Ex Parte Creasy

Patent Trial and Appeal Board

Dec 19, 2018

14043276 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/043,276 10/01/2013
28997 7590 12/21/2018
HARNESS, DICKEY & PIERCE, P.L.C.
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Larry D. Creasy Jr.
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.
9062-000007-US-COC 1063
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY D. CREASY JR.
Appeal2017-000314
Application 14/043,276
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-15 and 18-26. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We refer to the Specification ("Spec.") filed October 1, 2013; Non-Final
Office Action ("Non-Final Act.") dated July 16, 2015; Appellant's Appeal
Brief ("App. Br.") filed January 19, 2016; Examiner's Answer ("Ans.")
dated August 1, 2016, and Appellant's Reply Brief ("Reply Br.") filed
September 30, 2016.
2 Appellant is Applicant, Laird Technologies, Inc., which is identified in the
Appeal Brief as the real party in interest. App. Br. 5.
Appeal2017-000314
Application 14/043,276
BACKGROUND
The subject matter on appeal relates to electromagnetic interference
(EMI) shielding. Spec. ,r 2. Operation of electronic devices generates
electromagnetic radiation which can interfere with operation of other
proximate devices. Id. ,r 3. According to the Specification, "[a] common
solution to ameliorate the effects of EMI has been the development of
shields capable of absorbing and/or reflecting EMI energy." Id. Appellant
describes flame retardant EMI shields that include "environmentally friendly
materials," namely, halogen-free flame retardants. Id. ,r 2. Claim 1 is
illustrative of the subject matter at issue in this Appeal:
1. An electromagnetic interference (EMI) shield
compnsmg:
at least one resilient core member that is free of flame
retardant;
at least one electrically conductive layer; and
at least one adhesive bonding the electrically conductive
layer to the resilient core member, the adhesive including at
least one halogen-free flame retardant;
wherein the adhesive is halogen-free; and
wherein the shield has a flame rating of VO under
Underwriter's Laboratories (UL) Standard No. 94.
App. Br. 20 (Claims Appendix).
Claims 23 and 25 also are written in independent form and, with
regard to the issues raised in this Appeal, are essentially the same as claim 1.
Each remaining claim depends from claim 1, 23, or 25.
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Application 14/043,276
REJECTIONS
I. Claims 1-14, 20, and 23-25 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Bunyan. 3
II. Claim 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Bunyan and Jones. 4
III. Claims 18, 19, 21, 22, and 26 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Bunyan and Kuniyoshi. 5
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections .... "). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies a reversible error. Thus, we affirm
the Examiner's rejections for the reasons expressed in the Non-Final Office
Action and Answer. We add the following primarily for emphasis.
Rejection I
With regard to Rejection I, Appellant argues the claims as a group,
directing the arguments to recitations common to each of the independent
3 US 6,248,393 Bl, issued June 19, 2001 ("Bunyan").
4 US 5,804,762, issued September 8, 1998 ("Jones").
5 US 6,753,476 Bl, issued June 22, 2004 ("Kuniyoshi").
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Application 14/043,276
claims. See App. Br. 8-13. We select claim 1 as representative of the
rejected claims. Claims 2-14, 20, and 23-25 stand or fall with claim 1.
Relevant to Appellant's arguments on appeal, the Examiner finds that
Bunyan discloses an EMI shield that includes a flame-retardant coating 14
located between a resilient foam core 52 and a conductive fabric 12. Non-
Final Act. 3 (referencing Bunyan, Fig. 5). The Examiner finds that
Bunyan's coating 12 is an adhesive in light of Bunyan's teaching that the
coating "promotes bonding of the foam core layer and the electrically
conductive fabric layer." Id. at 3--4 (citing Bunyan 3:67--4:5) (emphasis
omitted). The Examiner further finds that Bunyan identifies various fire-
retardant additives, including non-halogenated additives such as aluminum
hydrate, each of which are described as suitable for use in coating 14 to
achieve the desired flame retardancy. Id. at 4 (citing Bunyan 6:55---63). The
Examiner determines that one of ordinary skill in the art, therefore, would
have had a reason to select the identified non-halogenated fire-retardant
additives when formulating Bunyan's coating 14, thereby rendering the
coating halogen-free. Id.
Appellant argues that Bunyan's coating 14 is not an adhesive. App.
Br. 10; Reply Br. 3. Particularly, Appellant contends that coating 14
"functions as an interior surface 62 to block pores 22 of the fabric shielding
material 10." Id. ( emphasis to reference numerals added). Appellant is
correct that Bunyan characterizes coating 14 as providing the above-
described pore-blocking function. See Bunyan 7:57---67. That functionality,
however, does not negate Bunyan's further teaching that same surface 62
formed by coating 10 "promotes the bonding of the foam to the fabric." Id.
at 8:3--4. Appellant does not present persuasive evidence or argument to
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Application 14/043,276
refute the Examiner's finding that Bunyan's coating 14 is an adhesive
because it promotes bonding.
Appellant also argues that Bunyan teaches away from using halogen-
free flame retardants because Bunyan identifies a preferred embodiment and
working example that uses halogenated compounds. App. Br. 10-11; Reply
Br. 4---6. Appellant's argument is unpersuasive. A prior art reference's
disclosure is not limited to its preferred embodiments or working examples.
See In re Mills, 470 F.2d 649, 651 (CCPA 1972); see also In re Susi, 440
F.2d 442,446 n.3 (CCPA 1971). Moreover, here, Bunyan provides that
"[f]lame retardancy may be imparted by loading ... one or more
conventional flame retardant additives such as aluminum hydrate, antimony
trioxide, phosphate esters, or halogenated compounds such as
polybrominated diphenyl oxides." Bunyan 6:59---63 (emphasis added).
Appellant does not point to persuasive evidence to establish that a preference
for halogenated retardants would have discouraged use of any of the non-
halogenated retardants identified by Bunyan as suitable for the same
intended purpose.
Appellant further argues that determining particular halogen-free
flame retardants and their amounts necessary to achieve the recited VO
classification would have required unreasonable experimentation. App. Br.
11-12. However, Bunyan specifies that "the material of the invention
affords UL94 V-0 protection" (Bunyan 3:30-32), and discloses that the
necessary flame retardancy may be imparted by loading "with between
about 30-50% by weight" of one or more of three listed non-halogenated
additives-namely, aluminum hydrate, antimony trioxide, and phosphate
esters (id. at 6:59---63). Appellant does not present evidence or otherwise
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Application 14/043,276
contend that any of the foregoing additives in the disclosed amounts would
have been inadequate to achieve the desired UL94 classification.
Appellant also argues that halogenated and non-halogenated flame
retardants are not "functionally equivalent and interchangeable on a one-to-
one basis" because "a significantly larger loading of the halogen-free flame
retardants would be required." App. Br. 12-13. However, we do not view
the Examiner's obviousness determination as involving substituting one
additive for another based on equivalence or interchangeability. Rather, the
Examiner finds that one of ordinary skill would have had a reason to select
one or more of the non-halogenated additives expressly identified in
Bunyan, based on Bunyan's characterization of those additives as suitable
for the intended purpose of imparting flame retardancy.
Appellant contends that commercial success of Appellant's halogen-
free ECOGREENâ„¢ product weighs against obviousness. App. Br. 15-18.
Particularly, Appellant submits Declaration evidence of annual unit sales of
the ECOGREENâ„¢ product spanning the years 2006-2013. Id. at 26
(Evidence Appendix, Exhibits 5-8). Appellant argues that sales of the
ECOGREENâ„¢ product at a higher per-unit price than Appellant's other
commercially available EMI shielding gaskets which are not halogen free
demonstrates that "the commercial success of Appellant's ECOGREENâ„¢
gaskets can be attributed to the features claimed in the current Application."
Id. at 17.
Appellant's sales evidence is of limited probative value because there
is no indication whether the number of units sold represents a substantial
quantity in the relevant market. See Ex parte Jella, 90 USPQ2d 1009, 1017
(BPAI 2008) (precedential); see also In re Huang, 100 F.3d 135, 140 (Fed.
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Application 14/043,276
Cir. 1996) ("Although Huang's affidavit certainly indicates that many units
have been sold, it provides no indication of whether this represents a
substantial quantity in this market."); In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units sold is
insufficient to establish commercial success."); Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985) (finding that sales of 5
million units represent a minimal showing of commercial success because
"[ w ]ithout further economic evidence ... it would be improper to infer that
the reported sales represent a substantial share of any definable market")
( overruled on other grounds in Midwest Indus., Inc. v. Karavan Trailers,
Inc., 175 F.3d 1356, 1358 (Fed. Cir. 1999)).
Giving careful consideration to Appellant's objective evidence of non-
obviousness together with the prior art evidence relied upon by the
Examiner, we are persuaded that the Examiner's obviousness determination
is supported by a preponderance of the evidence in this case. Accordingly,
Rejection I is sustained.
Rejections II and III
Appellant does not separately argue against Rejection II or III except
to rely on the arguments presented against Rejection I. Accordingly,
Rejections II and III also are sustained.
DECISION
The Examiner's decision rejecting claims 1-15 and 18-26 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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