Ex Parte Vehmas

Board of Patent Appeals and Interferences

Jul 27, 2012

10864878 (B.P.A.I. Jul. 27, 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.
10/864,878 06/09/2004 Jukka Vehmas U 015237-8 6705
7590 07/27/2012
Ladas & Parry
26 West 61 Street
New York, NY 10023
EXAMINER
LAZORCIK, JASON L
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
07/27/2012 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 JUKKA VEHMAS
____________

Appeal 2011-001566
Application 10/864,878
Technology Center 1700
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-001566
Application 10/864,878

2
DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-3, 12, 13, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Vitkala (US 2003/0061834 A1, published Apr. 3, 2003) in view
of Vehmas (WO 01/32570 A1, published May 10, 2001), and claims 4-6, 14-16,
19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the same references, and
further in view of Reunamäki (US 4,390,359, issued Jun. 28, 1983).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, the sole independent claim, is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. In a method of heating glass, the method comprising
conveying glass through a tempering furnace during a heating cycle so
that the glass is heated from above and below, the improvements
consisting essentially of
heating an upper surface of the glass by hot air jets formed by
sucking hot air from inside the furnace, pressurizing the hot air and
recycling the pressurized hot air back to the upper surface of the glass
for the heating from above, and
blowing air which has been taken from outside the furnace and
which has been pressurized by a compressor and heated onto a lower
surface of the glass for the heating from below.
We decide the following issue in favor of Appellant and, therefore, identify
it as dispositive of the appeal: does a preponderance of the evidence support the
Examiner’s determination that it would have been obvious to substitute Vitkala’s

1 Final Office Action mailed Feb. 21, 2008 (“Final”).
2 Appeal Brief filed Aug. 7, 2009 (“App. Br.”).
Appeal 2011-001566
Application 10/864,878

3
upper heat exchanger with Vehmas’ upper recirculating compressor unit to achieve
a heating step as recited in appealed claim 1?
The Examiner finds “Vitkala [] teaches a furnace wherein a compressor (3)
supplies pressurized air from outside the furnace to convectively heat both the
upper and lower faces of a glass sheet as the sheet is conveyed through the
furnace.” (Ans. 3 4 (emphasis added).) The Examiner determines “replacing the
upper heat exchanger in Vitkala with the recirculating system disclosed by Vehmas
would have been an obvious approach to reduce both the requisite heating times
and overall operating costs (e.g. recirculation would provide an efficient heat
recovery) of the glass heating furnace.” (Id. at 7.)
Appellant argues Vitkala teaches away from using a system such as that of
Vehmas in which air inside the furnace is recycled and blown directly onto the
glass surface because the air becomes contaminated. (App. Br. 14.) Appellant
directs us to Vitkala ¶ [0003] which reads, in relevant part:
It is prior known to circulate heated air in the furnace of a
tempering facility for convection blasting. This provides effective
convection blasting without heat losses caused by discharge air.
However, the circulated air becomes gradually contaminated, causes
optical degradation of the glass surface or even obstructions of the
nozzles.
Vitkala further states “an object of the invention” is to provide a “furnace [that]
can be continuously supplied with fresh clean air for both upper and lower
convection without substantial heat loss.” (Id. at ¶ [0005].)
The Examiner acknowledges this disclosure (see e.g., Ans. 5), but maintains
“[s]ubstituting [Vehmas’] recirculated gas flow . . . for the Vitkala heat exchanger
system would reasonably be expected to yield a compromise between reduced

3 Examiner’s Answer mailed Aug. 17, 2010 (“Ans.”).
Appeal 2011-001566
Application 10/864,878

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contamination build up offered by the Vitkala apparatus and the thermal efficiency
benefits of the Vehmas apparatus.” (Id. at 7.)
“In making an obviousness rejection, the examiner should not rely on
conclusory statements that a particular feature of the invention would have been
obvious or was well known. Instead, the examiner should elaborate, discussing the
evidence or reasoning that leads the examiner to such a conclusion.” In re
Vaidyanathan, 381 Fed. Appx. 985, 994 (Fed. Cir. 2010) (non-precedential); see
also, KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”)).
The Examiner has not provided sufficient explanation as to why one of
ordinary skill in the art would have been motivated to modify Vitkala to recirculate
air inside the furnace given Vitkala’s explicit goal of using only fresh clean air
drawn from outside the furnace. It appears to us the Examiner’s obviousness
determination is based on improper hindsight reasoning. See Vaidyanathan, 381
Fed. Appx. at 994 (“Obviousness is determined as a matter of foresight, not
hindsight.”). As such, we do not sustain the rejections of 1-6 and 12-20.
REVERSED

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