Ex Parte Heitmeyer et al

Patent Trial and Appeal Board

Aug 21, 2014

11234422 (P.T.A.B. Aug. 21, 2014)

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.
11/234,422 09/23/2005 Kris Heitmeyer KAR/0560.0100 9617
152 7590 08/22/2014
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
EXAMINER
MCCARRY JR, ROBERT J
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
08/22/2014 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 KRIS HEITMEYER and
DAN MILITARU
________________

Appeal 2012-007272
Application 11/234,422
Technology Center 3600
________________

Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
BRANDON J. WARNER, 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
rejection of claims 1, 3‒21, 24‒27, 31‒33, 35‒50. Br. 3; Ans. 3. Claim 2
has been canceled. Br. 3. Claims 16 and 17 “would be allowable if
rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph,”
while claims 22, 23, 28‒30, and 34 “are objected to as being dependent upon
a rejected base claim, but would be allowable if rewritten in independent
form.” Non-Final Action mailed July 21, 2011, page 6. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-007272
Application 11/234,422

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to thermally insulated railroad
freight cars and in particular to a freight car having insulative material
interposed between inner and outer enclosures of the freight car.” Spec. 1.1
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A railway car comprising:
(a) a cargo-carrying container having an inner
enclosure defining an inwardly directed surface against which
cargo can bear and an outer enclosure defining an outwardly
directed surface exposed to an ambient environment
surrounding said boxcar; and
(b) a structural member having an inner portion
supporting said inner enclosure where said inner portion has a
self-bounded perimeter surface defining the volume of said
inner portion, an outer portion supporting said outer enclosure
where said outer portion has a self-bounded perimeter surface
defining the volume of said outer portion and where the
respective self-bounded perimeter surfaces of said inner portion
and said outer portion are different and separated from each
other in a direction transverse to a wall supported by at least
one of said first portion and said second portion, respectively,
and a thermally insulative spacer interposed between and
secured to said inner portion and said outer portion; where
(c) said structural member is a one of:
(i) a side post;
(ii) a door post
(iii) a corner post;
(iv) a side sill; and
(v) an end sill.

1 Appellants’ Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
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Application 11/234,422

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REFERENCES RELIED ON BY THE EXAMINER

McAlarney US 3,952,455 Apr. 27, 1976
Thoman US 6,367,391 B1 Apr. 9, 2002
Zupancich US 7,434,520 B2 Oct. 14, 2008

THE REJECTIONS ON APPEAL
Claims 1 and 3‒20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Ans. 4.
Claims 1, 3, 5‒15, 18‒21, 24‒27, and 48‒50 are rejected under 35
U.S.C. § 102(b) as being anticipated by Thoman. Ans. 5.
Claims 4, 31‒33, and 35‒40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thoman and Zupancich. Ans. 7.
Claims 41‒47 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thoman, Zupancich, and McAlarney.2 Ans. 7.

ANALYSIS
The rejection of claims 1 and 3‒20 as being indefinite
The Examiner provides separate reasons for the rejection of
independent claim 1 and independent claim 11 (and hence their respective

2 While Appellants acknowledge that claims 35‒50 are rejected, there is no
ambiguity that Appellants seek only to appeal claims 35‒40 and 48‒50. Br.
3. In such case, Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008)
(precedential) applies as there is no indication that claims 41‒47 (expressly
omitted from being on appeal) have been cancelled and, further, Appellants
present no arguments in rebuttal to the Examiner’s rejection of claims 41‒
47. Ans. 7, 8. The Examiner’s rejection of claims 41‒47 hence becomes an
unappealable final agency action. It is requested that when this matter is
returned to the Examiner, that claims 41‒47 be canceled.
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dependent claims) under 35 U.S.C. § 112, second paragraph. Ans. 4, 5. We
address each such reason separately.
Regarding claim 1, the Examiner references the limitation “an outer
portion supporting said outer enclosure where said outer portion has a self-
bounded perimeter surface defining the volume of said outer portion.” Ans.
4. The Examiner finds that it is unclear how this “outer portion of the
structural member” can define its volume “when the outwardly directed
surface is exposed to the ambient environment.” Ans. 4, 5. Appellants
explain that “the outer portion has a perimeter surface that defines its
volume, a limitation that is literally a geometric truism given that every
object has a perimeter surface defining its volume.” Br. 7. We understand
that the volume being defined in the claim is the internal, cross-sectional
volume of the item itself (here, the claimed “outer portion”) and not a
volume external to its perimeter surface that might be exposed to the
ambient environment as indicated by the Examiner.
Also regarding claim 1, the Examiner finds that “[i]t is unclear as to
how the outer portion can define the ambient environment.” Ans. 5. Here,
Appellants contend that “the claims include no such limitation.” Br. 8.
Claim 1 recites a limitation of “an outwardly directed surface exposed to an
ambient environment.” There is no limitation directed to defining the
ambient environment; however, there is a limitation directed to defining a
volume of the outer portion itself (i.e., its internal volume) via its “self-
bounded perimeter surface” as discussed supra.
Regarding independent claim 11, the Examiner finds that “[i]t is
unclear as to how the outer portion defines the volume of the outer portion
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Application 11/234,422

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when the outer portion faces the ambient environment.” Ans. 5. However,
claim 11 does not contain any limitation directed to an ambient environment.
In view of the above, we agree with Appellants that the Examiner’s
rejection of independent claims 1 and 11, and their respective dependent
claims 3‒10 and 12‒20, “appears to result from a misreading of claim
terminology.” Br. 6. We agree with Appellants and reverse the Examiner’s
rejection of claims 1 and 3‒20 as being indefinite under 35 U.S.C. § 112,
second paragraph.

The rejection of claims 1, 3, 5‒15, 18‒21, 24‒27, and 48‒50
as being anticipated by Thoman

Appellants present different arguments for different claim
combinations depending on their respective limitations.3 We address these
rejected claims as follows.
Claims 1, 3, 5‒15, and 18‒20
Independent claims 1 and 11, and their dependent claims 3, 5‒10, 12‒
15, and 18‒20, each include the limitation of inner and outer portions being
“different and separated from each other in a direction transverse to a wall
supported by at least one of” these portions. The Examiner relies on Figures
15 and 16 of Thoman as disclosing this limitation and specifically identifies
Thoman’s structural member 60 depicted therein. Ans. 5, 6. The Examiner
finds that “Thoman shows an I-beam” (i.e., member 60) and that the “I-beam

3 Appellants argue claims 1, 3, 5, 6, 9‒12, and 20 separate from claims 7 and
18, which are argued separate from claims 8 and 19, which are argued
separate from claim 13, which is argued separate from claim 15, which is
argued separate from claims 21 and 24, which are argued separate from
claim 48, which is argued separate from claim 49. Br. 8‒13.
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is one piece.”4 Ans. 9. The Examiner also finds that Thoman’s singular I-
beam has “an inner support portion and an outer support portion” and that
these “portions are separated transversely from each other and are at
different sides of the I-beam.” Ans. 9. Appellants contend that “the
Examiner is not reading the claim terminology, which states that ‘the
respective self-bounded perimeter surfaces of said inner portion and said
outer portion are different and separated from each other’ in a transverse
direction of said railway car.” Br. 8, 9. Under the Examiner’s stated
rationale of a one-piece I-beam, the Examiner fails to indicate where
Thoman’s single I-beam discloses inner and outer portions, each having a
“self-bounded perimeter surface” that defines their respective volume as
claimed (see supra) and which also “are different and separated from each
other” in a transverse direction as claimed. Accordingly, we are not
persuaded that “each and every element”5 is disclosed in Thoman and as
such, we reverse the Examiner’s anticipation rejection of claims 1, 3, 5‒15,
and 18‒20.
Claims 21 and 24‒27
Appellants argue these claims together. Br. 11, 12. We select
independent claim 21 for review with dependent claims 24‒27 standing or
falling with claim 21. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 21 is a
very condensed version of claim 1 (reproduced above) in that claim 21
merely recites (a) “an inner portion,” (b) “an outer portion,” and (c) “a

4 To be more accurate, Thoman states that the “layers of fiber material 60 are
shown in FIG. 15 as they would appear prior to a fusion with a selected
resin.” Thoman 17:65 to 18:2. A fusion of the two back-to-back channel
members depicted therein would form an I-beam.
5 Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
Cir. 1987).
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thermally insulative spacer interposed between and secured to said inner
portion and said outer portion.” Their respective preambles, however, differ.
Appellants contend that with respect to claim 21, “the Examiner’s
rejection remains a mystery” and references earlier Office Actions. Br. 11.
We note that Appellants do not address the latest non-final Office Action
mailed July 21, 2011, from which the present appeal is taken. We also note
that in such non-final Office Action, as in the present Examiner’s Answer,
the Examiner rejects claim 21 along with claims 1 and 11 discussed supra
for the same reasons. Ans. 3‒5. Since it appears that Appellants had no
difficulty in addressing the rejection of claims 1 and 11, which contain these
same limitations and more, we are not persuaded by Appellants’ contention
that “the Examiner’s rejection remains a mystery” when applied to the
much-condensed (i.e., broader) limitations of claim 21. Appellants also
contend that claims 22 and 23, which depend from claim 21, are only
objected to (see Non-Final Action mailed July 21, 2011, page 6) and hence,
“[i]f claim 21 were disclosed by Thoman, then claims 22 and 23 would have
been rejected by the Examiner as were claims 7, 8, 18, and 19.” Br. 11. We
do not dispute Appellants’ logic in this matter regarding claims 22 and 23,
but we decline to intercede in the Examiner’s findings regarding the matter
of claims 22 and 23; and we leave it up to the Examiner to ascertain whether
any change in their status is warranted.
Appellants also contend that the tem “sill” as employed in the
preamble of claim 21 “has a defined meaning in the relevant art.” Br. 11.
That may indeed be the case, but we are not persuaded that the body of
claim 21 (see (a), (b), and (c) above) fails to “fully and intrinsically set[]
forth the complete invention, including all of its limitations.” Pitney Bowes,
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Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In
Pitney Bowes, we are instructed that where “the preamble offers no distinct
definition of any of the claimed invention’s limitations, but rather merely
states, for example, the purpose or intended use of the invention, then the
preamble is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.” Pitney Bowes, 182 F.3d at
1305. Accordingly, Appellants’ assertion regarding a term (“sill”) found
only in the claim’s preamble (Br. 11) is not persuasive that the Examiner
erred in rejecting claim 21.
Appellants further contend that “given the allowability of claims 16
and 17,” the Examiner “concedes that claim 21 does not read on Thoman’s
side sills or end sills.” Br. 12. Regardless of the status of claims 16 and 17,
and whether such claims are to remain objected to or not, Appellants’ basis
for arguing that claim 21 is allowable because claims 16 and 17 are
allowable is, on its face, faulty. Appellants seek to equate claim 21 with
claims 16 and 17 (Br. 12) in arguing for the allowability of claim 21, yet the
two claim sets are anything but equal and cannot be compared or contrasted
with each other because they have significantly different claim scopes.
Appellants also contend that “[t]he only other structural member of
Thoman that is a ‘sill’ is the center sill” and, according to Appellants, the
Examiner makes no argument that this center sill has a spacer “interposed
between and secured to” the inner and outer portions. Br. 12. We note the
Examiner’s additional reference to Thoman’s Figures 3, 11, and 12
disclosing a “center sill” and “insulating material” (Ans. 6) and we further
note Appellants’ silence as to how these figures in Thoman fail to disclose
this limitation.
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Accordingly, in view of the record presented, we are not persuaded by
Appellants’ initial argument that the Examiner’s rejection of claim 21
“remains a mystery” as asserted (Br. 11), nor are we persuaded by
Appellants’ subsequent arguments (Br. 11, 12) that the Examiner’s rejection
of claim 21 is in error. We sustain the Examiner’s rejection of claims 21 and
24‒27.
Claim 48
Independent claim 48 includes the additional limitation of a
longitudinal stringer having an end supported by a body bolster with “said
end being thermally isolated from said body bolster.” Appellants contend
that “[t]he Examiner argues that the metal cover plates 252 are what
thermally isolated the body bolster from the longitudinal stringers” and that
this finding “is not consistent with [Appellants] specification, which uses the
term ‘thermally isolate’ as a means of replacing a metal connection between
two metal members.” Br. 12, referencing Spec. 7:5‒9, 8:12‒17, 8:31‒34,
and 6:12‒15. Appellants do not address the Examiner’s reference to
Thoman 11:64 to 12:12 (Ans. 9, 10), which describes item 252 as being
“satisfactorily formed from various steel alloys, aluminum alloys, fiber
reinforced plastics, cements, and composites of these materials.” The
Examiner finds that Thoman’s “option for other materials would further
increase the isolation of the bolster and the stringer.” Ans. 10. In short,
Appellants do not explain how Thoman’s disclosure of the use of materials
other than metal would fail to teach this limitation. We sustain the
Examiner’s rejection of claim 48.
Claims 49 and 50
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Appellants argue claims 49 and 50 together. Br. 12, 13. We select
claim 49 for review. Appellants recite the additional limitations found in
claim 49 and specifically addresses the limitation directed to “a composite
spacer.” Br. 12. Appellants’ contend that Thoman’s “metal cover plate is
not a ‘composite’ spacer.’” Br. 13. However, as indicated above, Thoman
discloses other materials for use instead of just metal, and specifically
describes “composites of these materials.” Thoman 11:64 to 12:12; see also
Ans. 9, 10. As such, Appellants’ contention is not persuasive that the
Examiner erred in rejecting claim 49. We sustain the Examiner’s rejection
of claims 49 and 50.
The rejection of claims 4, 31‒33, and 35‒40
as being unpatentable over Thoman and Zupancich

Appellants present arguments directed to dependent claim 4 and also
arguments directed to claims 31‒33. Br. 13, 14. We select claims 4 and 31
for review. Appellants do not present separate arguments directed to claims
35‒40, but these claims depend, directly or indirectly, from claim 31 and
hence will stand or fall with claim 31.
Claim 4
Appellants address the limitation in claim 4 directed to a “doorway
. . . having at least one door post” and contend that the additional reference
to Zupancich discloses “a door, which is not a door post.” Br. 13. The
Examiner finds that “[b]roadly interpreted a door post can be a support to the
side of the door,” as Appellants’ contend, and further that “[t]he door post is
also interpreted as a support structure on a door.” Ans. 10. Appellants do
not further elaborate as to how this finding/interpretation by the Examiner is
in error. We sustain the Examiner’s rejection of claim 4.
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Claim 31
Appellants contend that the Examiner “has failed to state a prima facie
case of obviousness as it ignores an entire limitation of independent claim
31.” Br. 13. One limitation in question is “a metal support assembly
structurally interposed between and structurally supporting said outer
enclosure and said inner enclosure.” The Examiner finds that Zupancich
teaches “an outer metal sheet welded to an inner metal sheet.” Ans. 7; see
also Ans. 10 and Zupancich 4:14‒17. The Examiner concludes that it would
have been obvious to “utilize a metal door construction, like that of
Zupancich et al, as a teaching [to] show that composite structures, like that
of Thoman et al can be made of light weight metal sheets . . . [with] the
expected result of using the structure of [Zupancich’s] door throughout
[Thoman’s] car to increase the durability of the overall car construction.”
Ans. 7.
However, now that the Examiner has adequately explained the use of
“an outer metal sheet welded to an inner metal sheet” as the method of
construction of the overall car (Ans. 7), the Examiner fails to indicate where
the combination of Thoman and Zupancich teaches the last limitation of
claim 31 that there be “no metallic interconnection between said inner
enclosure and said outer enclosure” (emphasis added). Appellants contend
that no prima facie case is made by the Examiner because “the metal inner
and outer surfaces [are] welded together” and as such, “this substitute
structure would have a metal connection between the inner and outer
surfaces.” Br. 13, 14. Appellants’ contention is compelling and the
Examiner does not explain this apparent discrepancy. Accordingly, we
reverse the Examiner’s rejection of claims 31‒33 and 35‒40. Claim 34,
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which depends from claim 33, is objected to (see Non-Final Action mailed
July 21, 2011, page 6) and as such, this reversal of claim 33 does not disturb
that finding by the Examiner.

DECISION
The Examiner’s rejections of claims 1 and 3‒20 for being indefinite
are reversed.
The Examiner’s rejection of claims 1, 3, 5‒15, and 18‒20 as being
anticipated by Thoman is reversed.
The Examiner’s rejection of claims 21, 24‒27, and 48‒50 as being
anticipated by Thomas is affirmed.
The Examiner’s rejection of claim 4 as being unpatentable over
Thoman and Zupancich is affirmed.
The Examiner’s rejection of claims 31‒33 and 35‒40 as being
unpatentable over Thoman and Zupancich is reversed.
It is requested that claims 41‒47 be canceled as per Ex Parte Ghuman,
88 USPQ2d 1478 (BPAI 2008) (precedential).
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).

AFFIRMED-IN-PART

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