Ex Parte FROMMELT et al

Patent Trials and Appeals BoardApr 30, 2019

14450441 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/450,441 08/04/2014 24131 7590 05/02/2019 LERNER GREENBERG STEMER LLP PO BOX 2480 HOLLYWOOD, FL 33022-2480 FIRST NAMED INVENTOR SEBASTIAN FROMMELT 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SGL-2011-075 3648 EXAMINER MCCONNELL, MARLA D ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 05/02/2019 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): boxoa@patentusa.com docket@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SEBASTIAN FROMMELT, MARKUS SCHROEDER, MARTIN REINTHALER, PETER PF ALLER, and KARL HINGST Appeal2018-005876 Application 14/450,441 Technology Center 1700 Before ROMULO H. DELMENDO, RAEL YNN P. GUEST, and JEFFREY R. SNAY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant ("Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1-3 and 5-16. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The Appellant is the Applicant, "SGL CARBON SE" (Application Data Sheet filed August 4, 2014, 6), which is also listed as the real party in interest (Appeal Brief filed January 8, 2018 ("Br."), 1). 2 Br. 2-7; Final Office Action entered May 4, 2017 ("Final Act."), 3-8; Advisory Action entered November 19, 2017 ("Adv. Act."), 1-2; Examiner's Answer entered March 5, 2018 ("Ans."), 2-3. Appeal2018-005876 Application 14/450,441 I. BACKGROUND The subject matter on appeal relates to a hollow-cylindrical heat shield suitable for high-temperature applications, such as high temperature furnaces or gas converters (Specification filed August 4, 2014 ("Spec."), ,r,r 2-3). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A hollow-cylindrical heat shield, comprising: at least one graphite foil having an outer side; and at least one fiber structure disposed on said outer side of said at least one graphite foil, said at least one fiber structure having a degree of coverage selected from the group consisting of 5 to 95 %, 10 to 65 %, 30 to 55 % and 40 to 50 %. (Br. 8 ( emphasis added).) II. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections under pre-AIA 35 U.S.C. Â§ I03(a), as follows: A. Claims 1-3,3 5-8, 10-13, and 15 as unpatentable over Guckert et al. 4 ("Guckert") in view of Dewimille et al. 5 ("Dewimille"); B. Claim 9 as unpatentable over Guckert in view of Dewimille and Hingst et al. 6 ("Hingst"); C. Claim 14 as unpatentable over Guckert in view of Dewimille, 3 Although the Examiner indicates that claim 4 is also rejected (Ans. 2; Final Act. 3), this claim was previously canceled (Amendment filed April 17, 2017, 3). 4 US 2002/0003004 Al, published January 10, 2002. 5 US 6,615,878 B2, issued September 9, 2003. 6 US 2007/0259185 Al, published November 8, 2007. 2 Appeal2018-005876 Application 14/450,441 and Kobayashi et al. 7 ("Kobayashi"); D. Claim 16 as unpatentable over Guckert in view of Dewimille and Blain et al. 8 ("Blain"). (Ans. 2-3; Adv. Act. 1-2; Final Act. 3-8.) III. DISCUSSION The Appellant does not argue any claim separately within the meaning of 37 C.F.R. Â§ 4I.37(c)(l)(iv) (Br. 2-7). Therefore, pursuant to the rule, we confine our discussion of Rejection A to claim 1, which we select as representative, and that discussion controls the outcome for all claims subject to Rejection A. Additionally, the Appellant does not argue Rejections B through D separately (id.). Therefore, our ruling on claim 1 is dispositive as to all claims on appeal. The Examiner finds that Guckert teaches a thermal insulation cylinder including a graphite foil (5th layer) and a double ply of roving (7th layer) (Final Act. 3 (relying on Guckert Example 2)). The Examiner acknowledges, however, that Guckert's cylinder differs from the hollow- cylindrical heat shield recited in claim 1 in that the reference does not disclose a degree of coverage for the ply of less than 100% (i.e., the limitations highlighted in reproduced claim 1 above) (id.). To resolve this difference, the Examiner relies on Dewimille, which, according to the Examiner, teaches that a pipe may be made flexible by forming a slot, either by machining or by winding strips of material to form gaps corresponding to the width of a machined slot (id.). The Examiner concludes that because 7 US 4,912,302, issued March 27, 1990. 8 US 2002/0124932 Al, published September 12, 2002. 3 Appeal2018-005876 Application 14/450,441 Guckert teaches that the insulation may be used on a pipe, which may be bent and be subject to flexural stresses, a person having ordinary skill in the art would have modified Guckert's cylinder such that its 7th layer would be wound with gaps as taught by Dewimille to provide a more flexible pipe (id. at 3--4). As the Examiner observes (Ans. 3), the Appellant does not dispute the Examiner's findings concerning each prior art reference's scope and content (Br. 2-7). Rather, the Appellant's principal contention is that the Examiner's proposed modification of Guckert to use gaps in the foil as taught by Dewimille would destroy Guckert's foil layer because Dewimille provides pipe heat insulation for subsea petroleum production and graphite foil will break apart in water (Br. 5). According to the Appellant, "every person of ordinary skill in the art of graphite structures knows that graphite oxidizes and intercalates in water" and that the Board should take Official Notice of that fact (id. at 5---6). In the Appellant's view, the remaining prior art references do not cure the deficiencies in the combination of Guckert and Dewimille, and, therefore, the rejection should not be sustained (id. at 6-7). The Appellant's arguments fail to identify any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As the Examiner explains (Ans. 3), the Examiner's proposed modification of Guckert does not involve using Guckert's structure, which is not disclosed as being used in water but for a wide variety of other applications (Guckert ,r,r 22, 39), to include Dewimille's underwater application. Instead, the Examiner proposes providing Guckert's 7th layer with Dewimille's teaching of gaps to provide Guckert's structure with improved flexibility (id. at 3; Final Act. 3--4). Moreover, consistent with the 4 Appeal2018-005876 Application 14/450,441 Examiner's position (Adv. Act. 2), Dewimille teaches that the heat-insulated flexible pipe is not only useful as a subsea petroleum production pipe but also "for carrying effluents produced by oilwells, or for shipping or land carriage of liquid requiring thermal insulation" (Dewimille col. 1, 11. 13-16). For these reasons and those given by the Examiner, we uphold the Examiner's rejection as maintained against claim 1. IV. SUMMARY Rejections A through D are sustained. Therefore, the Examiner's final decision to reject claims 1-3 and 5-16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 5