Ex Parte YOKOI

Patent Trial and Appeal Board

Nov 30, 2018

14465007 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/465,007 08/21/2014
116 7590 12/04/2018
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Takashi YOKOI
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.
OBA-53125 2675
EXAMINER
GICZY, ALEXANDER V
ART UNIT PAPER NUMBER
3642
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKASHI YOKO I
Appeal2018-002259
Application 14/465,007
Technology Center 3600
Before, BENJAMIN D. M. WOOD, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-5, 12, 13, 15, and 17-22.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Mitsubishi Aircraft Corporation, which the
Appeal Brief identifies as the real party in interest. Appeal Br. 2.
2 Claims 6-11 and 14 are withdrawn, and claim 16 is cancelled. Appeal Br.
14--17 (Claims App.).
Appeal2018-002259
Application 14/465,007
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "an aircraft window having an
electromagnetic shielding function, and a closing member for an opening
portion having an electromagnetic shielding function." Spec. 1. Claims 1
and 12 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. An aircraft window provided in an airframe of an
aircraft, comprising:
a window body including a window panel having light
transmissibility, and an electromagnetic shield layer laminated
on the window panel;
a window frame that is made of a conductive material,
and that surrounds the window body;
an interposition member that is formed by using a rubber-
based material combined with a conductive material that
provides the interposition member with conductivity, the
interposition member being at least partially held between the
window body and the window frame; and
a conductive layer that is located between the window
body and the interposition member, and that brings the
electromagnetic shield layer and the interposition member into
conduction with each other,
wherein the window frame includes a holding section
that holds the window body via the interposition member from
an airframe outer side,
at least a part of the conductive layer extends to a portion
of the window body facing an extending part of the holding
section, and
the conductive layer has a surface resistivity of 0.5 Q/sq
or lower.
Appeal Br. 14 (Claims App.).
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Application 14/465,007
THE REJECTIONS 3
Appellant seeks review of the following rejections on appeal:
1. Claims 1-5, 12, 13, 15, 18, 19, 21, and 22 under 35 U.S.C. § 103
as unpatentable over Bain, 4 Kirchoff, 5 Chaussade, 6 and DiLeo. 7
2. Claims 17 and 20 under 35 U.S.C. § 103 as unpatentable over
Bain, Kirchoff, Chaussade, DiLeo, and Applicant Admitted Prior
Art, or, in the alternative, under 35 U.S.C. § 103 as unpatentable
over Bain, Kirchoff, Chaussade, DiLeo, and Kang. 8
3. Claims 1-5, 12, 13, 15, 18, 19, 21, and 22 under the doctrine of
nonstatutory double patenting over claims 1, 16, and 20 of U.S.
Patent No. 9,415,854 ("the '854 patent"), Bain, and DiLeo.
ANALYSIS
Obviousness
The Examiner found that Bain discloses an aircraft window in an
airframe that includes many of the claimed features of the window,
including a window frame having a "holding section that holds the window
body via the interposition member." Non-Final Act. 7. As to Kirchoff, the
Examiner found that it discloses film or other shielding material 7 6 that
reduces or attenuates electromagnetic radiation through the window, and a
3 In the Answer, the Examiner withdrew certain rejections under 35 U.S.C.
§ 112, and we do not consider those rejections in this appeal. Ans. 4--5.
4 U.S. Patent No. 4,793,108, issued December 27, 1988 ("Bain").
5 U.S. Patent Pub. No. 2008/0308677 Al, published December 18, 2008
("Kirchoff').
6 U.S. Patent Pub. No. 2003/0087048 Al, published May 8, 2003
("Chaussade").
7 U.S. Patent No. 5,968,600, issued Oct. 19, 1999 ("DiLeo").
8 WO 03/071846 Al, published August 28, 2003 ("Kang").
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Application 14/465,007
gasket with conductive material added to attenuate electromagnetic
radiation. Id. at 7-8. As to Chaussade, the Examiner found that it discloses
an "aircraft window providing electromagnetic protection" that includes
electrically conductive layer 5 and conductive seal 3. Id. at 9. The
Examiner also found that Chaussade discloses various methods of providing
a "conductivity boost" to the seal, including use of a conductive film in the
form of a silver lacquer and/or a metal foil or mesh tape against the
periphery of the window and the internal part of the seal in contact with
electrically conductive layer 5. Id. at 9-10. The Examiner relied on DiLeo
as disclosing an EMI shielding coating including a silver-based paint having
a surface resistivity of less than 0.5 ohms/sq as claimed. Id. at 10. The
Examiner determined that it would have been obvious to modify Bain's
aircraft window with the additional references to enhance conductivity
between the electromagnetic film and the interposition member in a cost
effective manner. See id. at 9, 11.
Appellant makes several arguments against the obviousness
rejections, and focuses the arguments on the language of claim 1. See
Appeal Br. 6-11. First, Appellant argues that Chaussade is silent regarding
bringing its electromagnetic shield 5 and seal into conduction with each
other. Id. at 8. Second, Appellant argues that Chaussade fails to disclose
extending its foils 6 to a portion of the window body facing an extending
part of a window frame. Id. at 8-9. Third, Appellant argues that the
rejection lacks sufficient reasoning to apply DiLeo's teaching of a resistivity
of less than 0.5 ohms/sq for certain embodiments, when other embodiments
show higher resistivity falling outside the scope of the claim. Id. at 10.
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Application 14/465,007
The Examiner responds by noting that Chaussade discloses boosting
"the conductivity between the conductive seal (interposition layer) and
electromagnetic shield layer," which means that the two materials must be in
conduction with one another. Ans. 10. As to the limitation requiring
extension of the conductive layer "to a portion of the window body facing an
extending part of the holding section," the Examiner found that Chaussade
discloses applying the conductive layer along the edges and sides of the seal
and that one of "ordinary skill in the art would recognize that providing the
conductive layer over a greater surface area of the seal would further boost
the conductivity of the seal." Id. at 13. This is so, according to the
Examiner's findings, because "the conductive layer is more conductive than
the seal-and the part of the seal along the extending part of the window
holding section (as taught by primary reference Bain) is a large area that is
also in contact with the conductive extending part and therefore is a large
area through which electromagnetic energy from the electromagnetic shield
would be conducted." Id. The Examiner determined that one would be
motivated to extend at least a part of the conductive layer on the seal along
the window facing Bain's extending portion "to increase the ability of the
conductive layer to boost the seal conductivity by providing that conductive
layer along more of the seal's surface area ... thereby improving the
electromagnetic protection provided." Id. at 13-14. Finally, as to DiLeo's
disclosure of resistivity, the Examiner notes that for every preferred
embodiment, and the most preferred embodiment, DiLeo discloses
resistivity values that fall within the claimed range, and the obviousness
determination was based on the explicit preferred resistivity values noted in
DiLeo rather than hindsight. Id. at 15-16.
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Application 14/465,007
Appellant's arguments do not apprise us of error in the Examiner's
rejection of claim 1. First, the argument that Chaussade fails to show its
electromagnetic shield 5 and conductive seal 4 in conduction with one
another fails to address or undermine the Examiner's finding that they must
be in conduction with one another for the conductive layer (film or mesh or
paint) to increase or "boost" the conduction between the two. See Ans. 1 O;
Reply Br. 2. This finding is directly supported by Chaussade itself. See
Chaussade ,r,r 28, 29, Figs. 2 and 3.
Second, the Examiner adequately supported the finding that one
would be motivated to extend the conductive layer "to a portion of the
window body facing an extending part of the holding section." See Ans. 13-
14. In particular, the Examiner's finding that one of ordinary skill in the art
would recognize that providing the conductive area over a larger area of the
seal would boost conductivity, and that extending the layer over at least a
portion of Bain's window body facing its extending part of the holding
section would also increase conductivity and performance, is based on a
rational underpinning. See id. ( citing Chaussade, Fig. 3). Appellant argues
that the Examiner failed to cite specific references showing that providing
the conductive layer over a larger surface area would boost conductivity, but
the Examiner need not find additional references given that the Examiner's
reasoning is supported by a straightforward and rational underpinning, and
given that Appellant has not shown error in that reasoning. See Reply Br. 2.
Appellant also argues that even if one were to add Chaussade' s foil 6 to
Bain's seal 20, one would add it to the interior portion of seal 20 rather than
the area facing a holding section of window frame 22. Id. at 3. This
argument lacks any reasoned explanation or support in the record, and would
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Application 14/465,007
seem to inexplicably limit the extension of the conductive layer to only a
portion of seal 20, even though further extension of the conductive layer as
claimed provides additional advantages.
Third, the Examiner adequately supported the finding that DiLeo
discloses an electromagnetic interference coating with surface resistivity
within the claimed range, and that one of ordinary skill in the art would have
been motivated to apply such a coating to the proposed combination. See
Final Act. 10-11; Ans. 14--16. Contrary to Appellant's argument, DiLeo
itself provides a reason to pick from embodiments that result in the claimed
resistivity because all seven examples in DiLeo disclose resistivity in the
claimed amount, and DiLeo describes these levels as "more preferred" or
"most preferred" compared to results that fall outside the claimed range. See
id.; DiLeo 9:50-57. Appellant contends that one of ordinary skill in the art
may prefer to apply DiLeo 's coating to the electromagnetic shield layer
rather than the conductive layer as claimed, but as the Examiner correctly
notes, identifying another potential advantageous use of DiLeo' s coating
does not suggest the coating would not have been obvious to apply
elsewhere, such as the conductive coating. See Ans. 17; Reply Br. 5.
Appellant also contends that the Examiner improperly proposes modifying
Chaussade' s metal foil with metal paste/paint, but the Examiner makes no
such finding. See Reply Br. 5; Ans. 8, 10, 11 (referring to paste/paint as an
alternative to foil to boost conductivity); Final Act. 10 (same). We are not
apprised of error in the Examiner's findings related to DiLeo.
Based on the foregoing, we sustain the rejection of claim 1 as
unpatentable as obvious. Appellant does not raise any additional arguments
regarding the remaining claims under this rejection, except to repeat reliance
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Application 14/465,007
on the arguments made with respect to claim 1. See Appeal Br. 11-12.
Accordingly, we sustain the rejection of claims 2-5, 12, 13, 15, and 17-22
for the same reasons discussed above.
Double Patenting
The Examiner based the double patenting rejection on a combination
of the '854 patent with Bain and DiLeo. See Final Act. 19-22. In the
Appeal Brief, Appellant largely relied on the same arguments with respect to
claim 1 discussed above when addressing the double patenting rejection.
See Appeal Br. 12. Appellant also argues, in a single sentence, that claims 1,
16, and 20 of the '854 patent require "an electrical path to be formed
through" various structures, which is not rendered obvious by the claims of
the present application. Id. In response, the Examiner found that claim 1 of
the present application effectively describes the "electrical path" noted in the
claims of the '854 patent. Ans. 20. In Reply, Appellant argues that the
Examiner failed to properly account for the "fixing member" in the claims of
the '854 patent, which is not recited in the claims of the present application.
Reply Br. 6.
Appellant's arguments do not apprise us of error in the Examiner's
double patenting rejection. First, Appellant does not contest the Examiner's
findings in the rejection in the Appeal Brief, beyond the arguments
discussed above in the context of the obviousness rejection. See Appeal Br.
12. The Examiner found that claims 1-5, 12, 13, 15, 18, 19, 21, and 22 were
obvious in light of claims 1, 16, and 20 of the '854 patent, Bain, and DiLeo.
Non-Final Act. 19-22. Appellant's single-sentence argument in the Appeal
Brief that goes beyond the previously raised nonobviousness arguments
addresses whether the claims of the '854 patent are obvious in light of the
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present claims in the application. See Appeal Br. 12. Because the rejection
was not based on whether the claims of the '854 patent were obvious in light
of the present claims-the rejection was based on the converse-Appellant's
additional arguments do not apprise us of error in the rejection. Because
Appellant's only arguments addressing those findings rely on the arguments
we found unconvincing above, we sustain the double patenting rejection.
Appellant's argument relating to the alleged nonobviousness of the
claims in the '854 patent appears to assume that the double patenting
rejection must not only establish the obviousness of the present claims in
light of the '854 patent claims and the other references, as the Examiner
found, but must also establish the obviousness of the '854 patent claims in
light of the present claims. This is known as a "two-way" double patenting
test. See In re Janssen Biotech, Inc., 880 F.3d 1315, 1325 (Fed. Cir. 2018).
That test is required in "unusual" and "narrow" circumstances, "where (1) a
second-filed application issues prior to a first-filed application, and (2) 'the
PTO is solely responsible for the delay."' See id.; see also In re Fall aux,
564 F.3d 1313, 1315-18; MPEP §804(II)(B)(2)(b) ("If the application under
examination is the later-filed application, or both applications are filed on
the same day, only a one-way determination of distinctness is needed in
resolving the issue of double patenting, i.e., whether the invention claimed in
the application would have been anticipated by, or an obvious variation of,
the invention claimed in the patent."). Appellant made no effort to establish
that the Examiner was required to apply a two-way test for double patenting,
and therefore the argument regarding the alleged nonobviousness of the '854
patent claims lacks a proper foundation, and does not establish error in the
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Examiner's rejection. 9 The Examiner properly applied the one-way test for
double patenting, and for the reasons discussed above Appellant has not
established error in those findings. To the extent that the Examiner
entertained Appellant's argument based on the two-way test, 10 we view that
analysis as unnecessary to sustain the rejection, which does not rely on the
two-way test.
DECISION
We affirm the decision of the Examiner to reject claims 1-5, 12, 13,
15, and 17-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
9 Based on our own review of the record, it appears unlikely that the two-
way test could apply, given that the '854 patent was filed on July 3, 2014
(with a priority claim to an application filed July 27, 2012), before the filing
date of the present application on August 21, 2014.
10 The Examiner found that the structures in the present claims disclosed the
"electrical path" limitation in the claims of the '854 patent. See Ans. 21.
Appellant maintains that the Examiner did not give proper weight to the
"fixing member" in the '854 patent claims. See Reply Br. 6. The fixing
member appears to be a clamp and/or clip that fixes the window in place, as
disclosed in both the '854 patent and the current specification. See '854
patent, Fig. 1 (item 28), 6:63-7:2; Spec. Fig. 1 (item 27). Although we need
not reach the issue because Appellant has not established that the two-way
test applies, it appears that Bain discloses such a structure such that the
combination of the present claims with Bain would render the '854 patent
claims obvious. See Bain, Fig. 1 (item 26), 2:26-29 ("retainer clip assembly
26").
10