Ex Parte Schwartz

Patent Trial and Appeal BoardNov 13, 2012

11840787 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD A. SCHWARTZ ____________ Appeal 2010-005571 Application 11/840,787 Technology Center 2800 ____________ Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to Ribbed Telescope Mirrors with Thermal Gradient Control. The Examiner has rejected claims 1-6 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE The claims relate to ribbed mirrors allowing heat to be conducted past the glass during optical polish and application of coatings and methods of Appeal 2010-005571 Application 11/840,787 2 fabricating the same. The method comprises placing a bridge of thermally conductive material in thermal contact with the mirror plate and the supporting rib at the interior angle. The preferred thermally conductive material is room temperature vulcanizing silicone. (Abstract). Claims 1-6 are on appeal. Claim 1 is the sole independent claim and reads as follows with a disputed limitation italicized: 1. An improved telescope mirror having a mirror plate and a supporting rib, said mirror plate and supporting rib having been joined together at an interior angle during prior fabrication, wherein the improvement comprises a separate, removable fillet of thermally conductive material in thermal contact with said mirror plate and said supporting rib at said interior angle, whereby said improved telescope mirror will experience reduced thermal gradients during subsequent fabrication which generates heat. The claims stand rejected as follows:  Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pelkey (US 2,988,959; June 20, 1961). (Ans. 3-4).1  Claims 3-6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pelkey and Okamoto (JP 61-57676 A; March 24, 1986). (Ans. 4-5). CLAIM 1 Issue The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as obvious. The Examiner finds that 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: Appellant’s Amended Appeal Brief (App. Br.) filed July 29, 2009, and the Examiner’s Answer (Ans.) mailed December 21, 2009. Appeal 2010-005571 Application 11/840,787 3 Pelkey et al discloses a telescope mirror (see column 2, lines 58-62) comprising a mirror plate (1, 2), and a supporting rib (the vertical wall of element 4), wherein said mirror plate and supporting rib are joined together at an interior angle by a fillet (see Fig. 2) which is obviously capable of being removed, by techniques commonly used and employed in the art, if one so desired, wherein said fillet comprises a thermosetting epoxy resin (see column 2, lines 62-68) which is obviously a thermally conductive material due to the fact that all materials are thermally conductive to a certain degree, note figures 1-4 along with the associated description thereof, except for explicitly stating that the telescope mirror/epoxy resin is subject to a subsequent fabrication that will experience reduced thermal gradients. (Ans. 3). Appellant contends, inter alia, that “the thermosetting resin of Pelkey is not a separate, removable fillet in any way similar to the removable fillet of the present invention.” (App. Br. 18). The issue with respect to this rejection is whether Pelkey discloses a fillet separate from a previously-joined rib and mirror assembly. Findings of Fact (FF) 1. Pelkey discloses a fillet (see Ans. 6 (showing Pelkey’s Figure 2 enlarged and marked indicating “Fillet (F)”)). 2. Pelkey discloses that a mirror plate is affixed to a face of a spacer using an amount of an epoxy adhesive. (See Pelkey, col. 2:62-68). 3. One of ordinary skill in the art would have understood that the fillet (F) is formed during the adhesion process as residual epoxy that is pressed from between the mirror plate and the face of the spacer. (See Pelkey, col. 2:68-70). Appeal 2010-005571 Application 11/840,787 4 4. Pelkey discloses that fillet (F) is separate from the mirror plate (1) and the supporting rib (4) at an interior angle thereof. (see Ans. 6 (showing Pelkey’s Figure 2 enlarged and marked indicating “Fillet (F)”)). Principle of Law A structure is the same regardless of when it was applied. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted) (noting that reciting how a product is made does not further limit the structure of the product itself). Analysis It is undisputed that Pelkey’s resin in Figure 2 is a fillet. (FF 1); (Br. 17) (“[Pelkey’s] thermosetting resin is placed between the mirror and supports. The fillet is just produced when making the assembly. In fact the fillet is immaterial to Pelkey . . . .”); Ans. 5-6 (showing fillet (F) in the annotated figure). This appeal turns on a key threshold question: Is this fillet separate? Pelkey’s fillet is formed when the mirror plate and spacer are joined (i.e., during “prior fabrication”) (FF 3). The Examiner notes that Pelkey’s Figure 2 shows “a fillet (F) having a portion of which is clearly separate from the mirror plate (1) and the supporting rib (4) at an interior angle thereof . . . .” Ans. 5 (emphasis added). The Examiner’s enlargement of Figure 2 graphically depicts these distinct structures. Although the fillet (1) lacks a reference numeral, and (2) is small compared to the mirror plate and supporting rib, the fillet is nonetheless shown as separate from those Appeal 2010-005571 Application 11/840,787 5 structures as the Examiner indicates. That Pelkey represents the fillet with darkened angled regions that are separate and distinct from the mirror plate and supporting rib in Figure 2 only bolsters the Examiner’s finding that the fillet is separate. Although this fillet is “residual” adhesive (FF 3), it nonetheless is separate from the mirror plate and supporting rib (FF 4). Indeed, the very fact that the adhesive is “residual” only bolsters the notion that it is separate from the other bonded structures. If we were to construe claim 1 such that a fillet is not separate if it is applied during the process of as a part of joining Pelkey’s mirror plate and spacer (i.e., during “prior fabrication”), but is separate if applied to the previously-joined structure, such a construction would graft temporal aspects to an otherwise clear and simple structural limitation, essentially converting it to a product-by-process limitation. Appellant argues that the fillet does not represent a product-by-process limitation (see App. Br. 20). Despite Appellant’s arguments, we fail to see any structural distinction between a fillet applied during or after “prior fabrication”, the resulting fillet structure is the same regardless of when it was applied. See Thorpe, 777 F.2d at 697. That is, the fillet is separate from the mirror plate regardless of whether it was applied before, during, or after joining; the fillet does not disappear or unite with the bonded structures so as to lose its separate identity. Rather, Pelkey’s fillet remains a separate structure despite its bonding adjacent structures as evidenced in Figure 2. Because we find that Pelkey’s fillet is separate, the next question is whether it is removable. Although Pelkey is silent in this regard, we nonetheless see no reason why it would have not been obvious for the fillet’s resin to be removable as the Examiner indicates. Ans. 7. Apart from citing Appeal 2010-005571 Application 11/840,787 6 a passage pertaining to epoxy adhesives from Wikipedia—a non-peer- reviewed source of dubious reliability and low probative value2—Appellants provide scant evidence proving that Pelkey’s adhesive is not removable, let alone that using a removable adhesive in Pelkey would not have been an obvious variation. See Br. 18-20. In fact, not only does Appellant admit that epoxy resins are chemically removable (Br. 18), Appellant’s arguments regarding various removal techniques are replete with speculative and unsubstantiated assertions that hardly prove that that these techniques could not be employed in Pelkey, let alone that using a removable adhesive would not be obvious enhancement to that system. See, e.g., Br. 18 (“Employing mechanical means such as grinding or chiseling would likely result in undue heating of the delicate mirrored surface if not outright physical destruction. While it may be possible to dissolve the epoxy resin chemically, the corrosive nature of such chemicals and/or solvents would also likely damage the mirror.”) (emphases added). That Appellant’s disclosed fillet may be removable with one’s fingers as Appellant argues (Br. 19) hardly limits the recited fillet to that characteristic under the term’s broadest reasonable interpretation. 2 See, e.g., Ex parte Three-Dimensional Media Group, Ltd., No. 2009- 004087, 2010 WL 3017280 (BPAI 2010) (non-precedential), at *17 (“Wikipedia is generally not considered to be as trustworthy as traditional sources for several reasons, for example, because (1) it is not peer reviewed; (2) the authors are unknown; and (3) apparently anyone can contribute to the source definition”); see also Bing Shun Li v. Holder, 2010 WL 4368469 (5th Cir. 2010) (unpublished), at *2 (noting Wikipedia's unreliability and citing Badasa v. Mukasey, 540 F.3d 909, 910-11 (8th Cir. 2008)). Appeal 2010-005571 Application 11/840,787 7 Lastly, we see no error in the Examiner’s finding that Pelkey’s adhesive is thermally conducting—a point that Appellant actually acknowledges. See Br. 19 (acknowledging the validity of the Examiner’s statement that Pelkey’s epoxy resin is thermally conductive). Appellant’s contention that “a design engineer would more likely use an epoxy resin for its thermal insulating properties than its thermal conducting properties” is speculative and unsubstantiated, as is Appellant’s assertion that epoxy resins are typically combined with metal powders such as aluminum. Br. 19. In any event, even if these unsubstantiated statements are valid, that hardly precludes Pelkey’s using a thermally-conductive resin as an adhesive. That is, the fact that the adhesive can be made more thermally-conductive by adding thermally-conductive material does not obviate the fact that the adhesive is otherwise thermally conductive. On this record, we find the Examiner’s obviousness rejection of claim 1 reasonable, and affirm that rejection. CLAIMS 3-6 Issue Claims 3-6 recite the “thermally conductive material is room temperature vulcanizing silicone” (RTV). The Examiner finds that “it is well known to use RTV silicone adhesives in the same field of endeavor for the purpose of attaching/sealing optical components.” The Examiner further finds that: it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify/substitute the epoxy resin of Pelkey et al to include a RTV silicone adhesive Appeal 2010-005571 Application 11/840,787 8 material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability as an adhesive/sealant with increase longevity. (Ans. 4). Appellant argues: [RTV silicone] is typically soft, pliable and elastic in nature. It would not provide the structural features required to provide and maintain the rigid, high-strength, shock-resistant mirror assembly described in Pelkey. Furthermore, thermally conductive room temperature vulcanizing silicone is nowhere described in Pelkey. Applicant asserts, therefore, that this element is missing from the cited reference and use of this material is not found in the knowledge of one ordinarily skilled in the art of building durable, shock-resistant mirror assemblies. Such skilled individuals would typically use the materials described in Pelkey or their modem analogues. Such persons would never use a pliable, resilient silicone product to achieve the rigidity required for the Pelkey invention. (App. Br. 22-23). Findings of Fact (FF) 5. The intended purpose of Pelkey’s mirror is for use where it will be subject to sudden impacts, sudden jerks, and rapid oscillations such as in infra-red scanning apparatus in high-speed aircraft. (Pelkey, col. 1, ll. 17- 26) 6. Pelkey discloses that it is an important feature of Pelkey’s invention that the spacers are bonded with a thermosetting resin that will set Appeal 2010-005571 Application 11/840,787 9 at room temperature and thereby effect a secure connection without distortion, (Pelkey, col. 1:56-60) that will withstand repeated shocks (Pelkey col. 3, ll. 25-35). 7. Okimoto discloses that RTV silicone rubber cited by the Examiner has rubber-like resiliency. (Okamoto, p. 1). 8. Okimoto discloses that the bonding force of silicone rubber is not as strong as other adhesives. (Okamoto, p. 3). Analysis Appellant implicitly argues that a person of skill in the art would know that substituting an RTV silicone for the epoxy of Pelkey would render the Pelkey invention unsuitable for its intended use. (See App. Br. 21- 22). In contrast, the Examiner is of the opinion “that the substitution of a RTV silicone material for the epoxy resin of Pelkey et al would certainly be capable of providing and maintaining a rigid, high-strength, shock-resistant mirror assembly.” (Ans. 9). However, the Examiner does not identify anything in the record that would support this assertion. The Pelkey invention requires that the spacers are bonded with a thermosetting resin that will set at room temperature and effect a secure shock-resistant connection without distortion. (FF 5, 6). Regarding claim 3, the Examiner cites Okamoto for teachings relating to the properties of RTV silicones. (Ans. 4-5). The Pelkey structure requires a rigid and high-strength bond. (FF 6; see Ans. 9). However, Okomoto teaches that RTV silicones have a “rubber-like resiliency” (FF 7) and that it is known that the bonding force of RTV silicone is not as strong as other adhesives. (FF 8). The Appeal 2010-005571 Application 11/840,787 10 Examiner states that it is “within the general skill of a worker in the art to select a known material on the basis of its suitability as an adhesive/sealant with increase[d] longevity.” (Ans. 4). However, the Exmainer does not point to any evidence in the record that the RTV silicone would have a greater longevity than epoxy when used in Pelkey’s mirror. We are not persuaded that the skilled mirror artisan, who requires a rigid, high-strength bond (FF 5, 6), would substitute a material that has a rubber-like resiliency and a lower bonding force (FF 7, 8) for Pelkey’s epoxy. We therefore do not sustain the rejections of claims 3-6. CLAIM 2 Issue Claim 2 recites the “thermally conductive material is room temperature vulcanizing silicone.” The Examiner finds that “it is well known to use RTV silicone adhesives in the same field of endeavor for the purpose of attaching/sealing optical components.” Ans. 4. Analysis As discussed above, Pelkey does not disclose an RTV material. The Examiner states that it is “within the general skill of a worker in the art to select a known material on the basis of its suitability as an adhesive/sealant with increase[d] longevity.” (Ans. 4). However, the Examiner does not point to any evidence in the record that the RTV silicone would have a greater longevity than epoxy when used in Pelkey’s mirror. Moreover, we are not persuaded that the skilled mirror artisan, who requires a rigid, high- strength bond (FF 5, 6), would substitute a material that has a rubber-like Appeal 2010-005571 Application 11/840,787 11 resiliency and a lower bonding force (FF 7, 8)3 for Pelkey’s epoxy. We therefore do not sustain the rejection of claim 2. CONCLUSIONS OF LAW We find Pelkey anticipates claim 1 because the reference discloses each limitation thereof. A fortiori, Pelkey renders claim 1obvious because disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). We find using an RTV in lieu of the adhesive in Pelkey renders the structure of Pelkey unsuitable for its purpose. In view thereof, we decline to sustain the rejection of claim 2. Nor does the Examiner’s reliance on Okamoto cure this deficiency with respect to claims 3-6. Therefore the combined teachings of Pelkey alone or in combination with Okamoto do not render obvious claims 3-6 In view of the foregoing, we decline to sustain the rejection of claims 3-6. DECISION We affirm the rejection of claim 1 as obvious under 35 U.S.C. § 103(a). 3 Although not relied on by the Examiner in rejecting claim 2, we look to Okimoto as evidence in the record of the properties of RTV materials. Appeal 2010-005571 Application 11/840,787 12 We reverse the rejections of claims 2-6 as obvious under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART babc