14687693 (P.T.A.B. Oct. 23, 2018)

Ex Parte Lyman et al

Patent Trial and Appeal BoardOct 23, 2018

14687693 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/687,693 04/15/2015 18510 7590 10/25/2018 Docket Clerk-Raytheon/MWM P.O.Drawer 800889 Dallas, TX 75380 FIRST NAMED INVENTOR Ward D. Lyman 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. 14-6027 (RAYNOl-46027) 1594 EXAMINER NICHOLS, PHYLLIS M ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 10/25/2018 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): patents@munckwilson.com munckwilson@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WARD D. LYMAN and FREDERICK B. KOEHLER Appeal2018-001452 1 Application 14/687,693 2 Technology Center 3700 Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed May 15, 2017), the Reply Brief ("Reply Br.," filed Nov. 22, 2017), the Examiner's Answer ("Ans.," mailed Sept. 22, 2017), and the Final Office Action ("Final Act.," mailed Jan. 13, 2017). 2 According to Appellants, the real party in interest is Raytheon Company. Appeal Br. 2. Appeal2018-001452 Application 14/687,693 BACKGROUND According to Appellants, the "disclosure is directed to passive and active opening mechanisms that are integral to a vessel or manifold and utilizes a self-fracturing shape memory material." Spec. ,r 1. CLAIMS Claims 1, 12, and 18 are the independent claims on appeal. Claims 1 and 18 are illustrative of the appealed claims and recite: 1. A release mechanism comprising: a frame with an interior; and a prestrained element coupled to the frame, the prestrained element filling the interior of the frame, and wherein the prestrained element is notched in one or more regions, wherein the prestrained element is configured to fracture when heated to a predetermined temperature allowing the interior to open, and wherein the fracture is based on the one or more regions of the prestrained element such that separation initiates within the one or more regions. 18. A method comprising: exposing a release mechanism to an ambient environment, wherein the release mechanism comprises a frame and a prestrained element, wherein the prestrained element fills an interior of the frame; and fracturing the prestrained element when exposed to an elevated temperature to allow the interior of the frame to open. Appeal Br. 22, 27. 2 Appeal2018-001452 Application 14/687,693 REJECTIONS 1. The Examiner rejects claims 1, 5-13, and 16-20 under 35 U.S.C. Â§ 102( a)( 1) as anticipated by Hinrichs. 3 2. The Examiner rejects claim 1 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Amold. 4 3. The Examiner rejects claims 2--4, 14, and 15 under 35 U.S.C. Â§ 103 as unpatentable over Hinrichs in view of Hill. 5 DISCUSSION Anticipation by Hinrichs As discussed below, we are persuaded of error in the rejection of independent claims 1, 12, and 18 as anticipated by Hinrichs. Independent Claims 1 and 12 With respect to claims 1 and 12, the Examiner finds, among other things, that Hinrichs discloses a "prestrained element 26 [that] is configured to fracture when heated to a predetermined temperature" because "element 26 is heated when element 20 ignites." Final Act. 3. The Examiner also finds that "Hinrichs teaches all of the structural limitations of the claimed invention ... , and is capable of fracturing when heating (i.e. indirectly heated when exposed to an explosive device)." Id. at 2. The claims require a prestrained element "configured to fracture when heated to a predetermined temperature" rather than a prestrained element that is merely capable of fracturing at an elevated temperature. The Federal Circuit has held that "configured to" language requires that the specific 3 Hinrichs, US 4,505,180, iss. Mar. 19, 1985. 4 Arnold et al., US 3,777,772, iss. Dec. 11, 1973. 5 Hill et al., US 3,467,120, iss. Sept. 16, 1969. 3 Appeal2018-001452 Application 14/687,693 element is not only capable of performing the recited function but is also specifically designed to accomplish the function claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (noting that claim language "configured to" is construed more narrowly than "capable of' and holding that where claim language including the phrase "adapted to" is to be construed consisted with "configured to" language it requires that the structure must be "designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose."). Thus, to the extent the Examiner simply relies on Hinrichs element 26 as being "capable of fracturing when heated" without showing that element 26 is designed to perform this function, the Examiner has not set forth a sufficient showing of anticipation with respect to independent claims 1 and 12. 6 Independent Claim 18 Independent claim 18 is a method claim that requires the actual "fracturing" of the prestrained element "when exposed to an elevated temperature." Appeal Br. 27. The Examiner finds that Hinrichs discloses fracturing element 26 when exposed to an elevated temperature. Final Act. 4. Further, the Examiner finds that Hinrichs discloses that element 26 is exposed to elevated temperatures when it is "indirectly heated when exposed to an explosive device." Id. at 2. As discussed above, the Examiner has not otherwise pointed to anything in Hinrichs disclosing, in an anticipatory manner, that element 26 is 6 And, as discussed below, to the extent the Examiner finds that Hinrichs actually discloses fracturing element 26 at an elevated temperature, this finding is not supported sufficiently by the record. 4 Appeal2018-001452 Application 14/687,693 designed to fracture when heated to a predetermined temperature. Further, we agree with Appellants that Hinrichs is silent regarding element 26 being heated. See Appeal Br. 10. Hinrichs discloses only that charges are ignited to develop a burst pressure directed toward element 26 such that it quickly bursts along score lines. See Hinrichs col. 4, 11. 29-38. However, Hinrichs does not expressly disclose that ignition of these charges raises the temperature of element 26 before it fractures. And we see no disclosure, and the Examiner has not identified any, implying that element 26 is necessarily heated by ignition of these charges before element 26 fractures. The Examiner surmises that the ignition of these charges heats element 26, but the Examiner has not explained adequately why this is inherently the case. "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Thus, we determine that the Examiner has failed to show that Hinrichs discloses a method in which a prestrained element is fractured when exposed to an elevated temperature as required by claim 18. Based on the foregoing we do not sustain the rejection of independent claims 1, 12, and 18 as anticipated by Hinrichs. We also do not sustain the rejection of dependent claims 5-11, 13, 16, 17, 19, and 20 for the same reasons. Anticipation by Arnold With respect to claim 1, the Examiner alternatively finds that Arnold discloses a device as claimed, including an element 32 that is capable of fracturing when heated to a predetermined temperature. Final Act. 5. As discussed above, the Examiner's reliance on the mere capability of a prior 5 Appeal2018-001452 Application 14/687,693 art element (e.g., here, Arnold's element 32) to fracture when heated without showing that this prior art element is designed to perform this function is not sufficient to show anticipation. Accordingly, we do not sustain the rejection of claim 1 here. Obviousness With respect to claims 2--4, 14, 15, the Examiner relies on Hill insofar as "Hill teaches an element 32 ... being of various nickel alloys and constructed such that the element 32 will burst at a predetermined pressure." Final Act. 6. Thus, the Examiner does not rely on Hill in a manner that cures the deficiencies in the rejection of the independent claims, as discussed above. Accordingly, we also do not sustain the rejection of claims 2--4, 14, and 15. CONCLUSION We REVERSE the rejections of claims 1-20. REVERSED 6