, closed-loop heat
pipe as suggested by the Examiner. Ans. 7. Accordingly, we are not
persuaded that the Examiner's finding was in error.
Re} ections 5 and 6
Appellants incorporate by reference their arguments in connection
with Rejections 3 and 4, above in the section of the Appeal Brief addressing
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Application 12/767,421
Rejections 5 and 6. Appeal Br. 12. We find these arguments unpersuasive
for the reasons stated above.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4-18,
20, 21, and 24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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