WALTIMYER, Dennis G.

Patent Trials and Appeals Board

Sep 11, 2019

13152343 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/152,343 06/03/2011 Dennis G. WALTIMYER 30846-0001 6695
26587 7590 09/11/2019
MCNEES WALLACE & NURICK LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
EXAMINER
DALLO, JOSEPH J
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
09/11/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DENNIS G. WALTIMYER
____________

Appeal 2019-002006
Application 13/152,343
Technology Center 3700
_______________

Before DANIEL S. SONG, CHARLES N. GREENHUT, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4–6, 8, 9, 11–13, and 16–23.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appeal is taken from the Non-Final Office Action dated October 30, 2017.
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CLAIMED SUBJECT MATTER
Claims 1, 12, 18, and 21 are the independent claims on appeal. Claim
1, reproduced below, is exemplary of the subject matter on appeal.
1. An internal combustion engine comprising:
an engine block comprising an intake manifold;
a fuel delivery system comprising a carburetor; and
an insulative heat shield disposed intermediate the intake
manifold and the carburetor, wherein the insulative heat shield is
a laminate comprising an insulative polymeric layer and a first
metallic layer attached to the insulative polymeric layer, the first
metallic layer being positioned to face the engine block, the
insulative heat shield having an aperture formed there such that
the engine intake and carburetor are in fluid communication with
each other to permit the flow of an aerated fuel mixture
therethrough;
wherein the insulative heat shield has a thickness in the
range of about 0.125 inches to about 0.25 inches,
wherein the insulative heat shield is sized to fully shield
an undersurface of the carburetor and extends at least one half
inch beyond a perimeter of the carburetor, the insulative heat
shield being structured to deflect radiant heat incident upon the
insulative heat shield from the engine block away from the
carburetor and provide a surface for convective cooling by
cooling air within the internal combustion engine.

THE REJECTIONS
I. Claims 1, 4, 5, 8, 9, 12, 13, 16–19, 22, and 23 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Sugimoto2 (WO 2010/029946
A1; published Mar. 18, 2010) and Nagase (US 4,099,496; issued July 11,
1978).

2 Consistent with the Examiner, we refer to the corresponding published US
Patent Application No. 12/737,975 (US 2011/0159247 A1, June 30, 2011).
See Non-Final Act. 4.
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II. Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto, Nagase, and Wilson (US 7,523,730 B2; issued
Apr. 28, 2009).
III. Claims 11 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto, Nagase, and Kerchner (US 6,962,346 B2;
issued Nov. 8, 2005).

ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that Sugimoto
discloses an insulative heat shield that is a laminate comprising a first
metallic layer attached to an insulative polymeric layer, wherein the
insulative heat shield has a thickness in the range of about 0.125 inches to
about 0.25 inches, as claimed. Non-Final Act. 4 (citing Sugimoto ¶¶ 23–29,
Figs. 1–3). The Examiner determines that Sugimoto fails to disclose the
specific environment of the claimed heat shield, and the Examiner finds (i.e.,
takes Official Notice) that “it is very well known in the art to use a heat
shield with an aperture formed therein such that the engine intake and
carburetor are in fluid communication with each other to permit the flow of
an aerated fuel mixture therethrough,” and also “[to] use heat shields to keep
a carburetor cool by blocking engine heat . . . since carburetor is fuel/air
mixing device which is inherently very sensitive to heat.” Id. at 5. The
Examiner further relies on a portion of the Specification as admitted as prior
art (“APA”) that it is known to use an insulative heat shield to deflect radiant
heat from the engine block away from the carburetor and to provide a
surface for convective cooling by cooling air as claimed. Id. (citing Spec. ¶
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6). Paragraph 6 of the Specification addresses the problem of premature
vaporization of fuel (i.e., vapor lock) in the carburetor caused by heat
generated by the engine (see, e.g., Spec. ¶¶ 3–4), by disclosing that
[c]urrent solutions to try and solve the vapor lock problem
include metallic sheets used as heat shields. Although these
sheets may deflect some radiant heat away from the carburetor,
they don’t work well. Other solutions use a phenolic spacer in
combination with the metallic sheet, although they also don’t
work well in most situations.
Spec. ¶ 6.
The Examiner relies on Nagase for disclosing an insulative heat shield
sized to shield fully an undersurface of the carburetor and extending at least
one half inch beyond a perimeter of the carburetor. Non-Final Act. 5 (citing
Nagase, Fig. 2 (reference numerals 32, 36, 38). The Examiner reasons that it
would have been obvious “to use a spacer between a carburetor and intake
manifold and extend the shape of the spacer as disclosed in Nagase . . . with
the heat ray shield of Sugimoto . . . to provide a heat shield with better heat
resistant properties.” Id. at 5–6.
Appellant submits that claim 1 requires the insulative heat shield to
include “a laminate of a metallic layer to face an engine block and an
insulative polymeric layer on the side of the metallic layer opposite the side
facing the engine block.” Br. 9. Appellant argues that this limitation is not
disclosed by the prior art. Id. at 10.
In particular, Appellant submits that Sugimoto does not teach “the use
of the heat shield cover between two attached parts,” nor does Sugimoto
teach “an insulative laminate heat shield between an engine block/intake
manifold/engine intake and a carburetor,” as claimed. Br. 10. Appellant
argues that “Sugimoto teaches only using a heat ray shield in an automotive
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application to shield the exhaust pipes and therefore teaches away from the
use of a heat ray shield cover anywhere else in an automotive segment.” Id.
at 11.
We are not persuaded by Appellant’s argument, which fails to address
the Examiner’s reliance on the combination of teachings of Sugimoto, what
is well known in the art (i.e., Official Notice), and admitted prior art (i.e.,
APA) from the Specification to arrive at the conclusion that it would have
been obvious to provide an insulative heat shield including a laminate of a
metallic and insulative polymer layers, wherein the metallic layer faces an
engine block. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Sugimoto expressly discloses a heat ray shield cover for shielding heat
rays from a heat source, wherein “the cover compris[e]s . . . a laminated
plate comprising aluminum alloy plates laminated on both surfaces of a core
foamable resin” wherein “the surface of either of the aluminum alloy plates .
. . is arranged to face the heat source.” Sugimoto ¶ 23. Appellant does not
dispute that Sugimoto’s foamable resin is a polymeric layer. Thus,
Sugimoto discloses an insulative heat shield with the laminate construction,
as claimed, including the positioning the metallic layer to face the heat
source. The Examiner further relies on the admission in the Specification
(i.e., APA) that it is known to position heat shields to deflect radiant heat
away from the carburetor, and the Examiner further relies on Official Notice
that it is well known in the art to use a heat shield with an aperture to allow
fluid communication between the engine intake manifold and the carburetor.
Notably, Nagese evidences that placing a heat insulating flat plate 32
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between the engine intake manifold 14 and carburetor 20 is known. See,
e.g., Nagase 1:64–2:5, 2:18–20 (“[b]etween the intake manifold 14 and the
carburetor 20 a substantially flat plate is disposed horizontally” and “[t]he
plate 32 is also of heat insulating construction”).
Regarding Appellant’s argument that because Sugimoto teaches using
a heat shield to shield the exhaust pipes of an automobile engine and not the
carburetor, Sugimoto teaches away from using a heat shield anywhere else
in an automobile engine is not persuasive. Clearly, as discussed supra, the
prior art recognizes that heat shields are desirable between the engine intake
manifold and carburetor, and Appellant does not point to any passage in
Sugimoto that “criticize[s], discredit[s] or otherwise discourage[s]” the use
of heat shield comprised of laminated metal and polymer layers to shield
heat from an engine away from the carburetor. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject
matter merely by disclosing a different solution to a similar problem unless
the prior art also criticizes, discredits or otherwise discourages the solution
claimed).
Appellant also submits that although Nagase teaches “a carburetor
heat shield including a plate 32 of heat insulating construction below the
carburetor 20 and above the intake manifold 14 as well as additional plates
36, 38 directing heat flow from the exhaust pipe past the carburetor,” Nagase
does not teach “any materials for the plate 32” and does not “suggest
laminates or polymeric layers.” Br. 10. However, the Examiner does not
rely on Nagase for teaching the laminate structure of the heat shield, but
rather on Sugimoto, as set forth supra, such that the combination results in
the recited insulative heat shield.
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Appellant also relies on the November 13, 2015 Declaration of Dennis
G. Waltimyer, the sole inventor on this record of the claimed invention (the
“Waltimyer Declaration”), as evidence of commercial success to overcome
the Examiner’s determination of obviousness. Br. 11. The Waltimyer
Declaration provides gross sales revenues for the calendar year of 2014 for
products embodying the limitations of the claims (namely, $51,733), and
attests that it is the inventor’s belief that the products have “a significant
market share”; further, the inventor has “received multiple oral offers to
license the technology.” Waltimyer Declaration ¶¶ 14–16. Mr. Waltimyer
concludes that “[t]he commercial success evidenced by the substantial sales
and market share following introduction of the commercial embodiments of
[the claimed invention] with minimal marketing is representative of the
industry’s adoption of the superior heat shield.” Waltimyer Declaration
¶ 17. Appellant submits that “[a]s an independent inventor and an individual
running a business essentially by himself, appellant should not be expected
to have the resources to be able to provide market share information for such
a specific niche market beyond what is stated in the Waltimyer Declaration.”
Br. 12.
To be given substantial weight in the determination of obviousness or
nonobviousness, there must be a nexus between the merits of the claimed
invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
In particular, an applicant who is asserting commercial success to support its
contention of nonobviousness bears the burden of proof of establishing a
nexus between the claimed invention and evidence of commercial success.
In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). Here, the Examiner
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correctly determines that “[g]ross sales figures do not show commercial
success absent evidence as to market share” (Ans. 5 (citing Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed. Cir. 1985))), and
also that “[m]erely showing that there was commercial success of an article
which embodiment the invention is not sufficient” (id. (citing Ex part
Remark, 15 USPQ2d 1498 (1990))). The Examiner is also correct in that
“[an] [i]nventor’s opinion as to the purchaser’s reason for buying the
product, alone, is generally insufficient to demonstrate a nexus between the
sales and the claimed invention.” Id. (citing In re Huang, 100 F.3d 135
(Fed. Cir. 1996)). Thus, Appellant has not carried his burden of establishing
commercial success, as well as a nexus between the claimed invention and
the evidence purporting to establish commercial success. See Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (the lack of
nexus between the claimed subject matter and the commercial success
renders the proffered objective evidence uninformative).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present arguments for independent claim 12,
apart from the arguments presented for independent claim 1 supra, and
therefore, for essentially the same reasons stated supra, we sustain the
Examiner’s rejection of independent claim 12. Br. 9–11. Appellant also
chose not to present arguments for dependent claims 4, 8, 9, 13, 16, and 17
apart from the arguments presented for the independent claims, and
therefore, for essentially the same reasons stated supra, we sustain the
Examiner’s rejection of dependent claims 4, 8, 9, 12, 16, and 17. Id. at 13.
Independent claim 18 and dependent claims 4, 5, 19, and 23
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Regarding independent claim 18 and dependent claims 4 and 23, and
also claim 5 depending from claim 4 and claim 19 depending from claim 18,
Appellant argues that the arrangement of first and second metallic layers on
opposite sides of the polymeric layer are not disclosed in the prior art. Br.
10. Specifically, Appellant argues that the prior art does not suggest an
insulative heat shield wherein
the second metallic layer is believed to reflect radiant heat energy
from the engine block that makes it through the first metallic
layer and the polymeric layer and to disperse conductive heat
energy that makes it through the polymeric layer, the laminate
providing better heat shielding than the sum of the heat shielding
of the individual metallic and polymeric layers.
Id.
Appellant’s argument, however, does not apprise us of error in the
Examiner’s finding that Sugimoto discloses a second metallic layer arranged
as claimed. Non-Final Act. 6 (regarding claim 4, citing Sugimoto ¶¶ 23–29,
Figs. 1–3). Indeed, Sugimoto discloses “[a] heat ray shield cover . . .
constructed from a laminated plat comprising aluminum alloy plates
laminated on both surfaces of a core foamable resin, respectively . . .
wherein the surface of either of the aluminum alloy plates in the shaped
composite is arranged to face the heat source.” Sugimoto ¶ 23.
Accordingly, we sustain the Examiner’s rejection of claims 4, 5, 19,
and 23.
Dependent claim 22
Dependent claim 22 recites, in relevant part, “wherein the insulative
heat shield keeps the carburetor at least 100 ºF cooler than a temperature of
the engine block immediately after engine shutdown, when combustion feed
air is no longer flowing through the carburetor.” Br. 22 (Claims App.). The
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Examiner finds that Sugimoto discloses that “on one side of the heat shield
the temperature is 600 degrees Celsius [(1112º F)] while the other side that
is shielded from the heat is 120 degrees Celsius [(248º F)]”—a temperature
difference of at least 100 ºF. Non-Final Act. 7 (citing Sugimoto ¶ 26). The
Examiner determines that “using the same laminate materials in a heat shield
located in the same location as [the claimed insulative heat shield] would
provide the results as claimed.” Id.
Appellant argues that “[t]he location and heat transfer mechanisms in
Sugimoto’s exhaust pipe/heat shield arrangement are very different than in
Appellant’s claimed engine block/arrangement such that it cannot be
assumed that the same or similar temperature difference would be
maintained by Sugimoto.” Br. 13.
We are not persuaded by Appellant’s argument. The Examiner
concludes that it would have been obvious to use Sugimoto’s heat ray shield
cover to shield a carburetor from heat from the engine block. Sugimoto
discloses that
the heat resistance of the [(aluminum alloy plates laminated on
both surfaces of a core foamable resin)] is useable for a heat ray
shield cover, . . . in which foam resin part of the composite plate
did not rise so much even when the temperatures of the heat
source was high. Specifically, . . . the temperature of the foam
resin part in the composite plate . . . disposed near a heat source
rose to about 120 degrees Celsius but did not rise further with
time, and kept constant, even with the temperature of the heat
source as high as 600 degrees Celsius.
Sugimoto ¶ 26. Thus, a preponderance of the evidence supports the
Examiner’s determination; in other words, Appellant’s argument does not
apprise us of error in the Examiner’s determination that a preponderance of
the evidence indicates that when Sugimoto’s heat ray shield cover is used in
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such an environment as suggested by the Examiner’s applied rejection, a
temperature difference on either side of the heat shield of at least 100 ºF
would have been provided due to its disclosed heat shielding capabilities.
The Examiner has made a sufficient finding to set forth a prima facie case of
obviousness. Accordingly, we sustain the Examiner’s rejection of claim 22.
Rejection II
Appellant argues that Wilson does not cure the deficiencies in the
Examiner’s findings with respect to independent claims 1, 4, 12, and 18
from which claims 6 and 20 depend. Br. 13. However, as discussed supra,
we do not agree that there are any deficiencies, as argued by Appellant, in
the Examiner’s rejections of claims 1, 4, 12, and 18.
Accordingly, we sustain the Examiner’s rejection of claims 6 and 20.
Rejection III
First, Appellant argues that Kerchner does not cure the deficiencies in
the Examiner’s findings with respect to independent claim 1, from which
claim 11 depends, and Appellant applies the same arguments to independent
claim 21. Br. 13. However, as discussed supra, we do not agree that there
are any deficiencies, as argued by Appellant, in the Examiner’s rejections of
claim 1, and we are not persuaded for the same reasons supra that the
arguments apprise us of error in the Examiner’s rejection of claim 21.
Specifically, Appellants argue that
Kerchner does not provide what Sugimoto in view of Nagase
lacks. Kerchner teaches a heat shield for a flanged joint.
Kerchner teaches use of the heat shield on an exhaust pipe. . . .
Kercher does not teach or suggest a laminate or a polymeric
layer. Kerchner does not teach or suggest an insulative laminate
heat shield between an engine block/intake manifold/engine
intake and a carburetor, as recited by independent claim 21.
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Further, the Waltimyer Declaration provides evidence of
commercial success of the inventions of independent claim 21.
Br. 16.
Appellant’s arguments are not persuasive because the Examiner does
not rely on Kerchner for disclosing the disposition of insulative heat shields
within a carbureted engine as recited in claim 21, or for disclosing the
laminate structure of the insulative heat shields as claimed. Rather, the
Examiner relies on Kerchner for disclosing a second heat shield with a
“material thickness . . . different than the material thickness of the first heat
shield, thus creating a different surface area.” Non-Final Act. 6 (citing
Kerchner, Fig. 9 (first and second heat shield components 12, 14)).
Appellant’s arguments do not apprise us of error in the Examiner’s finding
or reasoning relative to Kerchner. Further, Appellant’s arguments regarding
commercial success are unpersuasive for the reasons given supra.
Accordingly, we sustain the Examiner’s rejection of claims 11 and 21.

DECISION
The Examiner’s decision rejecting claims 1, 4–6, 8, 9, 11–13, and 16–
23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED