Ex Parte Dobler

Patent Trial and Appeal Board

Feb 12, 2016

10986123 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/986,123 11/10/2004
7590 02/16/2016
Paul M, Denk
763 S. New Ballas Road
St. Louis, MO 63141
FIRST NAMED INVENTOR
Sven Dobler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7579 7303
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
MAILDATE DELIVERY MODE
02/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN DOBLER 1
Appeal2013-000504
Application 10/986,123
Technology Center 1600
Before ERIC B. GRIMES, MELANIE L. McCOLLUM, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
sampler. The Examiner has rejected claims as being obvious and as lacking
written description. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
Claims 9 and 15 are pending and on appeal (App. Br. 6). We will
focus on claim 15, the only independent claim on appeal, which is set forth
in the Claims Appendix to Appellant's Appeal Brief (id. at 16-17).
1 Appellant identifies the real parties in interest as Sven Dobler and Orlandi,
Inc. (App. Br. 4).
Appeal2013-000504
Application 10/986,123
Claim 15 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Ans. 5).
Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over: Greenland2 in view of Seidler,3 Matsos,4 Bootman,5 and Cloud6 (id.);
Dobler I7 in view of Seidler, Matsos, and Cloud (id. at 9); and Dobler II8 in
view of Seidler, Matsos, and Cloud (id. at 12).
I
As noted above, the Examiner rejects claims 9 and 15 under 35 U.S.C.
§ 103(a) as obvious over Greenland in view of Seidler, Matsos, Bootman,
and Cloud (Ans. 5). In rejecting the claims, the Examiner finds:
The embossing recited in claim 15 is not essential to a
determination of patentability of the sampler disclosed in the
claim. The patentability of product-by-process claims is based
on the product itself. "[E]ven though product-by-process claims
are limited by and defined by the process, determination of
patentability is based on the product itself. The patentability of
a product does not depend on its method of production. If the
product in the product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process."
(Id. at 7-8 (citing In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).)
2 Greenland, US 5,622,263, Apr. 22, 1997.
3 Seidler, US 5,031,647, July 16, 1991.
4 Matsos et al., US 6,006,916, Dec. 28, 1999.
5 Bootman et al., US 5,391,420, Feb. 21, 1995.
6 Cloud, US 5,348,031, Sept. 20, 1994.
7 Dobler, US 6,251,408 B 1, June 26, 2001.
8 Dobler, US 6,461,620 B2, Oct. 8, 2002.
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Appeal2013-000504
Application 10/986,123
Analysis
Appellant argues that Greenland "has no embossed wall or other
shape for forming a well, chamber, or wall formed in the bottom ply, which
cooperates with walls of the top ply, all of which are embossed in place"
(App. Br. 11-12). We conclude that the Examiner has not set forth a prima
facie case of obviousness.
Claim 15 recites that the top and bottom plies "are embossed" (id. at
17). As noted by the Examiner, "[i]f the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process." Thorpe, 777 F.2d at 697. However, the structure implied by the
process should be considered when assessing the patentability of a product-
by-process claim over the prior art. See In re Garnero, 412 F.2d 276, 279
(CCP A 1979). Here, the Examiner does not indicate how the applied art
discloses or suggests the structure implied by the recitation in claim 15 that
the top and bottom plies are embossed. Therefore, we conclude that the
Examiner has not set forth a prima facie case of obviousness.
Conclusion
The Examiner has not set forth a prima facie case that Greenland,
Seidler, Matsos, Bootman, and Cloud suggest the product of claim 15. We
therefore reverse the obviousness rejection, over these references, of
claim 15 and of claim 9, which depends from claim 15.
II
The Examiner rejects claim 15 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Ans. 5). The
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Appeal2013-000504
Application 10/986,123
Examiner also rejects claims 9 and 15 under 35 U.S.C. § 103(a) as obvious
over Dobler I in view of Seidler, Matsos, and Cloud and over Dobler II in
view of Seidler, Matsos, and Cloud (id. at 9 & 12). Appellant does not
traverse any of these rejections. We therefore summarily affirm them.
SUMMARY
We reverse the obviousness rejection of claims 9 and 15 over
Greenland in view of Seidler, Matsos, Bootman, and Cloud. However, we
summarily affirm the obviousness rejections of claims 9 and 15 over
Dobler I in view of Seidler, Matsos, and Cloud and over Dobler II in view of
Seidler, Matsos, and Cloud, as well as the written description rejection of
claim 15.
TIME PERIOD FOR RESPONSE
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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