Ex Parte O et al

Patent Trial and Appeal Board

Aug 2, 2016

12078755 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/078,755 04/04/2008
23117 7590 08/04/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Eoin S. O'Keefe
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.
GPK-124-1221 4853
EXAMINER
LEE, SHUNK
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EOIN S. O'KEEFE, ADAM J. SHOHET, and
MARTIN SWAN
Appeal2015-002097
Application 12/078,755
Technology Center 2800
Before: MARK NAGUMO, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from rejection of claims
28-30, 34, 36--44, 46, 47, and 49-57. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 In our opinion below, we refer to the Specification filed April 4, 2008
("Spec."), the Final Action mailed February 21, 2014 ("Final Act."), the
Appeal Brief filed August 21, 2014 ("App. Br."), the Examiner's Answer
mailed September 25, 2014 ("Ans."), and the Reply Brief filed November
24, 2014 ("Reply").
2 QinetiQ Limited is identified as the real party in interest. App. Br. 3.
Appeal2015-002097
Application 12/078,755
The claims are directed to a method of identifying an object by use of
thermally reflective material having a surface texture taking the form of a
microstructure. Claim 28, reproduced below, is illustrative of the claimed
subject matter:
A method of identifying an object comprising the steps of:
(i) providing one or more sheets of thermally reflective
material having a surface texture comprising a plurality of
reflecting elements, wherein each element has a first facet
which is substantially reflective at thermal infrared wavelengths
and wherein the respective first facets form an angle 5 ° < 8 <
40° with the plane of the sheet and wherein the first facets are
aligned such that, in use, thermal radiation is reflected from a
common direction;
(ii) orienting said sheet of material on an object to reflect
thermal radiation from a desired source; and
(iii) monitoring the thermal radiation reflected from the
sheet of material, wherein the surface texture takes the form of
a micro-structure.
App. Br. 25.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tyrol er
Merrill et al.,
("Merrill")
Haynes et al.,
("Haynes")
us 4,302,068
US 2002/0154406 A 1
US 7,391,040 Bl
2
Nov. 24, 1981
Oct. 24, 2002
June 24, 2008
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Application 12/078,755
REJECTIONS
The claims stand rejected as unpatentable over 35 U.S.C. § 103(a) as
follows: claims 28-30, 34, 36--43, 46, and 49-57 over Haynes in view of
Merrill; claims 44 and 4 7 over Haynes in view of Merrill and further in view
of Tyroler. Final Act. 3--4, 9.
OPINION
Appellants argue claims 28-30, 34, 41--43, 46, and 49-57, including
both independent claims 28 and 56, as a group. We limit our discussion of
this group to one claim, i.e., claim 28; the other claims in the group will
stand or fall with it. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). Appellants
separately argue patentability of each of claims 36-38 and 40, which we
address separately.
Rejection of claims 28-30, 34, 41-44, 46, 47, and 49-57 over Haynes
in view of Merrill3
Appellants argue the rejection of claims 28-30, 34, 41--44, 46, 47, and
49-57 should be reversed for any of five reasons: (1) neither Haynes nor
Merrill mentions the problem addressed by the claimed methods (App. Br.
11-12); (2) Haynes and Merrill would not have been combined (id. at 12-
15); (3) Haynes teaches away by encouraging diffuse multi-directional
reflective facets (id. at 15-16); (4) the combination of Haynes and Merrill
would not result in the claimed methods with a reasonable expectation of
3 The Examiner rejected claims 44 and 47 over Haynes in view of Merrill
and further in view of Tyroler (Final Act. 9), which Appellants acknowledge
in their Appeal Brief (App. Br. 10). Because Appellants do not separately
address the Tyroler reference or claim 44 or 4 7 (both dependent from claim
28), we include them with this group.
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Application 12/078,755
success (id. at 17-18); and (5) Haynes' Figure 2B does not teach or suggest
a surface micro-structure (id. at 19-21 ).
We affirm the rejection of claims 28-30, 34, 41-44, 46, 47, and 49-57
on the basis of the factual determinations and reasoning presented in the
Final Action and the Examiner's Answer. We add the following.
1. Is the rejection improper because the cited prior art does not
mention the problem addressed by the claimed methods?
First, Appellants urge that the Examiner erred in rejecting the claims
because neither Haynes nor Merrill mentions the problem addressed by the
claimed methods. App. Br. 11. Appellants point out that independent claim
28 requires that the first facets of the reflecting elements are aligned such
that, in use, thermal radiation is reflected from a common direction. Id.
(emphasis in original). Appellants suggest that the claims are not obvious
over the cited prior art because one of ordinary skill in the art would have
had no reason to improve upon a problem not recognized by the prior art.
Id. at 12 (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1354 (Fed.
Cir. 2013)).
Appellants' reliance on Leo Pharmaceutical is misplaced. The
Federal Circuit limited Leo Pharrnaceutical to a situation in which one of
ordinary skill in the art would not arrive at the claimed subject matter not
only due to failure of the prior art to recognize and address the problern
found by Appellants, but also due to the divergent teachings and express
disclaimer in the prior art that would have precluded one of ordinary skill in
the art from arriving at such combination. Leo Phann., 726 F.3d at 1355----
56. In this case, neither teachings away nor express disclaimers exist In
addition, Leo Pharmaceutical deals with unpredictable chemical
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technologies, unlike the claimed invention. J\1oreover, ""one of ordinary skill
in the art need not see the identical problem addressed in a prior art
reference to be motivated to apply its teachings." Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
Appellants contend they made a "non-intuitive leap in the field of
identification marking," permitting configuration of a vertical surface to
undergo cold sky reflection. App. Br. 12. However, Haynes discloses
thermally reflective material oriented vertically or near vertically. Final Act.
5 (citing Haynes Fig. 2). Furthermore, independent claim 28 does not
require configuration of a vertical surface.4 App. Br. 25.
In addition, the Examiner notes that Haynes discloses a reflective
head constructed of fabric or plastic film covered with a cold black
reflection material in which the cold black reflecting surface has a saw tooth
configuration that provides a plurality of facets at an optimum angle relative
to the cold black sky. Ans. 2 (citing Haynes col. 4, Fig. 2B). Figure 2B of
Haynes is reproduced below:
4 Dependent Claim 30 requires thermally reflective material to be oriented
vertically or near-vertically, but Appellants have not separately argued for
patentability of claim 30, thus it stands or falls with claim 28.
5
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Application 12/078,755
Figure 2B depicts a side view of a rotating heat emitting beacon ( 10) with a
double-sided passive cold black reflecting surface (30) having a saw tooth
configuration (31) providing a plurality of facets (32).
The Examiner finds that "an optimum angle relative to the cold black
sky" disclosed by Haynes is inconsistent with Appellants' contention that
Haynes teaches only a plurality of random facet angles. Id. at 4. We agree,
and draw the reader's attention to Haynes' disclosure that the cold black
reflection material can be "stretched over a frame to provide a flat or curved
reflective surface." Haynes col. 4, lines 3-5. "Stretching" the cold black
reflective material is also inconsistent with Appellants' position that Haynes'
teachings are limited to reflective material that is "creased and crumpled."
In use, according to the Examiner, Haynes' saw tooth configuration,
as shown in Fig. 2B, reflects thermal radiation from a common direction.
Ans. 8. For example, Haynes discloses that:
a plurality of surface elements can be arranged, very much like a
Venetian blind, each of which is coated with a passive cold black
surface. This surface can be seen at a distance by a thermal
imaging camera as a combined black image, which can be made
to flash, as each element is rotated through an angle. This
arrangement has also the advantage of being unidirectional.
Haynes col. 2, lines 55-62 (emphasis added). "Unidirectional" suggests that
the surface is reflecting thermal radiation from a common direction.
vVe agree with the Examiner for the reasons stated. On these facts, we
find Appellants' argument that the rejection is improper because neither
Haynes nor Merrill mentions the problem addressed by the claimed methods
to be unpersuasive.
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2. Would one of ordinary skill in the art combine Haynes and
Merrill?
Second, Appellants argue that Haynes and Merrill would not have
been combined. App. Br. 12. Essentially, Appellants argue that Merrill is
non-analogous art to the claimed invention and would not be combined with
Haynes.
To rely upon a reference as a basis for an obviousness rejection of
Appellants' claims, the reference must either (1) be in the field of the
inventor's endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441F.3d977, 987
(Fed. Cir. 2006). A reference is reasonable pertinent to the problem based
on the judgment of a person of ordinary skill in the art. In re Oetiker, 977
F.2d 1443, 1447 (Fed. Cir. 1992).
Appellants urge that Merrill "teaches multi-layered optical films ...
having strain induced birefringent properties," and "does not teach that such
birefringent films should be thermally reflective." App. Br. 13 (emphasis in
original). Appellants further urge that Merrill focuses on visible, as
indicated by the wavelength of light at which the indices of refraction are
determined. Id. (citing Merrill ,-i,-i 58-60).
The Examiner points out that Merrill states that various of its
embodiments can be used to operate at different wavelengths of
electromagnetic radiation, and uses the term "light" to refer to
electromagnetic radiation including the infrared spectrum. Ans. 3 (citing
Merrill ,-i 4 7). The Examiner finds, and we agree, that Merrill thus teaches
thermally reflective films, which is reasonably pertinent to the claimed
subject matter.
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With respect to Haynes, Appellants contend that the reference "relates
to an entirely different field of active thermal identification devices, and is
concerned that with a macroscopic beacon device in which contrast can be
improved by using a passive cold reflection surface." App. Br. 13.
(emphasis in original). Appellants argue that Haynes is not concerned with
passive thermal identification devices themselves, or methods of improving
them, and does not teach either forming a microstructure or careful control
of reflective facets. Id., at 13-14.
Haynes teaches that there are two approaches to thermal beacons,
active and passive, with the passive approach using material that is thermally
reflective. Haynes col. 1, lines 49-50, 59-60. The Examiner points out that
Haynes discloses a signal beacon that "utilizes detachable strips of a passive
reflective material" ... "which can only been seen through a thermal
imaging camera .... The reflecting cold black surfaces, i.e., coated with a
passive cold emission material, need not necessarily rotate." Ans. 4 (citing
Haynes col. 2-3). On this basis, the Examiner correctly finds that Haynes
discloses passive thermal identification devices. Id.
Appellants contend that Haynes does not teach forming a
microstructure. App. Br. 13-14. We note that the Examiner does not rely
on Haynes for teaching the microstructure of the claims; rather, the
Examiner relies on Merrill for disclosure of a microstructure. Final Act. 4.
Appellants cannot show non-obviousness by attacking references
individually where the rejection is based on the teaching of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In response to Appellants' argument that Haynes does not teach
careful control of reflective facets (App. Br. 14), the Examiner again
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contends that Haynes' disclosure of a "cold black reflecting surface [with] a
saw tooth configuration that provides an optimum angle relative to the cold
black sky" is inconsistent with Haynes teaches only a plurality of random
facet angles. Ans. 4.
In contending that Haynes and Merrill cannot be combined,
Appellants argue that one of ordinary skill in the art seeking to improve
upon Haynes would not consult prior art concerned with structured optical
films (such as Merrill). App. Br. 14. The Specification states that "[t]he
present invention relates to a reflective material and, in particular, to a
material which is reflective in the thermal infrared and/or near infrared
wavebands." Spec. 1, lines 5-6. The Examiner correctly finds that Merrill
is reasonably pertinent to the particular problem with which Appellants are
concerned: "reflective material ... which is reflective in the thermal infrared
and/or near infrared wavebands").
It would have been obvious for one of ordinary skill in the art at the
time of the claimed invention to consult prior art concerning structured
optical reflectors (Merrill) to select known conventional heights for the
unspecified height of the plurality of facets in Haynes in order to form
structured surface reflectors at an optimum angle relative to the cold black
sky. Final Act. 15. Thus, we do not find improper hindsight reasoning in
the Examiner's combination of references.
3. Does Haynes teach away from the claimed invention?
Appellants' third argument for patentability over the obviousness
rejection is that Haynes teaches away from the claimed invention by
encouraging diffuse multi-directional reflective facets. App. Br. 15.
Appellants cite Haynes' disclosure that "the efficiency of the passive
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reflective material will be enhanced if it is creased and crumpled to form a
multitude of reflective facets." Id. at 15 (quoting Haynes col. 2, lines 37-
40). Appellants contend that one of ordinary skill in the art would view a
"creased and crumpled" reflective material as having a plurality of
differently oriented facets that result in diffuse reflection, referring for
support to documents filed in an Information Disclosure Statement on
February 6, 2014. Id.
According to the Examiner, "creased and crumpled" as used in
Haynes expressly teaches a saw tooth configuration providing a plurality of
facets which are not random facets that result in diffuse reflection. Ans. 7
(emphasis in original). The Examiner explains that the "optimum angle
relative to the cold black sky," as taught in Haynes, is inconsistent with
random facet angles. Id. at 7-8. In addition, Haynes makes several
statements that indicate the reflective angles are not random. For example,
Haynes teaches "[i]t is known that passive cold emission can be 'reflected'
by means of a reflective surface which is suitably coated to prevent or
minimize any reflected light" (Haynes col. 2, lines 16-19 (emphasis
added)); random facet angles would not prevent or minimize reflected light.
Haynes teaches the "Venetian blind" arrangement, which has the stated
advantage of being unidirectional (id. col. 2, lines 55-62); "unidirectional" is
not consistent with random facet angles. Haynes teaches that the reflective
head is constructed of plastic or film covered with cold black reflection
material stretched over a frame to provide a flat or curved reflective surface
(id. col. 4, lines 1-5); "stretching" the material is inconsistent with creating
only random facets angles. Although Haynes claims a "creased and
crumpled" passive cold black reflection surface, its teachings are broader.
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"Teaching away" requires more than the mere expression of a general
preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed.
Cir. 2013). Where, as here, the prior art reference does not "criticize,
discredit or otherwise discourage investigation into the invention claimed,"
the disclosure does not amount to a teaching away. Id.
4. Does the combination of Haynes and Merrill result in the
claimed methods with a reasonable expectation of success?
Appellants' fourth argument for patentability over Haynes and Merrill
is that the combination would not result in the claimed methods with a
reasonable chance of success. App. Br. 17.
A reasonable expectation, not absolute predictability, of success is
required for a prima facie case of obviousness. In re Kubin, 561F.3d1351,
1360 (Fed. Cir. 2009). Whether one of ordinary skill in the art would have
had a reasonable expectation that a particular combination of references
would work is a pure question of fact. Alza Corp. v. Mylan Lahs., Inc., 464
F.3d 1286, 1289 (Fed. Cir. 2006).
Here, Appellants argue that Haynes "encourages" a surface which is
creased and crumbled, and combining such with Merrill would lead to a
method in which one or more sheets have random reflecting facets in a
microstructure, hence more diffuse reflection properties. App. Br. 17.
The issue of Haynes' teaching regarding "creased and crumbled"
reflective surfaces is dealt with above, where we find that Haynes'
disclosure is not limited to creased and crumpled cold, black reflection
materials with diffuse, random facet angles. Likewise, we previously
addressed Appellants' contention that Merrill is incompatible with Haynes
and found to the contrary.
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Appellants' suppositions ("it is believed that the multilayer film of
Merrill would require a large number of polymer layers so as to provide the
required refractive index changes" and "any non-uniform deformation of
film imparted by embossing methods is likely to cause stray optical effects"
(App. Br. 17-18)) are attorney argument which cannot take the place of
evidence lacking in the record. Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997).
Appellants' argument that the combination of Haynes and Merrill
would not result in the claimed methods with a reasonable expectation of
success is not persuasive.
5. Haynes' Figure 2B does not teach or suggest a surface micro-
structure?
Appellants contend that Haynes' Figure 2B does not teach or suggest
a surface microstructure. App. Br. 13. As stated above, the Examiner does
not rely on Haynes for the teaching of a surface microstructure. Instead, the
Examiner relies on Merrill for this disclosure. Final Act. 4. Non-
obviousness cannot be shown by attacking references individually where the
rejection is based on the teaching of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
On this record, Appellants have not convinced us of reversible error in
the Examiner's rejection of claims 28-30, 34, 41--44, 46, 47, and 49-57.
Thus, we affirm rejection of these claims.
Rejection of claim 36 over Haynes in view of Merrill
Claim 36 depends on claim 28, and further requires that the first facets
form substantially the same angle 8. App. Br. 26 (Claims App'x).
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Appellants dispute the Examiner's finding that Haynes discloses this
limitation, arguing that when a reference does not disclose that the drawings
are to scale and is silent as to dimensions, arguments based on measurement
of the drawing features are of little value. Id. at 22 (quoting MPEP § 2125).
Appellants' argument is unpersuasive, as the Examiner has not based
the rejection of claim 36 on measuring the drawings in Haynes. Instead, the
Examiner relies on Haynes' disclosure that the passive cold black reflecting
surface has a saw tooth configuration providing a plurality of facets "at an
optimum angle relative to the cold black sky," finding that facets "at an
optimum angle" form "substantially the same angle 8." Ans. 12.
Appellants have not shown reversible error in the Examiner's
rejection of claim 36.
Rejection of claim 37 over Haynes in view of Merrill
Dependent claim 37 requires the limitations of claim 28 with the
additionai iimitation that the first facets iie in substantiaHy the same piane.
App. B. 26 (Claims App'x).
Appellants argue that Haynes' facets 32 are large, louvre-sized
components, not a microstructure surface. Id. at 22. The Examiner responds
that Appellants fail to cite any portion in Haynes that describes the
dimensions in Figures 2B and 4B of Haynes, thus Appellants' argument is
unpersuasive. Ans. 12. Figure 2B of Haynes shows a saw tooth
configuration and Figure 4B shows louver configuration. Haynes Fig. 2B
and 4B. In reply, Appellants urge that Haynes describes a macro- lamp-
sized structure, and not a microstructure recited in the claims. Reply 3.
Appellants also point out that it is the Patent Office's burden to establish
obviousness, and urge that the Examiner has reversed that burden. Id.
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We agree with Appellants that the Examiner improperly placed the
burden of showing the non-obviousness of claim 37 on Appellants. See Ans.
12. However, we consider the Examiner's error harmless, based on our
opinions above.
Changes that do not alter function are ordinarily obvious variations.
See In re Rice, 341F.2d309 (CCPA 1965) (Examiner properly found that
claimed dimensional relationship between collection chamber and walls of
main air chamber "does not produce any different effect or result"); Gardner
v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984) (Where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
was not patentably distinct from the prior art device); In re Rose, 220 F .2d
459, 463 (CCPA 1955) ("the size of the article under consideration ... is not
ordinarily a matter of invention"); In re Rinehart, 531 F .2d 1048, 1053
(CCPA 1976) (mere scaling up of a prior art process capable of being scaled
up, if such were the case, would not establish patentability in a claim to an
old process so scaled).
Here Haynes teaches the structure, save for the microstmcture size,
and Merrill teaches the microstmcture. As these references are combinable,
as discussed above, together they render claim 37 obvious.
Rejection of claim 38 over Haynes in view of Merrill
Claim 38 claims the method of clam 28 wherein the surface texture
takes the form of a uniform microstmcture having a repeating pattern of
reflecting elements. App. Br. 26 (Claims App'x).
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Appellants contend that the saw tooth configuration in Figure 2B of
Haynes more naturally corresponds to the recited sheet of the claim, which
sheet acts as a substrate for the surface texture. Id. at 23. The Examiner
references arguments that the term "facet" in Haynes is not used to describe
the louver configuration illustrated in Figures 4A--4B, but is instead used to
describe the saw tooth configuration illustrated in Figures 2A-2C of the
reference. Ans. 10-11, 13.
We find that the weight of the evidence better supports the
Examiner's findings. Haynes discloses in text and drawings a saw tooth
structure that one of ordinary skill in the art at the time of the invention
would view as having a repeating pattern of reflecting elements. See Haynes
Fig. 2B; col. 4, lines 10-14. As discussed above, Merrill teaches the
microstructure size.
Appellants have not shown the Examiner's rejection of claim 3 8 to be
m error.
Rejection of claim 40 over Haynes in view of Merrill
Dependent claim 40 requires the method of claim 28 wherein the
surface texture comprises a saw tooth texture. App. Br. 26 (Claims App'x).
As with claim 38, Appellants contend that the saw tooth configuration
in Figure 2B of Haynes more naturally corresponds to the recited sheet of
the claim, which sheet acts as a substrate for the surface texture. Id. at 23.
For the same reasons discussed with regard to claim 40 above, we find
Appellants' argument unpersuasive.
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DECISION
For the above reasons, the Examiner's rejection of claims 28-30, 34,
36-38, 40--43, 46, and 49-57 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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