Ex Parte Teron

Patent Trial and Appeal Board

May 22, 2018

13821259 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/821,259 03/07/2013
27572 7590 05/24/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
William Teron
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.
17246-000001-US-NP 1007
EXAMINER
KATCHEVES, BASILS
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM TERON
Appeal2016-003816
Application 13/821,259
Technology Center 3600
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William Teron ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1---6, 8-16, 22, 24--27, and 33 under
35 U.S.C. § 103(a) as unpatentable over Teron (US 5,103,604, iss. Apr. 14,
1992) and Kroll (US 2009/0001185 Al, pub. Jan. 1, 2009). 2 An oral hearing
was held on April 17, 2018. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as Urbanetics Inc. Appeal Br.
3.
2 Claims 7, 17-21, 23, and 28-32 are cancelled. Appeal Br. 19-22 (Claims
App.).
3 The record includes a transcript of the oral hearing ("Tr.").
Appeal2016-003816
Application 13/821,259
THE CLAIMED SUBJECT MATTER
Claims 1 and 2 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
L A precast monolithic concrete prefabricated) composite
building constmction modu1e having a rear wall extending in a
longitudinal direction, the rear wall having first and second
substantially planar exposed surfaces sunounding a unitary
radiator pipe for circulating in a pattern extending substantially
1ongitudina1ly and transversely and substantially in a plane
extending between and substantially parallel to the exposed first
and second surfaces throughout and within the rear wall, a fluid
at a temperature that is different from an ambient temperature of
the modu!ei for radiating thermal energy related to a difference
between the fluid temperature and the ambient temperature
through the exposed first surface and the exposed second surface.
OPINION
Appellant argues claims 1---6, 8-16, 22, 24--27, and 33 as a group.
Appeal Br. 10-16. 4 We select claim 1 as the representative claim, and
4 Appellant's representative at the oral hearing advanced a new argument
that had not been presented to the Examiner in the Appeal Brief or Reply
Brief. In particular, Appellant's representative argued that "the combination
of claims 1, 9, and 16" might present patentable subject matter because Kroll
fails to teach a "possibility of ... direct coupling side wall to side wall of the
fluid conduits without some type of external connector." Tr. 14:22-15: 16.
As the argument was not properly before the Examiner, such that we might
have had the benefit of the Examiner's views on the argument in reaching
our decision in this appeal, we have considered only those arguments
presented by Appellant in the briefs. See 37 C.F.R. § 41.47(e)(l): "At the
oral hearing, appellant may only rely on Evidence that has been previously
entered and considered by the primary examiner and present argument that
has been relied upon in the brief or reply brief except as permitted by
paragraph ( e) (2) of this section." Paragraph ( e )(2) of the relevant section
provides: "Upon a showing of good cause, appellant and/or the primary
examiner may rely on a new argument based upon a recent relevant decision
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Appeal2016-003816
Application 13/821,259
claims 2---6, 8-16, 22, 24--27, and 33 stand or fall therewith. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner relies on Teron for the limitations of independent claim
1, except for "a transversely extending unitary circulation pipe extending in
a plane." Final Act. 2-3. The Examiner finds that "Kroll discloses a module
with such radiator pipe and heater for heating the circulating fluid," and
concludes that "[i]t would have been obvious ... to modify Teron by adding
the radiator piping and heater as disclosed by Kroll in order to heat the
structure once assembled." Id. at 3; see also Ans. 5---6 ("Kroll teaches that
radiator pipes can be used in concrete walls for heating .... Heated
dwellings are known as being desirable and typically used.").
Appellant argues that "the Examiner fails to consider the prior art
references as a whole" in that "Teron considers modules containing various
wiring systems, but when read as a whole, does not contemplate modules
containing heating elements generally and heating elements particularly"
and that "Kroll does not contemplate a module that provides radiant heat to
both sides of a panel." Reply Br. 2-3; see also Appeal Br. 14--15.
Appellant's argument is not persuasive. Teron teaches modular
building systems that may be provided "in a wide variety of arrays and
configurations to provide exterior walls and to enclose and define interior
space." Teron, Abstract; see also, e.g., id. at 10: 19-22 (describing modules
positioned "interiorly of the perimeter portions to define at least portions of
the interior partitions"). Teron also teaches that
[p ]referably the module contains an internal conduit system
providing for multiple access points for junction boxes, electrical
of either the Board or a Federal Court." Appellant has not alleged that good
cause is present here.
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Appeal2016-003816
Application 13/821,259
switches or electrical or other outlets at the major surfaces of the
flanges and/or the major surfaces of the main panel of the
module, with the distribution being so arranged as to allow
electrical and telephone and/or cable and/or intercom to be wired
in the module.
Id. at 3:45-51.
Kroll teaches unitary structural panels that are useful for fabricating
an exterior wall and that include a conduit for moving thermal transfer fluid
so that "the heating or cooling [e]ffect of the thermal transfer fluid is applied
only to the interior portion of the panel." Kroll i-fi-125-26. The Examiner has
made a finding that heated dwellings are desirable and typical. Ans. 6.
Given that Teron already contemplates modules that include an internal
conduit system, we agree with the Examiner that a person having ordinary
skill in the art would have been led to include a conduit system for heating
(e.g., radiator piping and heater). A person having ordinary skill in the art
also would have readily appreciated that the heating effects of a thermal
transfer fluid within a module designed for interior partitions would benefit
from application of the heating effects to both sides of the module.
The fact that Kroll discloses heating or cooling effects applied only to
the interior portion of a module does not undermine the Examiner's
conclusion of obviousness. Obviousness does not require that all of the
features of the secondary reference be bodily incorporated into the primary
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the
artisan is not compelled to blindly follow the teachings of one prior art
reference over the other without the exercise of independent judgement. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Given
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Appeal2016-003816
Application 13/821,259
the intended use of Teron's building modules for interior walls and partitions
(in which heating would be desirable on both sides of the wall or partition), a
person skilled in the art would have no reason to incorporate Kroll's
additional layers to ensure that heating or cooling is only applied to one side
(e.g., interior side) of the panel.
Appellant argues that Kroll "teaches away from the claimed wall
panel having a radiator pipe that transfers heat to both sides of the wall"
because it would have "led [one of ordinary skill in the art] to develop a wall
panel that directs heat to only one side of the wall." Reply Br. 3--4; see also
Appeal Br. 12-14. 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. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
Appellant does not point to, nor do we find, any disclosure in Kroll actually
criticizing, discrediting, or otherwise discouraging the application of heat to
both sides of a building module. Even to the extent that Kroll might suggest
that "transferring thermal radiation bi-directionally would be inefficient"
(Appeal Br. 13), this suggests that transferring thermal radiation bi-
directionally was known to the art, and Appellant does not explain how the
claimed invention goes beyond what was already known to the art of
building construction modules. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Moreover, Kroll's suggestion of inefficiency is in connection
with modules used for exterior wall structures, not modules used for interior
partitions. Kroll simply discloses a particular solution for building modules
that are intended to be used for exterior walls, but does not teach away from
the claimed subject matter.
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Application 13/821,259
Appellant argues that the Examiner relied on improper hindsight in
formulating the rejection and "there is no apparent reason or direction to
combine the references in order to arrive at the current claims." Reply Br. 4.
Appellant's argument is unavailing because Appellant does not identify any
flaw in the Examiner's reasoning or point to any knowledge relied on by the
Examiner that was gleaned only from Appellant's disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of the
invention, thereby failing to support Appellant's hindsight assertion. See In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper."). Further, the Supreme Court has rejected a
rigid teaching, suggestion, or motivation requirement to combine known
elements in order to show obviousness. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007) ("[R]ejections on obviousness grounds ... require
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness."). In this case, the modification to the
building modules proposed by the Examiner is based on a desire "to heat the
structure once assembled" (Final Act. 3) and the knowledge that "radiators
are used in concrete walls to provide heat" (Ans. 6), and thus, the Examiner
articulates reasoning having rational underpinnings.
For the foregoing reasons, Appellant's arguments do not apprise us of
error in the Examiner's determination that the subject matter of independent
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Application 13/821,259
claim 1 would have been obvious over Teron and Kroll. Accordingly, we
sustain the rejection of independent claim 1, and claims 2---6, 8-16, 22, 24--
27, and 33 falling therewith.
DECISION
The Examiner's decision to reject claims 1---6, 8-16, 22, 24--27, and
33 under 35 U.S.C. § 103(a) as unpatentable over Teron and Kroll 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).
AFFIRMED
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