Ex Parte Beckmann

Board of Patent Appeals and Interferences

May 26, 2004

09796253 (B.P.A.I. May. 26, 2004)

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for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRIEDHELM BECKMANN
____________
Appeal No. 2004-1133
Application No. 09/796,253
____________
ON BRIEF
____________
Before KIMLIN, WARREN, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 19, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a method
of producing a composite component with a foamed surface, where a
substrate is placed in a mold and the top surface of the substrate
has deposited thereon a layer of unfoamed or only partly prefoamed
material, and this foamable material is expanded by heating until
Appeal No. 2004-1133
Application No. 09/796,253
2
it touches the mold to form a mold shape that corresponds to the
final foamed surface structure (Brief, pages 2-3).
Appellant states that claims 1 and 2 are separately argued but
the remaining claims 3-19 stand or fall with claim 1 (Brief, page
7). Therefore we limit our consideration to claims 1 and 2. See
37 CFR § 1.192(c)(7)(2000). A copy of claim 1 is attached as an
Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Masui et al. (Masui) 4,623,584 Nov. 18, 1986
Hara et al. (Hara) 5,281,376 Jan. 25, 1994
Claims 1-12, 14 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Masui (Answer, page 3). Claims 13 and 15-18
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Masui
in view of Hara (Answer, page 4). We affirm both of the rejections
on appeal essentially for the reasons stated by the examiner in the
Answer. We add the following comments primarily for emphasis.
OPINION
The examiner finds that Masui discloses a method of producing
a composite component with a foamed surface including (1) placing a
substrate part having a surface to be coated into a mold; (2)
applying a layer of unfoamed foamable material to the surface of
Appeal No. 2004-1133
Application No. 09/796,253
1The examiner also finds that Masui discloses complete
expansion of the foamable material to fill the voids between the
spheres, thus supporting the obviousness of producing an article
which assumes the shape of the mold cavity (Answer, page 4). We
also note that Masui repeatedly teaches that it is preferred to
fill the mold with the composite beads in a bulk volume of 100%
(e.g., see col. 6, ll. 26-28 and 53-57).
2The examiner also makes findings and conclusions of law
regarding the rejection of claims 13 and 15-18 under section
103(a) over Masui in view of Hart (Answer, pages 4-5). However,
(continued...)
3
the substrate part at a first temperature; and (3) expanding the
foamable material at a second temperature higher than the first
temperature with at least one expanding aid such that the foamed
material in an expanded state fills an intermediate space between
the surface of the substrate part and the molding surface of the
mold and bonds with the surface of the substrate part (Answer,
pages 3-4). The examiner recognizes that Masui does not explicitly
disclose that the foamed material comes “to bear” against the
molding surface but concludes that this occurrence would have been
obvious to one of ordinary skill in this art in order to produce a
final article which assumes the shape of the mold cavity (Answer,
page 4).1 With regard to claim 2 on appeal, the examiner finds
that Masui effectively teaches the “succession of temperatures”
recited in claim 2 by the disclosure of heating to within a range
of temperatures (id.).2 We agree. We take note that the function
Appeal No. 2004-1133
Application No. 09/796,253
2(...continued)
as noted above, appellant does not specifically argue the
separate patentability of claims 13 and 15-18 (Brief, page 7).
Additionally, appellant does not argue or contest any of the
examiner’s findings from Hart (see the Brief in its entirety).
Accordingly, we adopt the examiner’s findings and conclusions of
law regarding this rejection and a further discussion of Hart is
unnecessary to this decision. See In re McDaniel, 293 F.3d 1379,
1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
4
of a mold is to help form a structure identical in shape to the
mold and thus an expanded foam material composite would have to
touch or “bear against” the molding surface to fill the mold and
form the desired final molded structure. Additionally, we note
that appellants do not contest this position as set forth in the
Answer (page 4).
Appellant argues that Masui does not disclose “applying a
layer of an unfoamed or merely pre-foamed, foamable material to the
surface of the substrate part at a first temperature,” as recited
in claim 1 on appeal (Brief, page 8). Appellant argues that the
expandable beads of Masui are filled directly into the mold, in
contrast to appellant’s invention where the foamable material is
deposited on the surface of the substrate (id.).
Appellant’s arguments are not persuasive. As correctly stated
by the examiner (Answer, page 5), Masui discloses face plate 3 is
deposited on the expandable composite beads (col. 6, ll. 57-58).
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Application No. 09/796,253
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During prosecution before the examiner, the claim language must be
given the broadest reasonable meaning as ordinarily used, as it
would have been understood by one of ordinary skill in this art,
when read in light of the specification. See In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The
examiner has construed the term “applying” to include any order of
contact, i.e., placing the foamable material on the substrate or
placing the substrate on the foamable material (Answer, page 5).
Appellant has not pointed to, and we do not find, any teaching or
guidelines in the specification which restrict the meaning and
scope of “applying” the material and substrate together, and thus
agree with the examiner that the broadest reasonable interpretation
of the claimed language includes the step of applying the face
plate (substrate) of Masui to the foamable beads.
Appellant argues that Masui requires that pressure is used to
produce the composite molding while appellant’s invention does not
require pressure to be used (Brief, pages 8-9). As noted by the
examiner (Answer, page 5), this argument is not well taken since
the claims are not limited by any recitation of pressure.
Appellant argues that Masui does not show “expanding the
foamable material at a second temperature higher than the first
temperature, with at least one expanding aid selected from the
Appeal No. 2004-1133
Application No. 09/796,253
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group consisting of a chemical blowing agent, a blowing agent
mixture, and microspheres,” as recited in claim 1 on appeal (Brief,
page 9). This argument is not well taken since the examiner
specifically cites the portion of Masui that discloses such an
expanding step, as well as the citation to the portion of Masui
teaching the use of chemical foaming (blowing) agents (Answer,
paragraph bridging pages 5-6, citing col. 6, ll. 60-64, and col. 3,
ll. 42-56, respectively).
Appellant argues that Masui discloses a temperature range of
120 to 200°C. but does not disclose that the foamable material
should be heated to a series of different increasing temperatures
as recited in claim 2 on appeal (Brief, paragraph bridging pages 9-
10). This argument is not well taken since, as noted by the
examiner (Answer, page 6), the foamable material of Masui would
have to be subjected to a succession of higher temperatures as it
was being heated from an initial lower temperature to reach the
higher temperature range specified by Masui. We note that claim 2
does not limit or specify the time for heating at each different
temperature.
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the
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Application No. 09/796,253
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totality of the record, including due consideration of appellant’s
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, we affirm both rejections on appeal.
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Application No. 09/796,253
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
EDWARD R. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-1133
Application No. 09/796,253
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LERNER AND GREENBERG, PA
P O BOX 2480
HOLLYWOOD, FL 33022-2480
Appeal No. 2004-1133
Application No. 09/796,253
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APPENDIX
1. A method of producing a composite component with a foamed
surface, which comprises the steps of:
placing a substrate part having a surface to be coated into a mold;
applying a layer of an unfoamed or merely pre-foamed, foamable
material to the surface of the substrate part at a first
temperature; and
expanding the foamable material at a second temperature higher
than the first temperature, with at least one expanding aid
selected from the group consisting of a chemical blowing agent, a
blowing agent mixture, and microspheres, such that the
foamed material in an expanded state fills an intermediate space
between the surface of the substrate part and a molding surface
of the mold and, on the one hand, bonds with the surface of the
substrate part and, on the other hand, comes to bear against the
molding surface.