Ex parte Corry

Board of Patent Appeals and Interferences

Mar 30, 2000

08050825 (B.P.A.I. Mar. 30, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ARTHUR A. CORRY
____________
Appeal No. 1996-3597
Application No. 08/050,825
____________
ON BRIEF
____________
Before, KIMLIN, WALTZ, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1-5, 10-12 and 20 as amended after final
rejection, which are all of the remaining claims in this
application.
Appellant's invention is drawn to a method of making a
flexible mold useful in producing a molded article that is a
replica of a model. All of the appealed method claims include
Appeal No. 1996-3597 Page 2
Application No. 08/050,825
the steps of; (1) inserting a model into a container so that
the lower portion of the model contiguously overlays a floor
member of the container; (2) pouring a curable liquid polymer
composition into the container for encapsulating the model;
(3) inserting a pair of handle members into the curable liquid
composition; (4) curing the liquid polymer composition having
the handle members embedded therein to form a solid flexible
mold; (5) removing the so formed solid flexible mold from the
container; and (6) displacing the handle members to release
the model from the solid flexible mold to form a cavity
therein having a reverse image of the outer contour of the
model. A further understanding of the invention can be
derived from a reading of exemplary claims 1 and 20, which are
reproduced in an Appendix to the brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hyde 2,779,058 Jan.
29, 1957
Mutch 3,674,302 Jul. 04,
1972
Frahme 4,313,789 Feb. 02,
1982
Adiletta 4,578,826 Apr. 01,
1986
Appeal No. 1996-3597 Page 3
Application No. 08/050,825
Waller is not a listed applicant of U.S. Patent No.1
4,683,020, the patent number cited by the examiner and
applicant in the brief and answer, respectively. Accordingly,
we consider the references of appellant and the examiner to
U.S. Patent No. 4,683,020 to represent an obvious and harmless
error in that the underlying described teachings of the Waller
reference are consistent with U.S. Patent No. 4,683,028, the
patent cited on the Notice of References Cited (Form PTO-892,
sheet 3) that accompanied the first office action (Paper No.
2) mailed January 24, 1994. For purposes of this appeal, any
reference to Waller will be considered as a reference to U.S.
Patent No. 4,683,028.
Waller et al. (Waller) 4,683,028 Jul. 28, 19871
Kaisha GB 2187995 Sep. 23,
1987 Claims 1-5, 10-12 and 20 stand rejected under 35
U.S.C.
§ 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as invention. Claims 1-5, 10-12 and
20 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Frahme and Adiletta in view of Hyde, Kaisha, Mutch and
Waller.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
Appeal No. 1996-3597 Page 4
Application No. 08/050,825
We note that the examiner's additional references to2
claim 15 and the "resulting article" language of claims 2-5
and 10-12 (answer, page 3) are not germane since claim 15 has
been canceled and claims 2-5 and 10-12 have been amended to
remove any reference to a "resulting article."
founded. Accordingly, these rejections will be reversed for
substantially the reasons set forth by appellant in the brief.
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellant’s specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
In rejecting the appealed claims under 35 U.S.C. § 112,
second paragraph, the examiner (answer, page 3) urges that
"... the term predetermined is unacceptable" and makes
reference to the mold, article, polymer composition and the
"flexible and liquid impervious layer" (claim 1) as not being
identified. At page 5 of the answer, the examiner further2
attempts to explain that "... the term 'predetermined' is
unacceptable because it does not further define the claim" and
Appeal No. 1996-3597 Page 5
Application No. 08/050,825
"... appellant has not defined the claims in terms that the
article and its composition may be defined or determined in
terms of its chemical and physical structure."
While we recognize that the variously recited limitations
of the appealed claims do not circumscribe a narrowly defined
mold composition or shape, such breadth does not equate with
indefiniteness. See In re Gardner, 427 F.2d 786, 788, 166 USPQ
138, 140 (CCPA 1970). From our reading of appellant's
specification, including the claims, and the relevant prior
art, it is clear that the claimed method is reasonably
definite albeit broad in encompassing a method for making a
mold of a suitable composition and shape that would be useful
for the suggested applications. Accordingly, we shall not
sustain the examiner*s rejection of the appealed claims under
35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103
In our view, the examiner has not set forth a prima facie
case of obviousness of the claimed method. Since we are in
substantial agreement with appellant for the reasons set forth
in the brief (pages 16-25), we will not burden the record by
repeating all of the deficiencies in the examiner's rejection.
Appeal No. 1996-3597 Page 6
Application No. 08/050,825
We note that it is the burden of the examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. See In re Sernaker, 702 F.2d 989, 994, 217 USPQ
1, 5 (Fed. Cir. 1983).
The examiner has not adequately explained how a skilled
artisan would have arrived at the claimed invention from the
collective prior art teachings assembled by the examiner even
if all of the references were combinable as alleged. As
indicated above, all of the claims on appeal herein are drawn
to a method requiring at least six specifically enumerated
steps in fashioning a flexible mold structure having a cavity
therein defined by a reverse image of the outer contour of a
model that was used in forming the mold and subsequently
removed therefrom. Indeed, we find the examiner's explanation
(answer, pages 3-7) as to why or how a skilled artisan would
have been led to modify the method of forming a block burner
of Frahme and the protective hand covering manufacturing
method of Adiletta to arrive at the claimed method herein with
Appeal No. 1996-3597 Page 7
Application No. 08/050,825
the additional teachings of Hyde, Mutch, Waller and Kaisha
rather difficult to follow. In our view, the proposed
combination of the disparate teachings of these references
falls significantly short of establishing a prima facie case
of obviousness of appellant's method.
We note that it is incumbent upon the examiner to give
weight to all of the method limitations that are specifically
recited in the appealed claims, setting forth how a particular
applied reference meets specified limitation(s) that are
claimed as well as noting all of the differences in the
appealed claims over that applied particular reference, the
proposed modification(s) of that applied reference necessary
to arrive at the claimed subject matter, and an explanation
why such proposed modification(s) would have been obvious to
one of ordinary skill in the art from the combined teachings
of all of the applied reference(s) without resort to
appellant's specification.
This the examiner has not done by suggesting that "Frahme
teaches basic process steps..." and "Adiletta teaches a
similar process..." which may be modified by other dissimilar
applied prior art (answer, pages 3-5) without specifically
Appeal No. 1996-3597 Page 8
Application No. 08/050,825
identifying all of the particular and herein claimed method
steps identically disclosed by Frahme and those not so
disclosed, and further showing how the disparate teachings of
all of the applied references including Frahme would have led
a skilled artisan to modify the process of Frahme to a process
corresponding to appellant's claimed method as a whole. Here,
the examiner has not even identified where Frahme teaches any
method of making a mold having a cavity therein defined by a
reverse image of the outer contour of a model that was used in
forming the mold and subsequently removed therefrom, let alone
appellant's method. The portions of Frahme identified by the
examiner (answer, page 3) are not even directed to a mold
making method involving the curing of a polymer embedding a
model that is subsequently removed therefrom but rather the
use of a particularly assembled mold with inner and outer
members to form a burner block. Based on this record, we find
ourselves in substantially complete agreement with appellant's
views with respect to the lack of merit in the examiner's
stated position (brief, pages 16-25).
From our perspective, the examiner simply has not
established a factual basis upon which to establish the prima
Appeal No. 1996-3597 Page 9
Application No. 08/050,825
facie obviousness of the claimed invention as a whole,
including each and every limitation of the claims. In re
Fine, 837 F.2d 1071, 1075, 5 USPQ 1596, 1600 (Fed. Cir. 1988);
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1967). Accordingly, we
shall not sustain the examiner*s rejection of the appealed
claims under 35 U.S.C.
§ 103.
CONCLUSION
The decision of the examiner to reject claims 1-5, 10-12
and 20 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as
the invention and to reject claims 1-5, 10-12 and 20 under 35
U.S.C. § 103 as being
Appeal No. 1996-3597 Page 10
Application No. 08/050,825
unpatentable over Frahme and Adiletta in view of Hyde, Kaisha,
Mutch and Waller is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Appeal No. 1996-3597 Page 11
Application No. 08/050,825
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