Ex Parte Tenra et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10537298 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMOHISA TENRA
and TAKAO FUJIMOTO
____________

Appeal 2009-002827
Application 10/537,298
Technology Center 1700
____________

Decided:1 June 4, 2009
____________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 2, 8-14, 18, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a vacuum heat insulator having a porous core
member covered with an enveloping member having heat seal layers that are
heated and fused together along the shape of the core member (Spec. 4, ll.
20-25). Claims 2, 8, and 10 are illustrative of the subject matter on appeal:
2. A vacuum heat insulator comprising a gas barrier enveloping
member having a heat seal layer, and a flat core member,

wherein said core member is evacuated and sealed within the
enveloping member, said enveloping member having mutually facing heat
seal layers,

wherein the enveloping member is heated and pressed in a portion
where said core member is present within the enveloping member, and at
portions of said enveloping member where said core member is not present
within the enveloping member, and

wherein the portions of said heat seal layer where said core member is
not present within the enveloping member are closely attached to each other
and heated and fused so as to be along the core member shape at the border
between the portion where the core member is present within the enveloping
member and the portion where the core member is not present.

8. The vacuum heat insulator of claim 2, wherein through-holes are
formed in the thickness direction of the core member, and

wherein, the enveloping member is heated and pressed in portions
where the core member is present, and

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wherein said heat seal layers are heated and fused over said through-
holes and along the shape of said through-holes.

10. The vacuum heat insulator of claim 9, wherein holes are not
formed in the enveloping member in the area of said through-holes of the
core members.
The Examiner relies on the following prior art references to show
unpatentability:
Miyoshi et al. (“Miyoshi”)2 JP 08-303686 Nov. 22, 1996
Tanimoto et al. (“Tanimoto”)3 JP 10-1108874 Apr. 22, 1998
Stroobants US 6,322,743 B1 Nov. 27, 2001

2 We refer to this reference, which the Examiner refers to as “Motoyuki,” as
“Miyoshi,” the first named inventor’s surname.

3 We refer to this reference, which the Examiner refers to as “Yasuaki,” as
“Tanimoto,” the first named inventor’s surname.

4 For both Miyoshi and Tanimoto, the Examiner’s final rejection relies on
the English-language Abstracts and the Figures of the original Japanese-
language publications made part of the record by Appellants as part of an
Information Disclosure Statement filed June 2, 2005. With the Answer, the
Examiner provided a translation of Miyoshi prepared for the USPTO by
Schreiber Translations, Inc. (PTO 08-2843 March 2008) and a translation of
Tanimoto prepared for the USPTO by the McElroy Translation Company
(PTO 08-2870 March 2008). Appellants rely upon these translations in
support of their arguments in the Reply Brief (see, .e.g, Reply Br. 2). As
Appellants have reviewed and considered the translations, we consider the
translations as well as the English Abstract and Figures from the Japanese-
language documents.
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The Examiner maintains the following rejections:5
1. Claims 2, 11, 13, 14, and 18 rejected under 35 U.S.C. § 102(b) as
anticipated by Tanimoto;
2. Claims 8-10 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto in view of Miyoshi;
3. Claim 12 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto in view of Stroobants; and
4. Claim 19 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto.
I. FIRST REJECTION
For the first rejection, based on anticipation by Tanimoto, Appellants
focus their arguments on claim 2 and do not separately argue claims 11, 13,
14, and 18 (App. Br. 3-6). Accordingly, we select independent claim 2 as
the representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii)
(“When multiple claims subject to the same ground of rejection are argued
as a group by appellant, the Board may select a single claim from the group
of claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the selected
claim alone.”).
A. ISSUE ON APPEAL
Appellants initially contend that Tanimoto does not disclose areas
“where said core member is not present within the enveloping member” and
further does not disclose any area where portions of “the heat seal layers are

5 In the Examiner’s Answer, the Examiner withdraws the rejections relying
on Stroobants as the primary reference that were recited in the Final Office
Action, considering them cumulative of the maintained rejections recited
herein. (Ans. 3).
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closely attached to each other and heated and fused so as to be along the core
member shape at the border between the portion where the core member is
present within the enveloping member and the portion where the core
member is not present” as recited in claim 2 (Br. 4-6; Claim 2).
According to Appellants: (a) Tanimoto’s core material 2 does not
include any through hole (such as through hole 36 shown in Appellants’
Figure 8) or any other portion in which the core material is not present; (b)
Tanimoto does not describe how the portions between the core material and
the discontinuous portions of core material are thermally fused; (c) it was
not known at the time of the filing of Tanimoto to heat seal layers where the
core member is not present; (d) Tanimoto can achieve desired “independent
vacuum parts” with heat seal parts smaller than that of the present
application; and (e) in Tanimoto, heating and fusing of the heat seal layer
“do not need to be performed at the border between the portion where the
core member is present . . . and the portion where the core member is not
present” (Br. 4-6; Reply Br. 2-3).
The Examiner contends: (a) that the heating and pressing limitations
argued by the Appellants are process limitations that do not structurally
distinguish the claimed invention over that of Tanimoto; (b) that Figures 1
and 2 of Tanimoto disclose portions of the heat seal layer where the core is
not present, namely the areas between the core members 2; (c) that Figures 1
and 2 of Tanimoto show heat seal layers 3 closely attached together between
the core members 2 and along the edges of the core members 2, so as to
actually abut the core members 2; and (d) that Appellants’ Figure 8 is not
representative of the broad scope of claim 2 (Ans. 7-8).
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Accordingly, the dispositive issue for this appealed rejection is: have
the Appellants shown that the Examiner reversibly erred in finding that
Tanimoto describes a gas barrier enveloping member configured around a
core member and in areas where the core member is not present as required
by claim 2?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Appellants’ Specification discloses and depicts various
embodiments of vacuum heat insulators with cores of various configurations
(Spec. 11-65; e.g., Fig. 1, showing cores 11; Fig. 7, showing core 31a; Fig.
8, showing core 31b; Fig. 9 showing cores 41).
2. Appellants’ Embodiment 1 is directed to a multi-core vacuum
heat insulator with sixteen individual core members 11 disposed in a lattice
layout. As shown in Figures 1 and 2, “the enveloping member 12 of vacuum
heat insulator 10 is heated and fused between the core member 11 and the
adjacent other core member 11” (Spec. 11, l. 1-12, l. 2). In other words, in
Figures 1 and 2, the enveloping member is heated and fused everywhere
where a core member is not present.
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Figures 1 and 2 of Appellants’ Specification are reproduced below.

Figure 1 depicts a plan view of a multi-core vacuum heat insulator 10.
Figure 2 depicts a sectional view taken along line A-A in Figure 1 (Spec. 11,
ll. 2-3).
3. Appellants’ Specification states that Figures 1 and 2 show heat
seal part 13 formed “along the core member shape” (Spec. 12, ll. 4-5).

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4. Appellants’ Specification discloses an alternative embodiment
(Embodiment 3) in which a core member 31b includes through-holes 36 as
depicted in the Figure 8 (See Spec. 17, l 3-19, l. 12).
Figure 8 of Appellants’ Specification is reproduced below.

Figure 8 depicts a plan view of a vacuum heat insulator (Spec. 17, ll. 6-7).
5. Figure 1 of Tanimoto depicts a vacuum insulation body 1 with
individual cores 2 enveloped by covering material 3. (Tanimoto, translation
¶ 45). The structure is similar to Appellants’ Embodiment 1 shown in
Figure 2 of Appellants’ Specification (Tanimoto, Figure 1; Spec. Figure 2).
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Figure 1 of Tanimoto is reproduced below.
FIGURE 1
Figure 1 depicts a cross section of a vacuum heat insulation body (Tanimoto,
translation ¶ 99).
6. Tanimoto teaches that the outer covering material 3 is thermally
fused or welded at the uncontinuous, or discontinuous, part of the core
materials 2 (Tanimoto, Abstract; Figure 1; translation ¶ 45).
7. Tanimoto teaches that a covering material 3 is thermally welded
closely around core materials 2 (Tanimoto, Abstract, Figure 1).
8. Tanimoto teaches that the seal between the core material 2 is
sufficient to form independent vacuum parts, such that if the covering
material 3 is ruptured over one core material portion, the other vacuum
sealed core materials portions are not affected (Tanimoto, Abstract;
translation ¶¶ 23, 29, 46, and 87).
C. PRINCIPLES OF LAW
Much of our decision rests on what is meant by the language recited
in claim 2. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-1568
(Fed. Cir. 1987) (“Analysis begins with a key legal question - what is the
invention claimed? . . . Claim interpretation . . . will normally control the
remainder of the decisional process.”) (footnote omitted).
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The claims, not the specification, measure the protected patent right to
exclude others. Novo Nordisk of N. Am., Inc. v. Genentech, Inc., 77 F.3d
1364, 1369 (Fed. Cir. 1996). Claim interpretation begins with the language
of the claim itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (“To begin with, the context in which a term is used in the asserted
claim can be highly instructive.”).
Further, the claim language must be given its broadest reasonable
meaning. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[A]s an
initial matter, the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.”). “Construing claims broadly during prosecution is not unfair
to the applicant . . . , because the applicant has the opportunity to amend the
claims to obtain more precise claim coverage.” In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Our reviewing court has
repeatedly emphasized that it is not appropriate to read desired embodiments
from the specification into the claims. Phillips, 415 F.3d at 1323
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “A single reference must
describe the claimed invention with sufficient precision and detail to
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establish that the subject matter existed in the prior art.” Verve LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).
“[I]t is the patentability of the product claimed and not of the recited
process steps which must be established.” In re Brown, 459 F.2d 531, 535
(CCPA 1972). “[E]ven though product-by-process claims are limited by
and defined by the process, determination of patentability is based on the
product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed.Cir.1985), cited with
approval in Abbott Labs. v. Sandoz, Inc., 2009 WL 13714410, *8 (Fed. Cir.
2009) (emphasis added by the court).
D. ANALYSIS
The language of claim 2 does not limit the scope of vacuum heat
insulators to those that contain one core member. In other words, multicore
structures such as the one shown in Figure 1 are covered by the claim. Thus,
the phrase “where said core member is not present,” as recited in claim 2,
reads broadly on the area between separate core members that are enveloped
by the same materials. Appellants’ Specification does not give a more
limited meaning to, nor does it even use, the phrase “where the core member
is not present.” Appellants have not provided any convincing reason based
on the record to limit the claims to require the locations “where said core
member is not present” to the through-holes depicted in Figure 8. (FF 4.)
Rather, Appellants’ Specification describes various embodiments of vacuum
heat insulation bodies including embodiments with individual cores such
that an enveloping member is heated and pressed at portions “where said
core member is not present” including the embodiment shown in Figures 1-2
(FF 1-2). The claim language does not exclude the embodiment described in
Figures 1-2 of the Specification. Accordingly, this language encompasses
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the areas of heat seal parts 13 between separate core members 11 where the
enveloping material 12 is sealed, as shown in Figures 1 and 2 (i.e., the
enveloping material is sealed where the core is not present) (FF 4).
Claim 2 also recites “wherein the portions of said heat seal layer
where said core member is not present within the enveloping member are
closely attached to each other and heated and fused so as to be along the core
member shape at the border between the portion where the core member is
present within the enveloping member and the portion where the core
member is not present.” (Claim 2). In giving “the border” the broadest
reasonable interpretation, “the border” is the region along the periphery of a
core member. This interpretation is supported by Appellants’ Specification,
which indicates that Figures 1 and 2 demonstrate the enveloping member
fused “along the core member shape” and which shows the enveloping
member sealed along a periphery of the core member (FF 4).
Figure 1 of Tanimoto, similarly to the cross section shown in Figure 2
of Appellants’ Specification, depicts a covering material 3 enveloping core
material 2 (FF 5). Tanimoto teaches and illustrates that covering material 3
is thermally fused (i.e., sealed) in the discontinuous parts of core material 2
(FF 6). In other words, the covering material 3 (enveloping member) is
fused together where the core material 2 (core member) is not present.
Additionally, in Tanimoto, the covering material 3 is thermally welded
closely around core materials 2 (FF 7). Figure 1 of Tanimoto illustrates that
the covering material is sealed along the shape of the periphery (i.e., the
border) of the core material 2 (See Figure 1).
Further, we agree with the Examiner that the phrases “heated and
pressed” and “heated and fused” are process limitations. It is reasonable to
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conclude, based upon the evidence of record, that Tanimoto’s process of
thermal fusing or welding to form independent vacuum parts, each not
affected by rupturing of another, results in the same or substantially the same
structure as Appellants’ recited heating and pressing process (FF 5-8).
Appellants have not shown that the claimed vacuum heat insulator is
structurally distinguishable over a vacuum heat insulator which may be
sealed by an alternative method, if the method of Tanimoto is, indeed,
different.
Appellants’ remaining arguments are unpersuasive and provide no
convincing reasoning establishing Examiner error. Accordingly, Appellants
have not shown that the Examiner reversibly erred in finding that Tanimoto
describes a gas barrier enveloping member configured around a core
member and in areas where the core member is not present as required by
claim 2.
II. SECOND REJECTION
With respect to the Examiner’s rejection of claims 8-10 as obvious
over Tanimoto and Miyoshi, Appellants present separate arguments for
claim 8 and claim 10. Accordingly, we select claims 8 and 10 to represent
this group.
A. ISSUE ON APPEAL
Since Miyoshi teaches that a pipe may be inserted into through-hole
31, Appellants contend, with respect to claim 8: (a) that one of ordinary skill
in the art would not have heat sealed layers “heated and fused over said
through-holes and along the shape of said through-holes,” as recited in claim
8 (Br. 9; Reply Br. 4) and (b) that inserting a tube through a hole teaches
away from heating and fusing a heat seal layer over a through-hole (Reply
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Br. 4). With respect to claim 10, Appellants further contend (c) that Miyoshi
does not teach that “holes are not formed in the enveloping member in the
area of said through-holes of the core member,” as recited in claim 10 (Br.
9).
The Examiner construes claim 8 broadly and suggests that the
enveloping member need not be sealed over the entire cross-sectional extent
of the through-hole 31 (Ans. 8). The Examiner also contends that Miyoshi
teaches that a cut or slit may be made to form through-hole 31 after the
enveloping material is sealed, such that after sealing, but before the
enveloping material is cut or slit for passage of a tube, the enveloping
material does not have a hole and meets the claim limitation (Ans. 8-9).
The dispositive issue for the appeal of this obviousness rejection is:
have the Appellants shown that the Examiner reversibly erred in determining
that the limitations of claim 8 and 10 are obvious to one of ordinary skill in
the art over the teachings of Tanimoto and Miyoshi because Miyoshi teaches
inserting a pipe into through-hole 31?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
9. Appellants’ Specification states that the area where enveloping
member 12b is sealed at through-hole 36 in Figure 8 “can be fixed by screws
or the like” such that “[t]he vacuum heat insulator 35 can be easily fixed and
disposed” with excellent mounting performance (Spec. 18, ll. 14-19).
10. Miyoshi teaches that the seal part A(24) may be formed along
the inner periphery of the through-hole part 31 or may also be formed over
the entire surface in the through hole part 31 as long as it is continuously
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formed along the inner peripheral part of the through hole part (Miyoshi,
translation ¶ 34).
Figures 3 and 4 of Miyoshi are reproduced below.
FIGURE 3
FIGURE 4
Figure 3 depicts a schematic plan view showing an example of a vacuum
insulation panel. Figure 4 depicts a schematic cross section taken along line
X-X' of Figure 3.
11. Miyoshi teaches that, “[i]n forming the through hole in the
through hole part (31), the inside (41) of the seal part A (24) may be cut out,
or a slit may be formed in it” in order to pass wiring, pipes, equipment, etc.,
or to install the members around a door hinge, etc. (Miyoshi, translation ¶¶
33 and 35).
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C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989). Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments.
In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
D. ANALYSIS
Appellants’ Specification states that a screw (and thus a hole) can be
placed in the area of through-hole 36 to affix the vacuum heat insulator,
which would inevitably provide a hole in the enveloping member where the
screw is inserted (FF 9). Accordingly, claim 8 and claim 10 only require the
enveloping member to be present “over said through-hole,” as recited in
claim 8, and “holes are not formed in the enveloping member,” as required
by claim 10, at some point in time.
Miyoshi clearly teaches that a seal A (24) may be continuously
present in the area of a through-hole 31 in the core material (FF 10).
Miyoshi teaches that a cut out or slit “may be” formed in the inside 41 of
seal area A (24), thus indicating that hole in the covering layer is preferred
but not required (FF 11). Thus, one of ordinary sill in the art would have
found that the teachings of Miyoshi are broad and do not necessarily require
a hole to be present.
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Moreover, we agree with the Examiner that, prior to cutting out a hole
or slit in the inside 41 of seal A (24), Miyoshi teaches a enveloping member
2 that is sealed over a through-hole 31, as recited in claim 8, and where holes
are not formed in the enveloping member in the area of through-hole 31, as
recited in claim 10.
Accordingly, Appellants have not shown that the Examiner reversibly
erred in determining that the limitations of claims 8 and 10 are obvious to
one of ordinary skill in the art over the teachings of Tanimoto and Miyoshi
because Miyoshi teaches inserting a pipe into through-hole 31.

III. THIRD AND FOURTH REJECTIONS
With respect to claims 12 and 19, Appellants present no separate
arguments over the arguments presented above with respect to claim 2 (See
Br. 8 and 10; Reply Br. 4) Accordingly, Appellants have not shown that the
Examiner erred with respect to the rejections of claims 12 and 19, for the
same reasons presented above with respect to claim 2.
IV. CONCLUSION
For the reasons presented above, we sustain the following Examiner’s
rejections:
1. Claims 2, 11, 13, 14, and 18 rejected under 35 U.S.C. § 102(b) as
anticipated by Tanimoto; and
2. Claims 8-10 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto in view of Miyoshi;
3. Claim 12 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto in view of Stroobants;
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4. Claim 19 rejected under 35 U.S.C. § 103(a) as obvious over
Tanimoto.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v)(2008).
AFFIRMED

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