Ex Parte Deforest et al

Board of Patent Appeals and Interferences

Jun 30, 2008

10185803 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STANLEY F. DEFOREST, PETER J. DANISH
and FRANK R. LOMBARDO
____________________

Appeal 2008-0887
Application 10/185,803
Technology Center 3600
____________________

Decided: June 30, 2008
____________________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the final 2
rejection of claims 14-43. We have jurisdiction under 35 U.S.C. § 6(b) 3
(2002). 4
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The claims on appeal relate to methods and apparatuses for sealing a 1
cover over an opening in a housing for an automotive component such as a 2
gearbox for a fractional horsepower electric motor assembly. (Spec.1, ll. 4-7 3
and 4, ll. 14-17.) Claim 33 is typical of the claims on appeal: 4
5
33. An automotive apparatus for sealing 6
an opening in a housing comprising: 7
an injection molded cover for closing the 8
opening in the housing, the cover made from a 9
polybuylene terephthalate/polycarbonate 10
copolymer material; and 11
a seal for sealing between the cover and the 12
housing, the seal made from a non-vulcanized 13
thermoplastic styrene ethylene butylene styrene 14
block copolymer material, the material of the seal 15
and the cover creating a chemical bond extending 16
along an interface between the seal and the cover 17
of sufficient strength to maintain the seal 18
associated with the cover. 19
20
Claims 14-28 and 33-38 stand rejected under 35 U.S.C. § 103(a) 21
(2002) as being unpatentable over Bingle (U.S. Patent 5,986,364) in view of 22
Schmidt (U.S. Patent 5,552,460) and Simon (U.S. Patent 6,469,078). Claims 23
14-43 stand rejected under section 103(a) as being unpatentable over Bingle 24
in view of Nishimuro (U.S. Patent 6,505,839) and Simon. 25
We AFFIRM the rejection of claims 14-43 under section 103(a) as 26
being unpatentable over Bingle in view of Nishimuro and Simon. We 27
REVERSE the rejection of claims 14-28 and 33-38 under section 103(a) 28
over Bingle in view of Schmidt and Simon. 29
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ISSUES 1
Two primary issues in this appeal are whether (1) forming an injection 2
molded cover made from a polybutylene terephthalate [“PBT”]/ 3
polycarbonate [“PC”] copolymer material would have been obvious from the 4
teachings of Bingle, Schmidt and Simon or of Bingle, Nishimuro and Simon; 5
and (2) whether forming a seal made from a thermoplastic styrene ethylene 6
butylene styrene [“SEBS”] block copolymer material such that the material 7
of the seal creates a direct, non-vulcanized chemical bond with a PBT/PC 8
copolymer material of a cover would have been obvious from the teachings 9
of Bingle, Schmidt and Simon or of Bingle, Nishimuro and Simon. 10
11
FINDINGS OF FACT 12
The record supports the following findings of fact (“FF”) by a 13
preponderance of the evidence. 14
1. Bingle teaches a housing for an electrically-operated mirror 15
actuator assembly for an automobile. (Bingle, col. 1, ll. 9-13 and col. 4, ll. 16
57-58.) The housing includes an upper housing member or cover. (Bingle, 17
col. 4, ll. 58-63.) The cover includes a gasket seal which extends around a 18
perimeter of the member. (Bingle, col. 9, ll. 5-9.) The cover and the gasket 19
seal are formed either by two color molding or by first injection molding the 20
housing member and then injection molding the gasket seal onto the housing 21
member. (Bingle, col. 6, ll. 43-57.) 22
2. Bingle teaches affixing the gasket seal to the upper housing 23
member by creating a chemical bond between the materials of the gasket 24
seal and the housing member. The reference teaches that chemical bonding 25
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aids in adhering the softer gasket material to the harder material of the 1
housing member. (Bingle, col. 5, ll. 5-9.) 2
3. More specifically, Bingle teaches that “[c]hemically bonding is 3
achieved by selecting the material of the housing and gasket material such 4
that when the gasket material is in a semi-molten state and is placed or 5
flowed onto the housing, chemical adhesion between the two polymers 6
forming the housing and the gasket material occurs.” (Bingle, col. 10, ll. 10-7
15.) 8
4. Bingle also teaches making the cover of “a suitable 9
thermoplastic resin, such as . . . polybutylene terephthalate (PBT) or other 10
suitable melt processable resins.” (Bingle, col. 5, ll. 9-15.) 11
5. Nishimuro teaches providing a gasketed cover for an electronic 12
device such as a computer hard drive. (Nishimuro, col. 1, ll. 9-13.) 13
6. Nishimuro teaches that where the material for the cover body is 14
a thermoplastic resin and the material for the gasket is a thermoplastic 15
elastomer, “the integration is made by the junction between said 16
thermoplastic resin and said thermoplastic elastomer, specifically by two-17
color molding method, insert molding method or the like.” (Nishimuro, col. 18
7, ll. 38-44.) Where the two-color molding method is used, the reference 19
teaches that the thermoplastic elastomer should be “excellent in fusion 20
adhesivity . . . .” (Nishimuro, col. 7, ll. 45-58.) 21
7. The thermoplastic resin which constitutes the cover body may 22
be a polyester such as PBT, a PC or a combination of the two. (Nishimuro, 23
col. 4, ll. 35-45 and 50-53.) 24
8. The thermoplastic elastomer which constitutes the gasket may 25
be a thermoplastic SEBS block copolymer. (Nishimuro, col. 5, ll. 1-10.) 26
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Nishimuro teaches that the use of a thermoplastic elastomer permits 1
“dispensing with vulcanization time.” (Nishimuro, col. 8, ll. 33-36.) 2
9. Simon teaches that partially crystalline polyester materials as a 3
class “are used for injection moulding compounds and are distinguished by 4
high strength and rigidity, high dimensional stability and favorable wear 5
characteristics.” (Simon, col. 1, ll. 15-19.) 6
10. Schmidt teaches producing composite articles made from at 7
least one hard component and at least one soft component. (Schmidt, col. 1, 8
ll. 8-12.) 9
11. The soft component is made from a rubber composition which 10
is vulcanized in contact with the hard component. (Schmidt, col. 2, ll. 16-11
21). 12
13
PRINCIPLES OF LAW 14
A claim is unpatentable for obviousness under section 103(a) if “the 15
differences between the subject matter sought to be patented and the prior art 16
are such that the subject matter as a whole would have been obvious at the 17
time the invention was made to a person having ordinary skill in the art to 18
which said subject matter pertains.” In Graham v. John Deere Co., 383 U.S. 19
1 (1966), the Supreme Court set out factors to be considered in determining 20
whether claimed subject matter would have been obvious: 21
22
Under § 103, the scope and content of the prior art 23
are to be determined; differences between the prior 24
art and the claims at issue are to be ascertained; 25
and the level of ordinary skill in the pertinent art 26
resolved. Against this background, the 27
obviousness or nonobviousness of the subject 28
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matter is determined. Such secondary 1
considerations as commercial success, long felt but 2
unsolved needs, failure of others, etc., might be 3
utilized to give light to the circumstances 4
surrounding the origin of the subject matter sought 5
to be patented. As indicia of obviousness or 6
nonobviousness, these inquiries may have 7
relevancy. 8
9
Id., 383 U.S. at 17-18. 10
In order to reject a claim under section 103(a), an examiner must 11
establish at least a “prima facie” case that the claimed subject matter would 12
have been obvious. Once the examiner produces prima facie evidence that 13
the claimed subject matter would have been obvious, the applicant may 14
present additional evidence tending to rebut the examiner’s conclusion that 15
the claimed subject matter would have been obvious. If the applicant 16
presents additional evidence to rebut the examiner’s conclusion, the 17
examiner must consider all of the evidence anew. If the evidence presented 18
by the examiner and any evidence presented by the applicant, considered 19
anew, demonstrate that the claimed subject matter would have been obvious 20
to one of ordinary skill in the art, the claim is properly rejected under section 21
103(a). In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). 22
23
ANALYSIS 24
A. The Rejection of Claims 14-43 Under Section 103(a) as Being 25
Unpatentable Over Bingle in View of Nishimuro and Simon 26
1. Claims 14-16 27
Claim 14 recites a method including the steps of forming a cover 28
made from a PBT/PC copolymer material and forming a seal made from a 29
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thermoplastic material, “the material of the seal and the cover creating a 1
direct, non-vulcanized chemical bond extending along an interface between 2
the seal and the cover of sufficient strength to maintain the seal associated 3
with the cover . . . .” The Appellants make two contentions with respect to 4
the rejection of claims 14-16: (1) that Bingle, Nishimuro and Simon do not 5
teach forming a cover made from a PBT/PC copolymer material; and (2) that 6
the three references do not teach “a process where a thermoplastic material 7
can be used to form a seal between the cover and the automotive housing 8
such that the material of the seal and the cover form a direct non-vulcanized 9
seal bond.” (App. Br. 38; see also Reply Br. 15.) 10
With regard to the Appellants’ first contention, the Appellants do not 11
dispute that PBT/PC copolymer materials were known molding compounds. 12
(App. Br. 11). Bingle teaches forming such a cover by injection molding a 13
“suitable thermoplastic resin” such as PBT or “other suitable melt 14
processable resin.” (FF 4.) Simon teaches that partially crystalline polyester 15
materials as a class have strength and wear resistance properties suiting them 16
for use in injection molding covers for housings of automotive components. 17
(FF 9.)1 Nishimuro identifies thermoplastics including PBT, PC materials 18

1 J. Kroschwitz, ed., HIGH PERFORMANCE POLYMERS & COMPOSITES
246 (John Wiley & Sons, New York 1991), which was not relied on by the
Examiner, taught that “polyester carbonate [copolymers] are used primarily
in applications requiring 5-25°C higher heat-deflection temperature and
better hydrolytic performance than provided by standard PC resins.”
Although not necessary to the outcome of this appeal, this reference suggests
that polyester carbonate copolymers (such as PBT/PC copolymers) were
known to have properties particularly suiting them for use in injection
molding covers for housings of automotive components.
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and combinations of the two as preferred materials for making injection 1
molded housings. (FF 7.) 2
These teachings would have provided one of ordinary skill in the art 3
reason to form covers for housings of automotive components from partially 4
crystalline polyester materials and particularly from the finite subclass of 5
polyester materials combining PBT and PC such as PBT/PC copolymer 6
materials. The simple substitution of a known PBT/PC copolymer material 7
for PBT, a material combining PBT and PC or another partially crystalline 8
polyester material for use in injection molding a cover for a housing of an 9
automotive component would have been prima facie obvious. See KSR Int’l 10
Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1740 (2007) (holding that when an 11
application “claims a structure already known in the prior art that is altered 12
by the mere substitution of one element for another known in the field, the 13
combination must do more than yield a predictable result.” ). 14
With regard to the Appellants’ second contention, the combined 15
teachings of Bingle and Nishimuro would have suggested forming a seal on 16
a cover for a housing of an automotive component by either injection 17
molding a thermoplastic elastomer onto the cover or forming the cover and 18
the seal by two-color molding. (FF 1 and 6.) In particular, Nishimuro 19
teaches the desirability of forming the seal from a thermoplastic elastomer so 20
as to dispense with vulcanization time. (FF 8.) Bingle teaches that selecting 21
cover and seal materials capable of forming a chemical bond during the 22
injection molding process aids the adhesion of the seal to the cover. (FF 2 23
and 3.) In summary, the teachings of Bingle and Nishimuro would have 24
provided one of ordinary skill in the art desiring to form an injection molded 25
cover for a housing for an automotive component from a PBT/PC copolymer 26
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material reason (1) to form a seal on the cover by injection molding a 1
thermoplastic elastomer onto the PBT/PC copolymer material and (2) to 2
seek a thermoplastic elastomeric seal material capable of forming a chemical 3
bond with the PBT/PC copolymer material. 4
One of ordinary skill in the art seeking to follow Bingle’s teaching to 5
chemically bond the thermoplastic elastomeric material of the seal to the 6
cover material along with Nishimuro’s teaching away from the use of seal 7
materials requiring vulcanization would have looked to the preferred 8
thermoplastic elastomers listed in Nishimuro, col. 4, l. 63 – col. 5, l. 10 for 9
guidance in selecting a seal material capable of creating a direct, non-10
vulcanized bond with PBT/PC copolymer. Nishimuro teaches, at least in the 11
case of two-color molding, selecting a seal material which is “excellent in 12
fusion adhesivity.” (FF 6.) We accept the Examiner’s finding that the 13
phrase “fusedly bonded” as used by Nishimuro implies that “[t]he cover and 14
seal form a chemical bond and are fused along their interface.” (Ans. 4, 15
citing Nishimuro, col. 11, l. 62.) Nishimuro’s disclosure would have 16
suggested that one or more of the preferred thermoplastic elastomers listed 17
by Nishimuro would form a fused bond with PBT, a PC, or a combination of 18
PBT and PC. Nishimuro’s list of preferred thermoplastic elastomers 19
includes thermoplastic SEBS block copolymer materials (FF 8), that is, 20
thermoplastic SEBS block copolymer as well as thermoplastic material 21
combinations including SEBS block copolymer. 22
We are convinced that it would have been obvious to try a 23
thermoplastic SEBS block copolymer material when seeking a seal material 24
capable of forming a direct, non-vulcanized chemical bond with PBT/PC 25
copolymer material. See KSR Int’l, 127 S.Ct. at 1742 (“When there is a 26
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design need or market pressure to solve a problem and there are a finite 1
number of identified, predictable solutions, a person of ordinary skill has 2
good reason to pursue the known options within his or her technical grasp. 3
If this leads to the anticipated success, it is likely the product not of 4
innovation but of ordinary skill and common sense.”) The Appellants assert 5
that Nishimuro specifically discloses five different copolymers for the gasket 6
material. (App. Br. 36.) The Appellants have not identified any unobvious, 7
critical process parameter which one of ordinary skill in the art might have 8
required in order to succeed in identifying thermoplastic SEBS block 9
copolymer material as a seal material capable of forming a direct, non-10
vulcanized chemical bond with PBT/PC copolymer material. For this 11
reason, we are of the view that that a process where a thermoplastic material, 12
namely, a thermoplastic SEBS block copolymer material, can be used to 13
form a seal between a cover made from a PBT/PC copolymer material and 14
an automotive housing such that the material of the seal and the cover form a 15
direct, non-vulcanized chemical bond would have been prima facie obvious. 16
Inasmuch as we have concluded that the subject matter of claims 14-17
16 would have been prima facie obvious, and since the Appellants have 18
submitted evidence in rebuttal of obviousness, we now turn to consider this 19
evidence. When such evidence is presented it is our duty to consider the 20
evidence anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 21
1990). We also are mindful that objective evidence of nonobviousness in 22
any given case may be entitled to more or less weight depending on its 23
nature and its relationship with the merits of the invention. Stratoflex Inc. v. 24
Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). 25
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The Appellants present two declarations, a “Declaration Under 37 1
C.F.R. § 1.132” [“Declaration”] and a “Second Declaration Under 37 C.F.R. 2
§ 1.132” [“Second Declaration”], both executed by a co-inventor, Stanley F. 3
DeForest [“the declarant”]. In addition, the Appellants present definitions 4
and short articles from four reference works.2 5
In the third paragraph of the Declaration, the declarant discusses 6
Bingle and presents the declarant’s opinion regarding the legal conclusion of 7
patentability of the claims on appeal. Likewise, the fourth through eighth 8
paragraphs of the Second Declaration discuss Schmidt and present the 9
declarant’s opinion the legal conclusion of patentability of claims 14-28 and 10
33-38 over Bingle, Schmidt and Simon. “An expert’s opinion on the 11
ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.” 12
Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 1574 (Fed. Cir. 1993) (quoting 13
Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991)); see 14
also Avia Group Int’l Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564 (Fed. 15
Cir. 1988). Hence, we do not give the discussion of the third paragraph of 16
the Declaration weight as evidence of nonobviousness. Even if we were to 17
give evidentiary weight to such an opinion, we would not give weight to the 18
discussion of Schmidt since that discussion does not relate to the rejection at 19
issue here. 20
In the ninth paragraph of the second declaration, the declarant asserts 21
that the Appellants did not know prior to undertaking a course of 22
experimentation that a PBT/PC copolymer material would form a chemical 23

2 The title page of the Evidence Appendix of the Supplemental Appeal
Brief seeks entry of a passage from a fifth reference work. The Board does
not enter evidence in the first instance. See 37 C.F.R. § 41.37(c)(2) (2007)
(“[a] brief shall not include . . . any new or non-admitted evidence.”).
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bond of the desired strength with a thermoplastic SEBS copolymer material. 1
(Second Decl., ¶ 9.) In the fourth paragraph of the Declaration and the ninth 2
paragraph of the second declaration, the declarant further states that the 3
development process undertaken by the assignee for determining a suitable 4
combination of seal and cover materials “required testing at least six to ten 5
different material combinations and ten to twenty permutations of 6
subcombinations before a suitable combination of materials was found. In 7
addition, the development process required over 2200 man-hours of work to 8
complete the chemical testing process.” (Decl., ¶ 4.) 9
While we have considered this evidence, we note that the declarant’s 10
assertion that the Appellants doubted whether the PBT/PC copolymer 11
material which the Appellants intended to use to form covers for automotive 12
housings would form a chemical bond of the desired strength with a 13
thermoplastic SEBS block copolymer material does not imply that the ability 14
of a PBT/PC copolymer material to form a chemical bond with a 15
thermoplastic SEBS block copolymer material would have been unexpected 16
to a hypothetical person of ordinary skill having a complete knowledge of 17
the art. In addition, we note that the declarant describes the course of 18
experimentation asserted in the fourth paragraph of the Declaration and the 19
ninth paragraph of the Second Declaration as a “development process” and 20
states that “only with experimentation of the thermal aspects of the insert 21
molding process, including heat of the substrate, temperature of the SEBS 22
melt and temperature of the second shot tool used, was the functional part 23
produced” (Second Decl., ¶ 9 [emphasis added]). Without more detail, we 24
are unable to determine how many of the 2200 man-hours spent on the 25
course of experimentation were devoted to the reduction of the subject 26
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matter to practice or to the development of a commercial embodiment. The 1
declarant has not provided us with any evidence by which we might place 2
the Appellants’ testing of “at least six to ten different material combinations 3
and ten to twenty permutations of subcombinations before a suitable 4
combination of materials was found” in proper context to determine whether 5
the portion of this course of experimentation devoted to finding a 6
thermoplastic elastomer capable of bonding with the PBT/PC copolymer 7
material which the Appellants intended to use to form covers for automotive 8
housings was more than a routine application of a well-known problem-9
solving strategy to a problem already known from Bingle and other sources 10
in the prior art. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. 11
Cir. 2007). In light of these observations, the evidence is entitled to little 12
weight in determining whether the claimed inventions are obvious. 13
Having now considered all the evidence presented by the Appellants 14
and weighing the evidence anew, it is our conclusion that the evidence for 15
obviousness greatly outweighs the evidence thereagainst. On the record 16
before us, the Appellants have not shown that the Examiner erred in 17
rejecting independent claims 14-16 under section 103(a) as being 18
unpatentable over Bingle, Nishimuro and Simon. 19
20
2. Claims 17 and 18 21
Claim 17 is a method claim depending from claim 14 which recites 22
“injection molding the cover with a shot of polybutylene terephthalate/ 23
polycarbonate copolymer material into a first mold.” The Appellants 24
contend that “[t]he cited references lack any teaching or suggestion of an 25
injection moldable PBT/PC copolymer introduced into a first mold to form a 26
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cover.” (App. Br. 41.) We conclude for the reasons discussed in connection 1
with the rejection of claims 14-16 over Bingle, Nishimuro and Simon that 2
one of ordinary skill in the art would have had reason to form a cover for a 3
housing of an automotive component from a PBT/PC copolymer material. 4
Bingle and Nishimuro both teach injection molding the cover (FF 1 and 6), a 5
process which would include injecting a shot of PBT/PC copolymer into a 6
first mold. 7
On the record before us, the Appellants have not shown that the 8
Examiner erred in rejecting claim 17 under section 103(a) as being 9
unpatentable over Bingle, Nishimuro and Simon. Since the Appellants 10
present no arguments asserting that claim 18 might be patentable if claim14 11
and 17 are not (App. Br. 39), the Appellants also have not shown that the 12
Examiner erred in rejecting claim 18 under section 103(a) as being 13
unpatentable over Bingle, Nishimuro and Simon. 14
15
3. Claims 19-23 16
Claims 19-23 are product-by-process claims depending from method 17
claim 14. The Appellants contend that “[t]he cited references lack any 18
teaching of a cover made of a PBT/PC copolymer material having a 19
thermoplastic seal positioned such that the seal and cover create a direct 20
[PBT/PC-SEBS] chemical bond extending at an interface between the seal 21
and cover.” (App. Br. 41.) 22
A product-by-process claim covers the recited product and not a 23
particular process by which the product may be made. SmithKline Beecham 24
Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). Nevertheless, 25
where a claimed product and a prior art product “are produced by identical 26
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or substantially identical processes, the PTO can require an applicant to 1
prove that the prior art [product does] not necessarily or inherently possess 2
the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 3
(CCPA 1977). 4
We conclude for the reasons discussed in connection with the 5
rejection of claims 14-16 over Bingle, Nishimuro and Simon that one of 6
ordinary skill in the art would have had reason to form a cover for a housing 7
of an automotive component from a PBT/PC copolymer material and to 8
injection mold a thermoplastic SEBS block copolymer seal material onto the 9
PBT/PC copolymer material without vulcanization. The Examiner has a 10
rational basis for believing that this injection molding process will create a 11
direct PBT/PC-SEBS chemical bond extending at an interface between the 12
seal and the bond. The Appellants have provided no evidence sufficient to 13
rebut such a belief. In particular, the Appellants have provided no evidence 14
sufficient to demonstrate that any process parameters, such as parameters 15
relating to the thermal aspects of the insert molding process, are critical to 16
the formation of a direct, non-vulcanized chemical bond when a 17
thermoplastic SEBS block copolymer material is injection molded onto a 18
cover made from a PBT/PC copolymer material. To the contrary, the 19
Appellants’ specification suggests that the choice of materials alone is 20
decisive. (Spec. 8, ll. 14-16.) 21
On the record before us, the Appellants have not shown that the 22
Examiner erred in rejecting claims 19-23 under section 103(a) as being 23
unpatentable over Bingle, Nishimuro and Simon. 24
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4. Claims 24-28 1
Independent claim 24 is an apparatus claim reciting “a cover for 2
closing the opening in the housing, the cover made from a polybutylene 3
terephthalate/polycarbonate copolymer material . . . .” The Appellants 4
contend that “the Bingle reference lacks any teaching or suggestion of the 5
PBT/PC copolymer material. The Nishimuro reference lacks any teaching 6
or suggestion of a cover made from a polybutylene terephthalate/ 7
polycarbonate copolymer material. The Simon reference is directed to 8
PBT/PC blends rather than copolymers.” (App. Br. 39.) We conclude for 9
the reasons discussed in connection with the rejections of claims 14-16 over 10
Bingle, Nishimuro and Simon that a cover for a housing of an automotive 11
component made from a PBT/PC copolymer material would have been 12
obvious. 13
On the record before us, the Appellants have not shown that the 14
Examiner erred in rejecting independent claim 24 under section 103(a) as 15
being unpatentable over Bingle, Nishimuro and Simon. Since the 16
Appellants present no arguments asserting that claims 25-28 might be 17
patentable if claim 24 is not (App. Br. 39),3 the Appellants also have not 18
shown that the Examiner erred in rejecting claims 25-28 under section 19
103(a) as being unpatentable over Bingle, Nishimuro and Simon. 20

3 The Supplemental Appeal Brief grouped claims 24-26. Since claims
27 and 28 depend from claim 24 and since the brief does not separately
mention the rejection of those claims under section 103(a) over Bingle,
Nishimuro and Simon, we have considered claims 27 and 28 together with
claims 24-26 for purposes of this rejection.
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5. Claims 29, 30, 36, 38, 39 and 42 1
Independent claim 29 recites a method including the steps of “forming 2
a cover . . . made from a copolymer material” and “forming a seal . . . 3
consisting of a nonvulcanized thermoplastic styrene ethylene butylene 4
styrene block copolymer material, the material of the seal and the cover 5
creating a chemical bond extending along an interface between the seal and 6
the cover of sufficient strength to maintain the seal associated with the 7
cover.” The Appellants contend that “the cited references lack any teaching 8
or suggestion of the use of the copolymeric materials in the cover member as 9
well as any suggestion that the seal can be formed of a nonvulcanized 10
thermoplastic SEBS material to creat[e] a chemical bond as defined therein.” 11
(App. Br. 39-40.) We conclude for the reasons discussed in connection with 12
the rejection of claims 14-16 over those references that one of ordinary skill 13
would have had reason to injection mold a thermoplastic SEBS block 14
copolymer seal material without vulcanization onto a cover made from a 15
PBT/PC copolymer material. 16
On the record before us, the Appellants have not shown that the 17
Examiner erred in rejecting independent claim 29 under section 103(a) as 18
being unpatentable over Bingle, Nishimuro and Simon. Since the 19
Appellants present no arguments asserting that claims 30, 36, 38,4 39 and 20

4 Since claim 38 depends from claim 29 and since the Supplemental
Appeal Brief does not separately mention the rejection of claim 38 under
section 103(a) over Bingle, Nishimuro and Simon, we have considered the
rejection of claim 38 together with the rejection of claim 29 over those
references.

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425 might be patentable if claim 24 is not (App. Br. 40), the Appellants also 1
have not shown that the Examiner erred in rejecting claims 30, 36, 39 and 2
42 under section 103(a) as being unpatentable over Bingle, Nishimuro and 3
Simon. 4
5
6. Claims 31 and 32 6
Claims 31 and 326 are product-by-process claims depending from 7
claim 29. The Appellants contend that “[t]he cited references lack any 8
teaching or suggestion of a copolymer cover having an SEBS seal 9
chemically bonded along an interface between the seal and the cover.” 10
(App. Br. 42.) We conclude for the reasons discussed in connection with the 11
rejections of claims 14-16 and of claims 19-23 over Bingle, Nishimuro and 12
Simon that one of ordinary skill in the art would have had reason to form a 13
cover for a housing of an automotive component from a PBT/PC copolymer 14
material and to injection mold a thermoplastic SEBS block copolymer seal 15

5 Section K on page 42 of the Supplemental Appeal Brief appears to
argue the rejection of claim 43 under section 103(a) over Bingle, Nishimuro
and Simon rather than the rejection of claim 42 over that prior art. Since
claim 42 is a method claim depending from method claim 29 and since the
brief does not appear to argue the rejection of claim 42 over Bingle,
Nishimuro and Simon independently of the rejection of claim 29 over the
same prior art, we have reviewed the rejection of claim 42 together with the
rejection of claim 29 over those references.

6 Since claim 32 depends from claim 31 and since the Supplemental
Appeal Brief does not separately mention the rejection of claim 32 under
section 103(a) over Bingle, Nishimuro and Simon, we have considered the
rejection of claim 32 together with the rejection of claim 31 over those
references.

Appeal 2008-0887
Application 10/185,803

19
material onto the along the perimeter of a cover made from PBT/PC 1
copolymer material. The Examiner has a rational basis for believing that 2
this injection molding process will result in a copolymer cover having an 3
SEBS seal chemically bonded along an interface between the seal and the 4
cover. The Appellants have not submitted evidence sufficient to rebut such 5
a belief. 6
On the record before us, the Appellants have not shown that the 7
Examiner erred in rejecting claims 31 and 32 under section 103(a) as being 8
unpatentable over Bingle, Nishimuro, and Simon. 9
10
7. Claims 33 and 34 11
Independent claim 33 is an apparatus claim. The Appellants contend 12
that 13
14
the references taken alone or in combination, fail 15
to teach or suggest an injection molded cover for 16
closing an opening in a housing made from a 17
PBT/PC copolymeric material and a seal for 18
sealing the cover composed of a non-vulcanized 19
SEBS block copolymer material wherein the 20
respective materials create a chemical bond 21
between the respective elements. The cited 22
references also fail to teach or suggest that a 23
PBT/PC copolymer is amenable to injection 24
molding to form a cover with a seal chemically 25
bonded thereto. Furthermore, the references fail to 26
teach or suggest a PBT/PC-SEBS chemical bond 27
between the cover and the seal. 28
29
(App. Br. 40-41). 30
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20
We conclude for the reasons discussed in connection with the 1
rejections of claims 14-16 and of claims 19-23 over Bingle, Nishimuro and 2
Simon that a cover for a housing of an automotive component made from a 3
PBT/PC copolymer material would have been obvious. Bingle and 4
Nishimuro both teach injection molding the cover (FF 1 and 6) and the 5
Appellants do not dispute that PBT/PC copolymer material was known to be 6
amenable to injection molding (App. Br. 11.) Likewise, we conclude for the 7
reasons discussed in connection with the rejections of claims 14-16 and of 8
claims 19-23 over Bingle, Nishimuro and Simon that a thermoplastic SEBS 9
block copolymer seal material injection molded without vulcanization onto 10
the cover made from PBT/PC copolymer material so as to form a chemical 11
bond meeting the limitations of claim 33 would have been obvious. 12
On the record before us, the Appellants have not shown that the 13
Examiner erred in rejecting independent claim 33 under section 103(a) as 14
being unpatentable over Bingle, Nishimuro and Simon. Since the 15
Appellants present no arguments asserting that claim 34 might be patentable 16
if claim 33 is not (App. Br. 41), the Appellants also have not shown that the 17
Examiner erred in rejecting claim 34 under section 103(a) as being 18
unpatentable over Bingle, Nishimuro and Simon. 19
20
8. Claim 35 21
Claim 35 is an apparatus claim depending from claim 33 which recites 22
that “the chemical bond is a direct, non-vulcanized bond.” The Appellants 23
make the same arguments with respect to the rejection of apparatus claim 24
35 as being unpatentable over Bingle, Nishimuro, and Simon as the 25
Appellants made with respect to the rejection of independent method claim 26
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21
29 over the same references. (App. Br. 39-40.) On the record before us, for 1
reasons analogous to those which we gave in sustaining the rejection of 2
claim 29 over Bingle, Nishimuro, and Simon, the Appellants have not shown 3
that the Examiner erred in rejecting claim 35 under section 103(a) as being 4
unpatentable over those references. 5
6
9. Claim 37 7
Claim 37 is an apparatus claim depending from claim 24 which recites 8
that “the seal is made from a styrenic thermoplastic elastomer.” The 9
Appellants make the same arguments with respect to the rejection of 10
apparatus claim 37 as being unpatentable over Bingle, Nishimuro and Simon 11
as the Appellants made with respect to the rejection of independent method 12
claim 29 over the same references. (App. Br. 39-40.) On the record before 13
us, for reasons analogous to those which we gave in sustaining the rejection 14
of claim 29 over Bingle, Nishimuro and Simon, the Appellants have not 15
shown that the Examiner erred in rejecting claim 37 under section 103(a) as 16
being unpatentable over those references. 17
18
10. Claim 40 19
Claim 40 is a method claim depending from claim 29 which recites 20
that “the cover is made from a polycarbonate copolymer material.” The 21
Appellants make the same arguments with respect to the rejection of method 22
claim 40 as being unpatentable over Bingle, Nishimuro and Simon as the 23
Appellants made with respect to the rejections of method claim 29 and of 24
apparatus claim 33 over the same references. (App. Br. 40-41.) On the 25
record before us, for reasons analogous to those which we gave in sustaining 26
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22
the rejections of claims 29 and 33 over Bingle, Nishimuro and Simon, the 1
Appellants have not shown that the Examiner erred in rejecting claim 2
40 under section 103(a) as being unpatentable over those references. 3
4
11. Claim 41 5
Claim 41 is a product-by-process claim depending from claim 40. 6
The Appellants contend that “[t]he cited references lack any teaching or 7
suggestion of a PBT/PC copolymer/SEBS bond.” (App. Br. 42.) We 8
conclude for the reasons discussed in connection with the rejections of 9
claims 14-16 and of claims 19-23 over Bingle, Nishimuro and Simon that 10
one of ordinary skill in the art would have had reason to form a cover for a 11
housing of an automotive component from a PBT/PC copolymer material 12
and to injection mold a thermoplastic SEBS block copolymer seal material 13
onto the PBT/PC copolymer material without vulcanization. The Examiner 14
has a rational basis for believing that this injection molding process will 15
result in a PBT/PC copolymer/SEBS bond. The Appellants have not 16
submitted evidence sufficient to rebut such a belief. 17
On the record before us, the Appellants have not shown that the 18
Examiner erred in rejecting claim 41 under section 103(a) as being 19
unpatentable over Bingle, Nishimuro and Simon. 20
21
12. Claim 43 22
Claim 43 is a product-by-process claim depending from claim 42. 23
The Appellants contend that “[t]he cited references lack any teaching or 24
suggestion of a PBT/PC copolymer/SEBS bond.” (App. Br. 42-43.) We 25
conclude for the reasons discussed in connection with the rejections of 26
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23
claims 14-16 and of claims 19-23 over Bingle, Nishimuro and Simon that 1
one of ordinary skill in the art would have had reason to form a cover for a 2
housing of an automotive component from a PBT/PC copolymer material 3
and to injection mold a thermoplastic SEBS block copolymer seal material 4
onto the PBT/PC copolymer material without vulcanization. The Examiner 5
has a rational basis for believing that this injection molding process will 6
result in a PBT/PC copolymer/SEBS bond. The Appellants have not 7
submitted evidence sufficient to rebut such a belief. 8
On the record before us, the Appellants have not shown that the 9
Examiner erred in rejecting claim 43 under section 103(a) as being 10
unpatentable over Bingle, Nishimuro and Simon. 11
12
B. The Rejection of Claims 14-28 and 33-38 Under Section 13
103(a) as Being Unpatentable Over Bingle in View of Schmidt 14
and Simon 15
1. Claims 14-18 and 36 16
As noted earlier, independent claim 14 recites a method including the 17
steps of forming a cover made from a PBT/PC copolymer material and 18
forming a seal made from a thermoplastic material, “the material of the seal 19
and the cover creating a direct, non-vulcanized chemical bond extending 20
along an interface between the seal and the cover of sufficient strength to 21
maintain the seal associated with the cover . . . .” Schmidt teaches 22
producing composite articles made from at least one hard component and at 23
least one soft component. (FF 10.) The Appellants contend that the 24
combined teachings of Bingle, Schmidt and Simon would not have provided 25
one of ordinary skill in the art reason to form an apparatus in which the 26
Appeal 2008-0887
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24
materials from which the cover and seal are made create a direct, non-1
vulcanized chemical bond. (App. Br. 27-28). 2
The Examiner finds that Bingle teaches chemically bonding a seal to a 3
cover (Ans. 6-7) and applies Schmidt for “its teaching of equivalent, 4
compatible materials” which would result in a non-vulcanized bond if the 5
soft material were molded onto the hard material (Ans. 8). Bingle does 6
teach affixing a gasket seal to a cover by creating a chemical bond between 7
the materials of the gasket seal and the cover. (FF 2.) That said, Bingle 8
itself does not distinguish between a chemical bond formed between a cover 9
material and a vulcanized gasket seal material, on the one hand, and a bond 10
formed between a cover material and a non-vulcanized gasket seal material, 11
on the other. Schmidt teaches producing a composite material in which a 12
soft component made from a rubber composition is vulcanized in contact 13
with a hard component. (FF 11.) The combined teachings of Bingle and 14
Schmidt would not have provided one of ordinary skill in the art reason to 15
select hard and soft components capable of forming a direct, non-vulcanized 16
chemical bond. Simon is cited for the teaching that PBT/PC copolymer 17
material is an art equivalent of a PBT/PC blend (Ans. 4) and does not appear 18
to supply the deficiency in the teachings of Bingle and Schmidt. 19
The Appellants have shown that the combined teachings of Bingle, 20
Schmidt and Simon do not establish a prima facie case that claim 14 is 21
unpatentable under section 103(a). In light of this conclusion, we need not 22
consider the declarations and other evidence submitted by the Appellants in 23
connection with this ground of rejection. On the record before us, the 24
Appellants have shown that the Examiner erred in rejecting claim 14 under 25
section 103(a) as being unpatentable over Bingle, Schmidt and Simon. 26
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25
Since claims 15-18 and 36 depend from claim 14, the Appellants also have 1
shown that the Examiner erred in rejecting those claims under section 103(a) 2
as being unpatentable over Bingle, Schmidt and Simon. 3
4
2. Claims 19-23 5
Claims 19-23 are product-by-process claims depending from method 6
claim 14. The Appellants contend that Bingle, Schmidt and Simon, “taken 7
alone or in combination, fail to teach or suggest the bond characteristic of 8
the apparatus set forth in claim 19, namely a direct, non-vulcanized bond 9
between the PBT/PC of the cover and the thermoplastic material of the seal.” 10
(App. Br. 28.) For the reasons discussed in connection with the rejection of 11
claims 14-18 and 36 as being unpatentable over Bingle, Schmidt and Simon, 12
we conclude that the combined teachings of these references would not have 13
provided one of ordinary skill in the art reason to select hard and soft 14
components capable of forming a direct, non-vulcanized chemical bond. 15
Absent such a reason, the reasoning articulated by the Examiner in support 16
of the rejection of product-by-process claims 19-23 lacks a rational 17
underpinning in the teachings of Bingle, Schmidt and Simon. No other 18
rationale for sustaining the rejection is apparent from those teachings. 19
On the record before us, the Appellants have shown that the Examiner 20
erred in rejecting claims 19-23 under section 103(a) as being obvious over 21
Bingle, Schmidt and Simon. 22
23
3. Claims 24-28 and 37 24
Independent claim 24 recites an apparatus including a cover made 25
from a PBT/PC copolymer material and a seal made from a thermoplastic 26
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26
material. The Appellants contend that Bingle, Schmidt and Simon, “taken 1
alone or in combination fail to teach or suggest an apparatus having a direct 2
non-vulcanized bond between a PBT/PC material and a thermoplastic 3
material in the seal.” (App. Br. 29.) We conclude for the reasons discussed 4
in connection with the rejection of claims 14-18 and 36 over Bingle, 5
Schmidt and Simon that the selection of a thermoplastic seal material 6
capable of forming a direct, non-vulcanized chemical bond with a PBT/PC 7
copolymer would not have been obvious from the teachings of those 8
references. Absent a rationale for concluding that the selection of such a 9
thermoplastic seal material would have been obvious, we cannot conclude 10
that the teachings of Bingle, Schmidt and Simon establish a prima facie case 11
that the subject matter of claim 24 would have been obvious. 12
On the record before us, the Appellants have shown that the Examiner 13
erred in rejecting claim 24 under section 103(a) as being unpatentable over 14
Bingle, Schmidt and Simon. Since claims 25-28 and 37 depend from claim 15
24, the Appellants also have shown that the Examiner erred in rejecting 16
those claims under section 103(a) as being unpatentable over Bingle, 17
Schmidt and Simon. 18
19
4. Claims 33-35 20
Independent apparatus claim 33 recites an injection molded cover 21
made from a PBT/PC copolymer material and a seal made from a non-22
vulcanized thermoplastic SEBS block copolymer material. The Appellants 23
contend that Bingle, Schmidt and Simon “lack any teaching or suggestion 24
that would place the skilled artisan in possession of the knowledge of an 25
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27
apparatus having an interface bond of the type set forth in claim 33.” (App. 1
Br. 30). 2
As noted in connection with the rejection of claims 14-18 as being 3
unpatentable over Bingle, Schmidt and Simon, Bingle does not distinguish 4
between a chemical bond formed between a cover material and a vulcanized 5
gasket seal material, on the one hand, and a bond formed between a cover 6
material and a non-vulcanized gasket seal material, on the other. Schmidt 7
teaches producing a composite material in which a soft component made 8
from a rubber composition is vulcanized in contact with a hard component. 9
(FF 11.) The combined teachings of Bingle and Schmidt would not have 10
provided one of ordinary skill in the art reason to combine a seal made from 11
an SEBS block copolymer material with a cover made from a PBT/PC 12
copolymer without vulcanizing the SEBS block copolymer material. In 13
particular, the combined teachings of Bingle and Schmidt do not provide a 14
rationale as to why it would have been obvious to injection mold an SEBS 15
block copolymer material onto a cover made from a PBT/PC copolymer 16
material without subsequently vulcanizing the SEBS block copolymer 17
material. The teachings of Simon do not appear to supply this deficiency in 18
the teachings of Bingle and Schmidt. 19
On the record before, the Appellants have shown that the Examiner 20
erred in rejecting claim 33 under section 103(a) as being unpatentable over 21
Bingle, Schmidt and Simon. Since claims 34 and 35 depend from claim 33, 22
the Appellants also have shown that the Examiner erred in rejecting those 23
claims under section 103(a) as being unpatentable over Bingle, Schmidt and 24
Simon. 25
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5. Claim 38 1
Claim 38 depends from claim 29, which does not stand rejected as 2
being unpatentable over Bingle, Schmidt and Simon. On the record before 3
us, we find that the Examiner erred in rejecting claim 38 under section 4
103(a) as being unpatentable over Bingle, Schmidt and Simon. In re Fritch, 5
972 F.2d 1260, 1266 (Fed. Cir. 1992) (dependent claims are nonobvious if 6
the independent claims from which they depend are nonobvious). 7
8
CONCLUSION OF LAW 9
On the record before us, the Appellants have shown that the Examiner 10
erred in rejecting claims 14-28 and 33-38 under section 103(a) as being 11
unpatentable over Bingle, Schmidt and Simon. The Appellants have not 12
shown that the Examiner erred in rejecting claims 14-43 under section 13
103(a) as being unpatentable over Bingle, Nishimuro and Simon. 14
15
DECISION 16
We AFFIRM the Examiner’s rejection of claims 14-43 under section 17
103(a) as being unpatentable over Bingle, Nishimuro and Simon. We 18
REVERSE the rejection of claims 14-28 and 33-38 under section 103(a) as 19
being unpatentable over Bingle, Schmidt and Simon. 20
21
AFFIRMED 22
23
24
25
26
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29
hh 1
2
3
ATTN: ANDREW R. BASILE 4
YOUNG & BASILE, P.C. 5
SUITE 624 6
3001 WEST BIG BEAVER ROAD 7
TROY, MI 48084-3107 8