10946571 (P.T.A.B. Sep. 17, 2013)

Ex Parte Ewes et al

Patent Trial and Appeal BoardSep 17, 2013

10946571 (P.T.A.B. Sep. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/946,571 09/21/2004 Ingo Ewes Ewes 6-5-1-11 6304 7590 09/18/2013 Ryan, Mason & Lewis, LLP Suite 205 1300 Post Road Fairfield, CT 06824 EXAMINER WALBERG, TERESA J ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 09/18/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte INGO EWES, MARC SCOTT HODES, and PAUL ROBERT KOLODNER ____________________ Appeal 2011-009576 Application 10/946,571 Technology Center 3700 ____________________ Before JOHN C. KERINS, WILLIAM A. CAPP, and BEVERLY M. BUNTING, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009576 Application 10/946,571 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 21, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a heat-transfer device. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heat-transfer device comprising: at least one heat-transfer structure thermally connectable to at least one heat source, wherein the heat-transfer structure comprises at least two substantially non-deforming components thermally coupled to each other and wherein at least one of said thermally coupled components is configured to slide within at least one other of said thermally coupled components. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Novotny US 5,206,791 Apr. 27, 1993 REJECTIONS The Examiner made the following rejections: Claims 1-21 and 23-25 are rejected under 35 U.S.C. §103(a) as being unpatentable over Novotny in view of Appellants’ admission that the species of the invention are not patentably distinct.1 Ans. 3. 1 See Appellant’s “Response to Restriction Requirement” entered April 5, 2006 (hereafter “Response”). Appeal 2011-009576 Application 10/946,571 3 ANALYSIS Appellants argue claims 1-21 and 23-25 as a group. App. Br. 3-10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Appellants made an admission on the record in the Response, stating that the eleven different species of the invention identified by the Examiner in an Office Action dated March 2, 2006, are not patentably distinct from each other, in order to overcome a restriction requirement. Ans. 3. Also, the Examiner finds that one of the previously restricted species of the invention is unpatentable over the prior art and that Appellant amended the claims to preclude the species examined by the Examiner. Id. Since the amended claims are directed to a species other than the species initially examined, the Examiner maintains the amended claims are likewise rejectable over the previously applied reference in view of Appellant’s admission “that the species of the invention are not patentably distinct.” Id at 4. Appellants contend that the USPTO policy on admissions is erroneous. App. Br. 7; Reply Br. 6-7. We decline to comment since this contention relates to petitionable subject matter and note that Appellants’ Petition requesting expungement of Appellants’ statement that the species are not patentably distinct pursuant to 37 C.F.R. § 1.59(b), was denied in a Petition Decision mailed August 14, 2008. Appellants also argue that Appellants’ admission on record, that the species are not patentably distinct, is only applicable to the claim limitations pending at the time of such admission. App. Br. 4-6; Reply Br. 4-5. According to the Manual of Patent Examining Procedure, the claims do not define the species, rather each species defines a particular embodiment or Appeal 2011-009576 Application 10/946,571 4 invention.2 Therefore, Appellants’ argument that the admission is only applicable to the claims pending at the time of admission is not persuasive. We note that in the March 2, 2006 Office Action instituting the Restriction Requirement, the Figures disclosed in the Specification were associated with eleven different species, e.g., a first species represents the embodiment of the heat transfer device illustrated in Fig. 3, and the Examiner identified original claim 1 as generic. As such, Appellant’s admission is applicable to every species disclosed in the Specification, regardless of whether claimed or unclaimed, and all species will be regarded as not patentably distinct from all other species. Appellants then argue that the admission itself is insufficient evidence, since during prosecution it was discovered that “the disclosure supported additional features which were not considered in determining whether the species were patentably distinct.” App. Br. 6-7; Reply Br. 5-6. Appellants now contend as a result of additional features that were not considered in determining whether the species were patentably distinct, the species are now patentably distinct. App. Br.7; Reply Br. 6. Appellants’ argument regarding these “newly found” features within Appellants’ own disclosure is not persuasive, and contradicts Appellants’ own acknowledgement that support for these limitations can be found in Figures 6, 7A, 7B, 8, and 9 and page 11, lines 4-14, and page 12, lines 8-11, of the originally filed disclosure. App. Br. 2-3, Reply Br. at 7. Notwithstanding Appellants’ admission that the species are not patentably distinct, Appellants argue that claim 1, as amended, overcomes the cited prior art for all species. App. Br. 3, 8-10. Reply Br. 7-9. According to Appellants, Novotny does “not teach or suggest at least two 2 See M.P.E.P. §806.04 Appeal 2011-009576 Application 10/946,571 5 substantially non-deforming components thermally coupled to each other and wherein at least one of said thermally coupled components is configured to slide within at least one other of said thermally coupled components.” App. Br. 8; Reply Br. 7-8. Instead, Appellants point to Novotny as teaching that the conductive heat sink member 11 is connected to resilient bellows pipe element 10 by “soldering, brazing or other hermetically sealed conductive connection means” and that the upper end of the pipe element is sealed to and communicates with the interior of an evaporator section 14. App. Br. 9; Reply Br. 8, citing Novotny col. 4, ll. 22-23 (emphasis omitted). Thus, Appellants submit that neither components “11 [or] 14 . . . are substantially nondeforming, thermally coupled to each other, and configured to slide within at least one other of the thermally coupled components.” App. Br. 9; Reply Br. 9. Appellants’ argument that amended claim 1 overcomes Novotny for all species is not persuasive. Appellant is relying on the added limitations of “at least two substantially non-deforming components” and “at least one component configured to slide within another component,” to distinguish claim 1 from Novotny. However, amended claim 1 retains the substance of the originally identified species, and the aforementioned limitations merely narrow the scope of the original claim. As a result, Appellants’ admission that “the various species . . . are not patentably distinct” covers any species encompassing the aforementioned features. Reply Br. 4. Since the Examiner found one of the previously rejected claims directed to other species (i.e. the claims depending from generic claim 1) unpatentable over the prior art, the admission applies to the current species. As such, Appellant’s argument focusing on the narrower species of amended claim 1 Appeal 2011-009576 Application 10/946,571 6 is not commensurate with the broader scope of original claim 1, and thus does not demonstrate error in the Examiner’s rejection of claim 1. 3 The rejection of claim 1 and claims 2-21 and 23-25 is sustained. DECISION The Examiner’s rejection of claims is 1-21 and 23-25 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED rvb 3 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability).