3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Feb 16, 2022

2021001707 (P.T.A.B. Feb. 16, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/305,863 10/21/2016 Kurt J. HALVERSON 74047US007 3898 32692 7590 02/16/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KURT J. HALVERSON, RAYMOND P. JOHNSTON, CALEB T. NELSON, and STEVEN P. SWANSON ____________ Appeal 2021-001707 Application 15/305,863 Technology Center 1700 ____________ Before JAMES C. HOUSEL, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies 3M Company (formerly known as Minnesota Mining and Manufacturing Company) and its affiliate 3M Innovative Properties Company as the real parties in interest. Appeal Br. 2. Appeal 2021-001707 Application 15/305,863 2 The invention “relates generally to fluid control layers and methods for managing condensation.” Spec. 1:4-5. In particular, the invention seeks to address the problem of persistent condensation within a building infrastructure that can cause structural damage due to water damage and/or corrosion, environmental damage due to mold and mildew, and provide a breeding ground for bacteria. Id. at 1:8-13, 3:19-21. Claim 1 illustrates the subject matter claimed and is reproduced below: 1. An article, comprising: a structure having an outer surface extending along a longitudinal axis, at least a portion of a cross section of the outer surface being convex, the longitudinal axis of the outer surface oriented substantially perpendicularly with respect to the gravitational direction; and fluid control channels extending along a channel longitudinal axis along at least a portion the convex surface, the channel longitudinal axis making an angle between 0 and 90 degrees with respect to the longitudinal axis of the outer surface, the fluid control channels configured to allow capillary movement of liquid in the channels and across the convex surface, the channels configured to produce a capillary force on the liquid in the channels that is greater than the gravitational force on the liquid. Appellant requests review of the Examiner’s rejection of claims 1-7 under 35 U.S.C. § 103 as unpatentable over Johnston (US 2002/0146540 A1, published October 10, 2002) and Hirata (US 6,609,981 B2, issued August 26, 2003). Appeal Br. 2; Final Act. 2. OPINION After review of the Appellant’s and the Examiner’s respective positions in the Appeal and Reply Briefs and the Final Action and the Appeal 2021-001707 Application 15/305,863 3 Answer, we reverse the Examiner’s prior art rejection of claims 1-7 under 35 U.S.C. § 103 for essentially the reasons Appellant presents. We add the following for emphasis. Claim 12, Claim 1 recites an article comprising a structure having an outer surface extending along the structure’s longitudinal axis, where at least a portion of a cross section of the structure’s outer surface is convex in shape. Claim 1 recites the article further comprises fluid control channels extending along a channel longitudinal axis along at least a portion the convex surface. The claim additionally describes the arrangement of the fluid control channels with respect to the structure in terms of how the structure’s longitudinal axis and the channel longitudinal axis are oriented with respect to each other so as to configure the fluid control channels to allow capillary movement of liquid in the channels and across the convex surface. The Examiner finds Hirata discloses it is known to provide golf clubs having a convex outer surface with fluid control channels to reduce resistance of fluids (air) flowing against the shaft. Final Act. 3-4; Hirata Abstr., Figures 1, 2, 3a, 3b, 4. The Examiner finds Hirata teaches the claimed relationship between the longitudinal axis of the article and the longitudinal axis of the channel when the golf club is held in position to swing. Final Act. 3-4; Hirata Figures 3a, 3b, 4. Recognizing that Hirata does not disclose the claimed fluid control channels, the Examiner turns to Johnston for the missing feature. Final Act. 2-4. Johnston, as Appellant, is concerned with the detrimental effects of liquids condensing on 2 We limit our discussion to independent claim 1. Appeal 2021-001707 Application 15/305,863 4 infrastructure elements. Johnston ¶¶ 1, 2, 102. The Examiner finds Johnston discloses an article comprising a structure having a fluid control channels sheet on its outer surface to move liquid from one area and transfer it to another by capillary action, where the fluid control sheet can be flexible. Final Act. 2-3; Johnston ¶¶ 56, 57, 63, 101, 102, 107-114, 117, 187, 188. The Examiner determines it would have been obvious to one of ordinary skill in the art to modify Hirata’s golf club by replacing Hirata’s fluid control channels with Johnston’s fluid control channel sheet to reduce fluid flow around Hirata’s golf club. Final Act. 4. The Examiner further determines that it would have been obvious to one skilled in the art to adhere the tape to a convex article such as a pipe. Id. Appellant argues Hirata’s ridges are oriented parallel to the longitudinal axis of the shaft and, therefore, would not make an angle between 0 and 90 degrees with respect to the longitudinal axis of the outer surface. Appeal Br. 3. Appellant further argues that Hirata’s fluid channel structure would not result in capillary movement because there are no surface energy requirements with respect to a solid/liquid/air interface. Id. at 4. That is, Appellant contends that Johnston’s fluid control sheet is not suitable for the purposes of Hirata’s article. Thus, Appellant asserts that modifying Hirata’s article in view of Johnston’s teachings, would not produce a capillary force on the fluid in the channels as claimed. Id. We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere Appeal 2021-001707 Application 15/305,863 5 conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”)). Hirata’s invention relates to a shaft adapted to move through a fluid, wherein the shaft has at least two longitudinal raised surface ridges extending along at least a portion of the length of the shaft, such that fluid resistance encountered by the shaft as it is moved through the fluid is reduced. Hirata col. 2, ll. 33-37; see also col. 1, l. 27-col. 2, l. 24. Thus, Hirata discloses that it is the movement of the shaft that results in movement of the fluid. Id. col. 3, ll. 54-65. In fact, the focus of Hirata’s invention is using strategically located ridges “to provide a reduction in air resistance when [the] shaft [] is moved at high speeds through a fluid.” Id. col. 4, ll. 66-67; col. 5, ll. 25-40. While Hirata discloses an embodiment placing two sets of two ridges on a shaft where each set of two ridges appears to form a channel (Hirata Figure 3a), Hirata also discloses an alternate embodiment that places two individual ridges far apart from each other (id. Figure 3b). In fact, there is no discussion in Hirata that the channel-like structures of Figure 3a play any role in the reduction of fluid resistance. Nor does the Examiner direct us to any portion of Hirata on this matter. Instead, Hirata discloses that the Appeal 2021-001707 Application 15/305,863 6 ridges themselves “reduce[] the coefficient of drag acting on the shaft” as the shaft and ridges move through the fluid. Id. col. 5, ll. 25-40. Based on the disclosure noted above, the Examiner fails to provide an adequate technical explanation of how one skilled in the art would have adapted Johnston’s fluid channel sheet, designed for static articles, for use in Hirata’s article to reduce fluid resistance given that it is the article that is moved at high speeds through a fluid. The Examiner fails to explain adequately why Johnston’s fluid control sheet, having a plurality of ridges designed to promote capillary movement of a fluid, would be suitable for Hirata’s purposes of reducing the coefficient of drag acting on the shaft as the shaft moves. Thus, the Examiner fails to provide an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Accordingly, we reverse the Examiner’s prior art rejection of claims 1-7 under 35 U.S.C. § 103 for the reasons Appellant presents and we provide above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7 103 Johnston, Hirata 1-7 REVERSED