Ex Parte Castillo Fernandez et al

Patent Trial and Appeal Board

Mar 6, 2017

13056170 (P.T.A.B. Mar. 6, 2017)

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.
13/056,170 01/27/2011 Jose Luis Castillo Fernandez 6032-108 1575
23117 7590 03/08/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SULLENS, TAVIA L
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
03/08/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE LUIS CASTILLO FERNANDEZ,
KLAUS GRUNERT,
HARALD PIETSCH, and
ROBERTO SAN MARTIN SANCHO
Appeal 2015-003193
Application 13/056,170
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 15—30. Final Act. 1 (Office Action Summary). Claims
1—14 have been canceled. See Amendment dated April 16, 2014. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-003193
Application 13/056,170
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a drying appliance comprising
a drying chamber and a process air guide for guiding drying air through said
drying chamber.” Spec. 1:7-8. Claim 15 is the sole independent claim, is
illustrative of the claims on appeal, and is reproduced below.
15. A dryer, comprising:
a drying chamber; and
a process air guide to guide drying air through the drying
chamber, the process air guide having a heat exchanger to cool
process air that includes a charge of humidity and particulates;
wherein the heat exchanger is downstream of the drying
chamber within the process air guide;
wherein a part of a surface of the heat exchanger is
coated at least partially with a hydrophobic polymer coating;
and
wherein the part of the surface below the hydrophobic
polymer coating has a passivating layer interposed between the
hydrophobic polymer coating and the surface.
1 We rely on the English Language machine translation provided by the
Examiner. Final Act. 10.
2 We refer to corresponding US Publication No. 2009/0050182 cited by
Appellants. Final Act. 10.
REFERENCES RELIED ON BY THE EXAMINER
Barth
Pravda
Brown et al.
Robbins
Usui
Nonninger
Imai1
Heiche2
US 2,796,360 June 18, 1957
US 4,640,344 Feb. 3, 1987
US 6,447,919 B1 Sept. 10, 2002
US 6,696,511 B2 Feb. 24, 2004
US 2006/0283580 Al Dec. 21, 2006
DE 103 30 744 Al Feb. 3, 2005
JP 2005-296155 Oct. 27, 2005
WO 2007/095927 A2 Aug. 30, 2007
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Application 13/056,170
Grunert3 WO 2008/077708 A1 July 3, 2008
THE REJECTIONS ON APPEAL4
Claim 30 is rejected under 35U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claim 30 is rejected under 35U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 15—17, 22, 26, 28, and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Imai, Pravda, and Heiche.
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imai, Pravda, Heiche, and Brown.
Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imai, Pravda, Heiche, and Usui.
Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imai, Pravda, Heiche, and Robbins.
Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imai, Pravda, Heiche, and Nonninger.
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imai, Pravda, Heiche, and Barth.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imai, Pravda, Heiche, and Grunert.
3 Corresponding U.S. Publication No. 2010/0065087 is cited by the
Examiner as an English Language translation thereof. Final Act. 15.
4 In the Final Office Action, the Examiner withdrew the rejection of claims
15—30 under 35 U.S.C. § 112, second paragraph. Final Act. 3. In this same
Office Action, the Examiner rejected claim 30 under 35 U.S.C. § 112, first
and second paragraphs. Final Act. 7—8.
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Application 13/056,170
ANALYSIS
The rejection of claim 30 as failing to comply with the written description
requirement
Regarding dependent claim 30, the Examiner finds that the “[njewly
added limitation ‘operably connected to the part of the surface and
structured’ does not appear to have support in the disclosure as filed.”5 Final
Act. 7; see also Ans. 17. Appellants identity both “Page 7, lines 35—37” and
“Page 6, lines 29-30” as providing the requisite support while noting that the
originally filed specification “does not have to provide in haec verba support
for the claimed subject matter at issue.” App. Br. 13 (citation omitted).
The first identified passage states, “the heat exchanger is provided
with a cleaning device for cleaning said heat exchanger from adhering
particulate matter with a cleaning fluid.” Spec. 7:35—37; see also App. Br.
13. There is no mention of any operable connection to any surface as
claimed. However, Appellants state, “one of ordinary skill would appreciate
that the cleaning device may be operably connected to the heat exchanger.”
App. Br. 13 (emphasis added). Although one skilled in the art may
appreciate that the cleaning device may be operably connected “to the heat
exchanger,” the language at issue recites that the cleaning device is
connected to “the part of the surface” that is coated. Appellants do not
5 Claim 30 recites, “wherein the heat exchanger has a cleaning device
operably connected to the part of the surface, and structured to clean the heat
exchanger from adhering particulate matter with a cleaning fluid.” The
recited “part of the surface” is a reference to parent claim 15 that recites, “a
part of a surface of the heat exchanger is coated” with a polymer. Hence,
claim 30 is directed to an operable connection between a cleaning device
and a coated surface of the heat exchanger.
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Application 13/056,170
explain how such a connection to the claimed (and coated) “part of the
surface” finds support in this passage.
The second identified passage states, “[a] correspondingly coated heat
exchanger can be cleaned with ease, in general by rinsing with water.”
Spec. 6:29—30; App. Br. 13. This passage describes how the coated heat
exchanger may be cleaned (i.e., rinsed with water), but this passage lacks
any description of “a cleaning device operably connected” to a coated
surface of a heat exchanger as recited in claim 30.
Appellants further contend, “if the cleaning is carried out with
cleaning fluid, then there must be some structure to allow the cleaning fluid
to clean the heat exchanger.” App. Br. 13. Even if true, Appellants do not
explain how this assertion describes a device having an operable connection
to a coated surface as claimed.
Appellants also contend, “the Examiner’s Answer does not rebut the
actual arguments presented that explain why there is adequate written
description.” Reply Br. 9. However, the Examiner states that because “the
written description fails to provide support for how the ‘cleaning device’ is
structured, the written description cannot properly provide support for the
limitations added to claim 30.” Ans. 17. The Examiner further points out
that “[t]he application as originally filed provided no drawings to indicate
any structure for the ‘cleaning device.’” Ans. 17.
In view of the above, we are not persuaded the Examiner erred in
finding that the newly added language lacks written description support in
the disclosure as filed. Final Act. 7. We sustain the Examiner’s rejection of
claim 30 “as failing to comply with the written description requirement.”
Final Act. 7.
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The rejection of claim 30 as being indefinite
The Examiner states, “[c]laim element ‘cleaning device’ is a
limitation that invokes ... 35 U.S.C. 112, sixth paragraph” and that “the
written description fails to disclose the corresponding structure, material, or
acts for the claimed function.” Final Act. 8. Appellants contend, “claim 30
does not recite ‘means’ and therefore does not invoke 35 USC § 112, sixth
paragraph.” App. Br. 12. Appellants further state, “the Office Action has
not provided any explanation why ‘cleaning device’ invokes 35USC§ 112,
sixth paragraph, despite ‘means’ not being part of the alleged means-plus-
function feature.” App. Br. 12.
The Examiner acknowledges that the absence of the word “means”
“creates a rebuttable presumption that the claim element is not to be treated
in accordance with” 35 U.S.C. § 112, sixth paragraph. Ans. 16. However,
in this case, the Examiner takes the position that the presumption that the
limitation is not a means-for limitation can be rebutted. The Examiner states
that such a presumption “is rebutted when the claim element recites function
but fails to recite sufficiently definite structure, material or acts to perform
that function.” Ans. 16. In the present situation, the Examiner finds the
recitation in claim 30 of a “cleaning device [...] to clean the heat exchanger”
“recites function . . . without reciting definite structure, material or acts to
perform the function.” Ans. 16. In other words, as per the Examiner, “the
presumption that [§] 112, sixth paragraph is not invoked is rebutted.” Ans.
16.
Appellants respond stating, “no explanation was provided in the
Office Action explaining why there is not sufficiently definite structure
recited.” Reply Br. 9. However, Appellants do not identify where support
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can be found in the Specification that “recite[s] sufficiently definite
structure, material or acts to perform” the function of cleaning. Ans. 16.
Consequently, and according to the Examiner, the term ‘“cleaning device’ as
claimed and disclosed would encompass any ‘cleaning device’ capable of
cleaning the heat exchanger with a fluid, both those that may be known and
those that may yet be unknown.” Ans. 17. Accordingly, there is support for
the Examiner’s rejection of claim 30 “as being indefinite for failing to
particularly point out and distinctly claim the subject matter which”
Appellants regard as the invention. Final Act. 8.
In view of the above, we are not persuaded of Examiner error. We
sustain the Examiner’s rejection of claim 30 as being indefinite.
The art rejections
Heiche as Analogous Art-
Appellants argue all the claims together (i.e., claims 15—30) in so far
as Heiche not being analogous art. App. Br. 6—9; Reply Br. 1—5. Although
Appellants address both the “field of endeavor” and the “reasonably
pertinent to the problem” prong of the analogous art test, we need only
address the latter “problem” portion to reach our conclusion as to whether or
6 Appellants acknowledge, “[a] reference must be within an analogous art to
be suitable for use in an obviousness rejection.” App. Br. 6 (citation
omitted). Appellants continue stating, “the test for determining whether a
reference is in an analogous art is a two-part, alternative test.” App. Br. 6.
Appellants state that the first test is whether “the reference is from the same
field of endeavor” and that the second, alternative, test is whether “the
reference is reasonably pertinent to the problem faced by the inventor (even
if it is not in the same field of endeavor as the claimed invention).” App. Br.
6 (citation omitted).
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not Heiche is analogous art, and hence whether Heiche is properly relied on
by the Examiner in rejecting claims 15—30. App. Br. 7.
Appellants acknowledge that one problem addressed by Appellants’
invention is that a “coating may delaminate and possibly cause greater
problems.” App. Br. 7 (referencing Spec. 3:16—26); see also Reply Br. 2—3;
Ans. 11. This cited passage in Appellants’ Specification also states that
depending on the material used, “aluminium oxide may form which could
contribute to the delaminating of the coating and an overall worsening of the
surface characteristics.” Appellants’ Specification also states, “a passivating
layer may render the whole surface resistant to corrosion or any other
impairment.” Spec. 11:21—22; see also Reply Br. 3. Hence, it is readily
apparent that one problem addressed by Appellants’ invention is how to
reduce corrosion or other surface impairments that might affect lamination.7 8
See also Ans. 11—12. Regarding corrosion, Appellants acknowledge, “[t]he
problems in Heiche relate to corrosion resistance generally and more
specifically to a corrosion resistant coating.” App. Br. 7 (referencing Heiche
1—7); see also Ans. 12 (referencing Heiche H 9—11). Thus, Appellants’
contention that “Heiche is not reasonably pertinent to the problems faced by
the present inventors” is not persuasive. App. Br. 7. Nor are Appellants’
arguments persuasive that the Examiner erred in referencing Heiche for
teaching surface corrosion resistance. App. Br. 7; Final Act. 10.
Appellants also rely on case law to the effect that it is inappropriate to
allege “that some structural similarity between the present applicant and []
7 Appellants disagree stating “delamination and corrosion are red herrings
provided in the Examiner’s Answer.” Reply Br. 3. Appellants’ contention
is not persuasive when, in fact, such concerns arise from and are expressed
within Appellants’ own Specification (see supra).
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Heiche is sufficient to find that Heiche is reasonably pertinent to the
problems faced by the present inventors.” App. Br. 8 (citation omitted); see
also Reply Br. 4; Ans. 12. Here, we are not persuaded the Examiner is
merely relying on “some structural similarity” as asserted. Instead, the
Examiner is relying on Heiche for its discussion of protection against surface
corrosion (see e.g., Heiche 1,2, 9-11, 27—30, 34) which is one of the
same problems faced by Appellants and discussed in the Specification (see
Spec. 3:16—26; 4:16—22; 4:36—5:2; 11:16—24).8 Appellants’ contentions in
this regard are not persuasive of Examiner error.
Barth as Analogous Art
Appellants contend, “Barth also does not address any of the problems
explained above.” App. Br. 9. However, Barth was not relied on for
teaching a corrosion resistant layer. See Ans. 13. Instead, Barth was relied
on for only claim 27, and specifically for disclosing the use of “a pigment
that fluoresces” as recited therein. Final Act. 14—15. Appellants do not
dispute such teachings by Barth, but instead present an argument directed to
a limitation found in parent claim 15 pertaining to a partial heat exchanger
coating. App. Br. 9; Reply Br. 5—6; Ans. 13. Appellants contend that
Barth’s discussion of a complete coating (Barth 1:34—39) is not the same as
the parent claim’s “coated at least partially” limitation. App. Br. 9; Reply
Br. 5—6. On this point, the Examiner explains, “Barth was not relied upon to
address the limitations of the independent claim.” Ans. 13. The Examiner
8 Interestingly, Appellants, when addressing the second pertinent problem
prong of the analogous art test states, “[ujnder this second prong, anything
relevant to the problem faced can be used.” Reply Br. 5. Appellants do not
explain how Heiche’s teachings regarding corrosion protection (see supra)
fail to meet this criterion.
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further finds “that ‘at least partially’ does not disclaim complete coverage.”
Ans. 13. In short, Appellants are not persuasive that Barth fails to address
the problem of ascertaining incomplete coating coverage. See also Spec.
7:10-13; 10:29-33.
Appellants’ contentions are not persuasive that the Examiner’s
rationale and basis for the rejection are faulty. See e.g., Ans. 13.
Accordingly, and based on the record presented, we are not persuaded the
Examiner erred in relying on Barth (among other references) when rejecting
claim 27.
Reasonable Expectation Of Success
Here, Appellants are addressing the Examiner’s reliance on Pravda,
and Appellants acknowledge, “Pravda teaches using a water repellant
coating such as Teflon to prevent adhesion of solvents (but not particles).”
App. Br. 10 (referencing Pravda 7:8—26). In other words, according to
Appellants, Pravda does not “mention that Teflon will reduce adherence of
anything other than the solvent” and that “there is no expectation that the
alleged benefit (to decrease adherence of particles)” will occur. App. Br.
10-11.
Appellants’ description of Pravda as pertaining to solvents only, and
not particulates, is not correct. Pravda expressly states that it is an object of
the invention to provide a “self-cleaning” heat exchanger that employs gases
“containing not only particulate contaminants, but also condens[a]ble
contaminants such as solvents and plasticizers.” Pravda 2:43—51.
Accordingly, Appellants’ contention that “Pravda does not provide a
reasonable expectation of success” regarding “decrease adherence of
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particles” is not persuasive.9 App. Br. 11. Based on the record presented,
we do not find the Examiner erred in relying on Pravda in rejecting claims
15-30.
In the Reply Brief, Appellants seek to rebut the Examiner’s various
combinations involving Pravda, and more specifically the reasons stated
therefor. Reply Br. 6—8. The Examiner states that Pravda evidences that it
was “known in the art to use hydrophobic polymer coatings to decrease
adherence of particulates on heat exchangers for laundry dryers.” Final Act.
10 (referencing Pravda 1:65—2:24 that discusses “tumble-type laundry
dryers). The Examiner thus finds it obvious to apply these teachings to the
dryer of Imai “since the use [of] hydrophobic polymer coatings on heat
exchangers for laundry dryers were old and well-known in the art.” Final
Act. 10. Appellants fail to indicate how this is not true, or how such well-
known use of a Teflon coating is not further evidenced by Pravda. See
Pravda 7:15—17 (“This result may be achieved by coating the heat exchange
surfaces with a few-micron thickness of a water repellant material such as
Teflon.”).
Accordingly, and based on the record presented, we are not persuaded
by Appellants’ arguments that there would be no expectation of success
when relying on Pravda.
9 The Examiner further addresses a “DuPont reference sheet outlining some
of the known properties of Teflon, also attached to the previous Office
Action” as a further indication that the “prevention of adhesion of both
solvents and particles is a well-known inherent property of Teflon coatings.”
Ans. 14.
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Additional References
Appellants contend, “none of the additional references have any
bearing upon whether Heiche or Barth is analogous art” and that “none of
the additional references provide a reasonable expectation of success.” App.
Br. 12. We do not dispute the former assertion, but regarding the latter
assertion, Appellants provide no further explanation as to why the additional
references provide no reasonable expectation of success. In other words,
Appellants have not provided any argument or evidence in support of this
latter allegation, and it is not otherwise self-evident from the record.
Appellants’ unsupported contention is not persuasive of Examiner error. See
also Reply Br. 8.
Accordingly, we are not persuaded the Examiner erred in rendering
rejections involving these additional references.
DECISION
The Examiner’s rejections of claims 15—30 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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