Ex Parte Ericson

Patent Trial and Appeal BoardNov 26, 2012

11444334 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BIRGER ERICSON ____________________ Appeal 2010-010875 Application 11/444,334 Technology Center 3700 ____________________ Before: LINDA E. HORNER, SCOTT E. KAMHOLZ, and MITCHELL G. WEATHERLY, Administrative Patent Judges. WEATHERLY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the decision of the Examiner rejecting claims 1-14 and 16. Claim 15 has been objected to as being dependent upon a rejected base claim but the Examiner indicated it would be allowable if rewritten in independent form. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2010-010875 Application 11/444,334 2 The claims are directed to a device for providing heat radiation to a surface. Claims 1 and 14, which are representative of the claimed subject matter, recite: 1. A device for providing heat radiation to a surface for softening and removing old paint, varnish, putty or the like or for removal of moisture from the surface, said device comprising: electric resistance wires forming part of a heat radiation element which is arranged in a casing having an opening which opens towards the surface intended for treatment wherein the heat radiation element is resiliently attached relatively to the casing. 14. A device for providing heat radiation to a surface for softening and removing old paint, varnish, putty or the like or for removal of moisture from the surface, said device comprising: electric resistance wires forming part of a heat radiation element which is arranged in a casing having an opening which opens towards the surface intended for treatment wherein the heat radiation element is resiliently attached relative to the casing by at least one spring. REJECTION Appellant seeks our review of the rejection of claims 1-14 and 16 under 35 U.S.C. § 102(b) as being anticipated by US 6,304,721 B1, issued Oct. 16, 2001, to Ericson (“Ericson”). Ans. 3-8. OPINION The sufficiency of the Examiner’s rejections turns on the extent to which Ericson inherently discloses the claimed “resiliently attached” relationship between the radiation element and the casing. Appellant argues claims 1-13 as a group but offers an arguably distinct basis for reversing the rejection of claims 14 and 16. See App. Br. 9-13 (arguing claims 1-14 and Appeal 2010-010875 Application 11/444,334 3 16 as a group); but see Reply Br. 5 (arguing claim 14 separately). Therefore, we address the rejection of claims 1-13 as a group and address the rejection of claims 14 and 16 as a separate group. See 37 C.F.R. § 41.37(c)(1)(vii). Principles of Law The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Where the Patent Office has reason to believe that a functional limitation is an inherent characteristic of the prior art, Appellant has the burden to show that the prior art does not possess that characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not” (citations omitted)) and In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an appellant to merely assert that the prior art does not inherently possess the characteristic relied on and challenge the PTO to prove the contrary by experiment or otherwise. “The PTO is not equipped to perform such tasks”). Appeal 2010-010875 Application 11/444,334 4 Claims 1-131 Appellant argues that Ericson fails to disclose that “the heat radiation element is resiliently attached relatively to the casing” as recited in claim 1. App. Br. 13. Thus, claim 1 broadly and functionally recites the manner in which the radiation element is attached relative to the casing. The Examiner responds that Ericson describes structure attached to the radiation element that meets this limitation; namely supports 12 and plate 11. Ans. 8. The Examiner contends that the mounting of radiation element 13 with plate 11 and supports 12 “together effect a resilient mounting due to the bending flexibility of plate 11.” Id. The Examiner also states: “Though the degree of such flexibility varies, the fact that such plates [11] have an inherent flexibility is unquestionable.” Id. at 9. Appellant replies that plate 15, which is attached to plate 11, stiffens plate 11 such that the flexibility of plate 11 “must be considered to be negligible.” Reply Br. 4-5. Thus, Appellant recognizes that plate 11 does have some flexibility. Appellant attempts to distinguish Ericson by arguing that the claim requires that the radiation element be attached to the casing with enough resiliency to prevent shock-based damage to the radiation element. App. Br. 10-13. However, the broadest reasonable interpretation of claim 1 consistent with the Specification merely requires some resilience in the attachment of the radiation element to the casing. For example, the 1 Appellant does not separately argue for reversal of the rejection of dependent claims 2-11 and 13, all of which ultimately depend on claim 1. Independent claim 12 recites different language relating to the resiliency of the attachment between the radiation element and the casing. However, Appellant has not argued a separate basis for patentability of claim 12. Therefore, we address claims 1-13 as a group. Appeal 2010-010875 Application 11/444,334 5 Specification states: “It is also possible to use a resilient material for the suspension which is adapted to absorb shocks in order to prevent damage of the heat radiation elements in case of an accident like dropping the paint removal device or hitting it.” Spec. 5 (emphasis added). The Specification thus indicates that sufficient resiliency to avoid shocks is possible, but not required. Claim 1 broadly recites that the “heat radiation element is resiliently attached relatively to the casing” without otherwise constraining the degree of resilience in the attachment. We determine that the Examiner has shown a sound basis for the finding that the inherent flexibility of Ericson’s plate 11 and supports 12, even if “negligible,” results in those elements providing the recited resilient mounting between the radiation element and the casing. Under Best, Spada, and King, Appellant must demonstrate that the mounting structures of Ericson do not have the requisite resiliency. We are not persuaded that Appellant has done so. Appellant argues that Ericson’s plate 15 stiffens plate 11. However, Appellant has not addressed the flexibility of supports 12 or the joint between supports 12 and plate 11. Therefore, we affirm the rejection of claims 1-13 under 35 U.S.C. § 102(b) as anticipated by Ericson. Claims 14 and 16 Appellant implies that claim 14 is separately patentable by stating: “especially claim 14 must be considered to be allowable, since it clearly defines that the heat radiation element is resiliently attached relative to the casing by at least one spring.” Reply Br. 5. Claim 14 affirmatively recites a spring as the structure that resiliently attaches the radiation element relative to the casing. Claim 16 depends on claim 14 and further recites “four Appeal 2010-010875 Application 11/444,334 6 springs.” We disagree with the Examiner’s finding that the inherent elasticity of materials establishes that Ericson’s plate 11 is necessarily a spring as that term is used in claims 14 and 16.2 Therefore, we reverse the rejection of claims 14 and 16 under 35 U.S.C. § 102(b). DECISION For the reasons stated above, we: AFFIRM the Examiner’s rejection of claims 1-13 under 35 U.S.C. § 102(b) as anticipated by Ericson; and REVERSE the Examiner’s rejection of claims 14 and 16 under 35 U.S.C. § 102(b) as anticipated by Ericson. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART hh 2 The Specification describes conventional springs, such as conical, frustoconical, or cylindrical helical springs, that “allow compression and tension in a first direction.” Spec. 4, ll. 17-18 and Spec. 5, ll. 3-4.