Ex Parte Abdelmoula et al

Patent Trial and Appeal Board

Nov 23, 2016

12599099 (P.T.A.B. Nov. 23, 2016)

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.
12/599,099 11/06/2009 Rafik Abdelmoula 0579-1243 7048
466 7590 11/28/2016
YOUNG fr THOMPSON
EXAMINER
209 Madison Street PIZIALI, ANDREW T
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
DocketingDept@young-thompson.com
y andtpair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAFIK ABDELMOULA, PATRICK THOMAS,
LUCIA DELLA PUTT A, THIERRY RODRIGUES, and
AMELIE SIMOENS
Appeal 2015-006730
Application 12/599,099
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and MICHAEL G.
McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—4, 8, 11—15, and 19—21. We have jurisdiction.
35 U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is Federal Mogul
Systems Protection. Appeal Br. 1.
Appeal 2015-006730
Application 12/599,099
STATEMENT OF THE CASE
Appellants describe the invention as pertaining to a textile
electromagnetic protection sheath. Appeal Br. 3. Appellants state that the
sheath is designed to “prevent external electromagnetic signals from passing
through the sheath” while also “permit[ting] the total mass of conductive
material to be more evenly distributed across the surface of the protective
sheath.” Id. at 4.
Appellants explain that prior sheathing had conductive filaments in
both the longitudinal and transverse directions but that such sheathing was
relatively heavy. Spec. 1. Appellants’invention seeks to reduce weight by
including conductive filaments in only one direction. Id. at 1—2.
Claim 1, reproduced below with emphasis added to a key recitation, is
the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. A textile comprising:
electromagnetic protection sheath,
conductive filaments extending in a first direction, the
conductive filaments being formed from braided copper wires
such that the conductive filaments protect against external
electromagnetic signals; and
non-conductive filaments interlaced with said conductive
filaments, such that said conductive filaments are thereby
mutually insulated from each other.
Appeal Br.2 21 (Claims App’x).
2 In this decision, we refer to the Final Office Action mailed August 8, 2014
(“Final Act.”), the Appeal Brief filed February 10, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed May 6, 2015 (“Ans.”), and the Reply Brief filed
July 6, 2015 (“Reply Br.”).
2
Appeal 2015-006730
Application 12/599,099
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Yoshida et al.,
(hereinafter “Yoshida”)
US 4,929,803 May 29, 1990
Inoguchi et al.,
(hereinafter “Inoguchi”)
US 5,168,006 Dec. 1, 1992
Strange et al.,
(hereinafter “Strange”)
US 6,222,126 B1 Apr. 24, 2001
Sandbach US 6,333,736 B1 Dec. 25, 2001
Hill et al.,
(hereinafter “Hill”)
US 2003/0211797 Al Nov. 13, 2003
Laurent et al.,
(hereinafter “Laurent”)
US 2003/0221736 Al
REJECTIONS
Dec. 4, 2003
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—4, 8, 12—15, 20, and 21 under 35 U.S.C. § 103
as unpatentable over Strange in view of Hill. Ans. 2.
Rejection 2. Claims 4 and 14 under 35 U.S.C. § 103 as unpatentable
over Strange in view of Hill and further in view of Laurent. Id. at 4.
Rejection 3. Claims 11 and 19 under 35 U.S.C. § 103 as unpatentable
over Strange in view of Hill and further in view of Inoguchi. Id.
Rejection 4. Claims 12 and 20 under 35 U.S.C. § 103 as unpatentable
over Strange in view of Hill and further in view of Sandbach. Id. at 5.
Rejection 5. Claims 1—4, 8, 12—15, 20, and 21 under 35 U.S.C. § 103
as unpatentable over Yoshida in view of Strange in further view of Hill. Id.
at 6.
3
Appeal 2015-006730
Application 12/599,099
Rejection 6. Claims 4 and 14 under 35 U.S.C. § 103 as unpatentable
over Yoshida in view of Strange in further view of Hill and further in view
of Laurent. Id. at 8.
Rejection 7. Claims 11 and 19 under 35 U.S.C. § 103 as unpatentable
over Yoshida in view of Strange in further view of Hill and further in view
oflnoguchi. Id.
Rejection 8. Claims 12 and 20 under 35 U.S.C. § 103 as unpatentable
over Yoshida in view of Strange in further view of Hill and further in view
ofSandbach. Id. at 9.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner’s rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Level of Ordinary Skill in the Art. Pursuant to the Supreme Court’s
guidance in Graham v. John Deere, 383 U.S. 1, 17 (1966), we begin our
analysis of the Examiner’s obviousness rejections by resolving the level of
ordinary skill in the pertinent art. As Appellants’ note (Appeal Br. 6), our
reviewing court has identified at least six “non-exhaustive” factors that “may
be considered in determining level of ordinary skill in the art... (1) the
4
Appeal 2015-006730
Application 12/599,099
educational level of the inventor; (2) type of problems encountered in the
art; (3) prior art solutions to those problems; (4) rapidity with which
innovations are made; (5) sophistication of the technology; and (6)
educational level of active workers in the field.” Daiichi Sankyo Co. v.
Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Appellants, however,
provide no evidence as to, for example, the first, fourth, and sixth factors.
Based on the Specification and prior art of record (including, for
example, the Pithouse and Marks references cited by Appellants and U.S.
Patent No. 4,684,762 to Gladfelter cited in the Specification), we find that
problems faced in the art include, for example, providing electromagnetic
shielding, reducing weight, and combining conductive and non-conductive
material. See, e.g., Spec. 1—2; Gladfelter 1:56—35. Contrary to Appellants’
view (Appeal Br. 6), the evidence in the record does not suggest that this
technology is so sophisticated that a person would need specialized training
in, for example, electromagnetic shielding in order to have “ordinary skill”
in the art. Based on a preponderance of the evidence before us, we thus find
that a person having ordinary skill in the art would have one or more years
of education or experience in electronics, electrical engineering, and/or
mechanical engineering.
Scone and Content of the Art. We next consider the scope and
content of prior art. Graham, 388 U.S. at 17. This issue is of particular
importance here because Appellants’ primary argument is that the
Examiner’s application of the Strange, Hill, Laurent, and Yoshida references
is erroneous because the references are not analogous art. See, e.g., Appeal
Br. 10-11, 14, 16. To label a reference as analogous art “merely connotes
that it is relevant to a consideration of obviousness under § 103 as ‘prior
art.’” In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
5
Appeal 2015-006730
Application 12/599,099
Our reviewing court has stated that “[t]wo separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and
internal quotes omitted). While these two criteria are helpful in many
instances, we must not lose sight of the key question at hand: what is “prior
art” as that term is used in 35 U.S.C. § 103(a)? References that are “too
remote to be treated as ‘prior art’” are excluded from the obviousness
analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-
analogous art test provides helpful insight on the underlying question of
what is “prior art” within the meaning of the statute; we should not,
however, be blind to the reality of the circumstances of the case before us. In
re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to
rigid and mandatory formulas that overly limit the inquiry. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
Focusing on the first of the two tests above, the test for analogous art
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention's subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d at 1325. We thus consider all
explanations of the inventors’ subject matter while keeping in mind that
prior art is analogous when it “is from the same field of endeavor,
regardless of the problem addressed. . . .” In re Bigio, 381 F.3d at 1320
(emphasis added). Thus, “field of endeavor” should not be defined narrowly
based only upon the specific problem addressed.
6
Appeal 2015-006730
Application 12/599,099
Moreover, when considering field of endeavor, we remain cognizant
of the adage that “the name of the game is the claim.” In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent
of Protection and Interpretation of Claims—American Perspectives, 21 Int'l
Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). The Supreme Court has
articulated this same sentiment when emphasizing that the patentee’s
motivation and purpose do not control an obviousness determination:
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Turning to the issues at hand while keeping this legal framework in
mind, Appellants argue that a person of skill in the art would not have
considered the Strange, Hill, and Yoshida prior art references because each
of these references relates to the problem of electric transmission rather than
the problem of electromagnetic shielding. Appeal Br. 8—10,16—17. We
find, however, that a person of ordinary skill in the art of the claimed
invention would have been inclined to consider the Strange, Hill, and
Yoshida references at the relevant time because each of those references is
from the same field of endeavor as the invention as defined by Appellants’
claims. In particular, claim 1 is generally directed to woven conductive
filament textile sheaths. The Examiner correctly finds that Strange, Hill, and
Yoshida are in the same field. Ans. 11—12. Each of these three references
also relates to woven conductive filament textile sheaths. Ans. 2, 6, 11, 18.
They are structurally similar to the apparatus of claim 1 and are capable of
similar use. Ans. 11 (citing MPEP 2141.01(a)); see also Bigio, 381 F.3d at
7
Appeal 2015-006730
Application 12/599,099
1327 (affirming Board decision where Board found toothbrush prior art
analogous to claimed hair brush because of structural and functional
similarities). Thus, Strange, Hill, and Yoshida are analogous art, and the
Examiner did not err in considering this art.
The Examiner applies the Laurent reference to claims 4 and 14 (Ans.
4, 8), and Appellants argue that Laurent is not analogous art because it
“describes a self-closing thermal protection sheath” as opposed to relating to
“electromagnetic protection.” Claim 4 and 14 recites the sheath of claims 1
and 2 respectively “wherein the sheath is a self-closing longitudinally slit
sheath.” Appeal Br. 21 (Claims App’x). The claims thus address the
problem of how to arrange a sheath’s opening and closing. Laurent is
analogous even if not within the field of the inventor’s endeavor because it
relates to opening and closing sheaths and is thus “reasonably pertinent to
the particular problem with which the inventor is involved.” In re Bigio, 381
L.3d at 1325.
Rejection 1. As a third part of the Graham analysis, we consider the
arguments Appellants raise concerning differences between the prior art and
the claims at issue. We first focus on the Examiner’s rejection of claims 1—
4, 8, 12—15, 20, and 21 under 35 U.S.C. § 103 as obvious over Strange in
view of Hill. Appellants do not separately argue claims 2—4, 8, 12—15, 20,
or 21 with respect to this rejection. We therefore limit our discussion to
claim 1. Claims 2—4, 8, 12—15, 20, or 21 stand or fall with that claim.
37 C.E.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Strange teaches all elements of claim 1
except that it does not specifically mention braided copper. Ans. 2
(providing citations to Strange). The Examiner finds that Hill teaches use of
braided copper in conjunction with conductive woven fabric (citing Hill ||
8
Appeal 2015-006730
Application 12/599,099
40 and 59) and provides adequate factual reasoning for combining the
references. Ans. at 2—3. The preponderance of the evidence supports the
Examiner’s reasoning and conclusions.
As a threshold matter, we note that Appellants do not appear to
directly argue, except in passing, that the combination of Strand and Hill fail
to teach any specific recitation of claim 1. Appeal Br. 13; Reply Br. 10—11
(arguing that “[t]he aggregate of the art thus overwhelmingly indicates that
the sheath disclosed in the present application would be unsuitable for
protecting against magnetic waves”). Meanwhile, the Examiner found, for
example, that the conductive filaments of Strange would be capable of
protecting against external electromagnetic signals. Appeal Br. 2. The art
does not need to explicitly teach this functionality so long as it is teaches
structure capable of performing the function. Cf. In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (“It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.”). Where functional characteristics are described or suggested in
the prior art, the burden shifts to the applicant to demonstrate that the prior
art does not possess the claimed functionality. In re Hallman, 655 F.2d 212,
215 (CCPA 1981). Here, a preponderance of the evidence supports that the
prior art would indeed be capable of “protecting against external
electromagnetic signals.” Ans. 14—16.
Appellants also argue that modification of Strange in view of Hill
would render Strange unsuitable for its intended purpose. Appeal Br. 9.
The Examiner, however, correctly finds that utilizing braided copper with
Strange would not change the principle of operation because doing so
merely modifies the shape of Strange’s conductive filaments. Ans. 12. The
Examiner also provides sufficient underlying factual basis for combining
9
Appeal 2015-006730
Application 12/599,099
Strange and Hill. Id. at 2—3. Appellants present no persuasive arguments to
rebut these findings. Moreover, contrary to Appellants’ implied arguments
(Appeal Br. 9), the record does not indicate that the Examiner posits any
further modification of Strange.
Appellants also argue that it was not “common wisdom in the art” for
there to be “no interconnection between the conductive elements.” Appeal
Br. 13. Appellants cite two references not relied upon by the Examiner,
Pithouse (European Patent Pub. 0 153 823, February 8, 1985) and Marks
(U.S. Patent No. 6, 639,148, November 14, 2001) as supporting this
argument. Appeal Br. 10-13. Appellants further argue that Pithouse and
Marks “teach away” from the claimed invention by “stating that the
conductive filaments must be electrically connected.” Appeal Br. 13.
Appellants, however, provide no specific citations to Pithouse and Marks,
and we fail to discern how Pithouse and Marks constitute a teaching away.
To the extent that Pithouse and Marks disclose embodiments with connected
filaments, Appellants direct us to no teachings in Pithouse or Marks stating
that alternative embodiments with unconnected filaments would not
function. This argument therefore does not establish Examiner error.
The Examiner appears to interpret the Appeal Brief as also arguing
unexpected results. Ans. 14. While we do not agree that the Appeal Brief
raises unexpected results as a secondary consideration, we agree that a
preponderance of the evidence supports that it is not unexpected that the
combination of Strange and Hill would protect against external
electromagnetic signals. Ans. 14—16. Furthermore, even if it were true that
one of skill in the art would not have expected the combination of Strange
and Hill to be capable of protecting against external electromagnetic
shielding, this unexpected result would still be inapposite to the obviousness
10
Appeal 2015-006730
Application 12/599,099
assessment because “the discovery of a previously unappreciated property of
a prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir.
1999); see also In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990) (“The
discovery of a new property or use of a previously known composition, even
when that property and use are unobvious from prior art, can not impart
patentability to claims to the known composition.”). As the Examiner
explains, even the Strange reference standing alone is capable of providing
electromagnetic shielding. Ans. 14.
For the reasons explained above, Appellants have not identified
reversible error in the Examiner’s first rejection, and we therefore sustain the
Examiner’s rejection of claims 1—4, 8, 12—15, 20, and 21 as obvious over
Strange in view of Hill.
Rejection 5. Before proceeding to dependent claims, we first address
the Examiner’s second rejection of independent claim 1. The Examiner
rejects claims 1—4, 8, 12—15, 20, and 21 as obvious over Yoshida in view of
Strange in further view of Hill. Ans. at 6. Appellants agree that in form and
function, Yoshida is “essentially identical to Strange.” Appeal Br. 16.
Yoshida is thus analogous art for the same reasons Strange is analogous art
and as explained above.
Appellants make no other arguments regarding this rejection, and we
thus sustain the rejection.
Rejections 2 and 6. The Examiner also rejects claims 4 and 14 as
obvious over Strange in view of Hill and further in view of Laurent
(Rejection 2) and as obvious over Yoshida in view of Strange in further view
of Hill and Laurent (Rejection 6). Ans. 4, 8. Appellants argue that Laurent
11
Appeal 2015-006730
Application 12/599,099
is non-analogous art but make no other separate argument concerning these
rejections. Appeal Br. 14, 17—18. Laurent, however, is analogous art for the
reasons explained above. We thus sustain these two rejections.
Rejections 3, 4, 7, and 8. Appellants raise no arguments with respect
to these rejections other than those addressed above. Appeal Br. 13—16, 18—
19. We therefore sustain these rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1^1, 8, 11-15, and 19-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
12