Ex Parte Linow et al

Patent Trial and Appeal BoardJul 30, 2013

11291455 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SVEN LINOW, STEFAN FUCHS, and SIEGFRIED GROB ____________________ Appeal 2011-005996 Application 11/291,455 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, JOHN W. MORRISON, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005996 Application 11/291,455 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The independent claims on appeal are claims 1, 9, and 10. Claim 1, reproduced below, is illustrative of the appealed subject matter. 1. An IR radiant heater comprising at least one planar carbon heating element (1) in a housing, the housing being at least partially transparent to IR radiation, wherein the at least one carbon heating element (1) is a carbon fiber-reinforced carbon web arranged in a plane and arranged between a first plate (2) and a second plate (3), at least one of the first plate (2) and second plate (3) being at least partially transparent to IR radiation. REJECTIONS Appellants seek review of the following rejections:2 (1) the rejection of claims 1-3, 6, and 10 under 35 U.S.C. § 102(e) as anticipated by Toya (EP 0 899 771 B1, pub. Sep. 29, 2004) (Ans. 4-5); and (2) the rejection of claims 4, 5, and 7-9 under 35 U.S.C. § 103(a) as unpatentable over Toya and Park (US 6,949,727 B2, iss. Sep. 27, 2005) (Ans. 5-6).3 1 Appellants identify the real party in interest as Heraeus Noblelight GmbH. App. Br. 1. 2 The Examiner has withdrawn the rejection of claims 1-10 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3. Appeal 2011-005996 Application 11/291,455 3 ANALYSIS Rejection (1) The Examiner’s rejection is predicated on the finding that Toya teaches the heating element being carbon fiber-reinforced carbon (CFC). Ans. 4. The Examiner’s finding is based on Toya’s disclosure that “[t]he heater member 11 comprises a plurality of carbon fiber bundles comprising having [sic] a plurality of carbon fibers, said bundles are woven into a wire shape.” Toya, col. 37, ll. 42-44 or para. [0277]. See Ans. 4. The Examiner explains that “the carbon fibers in the ‘bundle’ serve each to reinforce the others within the bundle[,] and further[,] the weaving of the ‘woven’ bundles further reinforces the element.” Ans. 7. The Examiner, thus, assigns a 3 Appellants’ Appeal Brief also raises an additional issue, namely, whether the corrected translation of paragraph [0010] of Appellants’ Specification submitted with the amendment of June 29, 2007 and based on priority application DE 10 2004 058 077 A1 and supported by the Declaration of William W. Schwarze attached to the Appeal Brief, contains new matter. App. Br. 3-5. This issue is reviewable by petition to the Director under 37 C.F.R. § 1.181. See MPEP § 1201 (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”)). Although the Examiner’s rejection of claims 1-3, 6, and 10 under 35 U.S.C. § 102(e) references Appellants’ purported admission that Toya’s carbon fibers are carbon fiber-reinforced carbon (Ans. 4 (citing Spec. 2, para. [0010] as originally filed)), we do not consider the translation error to be a clear admission that Toya’s carbon fibers are carbon fiber-reinforced carbon and do not rely on this purported admission in rendering our decision. Thus, we do not review this issue relating to correction of the translation. Appeal 2011-005996 Application 11/291,455 4 “broad interpretation of the claim language” “[a]bsent a distinguishing definition of CFC” in the Specification. Id. The Examiner has not provided sufficient evidence to show that one of ordinary skill in the art would understand the claim terminology “carbon fiber-reinforced carbon” to be only carbon fibers that have been bundled together and woven into a wire or tape shape. Appellants contend that “[c]arbon fiber-reinforced carbon, as is generally known in the field and as its name implies, is a composite carbon material reinforced through the use of carbon fibers.” App. Br. 7. The words of a claim are given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the Specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Here, “carbon fiber reinforced carbon” is a term of art, having a meaning ascribed by a person of ordinary skill in the art. See also Indian Academy of Sciences, Sādhanā-Academy Proceedings in Engineering Sciences, Vol. 28, Parts 1 & @, February/April 2003, pp. 349-358, available at www.ias.ac.in/sadhana/Pdf2003Apr/Pe1069.pdf (last visited Jul. 23, 2013) (referencing “[c]arbon fibre reinforced carbon matrix composites or the so called carbon-carbon (C/C) composites”). Moreover, Toya itself distinguishes between interwoven carbon fiber bundles and conventional carbon fiber-reinforced carbon or C/C. See App. Br. 4, 7-8 (citing Toya, para. [0094]) (“the carbon fibers to be materials for the carbon heater are ones which are not solidified with resins and integrated, unlike the conventional C/C”); see also Toya, paras. [0269] (stating, “[i]n a heater member in which a plurality of carbon fiber bundles having a plurality of carbon fibers are woven of the carbon heater, the thermal capacity can be Appeal 2011-005996 Application 11/291,455 5 made small compared to C/C, and through-put of rapid heating and rapid cooling could be materially improved”) and [0004] (referring to “graphite- carbon fiber composite as “C/C”). Appellants contend that the Specification uses the term “carbon fiber- reinforced carbon” consistent with its meaning as a composite carbon material reinforced through the use of carbon fibers. Reply Br. 2-3. In particular, Appellants contend that its Specification “distinguishes the claimed ‘carbon fiber-reinforced carbon’ material from . . . carbon fibers that do not reinforce a separate material.” Id. (citing Spec., paras. [0010]-[0013], [0016]). For example, paragraph [0012] of Appellants’ Specification points out that “an electrical output of up to 28 kW/m2 is obtained with braided carbon fibers,” whereas carbon radiators which are “cut from CFC sheets” can produce “surface outputs of over 30 kW/m2, in particular over 100 kW/m2.” Spec., para. [0015]. This difference in surface outputs supports that one of skill in the art would understand there to be a difference between carbon fibers braided into bundles and carbon fiber-reinforced carbon sheets. Additionally, paragraph [0016] of Appellants’ Specification explains that CFC material is “produced . . . by using a thread that was produced from a plurality of short fiber sections and then interwoven into a web” and that “such [a] web[] . . . remain[s] flexible and tear-resistant after impregnation and conversion into CFC.” (Emphasis added). This disclosure supports that one of skill in the art would understand that formation of CFC requires impregnation of fibers and a conversion process, which is distinguishable from mere braiding of fibers. The scope of the claims in patent applications is determined not solely on the basis of the claim language, but upon giving claims “their broadest Appeal 2011-005996 Application 11/291,455 6 reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Thus, even though there is no lexicographical definition of “carbon fiber-reinforced carbon” in the Specification, the Examiner should have considered how the ordinary skilled artisan would have interpreted the claim terminology of “carbon fiber-reinforced carbon.” The Examiner’s finding that carbon fiber bundles woven into wires or tape would suffice to meet this claim limitation is not supported by a preponderance of the evidence. In view of the foregoing, the Examiner’s decision to reject independent claims 1 and 10, as well as their dependent claims, under 35 U.S.C. § 102(e) as being anticipated by Toya is not sustained. Rejection (2) This rejection relies on the Examiner’s erroneous finding that Toya teaches a carbon fiber-reinforced carbon element, and the Examiner has not explained how Park might cure this deficiency. Ans. 5-6. Accordingly, for the reasons discussed supra, we do not sustain the Examiner’s rejection of claims 4, 5, and 7-9 as unpatentable over Toya and Park. DECISION The Examiner’s rejection of claims 1-3, 6, and 10 under 35 U.S.C. § 102(e) as anticipated by Toya is REVERSED. The Examiner’s rejection of claims 4, 5, and 7-9 under 35 U.S.C. § 103(a) as unpatentable over Toya and Park is REVERSED. REVERSED Klh