Ex Parte Prentice

Patent Trial and Appeal BoardMar 16, 2018

13138844 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/138,844 01/17/2012 132052 7590 03/20/2018 Hahn Loeser & Parks, LLP - Chicago 125 South Wacker Drive Suite 2900 Chicago, IL 60606 FIRST NAMED INVENTOR Thomas Campbell Prentice 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. 5618/114663 6670 EXAMINER POLLEY, CHRISTOPHER M ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/20/2018 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): patents@hahnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS CAMPBELL PRENTICE Appeal2017-003609 Application 13/138,844 Technology Center 1700 Before CATHERINE Q. TIMM, DONNA M. PRAISS, and MERRELL C. CASHION, Jr., Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1--4, 25, and 51 under 35 U.S.C. Â§ 102(b) as anticipated by Vance3 and claims 36, 37, and 41under35 U.S.C. 1 In explaining our Decision, we cite to the Specification dated October 7, 2011 (Spec.), the Final Office Action dated August 21, 2015 (Final), the After-Final Amendment dated Feb. 12, 2016 (After-Final Arndt.), the Advisory Action dated Feb. 23, 2016 (Advisory), and the Examiner's Answer dated November 3, 2016 (Ans.). 2 Appellant identifies the real party in interest as ZIRCOTEC LIMITED. Appeal Br. 2. 3 Vance, US 2006/0216547 Al, published Sept. 28, 2006. Appeal2017-003609 Application 13/138,844 Â§ 103(a) as obvious over Vance. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. The claims are directed to an article for insulation having a flexible substrate of metal foil. Claim 1 is illustrative: 1. An article for insulation, the article comprising: a flexible substrate and a working layer thereon; the working layer comprising an array of insulating elements, the insulating elements being separated by gaps so that the article is flexible, wherein the insulating elements are made of at least one of metal or ceramic: and wherein the substrate is a metal foil. Appeal Br. 9 (claims appendix) (emphasis added). OPINION The issue on appeal is: Has Appellant identified a reversible error in the Examiner's finding that Vance teaches a metal foil flexible substrate? Appellant has identified such an error. The error arises due to an unreasonably broad reading of the term "metal foil." After the final rejection, Appellant amended claim 1 to incorporate the limitation of claim 33 requiring that the flexible substrate be a metal foil. After-Final Arndt. The Examiner entered the After-Final Amendment. Advisory. In the Final Office Action, when rejecting claim 33, the Examiner found that Vance's substrate 34, shown in Figure 4, and substrate 54, shown in Figure 5, are made of an alloy material. Final 6, citing Vance i-f 21. In the Answer, the Examiner further explained that airfoil 72, shown in Figure 7, is equivalent to a metal foil layer. Ans. 3. 2 Appeal2017-003609 Application 13/138,844 Substrates 34 and 54 of Vance are substrates of component 30 (Figure 4) and component 50 (Figure 5) of a gas turbine engine, respectively. As shown in Figure 7, the component may be a combustion turbine stationary vane 70 having an airfoil section 72 and a platform section 74. The substrates are shown as large structural objects. Vance Figs. 4, 5, 7. Vance discloses that substrate 34 "may be any appropriate structural material, for example an alloy material or composite material such as an oxide/oxide CM C material." Vance i-f 21. The Examiner determines that the alloy substrate of Vance reads on Appellant's metal foil because the alloy can be bent or flexed. Ans. 3. This determination is based on the definition of "metal foil" as meaning "a metal layer that has [sic] can [be] bent or flexed" and a finding that Vance teaches an alloy that can be bent or flexed. Id. As further explained below, both the Examiner's claim interpretation and the Examiner's finding lack adequate support. The Examiner's claim interpretation is not supported. This is because the Examiner's claim interpretation is not consistent with the meaning the ordinary artisan reading the Specification would give the terms. The Specification uses the term "metal foil" to refer to foils, such as aluminum foil (Spec. 1, at para. 5), that have thicknesses on the order of 0 .1 mm (Spec. 13, at para. 4). This is consistent with the ordinary and accustomed meaning of metal foil as "very thin sheet metal " (Exhibit 1, Merriam-Webster definition, at 3) "Definition of Foil by Merriam-Webster" http://www.merriam-webster.com/dictionary/foil (last visited Jan. 2, 2016) and "[ m ]etal hammered or rolled into a thin flexible sheet, used chiefly for covering or wrapping food: aluminium foil" (Exhibit 2, Oxford Dictionaries 3 Appeal2017-003609 Application 13/138,844 definition, at 5) "Definition of foil in English from the Oxford dictionary" http://www.oxforddictionaries.com/definition/english/foil (last visited Jan. 2, 2016). Moreover, the Examiner's finding that Vance teaches an alloy that can be bent or flexed is not supported. Vance teaches that the substrate can have a curved surface (Vance i-f 22; Fig. 7), but the substrate is a large structural object and is not taught as flexible. Vance Fig. 7. Nor does Vance teach bending or flexing the substrate. Vance teaches large structural substrates such as the airfoil section 72 and platform section 7 4 of a combustion turbine stationary vane. Vance i-f 26. These are large structural objects, not thin sheets of metal on the order of 0.1 mm in thickness. See, e.g., Fig. 7. That such large structural articles as the airfoils and platforms of Vance are not metal foils within the meaning of Appellant's claims becomes clear when one considers the use of the term "foil" in the Specification and the ordinary and customary meaning of the term as evinced by the dictionary definitions submitted by Appellant. Both rejections suffer from the error. CONCLUSION We do not sustain the Examiner's rejections. DECISION The Examiner's decision is reversed. REVERSED 4