11334092 (B.P.A.I. Jun. 22, 2012)

Ex Parte Ishii et al

Board of Patent Appeals and InterferencesJun 22, 2012

11334092 (B.P.A.I. Jun. 22, 2012)

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. 11/334,092 01/18/2006 Takahito Ishii MAT-8638US1 6831 52473 7590 06/22/2012 RATNERPRESTIA P.O. BOX 980 VALLEY FORGE, PA 19482-0980 EXAMINER PATEL, VINOD D ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 06/22/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TAKAHITO ISHII, KEIKO YASUI, SEISHI TERAKADO, KAZUYUKI KOHARA and MITSURU YONEYAMA ________________ Appeal 2010-004750 Application 11/334,092 Technology Center 3700 ________________ Before PHILLIP J. KAUFFMAN, MICHAEL L. HOELTER and, JAMES P. CALVE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004750 Application 11/334,092 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 25, 27, 54, 59, 68, 71, 74, 77 and 83-85 (App. Br. 2). Claims 1-24, 26, 28-53, 55-58, 60-67, 69, 70, 72, 73, 75, 76 and 78 have been cancelled (App. Br. 2). Claims 79-82, 86 and 87 have been withdrawn1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter The claimed subject matter is directed to a heating element having a flexible substrate comprising a fiber substrate and a film, and an electrode formed on the flexible substrate. Sole independent claim 25 is representative of the claims on appeal and is reproduced below: 25. A flexible PTC heating element comprising: a flexible substrate having ink impermeability, the flexible substrate comprising a fiber substrate and a film having ink impermeability and thermally fused with the fiber substrate, an electrode formed from conductive paste on the flexible substrate, a PTC resistor formed from PTC ink and supplied with electric power from the electrode, a flexible cover material covering the electrode and the PTC resistor, and an elongation deformation portion disposed to at least one of the electrode and the PTC resistor. References Relied on by the Examiner Shlichta US 4,459,470 Jul. 10, 1984 Koiso US 4,516,564 May 14, 1985 1 These claims were withdrawn by the Examiner as being directed to a non- elected invention (see Non-Final Rejection mailed Jun. 11, 2008). Appeal 2010-004750 Application 11/334,092 3 Paeglis US 4,589,804 May 20, 1986 Ishii US 5,196,145 Mar. 23, 1993 Hirohata2 US 6,501,056 B1 Dec. 31, 2002 Surjan US 7,053,344 B1 May 30, 2006 Kish WO 00/43225 A3 Jul. 27, 2000 The Rejections on Appeal 1. Claims 25, 27 and 54 are rejected under 35 U .S.C. § 102(b) as being anticipated by Kish (Ans. 4). 2. Claims 59 and 68 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kish (Ans. 7). 3. Claim 71 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kish and Shlichta (Ans. 9). 4. Claim 74 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kish and Hirohata (Ans. 9). 5. Claims 77 and 83-85 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kish and Ishii (Ans. 10). ANALYSIS Sole independent claim 25 requires a flexible substrate comprising both a fiber substrate and a film. Claim 25 also requires an electrode formed “on the flexible substrate” (i.e. the fiber substrate and the film). The Examiner provides a table that correlates Appellants’ claim limitations with Kish’s components (see Ans. 12). The Examiner corresponds the claimed fiber substrate to Kish’s fiber substrate 10, the claimed film to Kish’s 2 The Examiner relies on the patent to Hirohata but mistakenly provides the wrong patent number (US 6,501,156) (Ans. 4). Appellants address the correct reference (App. Br. 7). Appeal 2010-004750 Application 11/334,092 4 film/coating 14, and the claimed electrode to Kish’s electrodes 16/18 (Ans. 12). Appellants contend that the claimed film is recited as a separate component from the claimed electrode and that Kish fails to disclose a separate film (App. Br. 4-5). Alternatively, if the film/coating recited by the Examiner is the claimed film, then Kish lacks the claimed electrode (App. Br. 5). In essence, “Appellants submit that the Examiner is improperly separating [Kish’s] conductive layer 14 from buss bars 16 and 18” and that they “must be interpreted together” (Reply Br. 2). Kish identifies item 14 as “conductive material” that, when dried, forms “an electrical buss system” (Kish 6:19-20). Kish states that this conductive material is printed in electrode patterns and that each “electrode of the pattern is in electrical contact with one of a multiple of buss bars 16 and 18” (Kish 7:1-2). We thus understand that Kish’s conductive material 14 forms the interdigitating electrode pattern and buss bars 16, 18 shown in Kish’s Figure 1. In view of these teachings, we agree with Appellants that the Examiner improperly separated Kish’s conductive material 14 from Kish’s buss bars 16 and 18 by corresponding the former to the claimed film and the latter to the claimed electrode. Kish teaches that these interdigitating electrodes and buss bars are part of the same electrical buss system and even if they could be considered to be separate elements, the Examiner does not explain how Kish discloses forming buss bars 16, 18 “on” the fiber substrate 10/film 14 combination as required when items 16, 18 are formed as part of the same conductive material 14 layer. In view of the record presented, we Appeal 2010-004750 Application 11/334,092 5 do not find that each and every claimed element is disclosed. We reverse the rejection of independent claim 25. The further rejections by the Examiner rely on this erroneous fact finding and none of the additionally cited art cures this deficiency. Accordingly, we reverse the rejection of dependent claims 27, 54, 59, 68, 71, 74, 77 and 83-85. DECISION The rejection of claims 25, 27, 54, 59, 68, 71, 74, 77 and 83-85 is reversed. REVERSED MP