Ex Parte Baz et al

Patent Trial and Appeal Board

Dec 31, 2018

13836099 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/836,099 03/15/2013
32294 7590 01/03/2019
Squire PB (NV A/DC Office)
8000 TOWERS CRESCENT DRIVE
14THFLOOR
VIENNA, VA 22182-6212
FIRST NAMED INVENTOR
AmrM.Baz
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.
058501.00085 9531
EXAMINER
VAUGHAN, JASON L
ART UNIT PAPER NUMBER
3726
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):
IPGENERAL TYC@SQUIREpb.COM
SONIA.WHITNEY@SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMR M. BAZ and MARINO DIMARZO
Appeal2018-001252 1
Application 13/836,099
Technology Center 3700
Before JEREMY M. PLENZLER, GEORGE R. HOSKINS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 9--14. We have jurisdiction under
§ 6(b ). We reverse.
1 Our Decision references the Specification filed March 15, 2013 ("Spec."),
Appeal Brief filed June 5, 2017 ("Appeal Br."), and Reply Brief filed
November 17, 2017 ("Reply Br."), as well as the Examiner's Answer mailed
September 18, 2017 ("Ans.") and Final Office Action mailed June 14, 2016
("Final Act.").
2 Appellant is the Applicant, University of Maryland, College Park, which
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
Appeal2018-001252
Application 13/836,099
SUBJECT MATTER ON APPEAL
The invention "relates to heat and fire protective items, and in
particular, to garments and gear that are protective from fire and excessive
heat." Spec. ,r 3. Independent claim 9, reproduced below, is the sole
independent claim on appeal and representative of the claimed subject
matter:
9. A method, comprising:
shaping a first-shaped transformable fiber at a first crystal
structure from a pre-determined configuration into a new shaped
configuration to provide a second-shaped transformable fiber,
wherein the predetermined configuration and the new shaped
configuration comprise two arrangements of a snap-ring
configuration;
inserting the second-shaped transformable fiber into a
cavity of a heat and fire protective item;
heating the second-shaped transformable fiber above its
transformation temperature to a second crystal structure to
transform the new shaped configuration to the pre-determined
configuration, wherein the pre-determined configuration forms
an air pocket within the heat and fire protective item; and
cooling the first-shaped transformable fiber below its
transformation temperature to revert the transformable fiber back
to the new shaped configuration at the first crystal structure.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
Lack
Kim et al.
WO 99/05926 Al
WO 2008/044815 Al
2
Feb. 11, 1999
Apr. 17, 2008 ("Kim")
Appeal2018-001252
Application 13/836,099
REJECTIONS 3
The Examiner rejects the claims on appeal as follows:
claims 9-12 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Lack; and
claim 13 under 35 U.S.C. § 103(a) as unpatentable over Lack and
Kim.
ANALYSIS
The Examiner finds that Lack discloses all of the limitations of
independent claim 9, except for the limitation reciting "wherein the
predetermined configuration and the new shaped configuration comprise two
arrangements of a snap-ring configuration." Final Act. 3--4; Ans. 2-3. In
regard to this limitation, the Examiner finds Lack discloses an alternative
example, namely Example 5, having two arrangements of a snap-type
configuration. Ans. 3. The Examiner acknowledges that Example 5 teaches
snap disks, rather than snap rings, and finds Lack explicitly discloses that
[ m Jany other discrete, shape memory parts can be used in place
of the conically trained shape memory wire such as but not
limited to shape memory snap disks and clover-leafs provided
that the parts can be transformed from a low profile (i.e., flat)
conformation to a higher profile, 3-dimensional conformation
with changes in temperature.
Id. at 3--4 (emphasis omitted) (quoting Lack 10:3-7). According to the
Examiner,
it would have been obvious to one of ordinary skill in the art to
modify the method of Lack such that it included manufacturing
snap-rings from the transformable fiber instead of the disclosed
3 The Examiner has withdrawn the rejection of claims 9-14 under 35 U.S.C.
§ 112, second paragraph. Ans. 6.
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Appeal2018-001252
Application 13/836,099
helical coils, trough shapes or conical shapes, because this would
merely require a modification in the shape of the transformable
fibers.
Final Act. 4. The Examiner also determines that, in view of Lack's
disclosure of various configurations of transformable fibers, "if one of
ordinary skill in the art viewed the teachings of Lack that it would only
require routine skill in the art to modify the shape of the transformable
materials of Lack in order to arrive at the shape that may be required by
claim 9." Ans. 10. The Examiner further determines "[a]s transformable
materials in the shape of snap-rings are known it would have been prima
facie obvious to substitute one of these shapes for the shapes manufactured
by the method of Lack." Final Act. 4.
A rejection premised on obviousness must be based on "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418
(2007)). For the reasons discussed below, Appellant has persuaded us that
the Examiner has not provided a sufficient reason why a person of ordinary
skill in the art would have modified the teachings of Lack to include a
transformable fiber in a snap-ring configuration.
According to the Federal Circuit, the mere substitution of one element
for another known in the field is obvious when the combination does no
more than yield a predictable result. KSR, 550 U.S. at 416 ("The Court
recognized that when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another kn011m
in thefield, the combination must do more than yield a predictable result"
(emphasis added) (citing United States v. Adams, 383 U.S. 39, 50----51
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Application 13/836,099
(1966))). Appellant argues, and we agree, that the Examiner has not shown
transformable fibers in a snap-ring configuration were known at the time of
invention. Appeal Br. 10. Lack discloses shape-memory fibers shaped as
helices, troughs, coils, strips, and disks. Lack 2:20-3:7, Figs. 1-5. Lack
further discloses that many other discrete, shape-memory parts can be used
in place of the conically trained shape-memory wire. Id. 10:3-}.
Nonetheless, Lack fails to disclose fibers in a snap-ring configuration, and
the Examiner does not provide any other evidence teaching fibers in a
snap-ring configuration. vVithout a showing that a snap-ring configuration
was know11, the snap-ring configuration would not have been a substitute for
the shapes of Lack's shape-memmy fibers, nor would have modifying
Lack's fiber to have a snap-ring configuration required only routine skill in
the art.
l\!foreover, the Federal Circuit has held that a change in shape may be
obvious, absent evidence that the recited configuration is significant In re
Dailey, 357 F.2d 669, 672----73 (CCPA 1966). We agree with Appellant that
the snap-ring configuration is significant. Appeal Br. 9 (citing Spec. ,r 34);
Reply Br. 5-6.
Paragraph 34 of Appellant's Specification describes the snap-ring
configuration as follows:
The size of each cavity can vary, depending upon the
particular garment or protective item. In a specific example with
reference to the firefighter' s jacket, a cavity size of
approximately 40 mm depth has certain advantages. A larger
depth cavity, such as 40 mm can accommodate a larger-sized
SMF wire configuration, such as that illustrated in Figs. 4(a) and
4(b ). In the SMF snap-ring configurations, one ring is anchored
to an adjacent ring, which produces the 3-D activated
configuration. However, the SMF snap-ring configuration is still
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Appeal2018-001252
Application 13/836,099
allowed to move within the cavity, relative to the material of the
garment. This allows the garment to remain free from bunching
and wrinkling. When the SMF wire configuration is activated,
the larger-sized wire configuration will deflect more than a
smaller-sized configuration, thereby providing a larger volume
of air flow (i.e. an enhanced thermal isolation) and a stiff
configuration. In addition, this allows the use of a larger
diameter-sized SMF wire, such as 0.020-0.040 inches in
diameter. The larger diameter-sized wire is capable of
generating a much greater force, which allows the air pockets to
be easily created.
The Examiner determines that this paragraph does not recognize any
advantage of a snap-ring configuration alone. Ans. 8. Rather, according to
the Examiner, this paragraph describes that the benefit of using this
configuration is the ability to use a particular wire diameter size to impart a
greater force as it changes shape, and independent claim 9 does not recite a
diameter size. Id. at 8-9.
The Examiner's position, however, is untenable for two reasons.
First, as Appellant points out, if a snap-ring configuration enables the use of
a larger diameter size wire, which imparts a greater force and thereby more
easily forms air pockets for thermal isolation, then the snap-ring
configuration itself is significant. Reply Br. 7. Paragraph 34 of the
Specification describes that a snap-ring configuration provides the ability to
use a larger diameter size wire, and paragraph 35 of Appellant's
Specification explains that a spring configuration cannot. More specifically,
paragraph 3 5 describes that using a larger sized wire diameter in a spring
configuration actually reduces the amount by which the spring configuration
can deflect, which reduces thermal isolation. Therefore, by enabling the use
of a larger sized diameter wire, the snap-ring configuration is significant.
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Application 13/836,099
Second, in addition to describing that a snap-ring configuration may
use a larger diameter size wire, paragraph 34 more broadly describes a
snap-ring configuration as a larger-size wire configuration, and explains that
the larger configuration provides greater deflection, thereby providing a
larger volume of air flow, enhanced thermal isolation, and a stiff
configuration. In other words, paragraph 34 describes advantages provided
by the larger size associated with the snap-ring configuration, not just a
larger diameter size wire. Moreover, the Specification expressly describes
that a snap-ring configuration is an improvement over other configurations,
such as helical springs, which tend to bend and coalesce with use. Spec.
,r 31. Accordingly, the Specification explains the significance of the
snap-ring configuration.
In view of the foregoing, the Examiner's reasoning as to why a person
of ordinary skill in the art would have modified the teachings of Lack to
include a transformable fiber in a snap-ring configuration is not supported by
rational underpinning. We, therefore, do not sustain the Examiner's
rejection of independent claim 9 and claims 10-12 and 14 depending
therefrom. The Examiner's rejection of claim 13 suffers from the same
deficiency as the Examiner's rejection of independent claim 9 (Final Act. 6),
and we similarly do not sustain the Examiner's rejection of claim 13.
DECISION
The Examiner's decision to reject claims 9--14 is reversed.
REVERSED
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