Ex Parte Bergstr¿m

Patent Trial and Appeal Board

Aug 3, 2016

12992390 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/992,390 11/12/2010
23908 7590 08/05/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Richard Bergstrlm
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.
STOCP0186US 7100
EXAMINER
CHU, KATHERINE J
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BERGSTROM
Appeal2014-007197
Application 12/992,390
Technology Center 3600
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1---6 as unpatentable over Aquavilla (WO 2005/095199 Al, pub. Oct.
13, 2005), Dempster (US 3,426,109, iss. Feb. 4, 1969), and Ohashi (US
4,880,051, iss. Nov. 14, 1989). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-007197
Application 12/992,390
CLAIMED SUBJECT MATTER
The claims are directed to a device for preventing ice formation on a
surface layer. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A concrete cofferdam defining a closed space and adapted to
float in a volume of water and comprising:
a collector conduit for a circulating fluid and connected to
a heat conduit and adapted to receive heat from the volume of
water;
a roof forming a bridge deck of the cofferdam;
a surface layer provided on a heat insulating layer of the
bridge deck; and
the heat conduit for a circulating fluid and received in the
surface layer and connected to the collector conduit for emitting
heat to the surface layer.
OPINION
Claims 1---6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aquavilla, Dempster, and Ohashi.
Appellant separately argues the patentability of claims 1 and 4.
Claims 2, 3, and 5 stand or fall with claim 1 from which they depend. See
37 C.F.R. § 41.37(c)(iv). Likewise, claim 6 depends from, and stands or
falls with claim 4.
Claim 1
In the rejection of claim 1, the Examiner cites Aquavilla for the
majority of the features of the cofferdam. Final Act. 2. Dempster is relied
on for "a roof forming a bridge deck of the cofferdam" and Ohashi is used to
teach "a surface layer provided onto a heat insulating layer of the bridge
deck." Id. at 2-3.
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Application 12/992,390
Closed Space
Appellant first argues that the rejection of claim 1 is improper because
Aquavilla does not teach the required "cofferdam defining a closed space."
Appeal Br. 5. It is argued that the "closed space 10 in Aquavilla is defined
by the basic structure 11 that is supported on the cofferdam 12. The
cofferdam 12 has an open top for receiving the basic structure 11." Id. at 5-
6 (emphasis added).
The Examiner responds that Aquavilla defines a closed space
"because it is closed on four sides and has a bottom." Answer 2. The
Examiner explains that "Applicant is arguing 'closed space' as if it must be
enclosed on all sides. In fact, a closed space could imply simply a barrier;
for example, a four sided enclosure for an animal is a closed space." Id.
Appellant disagrees that this can be considered a closed space in the context
of a cofferdam. Reply Br. 1.
In determining the ordinary and customary meaning of the claim term
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word for guidance." Comaper Corp. v.
Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips c. AWH
Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en bane)). An ordinary and
customary meaning of the claim term "closed" is "enclosed" which means
"to close in" or "surround." Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/closed; http://www.merriam-webster.com/
dictionary/enclose (accessed Aug. 1, 2016). Thus, we have not been
apprised of error in the Examiner's rejection. Aquavilla describes its closed
space 10 stating, " [a] basic structure 11 for a closed space 10 is provided in a
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Application 12/992,390
hull in the shape of a reinforced concrete cofferdam 12 shown in section in
FIG 1." Spec. 4. Thus, Aquavilla's closed space 10 fairly reads on the
claimed "cofferdam defining a closed space." Appeal Br. 10.
Heat Insulating Layer of a Bridge Deck in Aquavilla
Appellant next argues that "Aquavilla also does not disclose or
suggest circulating fluid in a surface layer provided on a heat insulating
layer of a bridge deck formed by a roof of a cofferdam." Appeal Br. 6. As
the Examiner does not rely on Aqua villa for these features of the claim, this
argument does not apprise us of error in the Examiner's rejection.
Obvious to Combine
Appellant argues the combination is not obvious because "Dempster
does not provide any disclosure or suggestion regarding heating of or even
any maintenance of the floating structure." Id. However, as noted by the
Examiner, "Dempster does not need to suggest heating or maintenance, as
Dempster was not used for that teaching." Answer 3.
Appellant further asserts that what is lacking in the rejection "is a
reasonable basis for the skilled person to have sought to modify the system
of Aqua villa using any of the teachings of Dempster." Reply Br. 2.
Appellant argues that heating and maintenance issues are the problems
addressed by Aquavilla, but are not problems addressed by Dempster. Id.
Further Appellant states that the "Examiner contends it would have been
obvious to replace the cofferdam of Aquavilla with the concrete pier of
Dempster, but offers no explanation supporting this conclusion." Id. In a
related argument, Appellant states the combination is not obvious because
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Application 12/992,390
"it cannot be seen how the skilled person would consider the concrete pier of
Dempster to be a suitable alternative to the cofferdam of Aquavilla." Appeal
Br. 6.
In response to these arguments, the Examiner explains: "Dempster
was used in the rejection only for the teaching of being a floating pier/bridge
deck with a substructure and a roof, where Aquavilla's structure (11) could
be modified with Dempster's teaching of a providing a roof on a floating
pier." Answer 3. But, Appellant responds 1, the reason to combine from the
Final Action implies the wholesale replacement of Aquavilla's structure with
that of Dempster. Reply Br. 2-3. Thus, the combination is not as limited as
the Examiner states.
Appellant's arguments are unconvincing for a number of reasons.
First, the Examiner does not suggest the wholesale "replace[ ment of] the
cofferdam of Aquavilla with the concrete pier of Dempster" as suggested by
Appellant, but rather a modification of Aquavilla based on the teachings of
Dempster. The teachings of Dempster relied on are "a concrete floating pier
where the pier forms a closed space to allow air in the hollow space for
buoyancy." Final Act 2. As these teachings are not related to "heating or
maintenance," there is no need for the Examiner to provide a reason to
combine that relates to either heating or maintenance. Further, as Dempster
is not relied on as an alternative to Aquavilla, it is not necessary for the
Examiner to provide teachings as to why it would be so. The Examiner has
adequately explained that one of ordinary skill in the art would be led to
1 We also note that Appellant takes issue with the Examiner's statement that
"Applicant is arguing the reference individually, not as it was used in the
combination." Reply Br. 3 (citing Answer 3). This issue is not
determinative to any of the arguments raised by Appellant.
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Appeal2014-007197
Application 12/992,390
modify Aqua villa's floating structure so as to have a roof forming a bridge
deck (Final Act. 2; Ans. 3) in order "to allow air in the hollow space for
buoyancy" (Final Act. 2). Accordingly, we are not persuaded that the
Examiner has failed to articulate reasoning with rational underpinnings to
explain why one of ordinary skill in the art would modify the system of
Aqua villa using the teachings of Dempster.
Appellant then argues the combination is not obvious because "one of
ordinary skill in the art would not find any reason to combine Ohashi with
Aquavilla." Appeal Br. 8. Appellant explains: "Ohashi does not disclose or
even suggest a floating structure, let alone the heating of any part of a
floating structure via heat received from surrounding water or even from any
surrounding medium." Id.
Appellant's arguments are not commensurate with the scope of the
rejection, as explained by the Examiner:
Ohashi does not need to disclose a floating structure. Ohashi was
used as a reference for the teaching of providing pipes that
circulate fluid as a heating medium as a way to provide heat to
prevent snow or ice on a surface, which is applicable to any
surface-like structure such as a road, a bridge, ground, and the
like (Ohashi's column 1, lines 10-12). As long as there might be
ice or snow on any surface-like structure, such as the floating
structure that Aqua villa teaches, one of ordinary skill in the art at
the time of the invention could modify Aquavilla's device to
include pipes that circulate fluid to heat a surface using Ohashi's
teachings of melting snow and ice on any surface-like structure.
Answer 3.
In response, Appellant incorrectly asserts that "the Examiner fails to
address the fundamental question of why would the skilled person look to
Ohashi for improving upon the system of Aquavilla." Reply Br. 4. The
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Application 12/992,390
Examiner has laid out reasoning both in the above quote from the Answer
and in the Final Action. Appellant does not apprise us of error in the
articulated reasoning.
Appellant further argues: "Ohashi does not disclose or even suggest a
floating structure, let alone the heating of any part of a floating structure via
heat received from surrounding water or even from any surrounding
medium." Reply Br. 4. Appellant's requirement that the reason to combine
be related to "a floating structure" is misguided. The Examiner has not
relied on Ohashi for a floating structure as that is already taught in the other
cited references.
As we have not been apprised of error, we sustain the Examiner's
decision rejecting claim 1, and claims 2, 3, and 5, which fall with claim 1 as
unpatentable over Aquavilla, Dempster, and Ohashi.
Claim 4
Claim 4 depends from claim 1 and adds "wherein the circulating fluid
is collected directly from the water in the volume of water."
The Examiner asserts that this feature is taught by Aquavilla, citing
page 2, lines 6-7: "whereby heat from surrounding water is received by the
collector hose and utilized for heating the space." See Final Act. 4.
In response Appellant notes that Aquavilla teaches that "the
circulating medium consists of a combination of water and alcohol." Appeal
Br. 8-9 (citing Aqua villa 4, 11. 25-26). The Examiner responds that since
the structure is in water and surrounded by water it would be obvious to use
the surrounding water. Answer 4. The Examiner further argues that the
water could be "collected at some point" from the surrounding water. Id.
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Application 12/992,390
Though these statements show that it is possible that the surrounding water
could be used as the circulating fluid, they are not sufficient to establish a
prima facie case of obviousness.
For this reason, we do not sustain the Examiner's decision rejecting
claim 4, and claim 6 which depends therefrom.
DECISION
The Examiner's rejection of claims 1-3 and 5 is AFFIRMED. The
rejection of claims 4 and 6 is REVERSED.
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)(l )(iv).
AFFIRMED-IN-PART
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