Ex Parte Knutson et al

Patent Trial and Appeal Board

Apr 18, 2016

12325944 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/325,944 12/01/2008
34431 7590 04/20/2016
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Perry W. Knutson
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.
92/D08-034A 2497
EXAMINER
PUROL, DAVID M
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PERRY W. KNUTSON and MARK UNGS
Appeal2014-001416
Application 12/325,944
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Perry W. Knutson and Mark Ungs (Appellants) seek review, under
35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1 and 3-28.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
The disclosed subject matter "generally relates to insulated doors and,
more specifically, to doors that include a flexible panel such as an insulated
curtain." Spec. i-f 1. Claims 1, 13, 26, and 28 are independent. Claim 13 is
reproduced below, with emphasis added:
Appeal2014-001416
Application 12/325,944
13. A method of producing a door panel that can
move between an open position and a closed
position relative to a doorway, the method
compnsmg:
coupling a plurality of pliable baffles to a first
sheet and a second sheet so the baffles extend
between the sheets, thereby dividing the panel into
a plurality of air chambers to restrict air flow
between the chambers when the door panel is
moved from the closed position to the open position
without introducing or evacuating air to or from the
panel; and
non-separably connecting an outer perimeter
of the first sheet to an outer perimeter of the second
sheet to create an overall chamber therebetween.
REJECTIONS ON APPEAL
1. Claims 13, 15-20, and 25-28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoerner (US 2008/0110580 Al, published
May 15, 2008) and Shapoff (US 5,586,594, issued Dec. 24, 1996).
2. Claims 1, 3-12, 14, and 21-24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoerner, Shapoff, and Wegner (US 5,016,700,
issued May 21, 1991).
DISCUSSION
Rejection I -The rejection of claims 13, 15-20, and
25-28 under 35 U.S.C. § 103(a)
In this Rejection, the Examiner relied on Hoerner for various
limitations, but stated that Hoerner does not disclose "that the air chambers
are in fluid communication with each other or that the pliable baffles are
coupled to and extend between the first and second sheets." Final Act. 2
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Application 12/325,944
(dated Feb. 21, 2013) (citing Hoerner, Figs. 16-21). The Examiner found,
however, that Shapoff "discloses a wall panel having a plurality of baffles 29
coupled to and extending between first and second sheets 33, 37 defining air
chambers which are in fluid communication with each other" and "discloses
in column 2, lines 60-67 and column 3, lines 1-5 the feature of the air
chambers as being in fluid communication." Id. The Examiner concluded
that it would have been obvious "to have provided the panel of Hoerner .. .
with the air chambers as being in fluid communication with each other .. .
[as] disclosed by Shapoff [to] provide the desirable benefits of air
distribution inherent with such a known structural arrangement." Id. at 3.
Appellants argue that the combination of Hoerner and Shapoff "is
improper because Shapoff is not analogous art." Appeal Br. 18 (addressing
claims 13-20, 25, and 28); id. at 41 (addressing claims 26 and 27).
According to Appellants, Shapoff does not satisfy either of the two tests for
analogous art under In re Bigio, 381 F.3d 1320, 1352 (Fed. Cir. 2004). 1 Id.
at 19-20, 41--43. (Appellants address the first test (id. at 19, 41--42), but the
Examiner does not take the position that Shapoff is in the same "field of
endeavor" as the claimed invention.) As to the second test, Appellants state
that "the present application explicitly addresses two problems resulting
from the bending of an insulated door during operation," including that
"bending of the door may trap a pocket of air inside the door causing the
door to bulge, thereby adversely affecting the door's operation." Id. at 19-
1 "Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Bigio, 381 F.3d at 1325.
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Appeal2014-001416
Application 12/325,944
20, 42 (citing Spec. iii! 4, 5). According to Appellants, "the present
application is directed to dealing with problems arising from bending a door
and avoiding a resulting pressure build up." Id. at 20, 42.
Appellants argue that Shapoff, in contrast, "is directed to an inflatable
wall that is collapsible, transportable, lightweight, easy to erect and use, and
capable of supporting electronic lighting and signage." Id. at 20, 42 (citing
Shapoff, col. 1, 18-22; col. 5, 11. 21-27). According to Appellants,
"Shapoff is concerned with a light-weight inflatable wall with sufficient
structural integrity to stand erect while supporting signage (i.e., a wall that
avoids bending because of sufficient pressure build up)." Id. at 20, 42--43.
For the reasons discussed below, we agree with Appellants that
Shapoff is not "reasonably pertinent to the particular problem with which the
inventor is involved," as to the recited "baffles." See Bigio, 381 F.3d at
1325. "If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection" whereas "[i]f [the
reference] is directed to a different purpose, the inventor would accordingly
have had less motivation or occasion to consider it." In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). The Examiner and Appellants appear to agree
that the purpose of the identified baffles (I-beams 29) in Shapoff is to allow
"inflation air [to] freely fill enclosure 30" via "air passageways ... provided
around the ends of I-beams 29." Shapoff, col. 3, 11. 1-3 (emphasis added);
see Shapoff Fig. 2 (showing that I-beams 29 (vertical dashed lines) terminate
before reaching top 26 of wall 20W); see also Final Act. 2 (finding that
"Shapoff discloses a wall panel having a plurality of baffles 29 ... defining
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Appeal2014-001416
Application 12/325,944
air chambers which are in fluid communication with each other" and citing
Shapoff, col. 2, 1. 60 - col. 3, 1. 5); Appeal Br. 20, 42--43.
The Examiner and Appellants disagree, however, as to the purpose of
the "baffles" in the claimed invention. We determine that a preponderance
of the evidence does not support the Examiner's finding that "it is the
purpose of the shortened baffles of the instant application to promote the
free distribution of air within the panel so as to avoid a pressure build up."
Ans. 5 (emphasis added). As noted by the Examiner, the Specification (and,
indeed, some claims) provides that, in certain embodiments, the recited
"baffles" may span, for example, less than the entire width of panel 12. See,
e.g., Spec. i-f 24 (providing that baffles 26 (as shown, for example, in Figure
5 and 7) may be "a little shorter than full width 40 of door panel 12"); see
also Ans. 5 (stating that "the purpose of the air chambers of the instant
application as claimed [is] to be in fluid communication with each other by
having the baffles shorter than the overall width of the panel so that the air
can be freely distributed" (citing claims 4 and 6)).2 We first address the
purpose of the "baffles" generally and then address the "shortened baffles"
embodiments.
Each of independent claims 13, 26, and 28 demonstrates that the
purpose of the recited "baffles" is to "restrict air flow" between the top and
bottom portions of the door panel (see Appeal Br. 54 (claims 26 and 28)
(emphasis added)) or, similarly, between the chambers (see id. at 51 (claim
2 The Examiner has identified claims in Rejection 2 (claims 4 and 6)
as relating to these embodiments, but does not appear to identify any claims
in Rejection 1. Regardless, given the outcome, we address these
embodiments with regard to Rejection 1. We do not determine whether any
claims in Rejection 1 necessarily include "shortened baffle" embodiments.
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Appeal2014-001416
Application 12/325,944
13) (emphasis added)). The Specification supports this understanding,
providing that "door panel 12 includes a plurality of pliable baffles 26
(Figures 5-9) that restrict the redistribution of air contained between a first
sheet 28 and a second sheet 30 of door panel 12" and that "[a]s door 10
opens and creates a horizontal crease in sheets 28 and 30 (e.g., where door
panel 12 bends over mandrel 16), baffles 26 help prevent air trapped within
chamber 32 from over inflating the lower end of door panel 12" such that
"baffles 26 prevent the area between mandrel 16 and a lower leading edge
36 of door panel 12 from bulging excessively as door 10 opens." Spec. i-f 19
(discussing Figs. 5-9).
As to the "shortened baffles" embodiments, although we agree with
the Examiner to the extent that "shortened baffles" would allow some air to
flow between certain chambers 34 within overall air chamber 32, we do not
agree that such a configuration transforms the purpose of the "baffles" from
"restrict[ing] air flow" (as discussed above) to "promot[ing] the free
distribution of air within the panel so as to avoid a pressure build up," as
found by the Examiner. Ans. 5; see also In re Klein, 647 F.3d 1343, 1349-
50 (Fed. Cir. 2011) (reversing an obviousness rejection based on
nonanalogous art and, in part, finding that three references were each
"designed to separate its contents, as opposed to ... designed to facilitate
the mixing of those contents").
As noted by Appellants (Reply Br. 11 ), the discussion of the
"shortened baffles" embodiments provides that as "door 10 opens and door
panel 12 travels across mandrel 16, some air within door panel 12 will be
temporarily redistributed to at least one of the lower chambers (e.g., air
chamber 34 ') of the plurality of chambers 34, thereby slightly increasing the
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Appeal2014-001416
Application 12/325,944
air pressure within chamber 34' temporarily," but also provides that the
increase would not be "detrimental[]." Spec. i-f 24. Further, the discussion
provides that the reason to use "shortened baffles" is not to promote air
distribution within the panel, but rather, to "facilitate manufacturing" by
"mak[ing] it easier to join the lateral vertical edges of sheets 28 and 30
together." Id.; see also Fig. 7. For these reasons, we agree with Appellants
that "regardless of the length of the baffles 26 [of the subject invention]
relative to the width of the door panel 12, the purpose of the baffles 26 is to
restrict the redistribution of air." Reply Br. 12. We further agree with
Appellants that "Shapoff describe[ s] enabling or promoting the flow of air
rather than restricting the flow of air as recited in [the claims]." Appeal Br.
25 (emphasis omitted); see also Shapoff, col. 3, 11. 1-3. Because Shapoff is
directed to promoting air distribution, as opposed to restricting air
distribution as claimed, we do not agree with the Examiner that "Shapoff is
reasonably pertinent to the particular problem with which [Appellants were]
concerned." Ans. 4--5; see also Appeal Br. 25; Shapoff, col. 3, 11. 1-3.
We tum now to the Examiner's finding that
[ t ]he feature of redistributing excess air as disclosed by Hoerner
. . . is the equivalent of [A]ppellants['] claimed feature of
"restricting redistribution of air" for they both are providing the
same function of permitting the air entrapped within the panel to
freely move within the panel air chambers or passageways.
Ans. 6 (citing Hoerner i-fi-110, 48). 3 We agree with Appellants (Reply Br. 13)
that the relied-upon embodiment in Hoerner operates differently than the
claimed invention. Hoerner teaches using air passageway 92 "as the means
3 Hoerner is both incorporated by reference into the Specification
(Spec. i-f 17) and relied on to reject all the pending claims.
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Appeal2014-001416
Application 12/325,944
for preventing or relieving pressure by allowing the redistribution of excess
air from the bottom of panel 88 to the upper end of panel 88, thereby
avoiding the creation of a bulge at the bottom of the panel when the door
opens." Hoerner i-f 48 (discussing, inter alia, Figure 16) (emphasis added).
In contrast, as discussed above, the claimed invention relies on restricting air
flow within a panel, using baffles, to avoid creating a bulge at the bottom of
the panel. See Appeal Br. 19-20, 42 (discussing Spec. i-f 5). In other words,
we do not agree that the recited purpose of the "baffles"-to "restrict air
flow"-should be understood to mean "redistributing excess air" or
permitting the free movement of air within a panel. Ans. 6.
Based on the foregoing reasons, we do not sustain the rejection of
claims 13, 15-20, and 25-28 under 35 U.S.C. § 103(a).
Rejection 2- The rejection of claims 1, 3-12, 14, and
21-24 under 35 U.S.C. § 103(a)
In this Rejection, the Examiner relies, in part, on Shapoff to conclude
that claims 1, 3-12, 14, and 21-24 would have been obvious. Final Act. 3.
Like the independent claims discussed above, independent claim 1 (from
which claims 3-12 and 21-24 depend) requires "the baffles to restrict
redistribution of air between a top portion and a bottom portion of the door
panel when the door panel moves between the closed and open positions,
without evacuating air from the door panel." Appeal Br. 49 (Claims App.).
Claim 14 depends from independent claim 13, discussed above.
Appellants contend that the combination of Hoerner, Shapoff, and
Wegner "is improper because Shapoff is not analogous art." Id. at 3 3.
Because Shapoff does not qualify as analogous art, as discussed above, we
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Appeal2014-001416
Application 12/325,944
do not sustain the rejection of claims 1, 3-12, 14, and 21-24 under 35
U.S.C. § 103(a).
DECISION
We REVERSE the decision to reject claims 1 and 3-28.
REVERSED
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