Ex Parte Clauss et al

Patent Trial and Appeal Board

Jul 11, 2018

14007728 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/007,728 09/26/2013
46726 7590 07/13/2018
BSH Home Appliances Corporation
100 Bosch Boulevard
NEW BERN, NC 28562
FIRST NAMED INVENTOR
Stephane Clauss
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.
2011P00369WOUS 5745
EXAMINER
JOHNSON, VICKY A
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANE CLAUSS and
MARTIN OBERHOMBURG
Appeal2017-005372
Application 14/007,728
Technology Center 3656
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and FRANCES L.
IPPOLITO, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final decision rejecting claims 13-52. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appellants represent that the real party in interest is BSH Hausgerate
GmbH. Appeal Br. 2.
Appeal2017-005372
Application 14/007,728
CLAIMED SUBJECT MATTER
Claim 13, reproduced below, is illustrative of the claimed subject
matter.
13. An operating element for a domestic appliance, said
operating element comprising a main body made of a material
comprised of plastic and a filler admixed to the plastic, said
filler having a thermal conductivity which is higher than a
thermal conductivity of the plastic.
REJECTIONS
I. Claims 13-18, 21-32, and 35-51 stand rejected under 35
U.S.C. § I03(a) over Schnetzer (U.S. Patent Publication No.
2011/0203571 Al, pub. Aug. 25, 2011) and Bruner (U.S.
Patent No. 2,748,099, iss. May 29, 1956); and
II. Claims 13, 19, 20, 27, 33, 34, and 52 stand rejected under 35
U.S.C. § I03(a) over Schnetzer and Kim (WO Patent
Publication No. 2010/053226 Al, pub. May 14, 2010).
ANALYSIS
Obviousness over Schnetzer and Bruner- Claims 13-18, 21-32, and 35-51
a. Claims 13-17, 21-31, 35-48, 50, and 51
With respect to this rejection, Appellants rely essentially on
arguments directed to independent claims 13, 27, 42, and 47 for its appeal
of the Examiner's decision rejecting claims 13-17, 21-31, 35--48, 50, and
51. See Appeal Br. 6-8. Appellants provide further arguments directed to
additional limitations recited in dependent claims 18, 32, and 39, which we
address separately. See Appeal Br. 9-10.
For independent claims 13, 27, 42, and 47, in the Non-Final Office
Action mailed on August 11, 2016 ("Office Action"), the Examiner finds
that Schnetzer teaches an operating element for a domestic appliance that
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includes a main body (1) made of a material comprised of plastic. Office
Action 2. The Examiner acknowledged that Schnetzer does not disclose a
filler admixed to the plastic or a filler having a thermal conductivity which
is higher than a thermal conductivity of the plastic. Id. Rather, the
Examiner relies on Bruner' s disclosed use of an aluminum filler admixed to
the plastic and a "thermal conductivity [ of aluminum] (210 W /mK) which
is higher than a thermal conductivity (0.16 W/mK) of the plastic (nylon),
thereby providing a cool metal sensation to the skin of the user when the
main body is touched by the user." Id. at 2-3. The Examiner adds that "[i]t
would have been obvious to one having ordinary skill in the art at the time
the invention was made to modify the device of Schnetzer et al to include a
filler admixed to the plastic as taught by Bruner et al in order to provide a
metallic appearance." Id. at 3.
In response, Appellants argue that modifying Schnetzer to include
Bruner's polyamide composition with a high percentage of metal filler is
contrary to the explicit teaching of Schnetzer. Appeal Br. 6 ( citing
Schnetzer ,r 16); id. at 8 ("Schnetzer teaches that raising the thermal
conductivity of control elements of cooktops is contrary to accepted
wisdom."); see Reply Br. 3. More specifically, Appellants contend that
"[r ]eplacing the plastic of Schnetzer with the metal-filled plastic of Bruner
would necessarily increase the thermal conductivity of the knob of
Schnetzer." Appeal Br. 7. Further, "Bruner' s filled plastic will result in the
same increase of thermal conductivity as a coating that is too thick ...
[and] Schnetzer specifically teaches away from doing so." Id.
In response, the Examiner asserts that Paragraph 16 of Schnetzer
discusses the coating thickness of the metal coating and "how it is
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Application 14/007,728
advantageous to have a low heat conductivity, however, it does not discuss
the thermal conductivity with regard to the metal mixed with the plastic."
Ans. 3. In other words, the Examiner's proposed modification substitutes
Bruner' s mixture composition for both the plastic and metal coating
described in Schnetzer. The Examiner states:
The appellant assumes the thermal conductivity will be increased
with the use of the metal filler, however, the appellant has not
presented evidence that the thermal conductivity will increase
when the coating is eliminated and the metal mixed with the
plastic is used. The metal filler mixed with plastic eliminates
the need/or the metal coating and overcomes the disadvantages
discussed above.
Ans. 3 (emphasis added). Thus, the Examiner takes the position that
Paragraph 16 of Schnetzer does not address the use of thermal conductivity
of a plastic admixed with a metal filler.
Appellants acknowledge that "[ o ]f course Schnetzer does not discuss
thermal conductivity with regard to metal mixed with plastic because
Schnetzer does not contemplate the use of metal filler in the plastic.
Schnetzer discusses one or more metal coatings on an underlying base
plastic component. See, e.g., Schnetzer ,r,r 7-16." Reply Br. 2. As such,
both the Examiner and Appellants agree that Schnetzer does not address the
use of a metal filler admixed to plastic and refers, rather, to preferences for
the thickness of a metal coating.
Turning to Schnetzer, Paragraph 16 recites:
It is important that the sum of the coating thicknesses of
all applied metal coatings does not exceed 0.1 mm. It is thereby
ensured that the low heat conductivity of the plastic base
member is not or not significantly increased by the metallic
coatings. Low heat conductivity is in particular advantageous in
the case of control elements of cooktops, so that the heat arising
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during the cooking process does not result in excessive heating
of the control element.
Schnetzer ,r 16 ( emphasis added). We agree with the Examiner that
Schnetzer discusses thermal conductivity in the context of a metal coated
plastic base member and not with regard to a plastic admixed with metal
filler. Therefore, Schnetzer does not teach away because it "does not
'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy 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)).
Accordingly, we sustain the Examiner's rejection of claims 13-17,
21-31, 35--48, 50, and 51.
b. Claims 18, 32, and 49
With respect to dependent claims 18, 32, and 49, Appellants contend
that the Office Action is "flawed" because cited paragraph 27 of Schnetzer
does not disclose thermal conductivity of 1 to 20W/mK. Appeal Br. 9.
Appellants add that "Table I of Bruner lists thermal conductivities ranging
from 0.3 W/m-k to 0.7 W/m-k (when converted from BTU/hr/ft2/in/deg.
F). This is not within the recited range." Id. at 10.
Claims 18, 32, and 49 depend from independent claims 13, 27, and 47
respectively. These dependent claims recite a similar numeric range for
thermal conductivity, i.e., "wherein the material of the main body has a
thermal conductivity of 1 to 20 W/mK." For these limitations, the Office
Action states that "[r]e claims 18, 32, and 49, Schnetzer et al disclose the
material of the main body has a thermal conductivity of 1 to 20 W /mK ( see
i-f27)." Office Action 3. In the Answer, the Examiner asserts that
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Paragraph 27 of Schnetzer
teaches the main body can be, for example, a mixture of a
polycarbonate (PC) and acrylonitrile butadiene styrene (ABS) or
a polyamide (PA). The Bruner et al reference teaches that the
thermal conductivity increases with the amount of metal filler
added to the plastic. One having ordinary skill in the art would
modify the device of the Schnetzer et al to include a metal filler
admixed to the plastic as taught by Bruner et al in order to
provide a metallic appearance.
Ans. 4.
Based on the record before us, Appellants' position is persuasive.
Although the Examiner finds that Bruner's plastic admixed with metal filler
would have a higher thermal conductivity than the plastic by itself, (see
Ans. 4), the Examiner does not explain sufficiently the conclusion that the
specific range for thermal conductivity recited in claims 18, 32, and 49
would have been obvious (e.g., result-effective variable subject to
optimization).
Accordingly, we do not sustain the Examiner's rejection of claims 18,
32, and 49 as obvious over Schnetzer and Bruner.
Obviousness over Schnetzer and Kim- I 3, 19, 20, 27, 33, 34, and 52
For claims 13, 19, 20, 27, 33, 34, and 52, Appellants rely on its
arguments presented above regarding claims 13, 27, 42, and 47, which we
have addressed above. See Appeal Br. 8-9 ("Schnetzer teaches away from
the proposed modification in view of Kim for the same reasons that
Schnetzer teaches away from the modification in view of Bruner.").
Additionally, Appellants contend that the Office Action does not cite any
evidence for the finding that it would have been obvious to modify
Schnetzer in view of Kim to improve physical properties. Appeal Br. 9.
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In the Office Action, the Examiner determined, as discussed above,
that Schnetzer does not disclose the recited filler admixed to the plastic
with a thermal conductivity which is higher than a thermal conductivity of
the plastic. Office Action 8. The Examiner relies on Kim to teach the
recited filler and asserts that it would "have been obvious to one having
ordinary skill in the art at the time the invention was made to modify the
device of Schnetzer et al to include a filler admixed to the plastic as taught
by Kim et al in order to improve physical properties." Id. at 6 (emphasis
added). In the Examiner's Answer, the Examiner provides that Kim
"teaches that the metal filler and resin provides excellent thermal
conductivity and excellent electrical insulating properties." Ans. 4--5. In
the Reply, Appellants counter that the "Examiner's Answer alleges
(without citation) that Kim's disclosure provides excellent properties. But
there is no evidence that excellent properties are an improvement ( as
alleged in the rejection) over Schnetzer." Reply Br. 4.
We note that the first paragraph of Kim appears to state that Kim's
invention is directed "to an electrically insulating thermally conductive
resin composition having excellent electrical insulating properties and
thermal conductivity." Kim, 1:6-8. Kim's disclosure goes on to describe
characteristics and qualities of the resin composition, including thermal
conductivity. Nonetheless, on the record before us, the Examiner has not
cited or otherwise explained what aspects of Kim's or Schnetzer's
disclosure support the conclusion that modifying Schnetzer with Kim's
resin would have been understood by a skilled artisan to "improve physical
properties." Office Action 6. Although the references themselves need not
explicitly provide the reason for the Examiner's proposed modification, the
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Examiner must, nonetheless, direct us to where the record supports the
Examiner's findings and conclusions. The Federal Circuit explained that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C.
§ 132). Here, the explanation is incomplete and, accordingly, we do not
sustain the Examiner's obviousness rejection based on Schnetzer and Kim.
DECISION
We AFFIRM the Examiner's decision rejecting claims 13-17, 21-31,
35--48, 50, and 51 as obvious over Schnetzer and Bruner;
We REVERSE the Examiner's decision rejecting claims 18, 32, and
49 as obvious over Schnetzer and Bruner; and
We REVERSE the Examiner's decision rejecting claims 13, 19, 20,
27, 33, 34, and 52 as obvious over Schnetzer and Kim.
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-IN-PART
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