Ex Parte Drummond et al

Patent Trial and Appeal Board

Dec 5, 2016

13640276 (P.T.A.B. Dec. 5, 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.
13/640,276 10/09/2012 Stuart James Drummond 29329 6735
23389 7590 12/07/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
JOHNS, HILARY LYNN
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
STUART JAMES DRUMMOND and
PATRICK ROBERT GRIFFIN
Appeal 2015-000835
Application 13/640,276
Technology Center 3600
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, 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 1—20. Br. 3—5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-000835
Application 13/640,276
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the reduction of the thermal
signatures of wheeled vehicles.” Spec. 1:3—4. Claims 1 and 20 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. Apparatus for reducing the thermal signature of a wheel and
adjacent parts of a vehicle comprising a first thermal shield
configured to be mounted outwardly from the wheel and to
extend over at least a substantial portion of the radial extent
thereof, and a second thermal shield configured to be mounted
from fixed structure of the vehicle outwardly of the first thermal
shield, and to overlap at least part of said first shield, the second
thermal shield being configured to reduce the thermal signature
of parts of a vehicle adjacent to the wheel.
REFERENCES RELIED ON BY THE EXAMINER
Cheng US 5,961,148 Oct. 5, 1999
Sallee US 5,976,643 Nov. 2, 1999
Randy US 2007/0268173 A1 Nov. 22, 2007
Hembise1 EP 1 480 001 A1 Nov. 24, 2004
THE REJECTIONS ON APPEAL
Claims 1—10, 12—18, and 20 are rejected under 35 U.S.C. § 103(a) as
obvious over Hembise and Sallee.
Claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over
Hembise, Sallee, and Cheng.
Claim 19 is rejected under 35 U.S.C. § 103(a) as obvious over
Hembise, Sallee, and Randy.
1 Two translations of this document appear in the record. While there are
differences between them, such differences are not such that a different
analysis would arise as a result of relying on one over the other.
2
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Application 13/640,276
ANALYSIS
The rejection of claims 1—10, 12—18, and 20
as obvious over Hembise and Sallee
Appellants argue independent claims 1 and 20 together. Br. 9-17.
Appellants also state, regarding claims 2—10 and 12—18, that these claims
“are allowable at least for the reasons set forth above for claim 1.” Br. 18.
Accordingly, we select claim 1 for review, with claims 2—10, 12—18, and 20
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner primarily relies on the teachings of Hembise, including
the disclosure of “a first thermal shield (brush 7 with screen 23)” and “a
second thermal shield (flexible flap 24).” Final Act. 2. The Examiner also
identifies where Hembise provides such shielding specifically “to reduce the
infrared signature of a vehicle wheel.” Final Act. 2 (referencing Hembise
1 5). The Examiner, however, acknowledges that Hembise does not
explicitly disclose the second thermal shield being “configured to reduce the
thermal signature of parts of a vehicle adjacent to the wheel.” Final Act. 3.
On this point, the Examiner relies on Sallee for teaching “a low thermal
signature camouflage garnish, including a second thermal shield (material
100) configured to reduce the thermal signature of parts of a vehicle adjacent
to the wheel.” Final Act. 3; see also Ans. 7. Here, the Examiner references
Sallee’s discussion of “lowering the energy and reducing the infrared
signature of the camouflaged object” (i.e., the vehicle in general, and not just
its wheels as in Hembise).2 Final Act. 3; Ans. 7 (both referencing Sallee
2Sallee also teaches that the effect of the disclosed device “is to induce a
flow of air of sufficient magnitude to remove the heat accumulated by the
camouflaged object.” Sallee 8:20-22.
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Application 13/640,276
8:1—24). The Examiner concludes that it would have been obvious “to
include a second thermal shield configured to reduce the thermal signature
of parts of a vehicle adjacent to the wheel... as taught by Sallee with the
invention of Hembise for the purpose of dissipating heat around the wheel
housing.” Final Act. 3; Ans. 8.
Appellants disagree with the Examiner’s findings that Hembise
discloses “a second thermal shield.” Br. 10, 11; see also id. at 12—14.
Appellants contend that the Examiner appears to have “relied on a machine
translation” and that “a formal full translation of Hembise” differs regarding
the description of Hembise’s item 24. Br. 9—10. Indeed, there is a variation
in how the two translations of Hembise identify item 24 (one refers to it as a
“flexible flap” while the other refers to it as “a flexible mud guard”). See
125 of the respective translations. Nevertheless, regardless of how item 24
is described, the Examiner acknowledged that Hembise “does not explicitly
disclose” this flexible item as being “configured to reduce the thermal
signature of parts of a vehicle adjacent to the wheel.” Final Act. 3.
Accordingly, and as indicated supra, the Examiner relied on Sallee, and
particularly Sallee’s items 10 and 100, for such teaching. Final Act. 3; Ans.
7. Accordingly, Appellants’ focus on the difference in the translations of
Hembise, and also that Hembise’s item 24 is not described as a thermal
shield (see Br. 10-11; see also id. at 12—14), is not persuasive of error in the
Examiner’s reliance on Sallee for disclosing the claimed “second thermal
shield.”3
3 Furthermore, the Examiner’s stated reason to combine is “to include a
second thermal shield” “as taught by Sallee with the invention of Hembise
for the purpose of dissipating heat around the wheel housing.” Final Act. 3.
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Application 13/640,276
Regarding Sallee, Appellants contend that “[tjhere is no disclosure of
the material 100 being a second thermal shield” and that “[t]he thermal
reduction is provided by the shape of the garnishes inducing air flow around
the vehicle.” Br. 11. Appellants appear to be mis-reading the Examiner’s
rejection, and also Sallee, by asserting that “[tjhere is no disclosure of the
material 100 being a second thermal shield.” Br. 11; see also id. at 12.
First, the Examiner is identifying both Sallee’s camouflage material 100 and
also Sallee’s garnish 10 as the claimed “second thermal shield,” not just
material 100 alone. Final Act. 2; Ans. 7. Further, even should the Examiner
be identifying material 100 alone, Figure 11 of Sallee “is a graph of the
temperature increase experienced by three camouflaged structures,” one
being material 100 alone, the other two graphed structures being material
100 combined with garnish 10. Sallee 7:30-44. Thus, Sallee illustrates the
thermal shielding that is provided by material 100 alone, but when material
100 is combined with garnish 10, such shielding improves. Accordingly,
Appellants’ contention that “[tjhere is no disclosure of the material 100
being a second thermal shield” (Br. 11) is not persuasive of Examiner error.
Appellants also contend that “Sallee is silent on the use of the material
100 or garnishes 10 for masking the 1R signature of parts of a vehicle
adjacent the wheel.” Br. 12. First, Appellants are not correct that Sallee is
silent regarding masking 1R signatures, because Sallee is specifically
directed to reducing an infrared signature. See Sallee 2:22—24, 2:46—50,
8:9-12; see also Sallee Abstract, 1:17—20, 1:66—2:20. Regarding
Appellants’ contention pertaining to “parts of a vehicle adjacent the wheel,”
see Sallee, column 8, lines 1—24 discussed supra. Appellants’ contention is
not persuasive of Examiner error.
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Appellants also contend that the Examiner provided “No Motivation
to Combine.” Br. 12—14. Appellants support this assertion by repeating
what has already been addressed, i.e., Sallee’s “material 100 is not a thermal
shield” and Hembise’s element 24 is simply “a mud guard.” Br. 12. An
explanation as to why these contentions by Appellants are not persuasive can
be found above.
Appellants also contend, “[t]he Examiner has not presented any
reasonable basis” “to replace a mud guard” “for the purpose of dissipating
heat around the wheel housing.” Br. 13. However, it cannot be disputed
that Sallee is specifically directed to dissipating heat of a “camouflaged
object” so as to lower its infrared signature (Sallee 8:17—24), or that
Hembise is concerned with reducing “the infrared signature of a vehicle
wheel” (Hembise 1 5). Accordingly, Appellants are not persuasive that the
Examiner failed to provide a reasonable basis “to include” a thermal shield
with Hembise’s wheel shield “for the purpose of dissipating heat around the
wheel housing.” Final Act. 3; see also Ans. 8. In other words, Appellants
do not explain why one skilled in the art would have provided a thermal
shield of a wheel, but not also provide a thermal shield for vehicle parts
adjacent the wheel, when both Hembise and Sallee are concerned with the
thermal signature emitted by a vehicle. See Hembise 12 (discussing mines
that are triggered when a heat source passes thereby); Sallee 1:17—20
(discussing the revelation of vehicles, equipment and personnel by infrared
detectors).
Appellants further contend, “[tjhere is no disclosure in Hembise of the
problem of the heat from parts adjacent the wheel.” Br. 13. In effect,
Appellants are arguing the art individually by asserting that one reference
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Application 13/640,276
(Hembise) fails to disclose a feature (reducing the heat from parts adjacent
the wheel) that the Examiner relied on another reference (Sallee) for. Final
Act. 3; Ans. 7. The problem of heat dissipation is clearly disclosed by
Sallee, i.e., “[t]he invention features a low thermal signature, particularly at
wavelengths detected by infrared detectors designed to reveal camouflaged
vehicles, equipment and personnel.” Sallee 1:17—20. Further, Hembise
teaches a focus on the infrared signature of a vehicle’s wheel. Hembise 1 5.
Hence, Appellants focus on one reference, rather than the teachings of the
combined references, is not indicative of Examiner error.
Appellants also contend that ‘Ttlhe Evidence Points Away from the
Combination” because Sallee’s thermal shield “is designed to thermally
shield a stationary vehicle.” Br. 14; see also id. at 15. First, the Examiner
notes that there is no claim recitation directed to any motion of the vehicle
being shielded. See Ans. 9. Second, Appellants are simply incorrect
regarding the teachings of Sallee not also being applicable to a moving
vehicle. Br. 14—15. This is because Sallee discusses the garnishes being
attached to the material “so as to resist being destroyed or forcibly stripped
off the base camouflage material, even when equipment such as a tank is
driven through a forest." Sallee 2:55—61; see also id. at 2:54—55 (discussing
“movement of the vehicle or equipment sought to be camouflaged”).
Accordingly, Appellants’ contention based on the premise that Sallee is
designed for “a stationary vehicle” is not persuasive.
Appellants also contend that the Examiner relied on “Improper
Hindsight Reasoning” because “[njeither Hembise nor Sallee” address the
problem of “shielding parts of a vehicle adjacent the wheel.” Br. 16.
Appellants are not persuasive that one skilled in the art, knowledgeable of
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Application 13/640,276
both Hembise and Sallee, would fail to recognize a need to also shield “parts
of a vehicle adjacent to the wheel” as claimed. As noted above, Sallee
focuses on the vehicle in general. See, e.g., Sallee 1:18—21, 1:66—67, 8:1—
24. Hembise, on the other hand, is specifically directed to the wheel itself.
See Hembise 15. This lends credence to the Examiner’s finding that the
limitation directed to “parts of a vehicle adjacent to the wheel,” would have
been obvious to one skilled in the art (Final Act. 3), and especially because
we are instructed that a “person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007); see also Ans. 9 (“the combination of Hembise and [Sallee] is
not the product of innovation but of ordinary skill and common sense”).4 In
short, Appellants are not persuasive that the Examiner “is using hindsight
gleaned from the applicant’s disclosure.” Br. 16.
Appellants further contend “that the Examiner has asserted inherency
based on the structural similarity between the patented thermal shielding
shown in Hembise and the claimed invention.” Br. 17 (referencing Final
Act. 9). Indeed, the Examiner, at Final Act. 9, does address inherency
between Hembise’s thermal shield which is a brush comprising bristles (see
Hembise H 8, 14) and Appellants’ thermal shield employing “brush means”
which “may comprise radially-extending bristles” (Spec. 2:9-12). Because
both structures employ the same bristle-like structure, and because both are
employed for thermal shielding purposes, Appellants’ contention that the
Examiner failed to provide a basis for this inherency finding because the
4 The Examiner also presents an “obvious to try” rationale in that “there is a
design need to solve the problem of detecting military vehicles by thermal
imaging and there are a finite number of identified, predictable solutions.”
Ans. 9.
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Application 13/640,276
Examiner “relies on teachings outside the prior art” (Br. 17) is not
persuasive of Examiner error. As stated by the Examiner, “Hembise teaches
the structural limitations of the claims.” Ans. 10
Appellants further contend, “there is no evidence establishing that the
anti-spatter mud guard 24 of Hembise would necessarily be a thermal
shield.” Br. 17. This argument is not persuasive (a) based on the discussion
above; (b) the Examiner’s further reliance on Sallee for disclosing thermal
shielding; and, (c) Appellants’ focus on Hembise instead of the combination
of Hembise and Sallee.
In summary, and based on the record presented, we sustain the
Examiner’s rejection of claims 1—10, 12—18, and 20 as obvious over
Hembise and Sallee.
The rejection of (a) claim 11 as obvious over Hembise, Sallee, and Cheng;
and (b) claim 19 as obvious over Hembise, Sallee, and Randy
Appellants do not present separate arguments for the separate
rejections of claims 11 and 19. Instead, Appellants contend that “neither
Cheng nor Randy overcomes the deficiencies of Hembise and Sallee
identified above.” Br. 18. Consequently, Appellants are not persuasive that
the Examiner erred in relying on Hembise and Sallee for their respective
teachings. Final Act. 7—8. We sustain the Examiner’s rejections of claims
11 and 19.
DECISION
The Examiner’s rejections of claims 1—20 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).
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Appeal 2015-000835
Application 13/640,276
AFFIRMED
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