Ex Parte AHN

Board of Patent Appeals and Interferences

Sep 24, 2002

08892716 (B.P.A.I. Sep. 24, 2002)

1 Application for patent filed July 15, 1997, entitled
"Monitor Front Case With Gate Landings," which claims the foreign
filing priority benefit under 35 U.S.C. § 119 of Republic of
Korea Application 96-21080, filed July 16, 1996, and Republic of
Korea Application 97-13466, filed June 5, 1997.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte HAE-WON AHN

Appeal No. 2001-1982
Application 08/892,7161

HEARD: September 19, 2002

Before BARRETT, DIXON, and LEVY, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-14.
We reverse but enter a new ground of rejection.
Appeal No. 2001-1982
Application 08/892,716
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BACKGROUND
The invention relates to a front case for monitors having
injection molding gate landings on a cathode ray tube (CRT)
seating surface. Each gate landing is recessed so that the gate
flash is fully recessed below the seating surface to avoid an
interference between the gate flash and the CRT. This removes an
extra flash grinding step in the manufacturing process.
Claim 1 is reproduced below.
1. A front case for monitors, comprising:
a gate landing formed on a CRT seating surface of said
front case at a position around a gate flash remaining on
the case due to a gate of an injection mold used in an
injection molding process of the case, said gate landing
being depressed to a depth suitable for fully recessing the
gate flash and avoiding an interference between the gate
flash and a cathode ray tube.
The examiner relies on the following references:
Boudreau et al. (Boudreau) 5,565,934 October 15, 1996
(filed February 5, 1992)
Arai et al. (Arai) 5,591,385 January 7, 1997
(filed December 21, 1994)
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boudreau and Arai. The rejection is set forth
in the second Office action (Paper No. 7).
We refer to the Office action (Paper No. 7), the final
rejection (Paper No. 9), and the examiner's answer (Paper No. 19)
for a statement of the examiner's rejection, and to the appeal
brief (Paper No. 18) (pages referred to as "Br__") and reply
Appeal No. 2001-1982
Application 08/892,716
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brief (Paper No. 24) (pages referred to as "RBr__") for a
statement of appellant's arguments thereagainst.
OPINION
Appellant argues in the briefs: (1) the references do not
provide the motivation to combine the two references and the
rationale for combining the references is nonexistent (Br5-7;
RBr4-7); (2) the examiner failed to make specific findings on the
level of ordinary skill in the art (Br7-8; RBr2-4); (3) the
rejection is defective for failing to provide a sufficient
factual analysis (Br8-10; RBr7-9). The main brief barely touches
the teachings of the references or the claimed subject matter
and, indeed, appellant states that "[f]or purposes of this
appeal, which involves procedural and administrative law issues,
the technical details of Ahn's invention are not central to the
outcome" (Br2). We have seen these same boilerplate arguments in
other briefs and are left with the impression that the arguments
would be made regardless of what the rejection said. These
arguments do not persuade us of error in the rejection.
By contrast, at the oral hearing, counsel for appellant cut
right to the merits and honed in on claim 1's limitation of "a
gate landing formed on a CRT seating surface of said front case"
(emphasis added). It was argued that Boudreau does not teach
this limitation and the combination with Arai would not teach the
limitation. This agrees with our own analysis of the claims and
Appeal No. 2001-1982
Application 08/892,716
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references. If the same argument had been presented in the
briefs, it is likely that we would not have seen this appeal.
While we are reluctant to consider new arguments made for the
first time at the oral hearing, we believe that the examiner's
rejection is defective and could not withstand judicial review.
The examiner has found an excellent secondary reference in
Arai to show recessing the gate landing and gate flash protrusion
below the surface so that the surface can be abutted with a
mating surface by surface contact. The examiner also correctly
points out that Arai teaches that the injection molding
techniques are applicable to CRTs. The error in the rejection is
that Boudreau does not teach "a gate landing formed on a CRT
seating surface of said front case," as recited in claim 1. The
molded bezel 20 in Boudreau has "gate landings" at the location
of the sprue holes 62, 64 in figure 5; however, these locations
are not on a "CRT seating surface" as claimed. The CRT does not
mate with the molded bezel at these locations. Assuming that the
molded assembly of the CRT 12 and the molded bezel 20 together
was considered a CRT, and that the rear housing 14 could be
termed a "front case," the housing 14 does not seat on the
surface having the gate landings. The housing 14 has an extended
portion 34 which fits into a circumferential indentation 28 on
bezel 20 (figure 4) which is formed by mold inserts 44, 46
(figure 5). Because the gate flash at the sprue holes 62, 64 in
Appeal No. 2001-1982
Application 08/892,716
2 As discussed at the oral hearing, we interpret the
specification as admitting that the subject matter of figures 1,
2A, and 2B is prior art to appellant. Counsel for appellant
stated that he will inquire of appellant whether this is actually
prior art and, if not, will make the appropriate clarification.
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Boudreau does not interfere with any mating surface, much less
with the CRT, there is no motivation for recessing the gate
flashing. However, even if the gate flashing were recessed just
because it could be recessed in view of Arai, Boudreau would
still not meet the limitation of "a gate landing formed on a CRT
seating surface of said front case." The same limitation is
found in slightly different words in all of the independent
claims. Accordingly, we conclude that the examiner has failed to
establish a prima facie case of obviousness and the rejection of
claims 1-14 is reversed.
NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)
Claims 1-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over appellant's admitted prior art (APA) and Arai.
The APA is shown in figures 1-3 and described in the
specification at page 1, line 17, to page 2, line 4, and page 3,
line 11, to page 4, line 15.2 The APA discloses that a housing
for a cathode ray tube (CRT) made by injection molding often
contains flash protrusions on the surface. If these gate flash
protrusions protrude from a seating surface where a CRT is
Appeal No. 2001-1982
Application 08/892,716
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mounted, there will not be a snug fit between the housing and the
CRT, which allows foreign substances such as dust to enter the
monitor through the gap between the CRT and the seating surface.
Thus, the APA discloses that gate landings are formed on a CRT
seating surface of a housing and that such flash protrusions at
the gate landings cause the problem that the seating surface does
not fit snugly with the CRT. The APA discloses that the problem
of fit is eliminated by grinding back the protrusion, which
requires an extra step in the manufacturing process.
Arai discloses, in connection with figures 40 and 41
(col. 23, lines 14-30):
[U]pon molding, a groove portion 115A which is recessed
inside is formed in a surface of a portion of a molded
article 38A which is contiguous to the gate 39 of the hot
runner 40. . . . Since a gate slug 39A formed in the
gate 39 of the hot runner 40 will not project upward above a
surface 38A-2 of the molded article, the mating article can
be abutted with each other by surface contact.
The motivation for recessing the gate landing and gate slug is
stated in the last sentence: so that a mating surface can be
abutted by surface contact. Arai further discloses that the
product can be a CRT or any product made by injection molding
(col. 26, lines 34-39).
With respect to independent claims 1, 2, and 6, the APA does
not teach the gate landing being recessed to a depth for fully
recessing the gate flash to avoid interference between the gate
Appeal No. 2001-1982
Application 08/892,716
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flash and the CRT and allow the seating surface to fit snugly
against the CRT. The dependent claims are discussed separately.
The APA and Arai are representative of the level of ordinary
skill in the art. See In re Oelrich, 579 F.2d 86, 91,
198 USPQ 210, 214 (CCPA 1978) ("the PTO usually must evaluate
both the scope and content of the prior art and the level of
ordinary skill solely on the cold words of the literature");
In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed.
Cir. 1995) (the Board did not err in adopting the approach that
the level of skill in the art was best determined by the
references of record); Okajima v. Bourdeau, 261 F.3d 1350, 1355,
59 USPQ2d 1795, 1797 (Fed. Cir. 2001) ("[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error 'where the prior art itself reflects an
appropriate level and a need for testimony is not shown.'"). In
addition, we find that one of ordinary skill in the manufacturing
art would have known that it was desirable to design articles to
eliminate manufacturing steps.
One of ordinary skill in the art, facing the problem in the
APA that flash protrusions on the seating surface of a housing
where a CRT is mounted are undesirable because they interfere
with close mating contact, would have been motivated by the
solution to this general problem in Arai to recess the gate
landings to recess the flash protrusion below the seating surface
Appeal No. 2001-1982
Application 08/892,716
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as recited in independent claims 1, 2, and 6. The motivation for
the combination is found in the nature of the fit problem to be
solved in the APA and the teaching of a solution to the problem
in Arai. The motivation to recess the gate landing and the gate
flash protrusion is also found in Arai's general teaching of this
feature and the teaching that the techniques can be used with any
injection molded product, include CRT products. An express
suggestion is not required to support an obviousness conclusion.
See In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443,
1446-47 (Fed. Cir. 1992) (Nies, C.J., concurring). That is, Arai
need not specifically state that the recess technique be used to
recess gate landings formed on a CRT seating surface. A still
further motivation for making the combination would have been the
person of ordinary skill in the art's knowledge that it would
have been desirable to incorporate a recessed gate landing as
taught in Arai to eliminate the need for grinding in the APA;
this is the only motivation that relies on a finding of level of
skill in the art outside of what is shown in the references.
As to dependent claim 3, both the APA and Arai discuss
injection molding. As to dependent claims 4, 8, 10, and 12, the
incorporation of a recessed gate flash protrusion as taught by
Arai into the APA would be oriented toward the CRT as in the APA,
but would not make contact with it because of the recess. As to
dependent claims 5, 7, and 13, the combination of the APA with
Appeal No. 2001-1982
Application 08/892,716
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the recessed gate flash protrusion of Arai would eliminate the
need for a flash protrusion grinding step. As to dependent
claims 9, 11, and 14, the combination of the APA with the
recessed gate flash protrusion of Arai would have a snug fit
between the front case and monitor that prevents dust and dirt
from entering the space; the APA discloses that a snug fit is
desirable to prevent the entry of dust and dirt.
CONCLUSION
The rejection of claims 1-14 is reversed.
A new ground of rejection has been entered against
claims 1-14 pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, "A new ground of rejection shall not be
considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
Appeal No. 2001-1982
Application 08/892,716
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reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED ) 37 CFR § 1.196(b)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2001-1982
Application 08/892,716
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