Ex Parte Evans

Patent Trial and Appeal BoardAug 31, 2017

13396786 (P.T.A.B. Aug. 31, 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. 13/396,786 02/15/2012 Robert Evans IFC08-01CIP 2559 149488 7590 08/31/2017 Law Offices of Daniel A. Tesler, LLC (IF) 137 Cabot Street Beverly, MA 01915 EXAMINER STAUBACH, LINDSEY CLAIRE ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 08/31/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT EVANS ____________________ Appeal 2016-006656 Application 13/396,786 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-006656 Application 13/396,786 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, and designate our affirmance as NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to an inter-axial inline fluid heater. Claims 1, 14, and 18 are independent. Br. 11–14, Claims App. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fast response fluid heater comprising: a flow body having a proximal end and a distal and [sic] defining an area therein, said flow body containing an outer tube and an inlet tube within said outer tube, said inlet tube comprised of a first material; an inlet orifice disposed within a surface of said flow body, said inlet orifice for allowing the flow of a fluid into said flow body; an outlet tube having a first end extending outside said flow body and a second end disposed within said flow body; a heater element comprising a resistance wire having a set of power leads extending therefrom, said resistance wire disposed between said inlet tube and said outer tube, said resistance wire capable of producing heat for heating a fluid passing along said outer tube and within said inlet tube when power is applied to said resistance wire; and a castable dielectric heat transfer material disposed between said inlet tube and said outer tube and surrounding at least a portion of said resistance wire, wherein said dielectric heat transfer material fills a space between said inlet Appeal 2016-006656 Application 13/396,786 3 tube and said outer tube and is in contact with said inlet tube and said outer tube. REFERENCES Hopper Todd Jr. US 3,378,673 US 4,567,350 Apr. 16, 1968 Jan. 28, 1986 Furlong Lin US 2004/0108310 A1 US 2005/0274714 A1 June 10, 2004 Dec. 15, 2005 REJECTIONS1 Claims 1, 3, 7, and 9–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hopper and Furlong. Final Act. 3. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hopper, Furlong, and Lin. Id. at 6. Claims 4–6 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hopper, Furlong, and Todd Jr. Id. at 7. ANALYSIS Claims 1, 3, 7, and 9–20—Unpatentable over Hopper and Furlong Appellant argues claims 1, 3, 7, and 9–20 as a group. Br. 5 (“Appellant[] argue[s] the claims together.”). We select claim 1 as representative of the group and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). In the Final Action, the Examiner finds that the embodiment depicted in Figures 1 and 2 of Hopper corresponds to the fast response fluid heater of claim 1, with, inter alia, reflective covering 11 corresponding to the claimed flow body and outer tube; body 2 corresponding to the claimed inlet tube; 1 A rejection of claims 10 and 12 under 35 U.S.C. § 112(b) as indefinite has been withdrawn. See Adv. Act. 2 (dated Mar. 4, 2014). Appeal 2016-006656 Application 13/396,786 4 fitting 14 corresponding to the claimed inlet orifice; fitting 15 corresponding to the claimed outlet tube; resistance wire 4 corresponding to the claimed heater element; and, molding material 10 corresponding to the claimed dielectric heat transfer material. Final Act. 3 (citing Hopper, Figs. 1, 2); see Hopper, 2:14–3:15. The Examiner relies on Furlong to teach a dielectric heat transfer material that is castable, and determines that it would have been obvious to one of ordinary skill to use Furlong’s castable dielectric material in Hopper’s device “since the material could be poured into the space between the inlet tube and the outer tube.” Final Act. 3–4 (citing Furlong ¶ 1). Appellant raises two arguments in response to this rejection. We address each argument in order. First, Appellant argues that Hopper’s reflective layer “cannot be both a flow body having an outer tube and the outer tube.” Br. 8. According to Appellant, claim 1 requires an outer tube to be “within” the flow body, and “[i]n use fluid flows between the flow body and the outer tube.” Id. at 7–8. Appellant therefore asserts that “if [the] flow body and the outer tube are the same element as recited by the Examiner, it is physically impossible for fluid to flow between them.” Id. at 8. The Examiner responds that the “Examiner interprets Hopper such that the flow body is the entire body, incorporating its outer most layer,” and that the “device contains an outer tube 11 and an inner tube 2.” Ans. 7. The Examiner also asserts that “claim 1 does not specify that fluid flows specifically between the outer tube and the flow body.” Id. This dispute concerns the meaning of “[a] flow body containing an outer tube and an inlet tube within said outer tube.” As an initial matter, we Appeal 2016-006656 Application 13/396,786 5 disagree with Appellant that the phrase requires an outer tube to be “within” a flow body. Although the phrase specifies that the inlet tube be “within” the outer tube, it does not likewise require the outer tube to be “within” the flow body. Instead, the phrase recites a flow body “containing” an outer tube. Different terms in a claim are presumed to have different meanings. CAE Screen Plates, Inc. v. Heinrich Fiedler GMBH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). Therefore, we presume that the claim drafter intended “containing” to mean something other than “within.” Further, although the word “containing” may be interpreted to mean “hav[ing] within,”2 it has also been interpreted more broadly as a transitional term synonymous with “comprising.” Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1375–76 (Fed. Cir. 2004) (citing Webster’s Third New Intermediate Dictionary 491 (2002)); see MPEP 9th ed. Rev. 7, Nov. 2015, § 2111.03 (“The transitional term ‘comprising,’ which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ [is inclusive or] open-ended and does not exclude additional, unrecited elements or method steps.”). We consider this latter usage to be the broadest reasonable interpretation of “containing” in the context of claim 1. Applying this construction, we determine that claim 1 does not require an outer tube to be physically within a flow body.3 Moreover, we do not consider Hopper’s reflective covering 11 to correspond to both the claimed flow body and outer tube. In the Answer, the 2 See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 269 (11th ed. 2005). 3 Likewise, we agree with the Examiner that claim 1 does not require that fluid flows between the outer tube and the flow body. Instead, the claim requires “fluid passing along said outer tube.” Br. 11, Claims App. (emphasis added). Appeal 2016-006656 Application 13/396,786 6 Examiner asserts that the “entire body” of Hopper is considered to correspond to the flow body. By “entire body,” we understand the Examiner to refer to the embodiment depicted in Figures 1 and 2 of Hopper, except for those elements the Examiner identifies as corresponding to limitations in claim 1 other than the flow body—i.e., the inlet orifice (fitting 14), outlet tube (fitting 15), heater element (resistance wire 4), and dielectric heat transfer material (molding material 10). Thus, we find that Hopper’s reflective covering 11 and body 2 correspond to the claimed flow body, with reflective covering 11 corresponding to the claimed outer tube and body 2 corresponding to the inlet tube within said outer tube.4 Appellant’s second argument is that “[t]he present application is a continuation-in-part of [the ’056 patent],” that “[d]uring prosecution of the ‘056 patent the Hopper reference was cited and overcome.” Br. 8–9. Appellant reasons that [s]ince the claims in the present application are narrower in scope than the claims in the ’056 patent, and the Hopper reference was overcome during prosecution of the ’056 patent, the claims of the present application should also be allowable over Hopper for at least the same reasons as the claims in the ‘056 patent are allowable over Hopper. Id. at 9. The Examiner disputes that the claims in the present application are narrower than those of the ’056 patent. Ans. 8. 4 Appellant does not dispute the Examiner’s findings that: (1) Hopper teaches the other limitations of claim 1 except for a dielectric heat transfer material that is castable; (2) Furlong teaches a castable dielectric heat transfer material; and (3) a person of ordinary skill would have combined Hopper and Furlong for the reason stated. See Final Act. 3–4. Appeal 2016-006656 Application 13/396,786 7 We do not find this argument persuasive. Among other things, Appellant does not establish the premise on which the argument is based: that the ’056 patent claims are narrower than the present claims. Appellant merely reproduces claim 1 of the ’056 patent without any analysis as to the scope of that claim compared with the scope of the claims on appeal. Nor is it self-evident that the claims on appeal are narrower than the issued claims. For the reasons stated above, we sustain the Examiner’s rejection of claims 1, 3, 7, and 9–20 as unpatentable over Hopper and Furlong. However, because the above discussion differs from, and expounds upon, the Examiner’s analysis, we designate the affirmance as a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). The Remaining Rejections Appellant does not separately argue the rejection of claim 2 as unpatentable over Hopper, Furling, and Lin; and of claims 4–6, and 8 as unpatentable over Hopper, Furlong, and Todd Jr. Accordingly, for the reasons set forth above, we sustain these rejections. We designate the affirmance of these rejections as NEW GROUNDS OF REJECTION. DECISION We AFFIRM the decision of the Examiner to reject claims 1–20. Because the fact finding and reasoning relied on by the Board to sustain the rejections differs somewhat from the facts and reasoning relied on by the Examiner, we designate our affirmance of the rejections of these claims as NEW GROUNDS OF REJECTION so as to provide Appellant with a full and fair opportunity to respond to the thrust of the rejections. Appeal 2016-006656 Application 13/396,786 8 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b)