Ex Parte Russegger et al

Patent Trial and Appeal Board

Jan 30, 2017

13176372 (P.T.A.B. Jan. 30, 2017)

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.
13/176,372 07/05/2011 Elias Russegger 13378-572 4467
110407 7590 02/01
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
EXAMINER
PHAN, THIEM D
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
docketing @ burrisiplaw. com
PTOL-90A (Rev. 04/07)
Opinion UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIAS RUSSEGGER, GERHARD SCHEFBANKER,
MARTIN WALLINGER, and KEVIN PTASIENSKI
Appeal 2014-007632
Application 13/176,372
Technology Center 3700
Before: MICHELLE R. OSINSKI, BEVERLY M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
9-12, 14, and 21—31. An oral hearing was held on January 17, 2017. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Watlow Electric
Manufacturing Company.
Appeal 2014-007632
Application 13/176,372
CLAIMED SUBJECT MATTER
The claims are directed to a method of forming a layered heater
system having conductive overlays. Claim 9 is the sole independent claim; it
illustrates the claimed subject matter and is reproduced below:
9. A method of forming a layered heater comprising:
forming a continuous resistive layer over a substrate;
forming conductive overlays in predetermined areas of the
resistive layer by a layered process selected from a group
consisting of thick film, thin film, thermal spray and sol-gel
processes; and
removing portions of the continuous resistive layer
between the conductive overlays to form a plurality of single cuts
extending between the conductive overlays,
wherein the single cuts extend through the continuous
resistive layer between the conductive overlays and
longitudinally into a portion of the corresponding conductive
overlays.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gardner US 6,483,087 B2 Nov. 19,2002
Kaastra US 2009/0218333 A1 Sept. 3, 2009
Kaastra W02007/008075 A2 Jan. 18,2007
REJECTIONS
The Examiner makes the following rejections:
Claims 9-12, 14, 24, and 26—31 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Gardner.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gardner and Applicants’ Admitted Prior Art (AAPA).
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Application 13/176,372
Claim 21—23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gardner and AAPA.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gardner and Kaastra.2
ANALYSIS
Rejection of Claims 9—12, 14, 24, and 26—31
as Anticipated by Gardner.
Appellants argue Claims 9, 11—12, 14, 24, and 26—31 as a group.
Appeal Br. 4—8. We select claim 9 as representative, and the remaining
claims in this group stand or fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv).
At issue in this rejection is whether Gardner discloses a “layered
heater” or “forming conductive overlays in predetermined areas of the
resistive layer by a layered process selected from a group consisting of thick
film, thin film, thermal spray and sol-gel processes.” Appeal Br. 12 (Claims
App.). Appellants argue that the term “layered heater” has been specifically
defined by paragraph 43 of the Specification. Id. at 4. We find no explicit
definition of this term in paragraph 43. Instead, paragraph 43 describes in
part, how to make a layered heater using a “layering process” to form the
resistive layer in such a heater. Spec. 143. The provided definition of
“layering processes” is broad and includes “processes that generate at least
one functional layer . . . wherein the layer is formed through application . . .
2 The Examiner is using the two Kaastra references interchangeably; they are
substantively identical.
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Application 13/176,372
of a material to a substrate . . . using processes associated with thick film,
thin film, thermal spraying, or sol-gel, among others.” Id.
The Examiner finds that Gardner formed “conductive overlays
(Copper buses) in predetermined areas of the resistive layer by a layered
process selected from a group consisting of thin film resistive heater,” citing
Gardner col. 3,1. 5. (“[I]invention has . . . advantages ... in that it is thin.”)
Final Act. 2. See also Ans. 3^4. Gardner also provides an example in which
the copper busses are made from copper foil strips 50 microns thick and 3
mm wide. Gardiner 8:62—65. The Examiner’s Answer emphasizes the
breadth of the definition of “layering processes” in the Specification and
points out that “there is no detailed or clear information about the ‘layered
process.’” Ans. 8 citing Spec. 143.
Appellants argue that a “layered process involves specific
manufacturing steps, temperature and pressure etc.” Appeal Br. 5.
Appellants argue that “Gardner et al. does not disclose a layered heater, nor
a layer of material formed by a layered process.” Id. “‘Thin’ as used in the
cited portion [of Gardner] simply refers to the geometrical thickness of the
laminated fabric heater as being smaller than the thickness of prior art
heaters.” Appeal Br. 5—6 (emphasis omitted). Without explanation,
Appellants argue that “Gardner [] does not inherently teach, imply[,] or
suggest that the laminated fabric heater is a ‘thin film’ heater or that a thin
film process is used to apply any material on the heater.” Id.
Appellants argue that “thin film process” has been overly broadly
construed by the Examiner because “thin film” refers to “deposition
processes such as ion plating, sputtering, chemical vapor deposition (CVD),
and physical vapor deposition (PVD), among others.” Appeal Br. 7, citing
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Application 13/176,372
Spec. | 5. Appellants maintain that the reference to “thin” in Gardner did
not invoke any of these technological processes. Appeal Br. 7.
Appellants return to the definition of “layering process” in their
Reply, asserting that “a layering process is a particular type of process that
involves application or accumulation of a material, similar to building-up or
additive manufacturing, which one skilled in the art would readily
understand.” Reply Br. 3. Appellants cite the Specification, paragraph 5,
where they state that “the layers for thin film heaters are typically formed
using deposition processes such as ion plating, sputtering, chemical vapor
deposition (CVD), and physical vapor deposition (PVD), among others.”
Appeal Br. 7 (quoting Spec. 1 5) (emphasis added). A similar description of
typical processes for forming thick films is also given. Spec. 1 5. Relying
on Specification | 5, Appellants argue the “layering process may be a thick
film process, a thin film process, a thermal spray process or a sol-gel
process.” Reply Br. 3. Appellants omit from the end of the last quoted
sentence “among others” and give no weight to the fact that these processes
are cited in the Specification only as “typical”. Spec. Tflf 5 and 43. Finally,
Appellants disavow the specific definition given in the Specification stating
“Applicant fsicl did not intend to create a new term or a new definition for
“layering process.” Reply Br. 3.
But for all their argument, Appellants point to no evidence to support
a more specific definition of either “layered process” or “thin film process.”
The Specification includes a broad definition of “layered process,” typical
examples of thin film processes with no further explanation, and the
suggestion that there are “others” (Spec. 1 5). Appellants have submitted no
evidence which would support a more narrow definition. We agree with the
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Application 13/176,372
Examiner that there is just no specific definition of a thin film process that
renders the Examiner’s interpretation unreasonable and that would justify a
narrower construction of the term than the Examiner’s interpretation. The
Examiner finds that “there is no detailed or clear information about the
‘layered process.’” Ans. 8. The Examiner provides a reasoned basis for his
decision, and Appellants have not directed us to any evidence which would
support a contrary conclusion. “Attorney’s argument in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1404 (CCPA 1974).
Accordingly we are not persuaded of error in the rejection of claims 9-12,
14, 24, and 26—31 as it anticipated by Gardner.
Rejection of Claim 9 as obvious
in view of Gardner and AAPA.
Applicants’ Admitted Prior Art describes layered heaters and various
techniques used to make them. Spec. 1 5. Gardner’s disclosures are
discussed above. The Examiner concludes it would have been obvious to
one of ordinary skill in the art at the time of the invention “to modify the
method of Gardner [] by applying the many techniques of making the
resistive heaters, as taught by the AAPA, in order to have a variety of
processes of making different resistive layers, different conductive overlays
for different characteristics of resistance of laminated heaters.” Final Act. 6.
The Examiner’s Answer explains that Gardner is relied on to teach a method
of making a heater element with an additional conductive layer at the bends
of the resistive layer and that AAPA teaches making a thin film heater by
various techniques including sputtering and chemical vapor deposition. Ans.
9. The Examiner finds that it would have been obvious to one of ordinary
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Application 13/176,372
skill in the art at the time the invention was made to modify the conductive
fibers of Gardner and the additional copper layer at the bend portions of
Gardner with a resistive layer of thin film made by a method taught by
AAPA as well as to add additional thin film at the bend portions in order to
have a variety of processes for making different resistive layers, different
conductive overlays, using different compositions for different
characteristics of heater elements. Id.
In view of the Examiner’s position, the Appellants’ argument that
Gardner discloses a fabric heater which is incompatible with sputtering or
other thin film layering processes is not persuasive because it does not
address specifically the combination proposed by the Examiner. See Appeal
Br. 8—10, Reply Br. 3—5. In effect, the Examiner is proposing using
Gardner’s teaching of the general arrangement of a layered heater with an
added layer where conductive pathways bend, but is suggesting
manufacturing the heater using known layered heater techniques and
materials. Ans. 9. Appellants’ arguments are not persuasive because they
do not address the combination proposed by the Examiner.
Rejection of Claims 21—23 as obvious
in view of Gardner and AAPA.
Appellants argue that claims 21—23 are patentable over the
combination of Gardner and AAPA for the same reasons as claim 9 is
patentable over that combination. Appeal Br. 10. We are not persuaded the
Examiner erred in the rejection of claim 9, and we are likewise not
persuaded of error in the rejection of claims 21—23.
Rejection of Claim 25 as obvious
In view of Gardner and Kaastra.
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Appellants argue claim 25 is patentable for the same reasons that
claim 9 is patentable. Appeal Br. 10. As we find no error in the rejection of
claim 9, we are not persuaded of error in the rejection of claim 25.
DECISION
For the above reasons, the Examiner’s rejection of claims 9—12, 14,
and 21—31 is affirmed.
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) (2009).
AFFIRMED
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