Ex Parte Thiagarajan et al

Patent Trial and Appeal Board

Oct 6, 2017

11668732 (P.T.A.B. Oct. 6, 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.
11/668,732 01/30/2007 Chinniah Thiagarajan 217982-l-US-NP 4320
23413 7590 10/11/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street IHEZIE, JOSHUA K
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/11/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHINNIAH THIAGARAJAN, FRANS ADRIAANSEN, and
EELCO VAN HAMERSVELD,
Appeal 2015-005052
Application 11/668,7321
Technology Center 3600
Before MICHAEL L. HOELTER; ANNETTE R. REIMERS, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final decision rejecting claims 1—10, 12—18, and 20—23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 We note Appeal No. 2012-002882, involving this Patent Application, was
previously decided by the Board.
2 Appellants represent that the real party in interest is S ABIC Global
Technologies B.V. Appeal Br. 2.
Appeal 2015-005052
Application 11/668,732
CLAIMED SUBJECT MATTER
Claims 1 and 20, reproduced below, are illustrative of the claimed
subject matter.
1. A multiwall sheet, comprising:
non-intersecting polymer walls comprising outer layers; and
transverse layers, wherein the transverse layers extend
perpendicular and intersect the polymer walls, wherein only the
transverse layers and polymer walls define cells; and
wherein the multiwall sheet has a non-uniform cell density.
20. A naturally light structure, comprising:
a building structure; and
a roof comprising a multiwall sheet, wherein the multiwall
sheet comprises
non-intersecting polymer walls comprising outer layers; and
transverse layers, wherein the transverse layers extend
perpendicular to and
intersect the polymer walls, wherein only the transverse layers
and polymer walls define cells; and
wherein the multiwall sheet has a non-uniform cell density.
REJECTIONS
I. Claims 1—10, 14, 17, 18, 22 and 23 stand rejected under 35
U.S.C. § 103(a) over Donea (U.S. Patent Publication No.
2005/0112331 Al, pub. May 26,2005) andPajak (U.S. Patent
No. 2,793,718, iss. May 28, 1957).
II. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a)
over Donea, Pajak, and Boyd (U.S. Patent No. 2,858,734, iss.
Nov. 4, 1958).
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III. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a)
over Donea, Pajak, and Groothues (U.S. Patent Publication
No. 2004/0191485 Al, pub. Sept. 30, 2004).
IV. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a)
over Beekman (U.S. Patent No. 5,972,475, iss. Oct. 26, 1999)
and Pajak.
ANALYSIS
Obviousness over Donea and Pajak Claims 110, 14, 17, 18, 22 and 23
a. Claims 1, 17, and 18
For independent claims 1,17, and 18, Appellants rely essentially on
the same arguments for its appeal of the Examiner’s decision rejecting
independent claim 1. See Appeal Br. 7. We select claim 1 as
representative for our discussion below. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
For claim 1, the Examiner finds that Donea discloses a multiwall sheet
(citing Donea, Fig. 2, 5RS) that includes non-intersecting polymer walls 10,
outer layers, and transverse layers, where the transverse layers extend
perpendicularly and intersect polymer walls to define cells. Ans. 2. The
Examiner acknowledged that Donea does not disclose non-uniform cell
density as recited in claim 1. However, the Examiner asserts that Pajak
discloses non-uniform cell density at the outer edge of a multiwall sheet.
Ans. 3 (citing Pajak, Figs. 1, 4, 2:37—39, 50—58, 69—72, 3:1—5). The
Examiner reasons that it would have been obvious to a skilled artisan “to
make the multiwall sheet of Donea et al. have a non-uniform density by
reducing the cell size and increasing the concentration of cells in different
parts of the sheet as made obvious by Pajak to provide increased strength in
parts of the sheet that are going to be exposed to bigger loads (Pajak col. 2
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lines 37-43).” Ans. 3.
In response, Appellants argue that Donea and Pajak are directed to
different problems in which Donea is “intent on producing electrostatically
dissipative thermoplastic polymeric sheets that can retain their ESD
[(electrostatic dissipation properties)]” and Pajak discloses metal panels
that “do not suffer from the build up of charge or low surface
conductivity.” Appeal Br. 5. Appellants further argue that because Donea
solves a problem that is irrelevant to metal panels, the references teach
away from one another in their selection of metals. Id. at 6.
Based on the record before us, these arguments do not apprise us of
any Examiner error. Initially, we note that it is not necessary for the prior art
references to serve the same purposes in order to support the conclusion that
the claimed subject matter would have been obvious. In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012) (“[a] reference may be read for all that it
teaches, including uses beyond its primary purpose.”) (citing KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418-421 (2007)). Further, we determine that
the record supports the Examiner’s finding that both references are directed
generally to disclosing multiwall sheet structures. See Ans. 2—3; Donea Tfl[
1, 11, 14; Pajak, 1:15-19, Fig. 1.
Moreover, we are not persuaded by Appellants that there is a teaching
away based on the selection of materials in the references. For example,
Appellants contend that Donea teaches embodiments that limit the metal
content of thermoplastic sheets by stating that solid metallic and non-
metallic conductive filler particles are dispersed into the polymer at loadings
of about 0.001 to about 50 wt %, based on total weight of the multiwall
sheet. Appeal Br. 5—6 (citing Donea 1103). However, a reference does not
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teach away, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004). Further, we observe that
Donea discloses alternative embodiments containing single wall carbon
nanotubes (“SWNT”) in which the SWNTs may comprise a mixture of
metallic nanotubes and semi-conducting nanotubes, and the SWNTs are
“used in amounts of about 0.001 to about 80 wt % of the total weight of the
multiwall sheet when desirable.” Donea 177 (emphasis added); id. at 176
(“It is generally desirable for the SWNTs used in the multiwall sheet to
comprise metallic nanotubes in an amount of greater than or equal to about 1
wt %, preferably greater than or equal to about 20 wt %, more preferably
greater than or equal to about 30 wt %, even more preferably greater than or
equal to about 50 wt %, and most preferably greater than or equal to about
99.9 wt % of the total weight of the SWNTs.”) (emphasis added). In this
respect, Donea’s disclosure does not support Appellants’ position that Donea
limits the metal content of thermoplastic sheets to only 0.001 to about 50 wt
% of the multi wall sheet. See Appeal Br. 5—6.
Next, Appellants argue that Examiner has not explained how Pajak’s
densification process could be used with Donea’s coextruded sheets to form
non-uniform cell density. Appeal Br. 6—7. More specifically, Appellants
asserts that
Donea describes thermoplastic sheets which are integrally
formed in a coextrusion process. These sheets do not provide a
separate core section which can be collapsed in areas prior to
assembly to the outside walls; the walls and ribs are coextruded.
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The very thin walled aluminum foil of Pajak has very different
mechanical properties in comparison to the thermoplastics of
Donea, and Pajak’s panels are formed in a different way.
Furthermore, Donea’s multiwall sheets are for things such as
packaging and chip carriers, and photocopier components.
(Paragraph [0002]) How can the cells be crushed to allegedly
attain this densification yet retain the desired shape and aesthetic
qualities for the intended use?
Appeal Br. 7. Appellants add that “Appellants are left to wonder how the
alleged combination of references would work . . . [and] there is no
reasonable expectation that the alleged modification would be successful.”
Id. at 6.
We are not apprised of Examiner error by these arguments. The
Examiner does not propose that the physical features or actual process
disclosed in Pajak are incorporated into the structure or process described in
Donea. Ans. 12. Rather, the Examiner maintains that “Donea discloses
most of the structural limitations present in the claim and Pajak is only relied
upon to disclose the obviousness of adding more cells to certain parts of the
panel of Donea to make the panel a non-uniform density panel and get
predictable and expected results like increased strength in the densified
areas.” Id. We understand the Examiner’s position to be that one of
ordinary skill in the art would have modified Donea’s co-extruded structure
to include non-uniform cell density because Pajak teaches that “[t]he
densified core areas ... are effectively resistant to compressive forces.”
Pajak, 2:37—38; see Ans. 3.
Further, Appellants do not present any competent evidence or
explanation to show that there would be no reasonable expectation of
success in combining the teachings of Donea and Pajak in the manner
proposed by the Examiner in the rejection. It is well established that
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obviousness does not require absolute predictability of success; rather, all
that is required is a reasonable expectation of success. In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009). The predictable use of prior art elements
according to their established function is ordinarily obvious; further, the
“inferences and creative steps that a person of ordinary skill in the art would
employ” can be taken into account. KSR Int’l v. Teleflex Inc., 550 U.S. 398,
417-418 (2007). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421. Furthermore, the fact that
judgment and mechanical skill may be required to arrive at a particular
combination does not necessarily mean that particular combination
constitutes a nonobvious invention. Graham v. John Deere Co. of Kansas
City, 383 US 1, 10-12 (1966).
For these reasons, we sustain the Examiner’s rejection of claim 1.
With regard to claims 17 and 18, Appellants refer to the same arguments
discussed with respect to claim 1. Appeal Br. 7. Accordingly, for these
same reasons, we sustain the Examiner’s rejection of claims 17 and 18.
b. Claims 2—8 and 14
Appellants present the same arguments for claims 2—8 and 14
collectively, which are, primarily, that the specific ranges for cell density,
dimensions, and stiffness recited in claims 2—8 and 14 are not “disclosed,
suggested, nor mere optimizations.” Appeal Br. 7; see Reply 2. Appellants
add that “[i]n order to be considered an optimization, both the element and
its effect must be known.” Id.
Claims 2—4 recite various percentage ranges for the cell density in the
middle of the multiwall sheet relative to cell density adjacent the outer
layers. Appeal Br. 15 (Claim Appendix). With respect to these claims, we
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are not apprised of any error in the Examiner’s finding that Pajak teaches
“[o]ne would be motivated to make the cell density in the middle of the
sheet certain percentages of the outer layers (adjust the number of cells/cell
walls in different areas of the sheet) to optimize the sheet and make it
capable of supporting different loads acting on different parts of the sheet.”
Ans. 3^4. The Examiner’s position is supported by the cited portion of
Pajak that recognizes a “densified core” is resistant to compressive forces.
Pajak, 2:37—38, Fig. 1. Thus, based on this record, we are not persuaded that
the Examiner erred in his finding that Pajak discloses cell density as a result-
effective variable that would have been obvious to optimize for improving
structural support. See Ans. 3^4.
Claims 5—7 recite changes in cell size or a cell size gradient moving
toward various areas of the multiwall sheet. For example, claim 5 recites “a
cell size gradient such that the cell size increases toward a center of the
multiwall sheet.” Appellants rely on the same arguments discussed above
for claims 2-4. We are also not apprised of Examiner error on this basis. In
particular, the Examiner relies on Pajak’s disclosure of a densified core
around honeycombed core 2. Pajak, Fig. 1. Ans. 4 (“Pajak discloses
decreased cell size in the outer layers and increased cell size in the middle
(fig. 1) and it would be obvious to one of ordinary skill to increase the cell
size towards the center of the multiwall sheet of the combination to provide
a bigger density in the outer edges/layers of the sheet so that the sheet can
withstand bigger loads and have increased stiffness in the outer layers.”).
Based on the record before us, the Examiner’s findings are supported by the
cited portions in Pajak. See Pajak, Fig. 1. Similarly, the Examiner relies on
Figure 1 of Pajak to teach the decrease in cell size recited in claims 6 and 7.
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Ans. 4. Based on the current record, the Examiner’s findings are supported
by at least Pajak’s Figure 1.
Claim 8 recites “the transverse layers have a thickness of about 0.1
mm to about 1 mm.” Claim 14 recites “the cells have a length and/or width
of less than or equal to about 2 mm.” For these claims, Appellants also
argue that Donea and Pajak do not teach these specific dimensions and that
the Examiner has not shown width or length to be a result-effective variable.
Appeal Br. 7.
We are not apprised of Examiner error by these arguments.
Specifically, the Examiner does not base his conclusion of obviousness on
the finding that cell width and length are result-effective variables. The
Examiner asserts that a change in size is generally recognized as being
within the level of ordinary skill in the art. Ans. 4 (citing In re Rose, 105
U.S.P.Q. 237 (CCPA 1955)). The Appellants do not address or challenge
this aspect of the Examiner’s rejection. Further, we note, consistent with the
Examiner’s position, that it has been generally held that ordinarily changes
in sizes of shapes of known elements are within the level of skill in that art,
especially in the absence of unexpected results or criticality. Cf. Gardner v.
TECSys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where
the only difference between the prior art and the claims was a recitation of
relative dimensions of the claimed device and a device having the claimed
relative dimensions would not perform differently than the prior art device,
the claimed device was not patentably distinct from the prior art device); see
also In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in shape
ordinarily prima facie obvious).
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Accordingly, on this record, Appellants have not apprised us of any
error in the Examiner’s reasoning that a change in cell size would be obvious
and would not affect the performance of the prior art device.
c. Claims 9 and 10
Claim 9 recites a multiwall sheet that, among other things, “comprises
a stiffness of greater than or equal to about 4,000 N/mm.” Claim 10 depends
from claim 9 and further recites that “the stiffness is greater than or
equal to about 5,000 N/mm.”
For these limitations, the Examiner finds that Donea discloses a
multiwall sheet in Figure 2 “comprising nonintersecting polymer walls [001
0] comprising outer layers, and transverse layers, wherein the transverse
layers extend perpendicular and intersect the polymer walls, wherein only
the transverse layers and polymer walls define cells (fig. 2, 5RS) and a
stiffness of about 0.5 TPa.” Ans. 5 (citing Donea 175). Based on the
disclosure of 0.5 TPa, the Examiner concludes that “[i]t would be obvious to
make the multiwall sheet a stiffness of greater than or equal to 4000 N/mm
since it has been held that discovering an optimum value of a result effective
variable involves only routine skill in the art.” Ans. 6 (citing In re Boesch,
617 F.2d 272, 205 USPQ 215 (CCPA 1980). The Examiner adds that “[o]ne
would be motivated to make the stiffness 4000 N/mm [and 5000 N/mm]
instead of 0.5 TPa to optimize the multiwall sheet for specific loading
scenarios and purposes.” Id.', see id. at 13 (“it is obvious ... to optimize the
disclosed stiffness values for different loads and different strengths.”)
Appellants contend that the portions of Donea cited by the Examiner
refer to the stiffness of nanotubes, not to the stiffness of the sheet. Appeal
Br. 8 (citing Donea H 72—75).
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We agree with Appellants’ position. Paragraphs 72 through 75 of
Donea describe the properties and uses of carbon nanotubes or single
wall carbon nanotubes (SWNT). In particular, paragraph 75 of Donea
teaches that the SWNTs have a stiffness of at least about 0.5 terapascals
(TPa). While the SWNTs may be used in the multi wall sheet described in
Donea (Donea 177), we do not see where in this record the Examiner has
explained how the optimization of the SWNT stiffness, a component of the
sheet, would render obvious the specific recited stiffness of 4000N/mm or
5000 N/mm for the sheet itself.
Accordingly, we do not sustain the Examiner’s rejection of claims 9
and 10.
d. Claims 22 and 23
Claim 22 depends from claim 1 and further recites “an inner layer.”
Claim 23 depends from claim 1 and further includes “about 4 to about 25
polymer walls.”
For these claims, Appellants argue there is no reasonable expectation
of success with the alleged combination because Pajak’s honeycomb core
has no inner layers. Appeal Br. 8 (citing Pajak, 3:34—39). Appellants
further contend that “including the alleged inner layers of Donea with the
honeycomb core of Pajak would at least yield unpredictable results with
respect to the collapse of Pajak’s now-modified core and would inevitably
result in build up of secondary stresses” and buckling.
We are not apprised of error on this basis. With respect to claims 22
and 23, the Examiner finds that Donea, Figure 2, 5RS, discloses inner
transverse layers and horizontal walls. Ans. 8. Appellants do not dispute
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the Examiner’s findings, but argue against a physical incorporation of
Pajak’s structures/process into Donea. Appeal Br. 8—9. Nonetheless, the
Examiner does not rely on a physical combination of Donea’s and Pajak’s
honeycombed structures. Rather, as the Examiner states, “Donea discloses
most of the structural limitations present in the claim and Pajak is only relied
upon to disclose the obviousness of adding more cells to certain parts of the
panel of Donea to make the panel a non-uniform density panel and get
predictable and expected results like increased strength in the densified areas
as stated in the rejection.” Ans. 12. Thus, on this record, we are not
apprised of error in the Examiner’s findings and sustain the Examiner’s
rejection of claims 22 and 23.
Obvious over Donea, Pajak, and Boyd— Claims 12 and 13
Claim 12 depends from claim 1 and further recites “the polymer walls
comprise micro-features and/or nano-features.” Claim 13 also depends from
claim 1 and recites “the transverse layers comprise micro-features and/or
nano-features.”
The Examiner relies on Boyd for these limitations. In particular, the
Examiner finds that Boyd teaches a panel/sheet (20) with walls (23, 24)
having microfeatures (28). Ans. 9. The Examiner asserts that it would have
been obvious to add micro-features to polymer walls and transverse layers to
direct and diffuse sunlight for a sheet used in a building. Id. (citing Boyd,
3:14—20).
Appellants argue, among other things, that the Examiner has not
explained sufficiently how Boyd’s prisms teach “micro-features” or “nano­
features.” Appeal Br. 10. Appellants further add
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it is not explained how, when, or why the sheet of Donea would
be used in a building with the need to diffuse or direct light.
Donea’s sheet comprises an electrically conductive filler: “such
as carbon black, coke, carbon nanotubes, carbon buckeye balls,
and the like; metallic conductive fillers, nonmetallic conductive
fillers, non-conductive fillers coated with metals, or the like, or
combinations comprising at least one of the foregoing fillers”.
(Paragraph [0056])
Based on the current record, we are not apprised of Examiner error on
this basis. To start, while Donea teaches that articles made from
thermoplastic polymers are “commonly utilized in material-handling and
electronic devices” for packaging etc. (Donea 12), Donea does not limit its
disclosure to only these uses of the described multiwall sheets. Instead,
Donea teaches generally that “[t]his disclosure relates to multiwall sheets
and methods for manufacturing thereof.” Id.}f 1. As such, we are not
persuaded by Appellants argument that, in this regard, the Examiner erred in
looking to Boyd’s paneling and skylight disclosure for additional limitations
recited in claims 22 and 23.
Additionally, we are not persuaded that the Examiner erred in his
finding that Boyd’s prisms are “micro-features” or “nano-features.” Ans. 9
(referring to prisms 28 as micro-features). Boyd’s Figure 4 (reproduced
below) shows the prism shape 28 arranged on Face 2 of Boyd’s skylight.
Id. at 10.
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As shown above in Figure 4, the prisms 28 are part of a larger rib that runs
across Face 2 (see Fig. 1). Appellants have not explained sufficiently why
one of ordinary skill in the art would not consider these prism features to be
“micro” or “nano.” Appeal Br. 10.
Accordingly, we sustain the Examiner’s rejection of claims 22 and 23.
Obviousness over Donea, Pajak, and Groothues — Claims 15 and 16
Claim 15 depends from claim 1 and further recites “a U-value of less
than or equal to about 1.2 W/m2K at a nominal volume density of less than
or equal to about 180.” Claim 16 depends from claim 15 and recites “the li­
vable is less than or equal to about 1.0 W/m2K.”
For these limitations, the Examiner finds that
Groothues et al. discloses a multiwall sheet (fig. 1) comprising
non-intersecting polymer walls [0001 ]; comprising outer layers
(la, lb) and transverse layers (2), wherein the transverse layers
intersect the walls to form cells and the sheet has a U-value less
than 4 W/mA2K [0014] and it would be obvious to make the U-
value any number below 4 at a nominal density of less than or
equal to about 180 since Groothues et al. teaches of a U-value
less than 4 and to increase the insulating properties of the sheet.
Ans. 9 (emphasis added). Further, the Examiner asserts “one of ordinary
skill can figure out ways to optimize those values to get predictable and
expected results.” Id. at 14.
Appellants argue “[n]o reasoning has been articulated, and no
explanation has been provided as to how the U-value of Donea can be
reduced.” Appeal Br. 11. In the Reply Brief, Appellants contend that
“merely because a value is known, e.g., a U-value, attaining an improvement
in that value is not necessarily obvious.” Reply Br. 4. Appellants add that
“[ijnherency cannot be based upon possibilities or even probabilities.” Id. at
5.
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Based on this record, we agree with Appellants that the Examiner has
not explained sufficiently how Groothues teaches or suggests the recited li­
vable at a “nominal volume density of less than or equal to about 180.” In
particular, while we agree with the Examiner that Groothues teaches a
thermoplastic material with an IR-absorbent layer that has a heat transfer
coefficient of 4 W/m2K (Groothues 114), the Examiner has not explained,
on this record, how this disclosure renders obvious the specific recited li­
vable of claims 15 and 16 at a “nominal volume density of less than or equal
to about 180.” Rather, the Examiner states that “it would be obvious to
make the U-value any number below 4 at a nominal density of less than or
equal to about 180 since Groothues et al. teaches of a U-value less than 4
and to increase the insulating properties of the sheet.” Ans. 9 (emphasis
added). But, the Examiner does not, for example, explain the basis for a
conclusion that the disclosed range in the Groothues renders obvious the
recited ranges in claims 15 and 16, or how Groothues discloses a U-value at
a “nominal volume density of less than or equal to about 180.”
Additionally, in response to Appellants’ arguments, the Examiner
asserts “one of ordinary skill can figure out ways to optimize those values to
get predictable and expected results.” Ans. 14. However, the Examiner
does not explain why the U-value is a result-effective variable that is subject
to optimization. On its face, paragraph 14 of Groothues cited by the
Examiner, teaches a thermoplastic material with an IR-absorbent layer that
has a heat transfer coefficient of 4 W/m2K. Groothues 114. The Examiner
does not explain how this disclosure indicates a result-effective variable,
and, particularly, how this disclosure applies to the multiwallsheet teachings
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of Donea and Pajak. Accordingly, we do not sustain the Examiner’s
rejection of claims 15 and 16.
Obviousness over Beekman and Pajak Claims 20 and 21
Claim 20 is directed to a “naturally light structure” that includes a
building structure and a roof “comprising a multiwall sheet. . . wherein the
multiwall sheet has a non-uniform cell density.” Claim 21 is directed to a
method of making a multiwall sheet in an extrusion process “wherein the
multiwall sheet has a non-uniform cell density.”
For these claims, the Examiner finds that “Beekman discloses a
method of making a multiwall sheet in an extrusion process comprising
extruding a multiwall sheet (col. 1 lines 60-61 )” and Beekman’s
multiwall sheet comprises non-intersecting polymer walls, transverse layers,
wherein only the transverse layers and polymer walls define cells. Ans. 11
(citing Beekman, Fig. 3E). The Examiner acknowledges that Beekman does
not disclose that the multiwall sheet has a non-uniform cell density. Ans.
11. The Examiner again relies on Pajak for this claimed limitation. Ans. 11
(citing Pajak, Figs. 1, 4, 2:37—39, 50—58, 69—72, 3:1—5). The Examiner
asserts that it would have been obvious “to make the multiwall sheet of
Beekman have a non-uniform density by reducing the cell size and
increasing the concentration of cells in different parts of the sheet as made
obvious by Pajak to provide increased strength in parts of the sheet that are
going to be exposed to bigger loads.” Ans. 11 (citing Pajak, 2:37—43).
Appellants contend that one of skill in the art would not have
combined the metal panels of Pajak with Beekman’s extruded polymer resin
sheet because Beekman’s sheet is capable of light transmission, which the
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metal panels would not provide. Appeal Br. 12. Appellants further argue
Beekman does not provide a separate core from which portions can be
removed as in Pajak’s process. Id. According to Appellants, “Beekman
describes thermoplastic sheets which are integrally formed in an extrusion
process. These sheets do not provide a separate core section which can be
collapsed in areas prior to assembly to the parallel walls; the parallel walls
and ribs are extruded as a single piece.” Appeal Br. 12.
We are not apprised of Examiner error by these arguments. The
Examiner does not propose that the physical features or actual process
disclosed in Pajak are incorporated into the structure or process of described
in Beekman. Ans. 12. Rather, the Examiner finds that Beekman discloses
most of the structural limitations recited in claims 20 and 21, but does not
teach non-uniform cell density. See Ans. 11. Pajak is relied upon to
disclose the obviousness of reducing the cell size and increasing the
concentration of cells in different parts of the sheet to provide increased
strength. Id. We understand the Examiner’s position to be that one of
ordinary skill in the art would have modified Beekman’s co-extruded
structure to include non-uniform cell density because Pajak teaches that
“[t]he densified core areas ... are effectively resistant to compressive
forces.” Pajak, 2:37—38; see Ans. 11.
Further, Appellants also do not present any competent evidence or
explanation to show that there would be no reasonable expectation of
success in combining the teachings of Beekman and Pajak in the manner
proposed by the Examiner in the rejection. See In re Kubin, 561 F.3d 1351,
1360 (Fed. Cir. 2009); see also KSR Inti v. Teleflex Inc., 550 U.S. 398, 417-
421 (2007) (“A person of ordinary skill is also a person of ordinary
17
Appeal 2015-005052
Application 11/668,732
creativity, not an automaton.”). Again, the fact that judgment and
mechanical skill may be required to arrive at a particular combination does
not necessarily mean that the particular combination constitutes a
nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 US
1, 10-12 (1966).
Accordingly, we sustain the Examiner’s rejection of claims 20 and 21.
DECISION
We REVERSE the Examiner’s decision rejecting claims 9, 10, 15,
and 16.
We AFFIRM the Examiner’s decision rejecting claims 1—8, 12—14,
17, 18, and 20-23.
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).
AFFIRMED-IN-PART
18