Ex Parte Kriens

Patent Trial and Appeal Board

Mar 23, 2016

11640707 (P.T.A.B. Mar. 23, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUCE KRIENS
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Appeal 2014-001374
Application 11/640,707
Technology Center 3700
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Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Bruce Kriens (Appellant) seeks review, under 35 U.S.C. § 134(a), of
the Examiner’s decision to reject claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
The disclosed subject matter “relates [to] a floor having a radiant heat
system and a concrete slab and a method of constructing the floor containing
the radiant heat system and the concrete slab.” Spec. 1, ll. 9–11. Claims 1
and 12 are independent. Claim 1 is reproduced below, with emphasis added:
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1. A multi-layer heated floor comprising:
a foam layer having insulating properties, the
foam layer comprising a bottom surface positioned
on a ground level and a top surface;
a plurality of heating tubes positioned
directly on the top surface of the insulating layer;
a base material layer positioned on the
insulating layer and encasing the heating tubes
wherein the base layer comprises a compactable
material and wherein the base material layer
comprises a top surface; and
a concrete layer positioned on and supported
by the top surface of the base layer wherein heat
from the heating conduits passes into the base layer
and wherein the base layer distributes the heat
through the base layer and the heat enters the
concrete layer through a bottom surface and exits
through a top surface of the concrete layer to heat a
space above the floor.

REJECTIONS ON APPEAL
1. Claims 1–3, 6, 8, 9, 12, 13, 17, and 18 are rejected under
35 U.S.C. § 103(a) as unpatentable over Heilemann (US 4,000,851, issued
Jan. 4, 1977) and Tanaka (US 5,115,969, issued May 26, 1992).
2. Claims 4, 5, 7, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Heilemann, Tanaka, and Herbst (US 4,811,543, issued
Mar. 14, 1989).1

1 Although Rejection 2 is set forth in the Final Office Action, it is not
repeated (as are Rejections 1 and 3) in the “Grounds of Rejection to be
Reviewed on Appeal” in the Answer. Compare Final Act. 8–9, with Ans. 2.
In the Answer, the Examiner does not, however, list Rejection 2 as
withdrawn. On these facts, we do not consider Rejection 2 withdrawn.
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3. Claims 11 and 14–16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Heilemann, Tanaka, and Daughtry (US 6,969,832 B1,
issued Nov. 29, 2005).

DISCUSSION
Rejection 1 – The rejection of claims 1–3, 6, 8, 9, 12,
13, 17, and 18 under 35 U.S.C. § 103(a)
A. Independent Claim 1 (and Dependent Claims 2, 3, 6, 8, and 9)
Claim 1 recites, inter alia, “a plurality of heating tubes positioned
directly on the top surface of the insulating layer.” Appeal Br. 13 (Claims
App.). The Examiner finds that Heilemann teaches, inter alia, “a plurality
of heating tubes (22) positioned above the top surface of the insulating
layer” (citing Heilemann, Fig. 3) but that Heilemann “does not teach that the
tubes are directly on the insulation layer.” Final Act. 3–4 (dated June 20,
2012). The Examiner states, however, that
Tanaka teaches a similar device wherein a plurality of heating
pipes (35) are positioned directly on a top surface of the
insulation layer (3[3]) [see FIG 1, col 2, line 30–45]. It would
have been obvious to a person of ordinary skill in the art at the
time of the invention to modify the flooring of Heilemann with
the teachings of Tanaka because Tanaka provides heating pipes
directly on top of insulation and covered by heat accumulating
layer therein preventing any heat loss.
Id.2
In the Answer, the Examiner states:

2 As to the first bracketed text, the Examiner appears to have intended
to identify element 33 (not element 31) in Tanaka. See Ans. 2 (discussing
“insulation layer 33”). The second bracketed text (citing to Tanaka) was
provided by the Examiner.
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All claim limitations of at least claim 1 are found in Heilemann
with exception to the heating pipes being located directly on the
insulation layer. Thus, the combination of Heilemann and
Tanaka would require substituting the lowermost rock layer 48
and the piping 22 of Heilemann with the arrangement as seen in
Tanaka of the heating pipes 35 located directly on the insulation
layer 33. It is understood that if the substitution is made, there
would be two insulating layers in Heilemann. However, with the
rock layer 48 and the insulation layer 49 of Heilemann, there are
essentially two insulating layers present. The lower most rock
layer 48 in Heilemann acts as an insulating layer at least with
respect to no heat loss occurs because the rocks act to retain the
heat, a commonly known property of insulation. Also the
substitution would not affect the operability of Heilemann when
taking into account that Tanaka also teaches a heat retaining layer
41 above the heating pipes in a similar fashion as taught by
Heilemann. The combination of Heilemann and Tanaka would
still provide the most efficient heat sink as required by
Heilemann.
Ans. 2–3 (emphasis added).
Appellant argues that the reasoning provided by the Examiner does
not support the proposed modification. Reply Br. 3–6.
To clarify the record and provide background for our decision as to
claim 1, we first describe our understanding of the modified system
proposed by the Examiner. Based on the Examiner’s statements regarding
claim 1 (see Final Act. 3–4; Ans. 2–3), we understand the modified system
proposed to be that shown, for example, in Figure 3 of Heilemann, but with
the lower portion of rock layer 48—i.e., the portion between pipe 22 and
insulation 49—removed such that pipe 22 is positioned directly on the top
surface of insulation 49. See Ans. 2 (discussing the “arrangement as seen in
Tanaka of the heating pipes 35 located directly on the insulation layer 33”).
Further, we understand the modified system to not include any specific
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structure from Tanaka, such as heat accumulating material 41 or insulating
material 33. With that, we turn to our analysis regarding claim 1.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). On the record here, we agree with Appellant that the Examiner has
not provided adequate articulated reasoning to modify Heilemann with the
relied-upon teachings of Tanaka to support the legal conclusion of
obviousness of independent claim 1. Specifically, the Examiner has not
adequately explained why a person of ordinary skill in the art would have
modified Heilemann as proposed. Considered in their totality, the reasoning
statements provided by the Examiner for claim 1 (see Final Act. 4; Ans. 2–3)
essentially posit that one of ordinary skill would have modified Heilemann
based on the teachings of Tanaka because the systems disclosed in those
references are similar. Here, similarity of subject matter alone is not
sufficient reasoning or rationale to support the legal conclusion of
obviousness. For these reasons, we do not sustain the rejection of claim 1,
nor the rejection of claims 2, 3, 6, 8, and 9, which depend from claim 1.
B. Independent Claim 12 (and Dependent Claims 13, 17, and 18)3
Claim 12 recites, inter alia, “positioning heating tubes directly on a
top surface of the foam layer.” Appeal Br. 15 (Claims App.). The Examiner

3 Appellant submits that claim 12 is not obvious in view of Heilemann
and Tanaka for the reasons stated with respect to claim 1. Appeal Br. 11.
Therefore, we analyze the Examiner’s rejection of claim 12 in view of the
arguments Appellant presented for claim 1 (id. at 7–10).
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finds that Heilemann teaches, inter alia, “positioning heating tubes (21, 22)
on a top surface of the insulating layer.” Final Act. 6. The Examiner states,
however, that
Tanaka discloses the step of positioning heating tubes (35) on a
directly top surface of the insulating layer (33). It would have
been obvious to a person of ordinary skill in the art at the time of
the invention to modify the method of Heilemann with the
teachings of Tanaka because Tanaka provides a method that will
allow installation of the piping without causing any damage to
the piping when the base layer is compacted.
Id. at 6–7.
First, Appellant contends that “Heilemann disclose[s] a heat sink
material [element 48] in between the layer of bottom pipes 22 and the
insulation 49 to maximize efficiency of the heating solar system.” Appeal
Br. 7. According to Appellant, “none of the pipes disclosed in Heilemann
are in direct contact with the upper surface of the foam layer, as claimed,”
“[r]ather Heilemann discloses the opposite where the layer of lower pipes 22
are spaced from the foam layer in order to maximize the efficiency of a solar
heated dwelling.” Id. at 8. Appellant argues that “[p]lacing the heating
pipes on the insulating layer is taught away from by the disclosure of the
Heilemann patent, as placing the heating tubes directly on the insulating
layer would be less energy efficient that having a layer of rocks between the
layer of lower pipes 22 and the insulating layer.” Id. at 9–10.
We are not apprised of error in the rejection of claim 12 based on
Appellant’s first argument. Although Appellant is correct that Heilemann
does not teach heating tubes positioned directly on top of a foam layer (see,
e.g., Heilemann, Fig. 3 (showing a lower portion of rocks 48 intervening
between pipe 22 and insulation 49)), the Examiner does not rely on
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Heilemann—but rather Tanaka—for this feature. See Final Act. 6.
Nonobviousness cannot be established by attacking references individually
when the rejection is based on a combination of prior art. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As to the alleged teaching away,
Appellant has not identified any disclosure in Heilemann supporting that
contention. In addition, Appellant has not provided support for the alleged
decreased efficiency of the proposed modification. Moreover, that “better
alternatives” may exist in the prior art “does not mean that an inferior
combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012).
Second, Appellant argues that “[i]n light of the disclosure of the
Heilemann patent, . . . absent the claimed invention there would be no reason
to allege that the structure disclosed in the Tanaka patent could be combined
with the structure of the Heilemann patent.” Appeal Br. 8.
For the reasons discussed above, Appellant has not persuasively
shown that Heilemann teaches away from the claimed invention. In
addition, to the extent Appellant contends that the Examiner has engaged in
hindsight reconstruction, Appellant does not identify any knowledge that the
Examiner relied upon that was gleaned only from the Specification and that
was not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Further, to the extent Appellant contends that the Examiner has failed to
provide articulated reasoning as to the proposed modification for claim 12,
Appellant does not persuasively address the reasoning provided by the
Examiner (see Final Act. 6–7). We determine that the Examiner’s reasoning
supports a prima facie case of obviousness of claim 12. See In re Oetiker,
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977 F.2d 1443, 1445 (Fed. Cir. 1992). By not persuasively addressing the
reasoning provided, Appellant has not shown error in the relevant findings
or the conclusion as to obviousness. See id. (discussing how, if an examiner
presents a prima facie case, “the burden of coming forward with evidence or
argument shifts to the applicant”).4 In addition, to the extent Appellant
contends that the relied-upon teachings could not be combined, Appellant
has not provided persuasive evidence or technical reasoning to support that
the proposed modification would have been beyond the level of ordinary
skill in the art. See KSR, 550 U.S. at 417–18; see also id. at 421 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Third, Appellant contends that Tanaka “discloses a dissimilar floor
structure” to that claimed “and that one skilled in the art would not look to
the Tanaka patent when reviewing the recited claims.” Appeal Br. 8. As to
the alleged dissimilarities, Appellant argues that “[t]he claimed floor recites
that the foam layer be positioned on ground level” whereas Tanaka
“discloses utilizing footings 11 and a concrete foundation floor 15 at the
ground level.” Id. Next, Appellant contends that Tanaka “discloses a floor
structure that includes a heat accumulating material 41” that “has
viscoelastic and/or elastic properties that provides cushioning [but that]
cannot be utilized to support a concrete slab.” Id. at 9. Appellant also
contends that “the claimed structure supports a concrete slab as the top
layer” whereas the system in Tanaka “supports planking, tatami mats or the
like” and that a concrete slab “requires significantly more foundational
support than that of planking or a tatami mat.” Id.

4 Appellant does not, in either brief, address the reasoning provided
for the rejection of claim 12. See Final Act. 6–7.
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We are not apprised of error based on Appellant’s third argument. As
an initial matter, we note that none of the features from Tanaka discussed by
Appellant are relied on in the rejection of claim 12. See Final Act. 6–7.
Further, Appellant has not persuasively shown that these differences
demonstrate Tanaka to be nonanalogous art. “Two separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, Tanaka
and the claimed invention are in the same field of endeavor—flooring that
includes structures providing heat. See, e.g., Spec. 1, ll. 9–11 (“[T]he
present invention relates a floor having a radiant heat system and a concrete
slab and a method of constructing the floor containing the radiant heat
system and the concrete slab.”); Tanaka, col. 1, ll. 6–8 (“The present
invention relates to a flooring structure with a superior heating effect . . . and
a method of constructing this floor.”).
Fourth, Appellant argues that Heilemann “discloses a floor structure
that supports a concrete upper slab 47” whereas Tanaka “discloses a floor
structure that teaches away from utilizing a concrete slab for a heated floor.”
Appeal Br. 10. According to Appellant “[w]hile both references utilize a
foam layer within the floor structure and some form of heating in the floor,”
contrary to the Examiner’s findings (see Final Act. 2–3), “it is not proper to
combine the Heilemann patent with the Tanaka patent as the disclosures of
both cited patents teach away from such a combination.” Id.
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For the reasons discussed above (as to Appellant’s first argument),
Heilemann does not teach away from the claimed invention. Further, that
Tanaka teaches the use of “planking, tatami mats, or the like” as flooring
material (Tanaka, col. 2, ll. 30–32), rather than concrete, does not, on the
record here, amount to a teaching away from the claimed invention. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[M]ere disclosure of
alternative designs does not teach away.”).
Fifth, Appellant argues that “one of the advantages of the claimed
floor structure is that the floor can be installed using heavy equipment rather
than using light equipment, such as wheel barrows and shovels.” Appeal Br.
10. Appellant contends that, in contrast, Heilemann “discloses that both the
top layer and bottom layer of heating pipes be spaced from the foam layer”
such that “heavy equipment could not be used to install the floor as the
equipment would damage the pipes.” Id. Appellant also argues that Tanaka
“discloses the use of a viscoelastic material [] as a heat sink” and that “[t]he
viscoelastic material is incapable of supporting heavy equipment.” Id.
Appellant’s fifth argument does not address the rejection as
articulated. Specifically, in the modified method, the lower portion of rock
layer 48—i.e., the portion between pipe 22 and insulation 49 (see
Heilemann, Fig. 3)—is not present. See Final Act. 6–7. Further, the
modified method does not involve heat accumulating material 41 from
Tanaka. See id.; see also Tanaka, col. 2, ll. 40–41 (discussing element 41).
Because Appellant has not demonstrated error in the rejection of claim
12, we sustain that rejection. Further, because Appellant does not separately
argue claims 13, 17, and 18 (Appeal Br. 11), which depend from claim 12,
we sustain the rejection of those claims.
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Rejection 2 – The rejection of claim 4, 5, 7,
and 10 under 35 U.S.C. § 103(a)
Claims 4, 5, 7, and 10 depend from claim 1. Appeal Br. 13–14
(Claims App.). The Examiner’s reliance on Herbst does not remedy the
deficiencies in the combined teachings of Heilemann and Tanaka, discussed
above (see supra Rejection 1, § A). Thus, for the same reasons discussed
above, we do not sustain the rejection of claims 4, 5, 7, and 10.
Rejection 3 – The rejection of claims 11
and 14–16 under 35 U.S.C. § 103(a)
Claim 11 depends from claim 1. Appeal Br. 14 (Claims App.). The
Examiner’s reliance on Daughtry does not remedy the deficiencies in the
combined teachings of Heilemann and Tanaka, discussed above (see supra
Rejection 1, § A). Thus, for the same reasons discussed above, we do not
sustain the rejection of claim 11.
Appellant does not separately argue claims 14–16 (Appeal Br. 11),
which depend from claim 12. Thus, for the reasons discussed above (see
supra Rejection 1, § B), we sustain the rejection of claims 14–16.

DECISION
We REVERSE the decision to reject claims 1–11 and AFFIRM the
decision to reject claims 12–18.
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).

AFFIRMED-IN-PART