Ex Parte Giamati

Patent Trial and Appeal Board

Dec 18, 2012

10434649 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL J. GIAMATI
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Appeal 2010-007908
Application 10/434,649
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Michael J. Giamati (Appellant) filed a request for rehearing under 37
C.F.R. § 41.57 requesting that we reconsider both the affirmed rejections
and the new grounds of rejection from our decision of October 2, 2012
(Decision).

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In the Decision, we reversed the rejection of claims 1, 2, 3, 16, 26-28,
41, 42, and 47 under 35 U.S.C. § 102(b) as anticipated by Bozell (US
5,304,740; iss. Apr. 19, 1994), the rejection of claim 29 under 35 U.S.C. §
103(a) as unpatentable over Bozell, the rejection of claims 30-32 under 35
U.S.C. § 103(a) as unpatentable over Bozell and Warburton (US 3,828,119;
iss. Aug. 6, 1974), and the rejection of claims 33-36 and 43-46 under 35
U.S.C. § 103(a) as unpatentable over Coonly (US 2,564,325; iss. Aug. 14,
1951) and Leavines (US 4,037,083; iss. July 19, 1977).
We affirmed the rejection of claims 4, 6, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Svensson (US 4,629,868; iss. Dec. 16, 1986),
Bozell, and Gore (US 3,217,083; iss. Nov. 9, 1965); the rejection of claims 5
and 8 under 35 U.S.C. § 103(a) as unpatentable over Svensson, Bozell, and
Warburton; the rejection of claims 18, 19, 33, and 37-40 under 35 U.S.C.
§ 103(a) as unpatentable over Svensson, Bozell, and Bylin (US 4,468,557;
iss. Aug. 28, 1984); and the rejection of claims 7, 9, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Svensson, Bozell, and Goss (US 4,937,435;
iss. Jun. 26, 1990).
We entered new grounds of rejection. Claim 1 was rejected under 35
U.S.C. § 103(a) as unpatentable over Svensson, Bozell, and Gore. Claim 1
was also rejected under 35 U.S.C. § 103(a) as unpatentable over Svensson,
Bozell, and Warburton. Claims 1 and 26 were rejected under 35 U.S.C.
§ 103(a) as unpatentable over Svensson, Bozell, and Bylin. Finally, claim 1
was rejected under 35 U.S.C. § 103(a) as unpatentable over Svensson,
Bozell, and Goss.
Appellant filed on the same day a request for rehearing to address the
affirmed rejections and another request for rehearing to address the new
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grounds of rejection. Though submitted as two documents, we consider
these requests to be a single request for rehearing under 35 C.F.R.
§ 41.52(a)(1) seeking review of the affirmed rejections and the new grounds
of rejection. We address the affirmed rejections and the new grounds, in
turn.
Request for Rehearing of Affirmed Rejections
In the Request for Rehearing (Req. Reh’g A), Appellant argues that a
heating wire of Svensson shifts away from potentially harmful objects to
prevent injury to itself and that the heating wire is not strong enough to
confront potentially harmful objects. Req. Reh’g A 2-3. Appellant also
contends that there is no reason to make the heating wire of Svensson
stronger by modifying it to include the braided sheath of Bozell. Req. Reh’g
A 3. Appellant further contends that the modification would increase the
diameter of the wire of Svensson, which would affect the desired thickness
ratio between the wire and elastic support layer 4 of Svensson. Id.
Appellant also argues that Gore, Warburton, Goss, and Bylin do not
overcome the contended shortcomings of Svensson and Bozell. Req. Reh’g
A 4-5.
Appellant’s arguments are unpersuasive for two reasons. First, the
request must state with particularity the points believed to have been
misapprehended or overlooked by the Board. See 37 C.F.R. § 41.52(a)(1).
Appellant’s request does not cogently identify any point believed to be
misapprehended or overlooked by the Board. See Req. Reh’g A 1-6.
Second, the arguments raised in the Request are not permitted because
they were not raised in the briefs before the Board. Nor is there any
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showing of good cause in the Request that would allow us to consider the
arguments of the Request. See 37 C.F.R. § 41.52(a)(2).
Request for Rehearing of New Grounds of Rejection
Appellant argues that a heating wire of Svensson shifts away from
potentially harmful objects to prevent injury to itself and that the heating
wire is not strong enough to confront potentially harmful objects. Req.
Reh’g NG 2. Appellant further argues that because the heating wire of
Svensson avoids injury in such a manner, there is no reason to make the
heating wire of Svensson stronger by modifying it to include the braided
sheath of Bozell. Req. Reh’g NG 3. In other words, Appellant argues that
Svensson’s heating wire would not benefit from an additional protection
technique, as taught by Bozell, because it already has a protection technique.
For the reasons that follow, we cannot agree with this assertion.
Svensson discloses that heating pads have a great risk of being
damaged by sharp objects which penetrate into it and possibly spoil a
heating wire, and that such risks are reduced by placing the heating wire
under several protective covering layers included in the pad. Svensson, col.
1, ll. 12-17. An object of Svensson is to provide a heating pad which is
more resistant to damage than previous heating pads. Id. at col. 1, ll. 24-26.
An insulated heating wire 2 of Svensson can move away to avoid objects
which come against the pad. Id. at col. 2, ll. 27-34. Svensson does not
indicate that the heating wire 2 only needs the disclosed moving away from
an object to prevent injury to itself from the object. Svensson also does not
exclude other means of protecting its heating wire 2 from damage.
Also, Bozell discloses that a braided sheath 18 is positioned over an
external surface of an insulation layer 16 to increase its structural strength
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and to hold the insulation layer 16 in place to reduce the danger of an
exposed conductor. Bozell, col. 3, ll. 54-57 and 65-68. Thus, applying the
sheath 18 of Bozell to the heating wire of Svensson can be viewed as the use
of a known technique to improve similar devices in the same way or as an
application of a known technique to a known device ready for improvement
to yield predictable results. Appellant does not provide any evidence that
the proposed combination would have been beyond the technical grasp of a
person of ordinary skill in the art, or yielded results that could not have been
predicted by a person of ordinary skill in the art.
Moreover, Bozell establishes an apparent reason to make the proposed
combination. Bozell discloses that the braided sheath 18 is positioned over
the insulation layer 16 to increase its structural strength and to hold the
insulation layer 16 in place to reduce the danger of an exposed conductor.
Bozell, col. 3, ll. 54-57 and 65-68. Thus, the modification of Svensson’s
heating wire to include a fiber overwrap as taught by Bozell would provide
the benefit of increased resistance to abrasion and cutting. See Decision 10;
Ans. 4.
Appellant also contends that the modification would increase the
diameter of the wire of Svensson, which would affect the desired thickness
ratio between the wire and elastic support layer 4 of Svensson. Req. Reh’g
NG 3. We agree with Appellant that Svensson discloses a desired thickness
ratio (intermediate layer 4 has a thickness a, greater than the diameter d of
the heating wire 2, and preferably at least twice as great as the diameter d).
Svensson, col. 1, ll. 30-33, and figs. 2 and 3. However, at most Appellant
has identified a tradeoff between increasing wire protection by adding a fiber
overwrap as taught by Bozell and maintaining a desirable ratio between the
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diameter d and intermediate layer 4. See Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”); Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
Appellant also argues that Gore, Warburton, Goss, and Bylin do not
overcome the shortcomings of Svensson and Bozell. Req. Reh’g NG 4-5.
For the reasons supra, we believe that Gore, Warburton, Goss, and Bylin
need not overcome any shortcoming of Svensson and Bozell.
Appellant finally requests the Board to indicate the status of claims 2,
3, 16, 26-29, and 41 because they were not included in the new grounds of
rejection and the rejections of these claims were reversed. Req. Reh’g NG
6. As we indicated in our Decision, because we are primarily a tribunal of
review, we leave it to the Examiner to consider the patentability of these
claims in light of the prior art and our new grounds of rejection. Decision
12.

DECISION
For the reasons supra, Appellant’s Request has been granted to the
extent that we have reconsidered our Decision in light of the arguments in
Appellant’s Request, but is denied with respect to our making any
modification to the Decision.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

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