Ex Parte Caviezel et al

Patent Trial and Appeal Board

Mar 13, 2017

13421541 (P.T.A.B. Mar. 13, 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.
13/421,541 03/15/2012 Heinz Caviezel 710002 3771
23460 7590 03/15/2017
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ CAVIEZEL, ROLAND TREUTLEIN,
ULRICH PRESENZ, and MARK PFLEGHAR
Appeal 2016-000133
Application 13/421,541
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
JENNIFER GUPTA, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 1—5, 7—13, and 16—212 of
Application 13/421,541. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as EMS-Patent AG. Appeal
Brief dated Mar. 2, 2015 (“App. Br.”) 1.
2 Final Rejection dated Aug. 1, 2014 (“Final Act.”) 6—18. This Decision also
refers to the Examiner’s Answer dated July 27, 2015 (“Ans.”), and the Reply
Brief dated Sept. 24, 2015 (“Reply Br.”).
Appeal 2016-000133
Application 13/421,541
BACKGROUND
The subject matter on appeal relates to a thermoplastic casing body
for a pencil, such as a cosmetic pencil, having a construction of at least three
shells. App. Br. 2; Specification (“Spec.”) 17.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A thermoplastic casing body for a pencil, the casing
body comprising an at least three-shell construction A, Z, I,
enclosing a cavity H, wherein the construction comprises 1 to
10 outer shells A, an intermediate shell Z and 1 to 10 inner
shells I, the intermediate shell Z comprising polyamide foam
containing a propellant, at least one of shells A comprising a
polyamide, polycarbonate, polyester, polyester elastomer,
ethylene-vinyl alcohol copolymer, polyolefin, and/or recycling
material from the production process of the casing body, and at
least one of shells I consisting of a polyamide, polycarbonate,
polyester, polyester elastomer, ethylene-vinyl alcohol
copolymer, and/or recycling material from the production
process of the casing body; and
wherein the maximum strength of said casing body in the
bending test is in the range of 85 to 250 N.
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Appeal 2016-000133
Application 13/421,541
THE REJECTIONS
1. Claims 1—5, 12, 13, and 16—21 are rejected under 35 U.S.C. §
103(a) as unpatentable over the combination of Bartner,3 Jacobs,4
Admission by Applicant,5 and Chochoy.6 Final Act. 6.
2. Claims 7—10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Bartner, Jacobs, Admission by Applicant,
Chochoy, and Okada.7 Final Act. 14—15.
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bartner, Jacobs, Admission by Applicant,
Chochoy, Okada, and Moriwaki.8 9Final Act. 18.
DISCUSSION
Appellants argue for patentability of the appealed claims on the basis
of limitations in claim 1, and do not separately argue any of the other
appealed claims. App. Br. 2—6. We therefore focus our discussion on
claim 1 as argued by Appellants; all dependent claims will stand or fall with
the claim from which they depend. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Bartner discloses a thermoplastic casing
body 149 for a pencil, comprising a layered shell construction having a rigid
3 Bartner, US 3,625,788 issued Dec. 7, 1971 (“Bartner”).
4 Jacobs et al., US 2008/0207782 A1 published Aug. 28. 2008 (“Jacobs”).
5 Caviezel et al., US 2012/0237708 Al published Sep. 20, 2012
(“Caviezel”),121.
6 Chochoy et al., US 6,572,295 B1 issued Jun. 3, 2003 (“Chochoy”).
7 Okada et al., US 3,600,336 issued Aug. 17, 971 (“Okada”).
8 Moriwaki et al., US 6,075,116 issued Jun. 13, 2000 (“Moriwaki”).
9 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Appeal 2016-000133
Application 13/421,541
outer shell 16 which may be non-foamed polypropylene, and an inner
foamed polystyrene layer 18. Final Act. H 18—24 (providing citations to
Bartner). The Examiner relies on Jacobs as teaching production and use of
polyamide foam, corresponding to the intermediate shell Z recited in claim
1. Id. 125—26 (providing citations to Jacobs). The Examiner determines it
would have been obvious to a person of ordinary skill in the art to modify
Bartner’s casing by using foamed polyamide as taught by Jacobs, in order to
improve thermal and chemical resistance {id. 127), and further to use a
polyamide foam containing propellants, as described in Appellants’
Specification 120, as a known material based on its suitability for its
intended use. Final Act. H 28—29. The Examiner acknowledges that
Bartner does not explicitly teach an inner shell that corresponds to shell I
recited in claim 1, but determines it would have been obvious to a person of
ordinary skill in the art to modify Bartner’s casing to include an inner shell
layer of a thermoplastic elastomer as taught by Chochoy, in order to reduce
the risk of breaking when the pencil is in use and improve the mechanical
connection between the lead and the remainder of the pencil. Final Act.
1130-33 (providing citations to Chochoy).
Appellants argue that the obviousness rejections should be reversed
for the following reasons: (1) Jacobs is non-analogous art (App. Br. 2—3);
(2) the combination of Chochoy and Bartner is based on hindsight {id. 4—5);
and (3) the Examiner failed to properly consider the advantages of the
claimed invention. Id. 5.10
10 In their Reply Brief, Appellants present additional arguments which could
have been, but were not, presented in the Appeal Brief. Reply Br. 4—7.
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Appeal 2016-000133
Application 13/421,541
Having considered Appellants’ arguments in light of this appeal
record, we are not persuaded that Appellants identify reversible error.
Accordingly, we affirm the rejections for the reasons set forth by the
Examiner (Final Act. 6—18; Ans. 16—21), which we adopt as our own. We
add the following primarily for emphasis.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed; or (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is concerned. In re Clay, 966
F.2d 656, 658—59 (Fed. Cir. 1992). The scope of analogous art is to be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc. . . . , directs us to construe the scope of analogous art
broadly”).
Appellants argue that Jacobs is not analogous art because Jacobs does
not disclose a writing implement and the applications for Jacobs’ polyamide
foam require thermal or chemical resistance. App. Br. 3. This argument is
not responsive to the rejection, which cites Jacobs as a secondary reference
for teaching polyamide foam. As the Examiner finds, Jacobs teaches that
polyamide foams can be incorporated into sandwich structures by various
techniques, and these foams have improved thermal and chemical resistance
These new arguments will not be considered for purposes of the present
appeal because Appellants have not asserted, much less shown, good cause
for their belated presentation. 37 C.F.R. § 41.41(b)(2)(2014).
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Application 13/421,541
properties as compared to polystyrene foam as taught by Bartner. Ans. 16—
17, citing Jacobs 3, 34, 38. Thus, Jacobs is reasonably pertinent to the
construction of a layered thermoplastic casing body with improved thermal
and chemical resistance. Accordingly, we are not persuaded by Appellants’
argument that Jacobs is non-analogous art.
Appellants further argue that the combination of Chochoy and Bartner
is based on hindsight because the Examiner has not identified evidence
which suggests adding Chochoy’s inner shell as an additional inner shell of
Bartner’s casing, such as evidence that Bartner’s inner shell is unable to
prevent cracking of lead. App. Br. 4—5. Appellants also assert Bartner
already teaches that during production a foamed layer melts and forms a
bond with the pencil lead material (i.e., “core,” see Bartner 6:12), so that
upon cooling and setting, the inner surface of the foamed layer becomes
securely bonded with the core. Reply Br. 7, citing Bartner 6:12—14, 60-65.
Appellants argue this is further evidence that Bartner already protects the
lead material, and thus a person of ordinary skill in the art would not have
been motivated to add Chochoy’s inner shell as additional protection. Reply
Br. 7-8.
Appellants’ argument that modification of Bartner is unnecessary fails
to show error in the Examiner’s reasoned finding, supported by evidence in
Chochoy, that an ordinary artisan would have understood from Chochoy that
addition of an inner shell would protect the lead material and reduce the risk
of breaking (see Ans. 133). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
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Application 13/421,541
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
Appellants’ final argument that the Examiner has not adequately
considered the advantages of the claimed invention is not persuasive because
the purported advantages are not recited in the claims. Further, Appellants
have not pointed us to evidence that the purported advantages were
unexpected, such that they would support nonobviousness of the claimed
invention.
SUMMARY
We affirm the rejections of claims 1—5, 7—13, and 16—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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