Ex Parte Dunifon et al

Board of Patent Appeals and Interferences

Aug 23, 2010

09956524 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS A. DUNIFON and JENNIFER R. WOLFE
____________

Appeal 2010-005165
Application 09/956,524
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-005165
Application 09/956,524

2

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. An apparatus for press bending glass sheets
comprising:

a male mold and a female mold positioned to press a
glass sheet between them, said male mold having a pressing
surface facing said female mold, said pressing surface having a
contoured shape to press bend the glass sheet into a specific
shape, wherein said contoured surface of said male mold is
curved in a first direction and in a second direction transverse to
said first direction;

said male mold including a plurality of curved heating
elements disposed through said male mold, each of said
plurality of curved heating elements defining a curved length,
and the length being curved such that it follows the contoured
shape of the pressing surface; and

each of said heating elements being disposed to follow
said contoured shape of said pressing surface to maintain a
constant distance from said pressing surface of said male mold.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pickard 3,753,673 Aug. 21, 1973
Frank 4,746,348 May 24, 1988
Flaugher 5,346,526 Sep. 13, 1994
Woodward 5,755,845 May 26, 1998

Appeal 2010-005165
Application 09/956,524

3
THE REJECTION(S)
1. Claims 1, 2, 5-8 and 10-12 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Flaugher in view of Frank.
2. Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flaugher in view of Frank, as applied to claims 1, 2, and
7-8 above, and further in view of Pickard.
3. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flaugher in view of Frank, as applied to claims 1 and 7
above, and further in view of Woodward.
ISSUE(S)
Did the Examiner err in determining that the applied prior art suggests
the claimed subject matter, in particular, the claimed subject matter of
“including a plurality of curved heating elements disposed through said male
mold, each of said plurality of curved heating elements defining a curved
length, and the length being curved such that it follows the contoured shape
of the pressing surface”? We answer this question in the negative.
ANALYSIS
(with Findings of Fact and Principles of Law)

As an initial matter, Appellants separately argue claims 1 and 7 only.
Br. 12-19. Accordingly, we need only address Appellants’ arguments
regarding the rejection with respect to claims 1 and 7 only. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2009). Therefore, our decision with respect to rejection 1
determines the outcome of rejections 2 and 3.
Appeal 2010-005165
Application 09/956,524

4
Also, a Board Decision was rendered for this application (Appeal No.
2006-002998) on September 29, 2006. Claim 1 has since been amended and
different rejections have been made by the Examiner.
We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for this rejection. We therefore incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.
We agree with the Examiner that because Flaugher teaches that the
heating elements are located relatively close and generally parallel to the
shaping surface to “provide for the most efficient operation, whereby, the
shaping surface 56 can be brought to the desired temperature in a minimum
response time” (Flaugher, col. 11, ll. 9-14), it would have been obvious to
have the heating elements close to the surface and therefore curved when a
curved shape would serve this purpose (close to surface). Ans. 5.
The Examiner also cites In re Dailey, 357 F.2d 669 (CCPA 1966)
(The court held that the configuration of the claimed disposable plastic
nursing container was a matter of choice which a person of ordinary skill in
the art would have found obvious absent persuasive evidence that the
particular configuration of the claimed container was significant.) in support
of his position. Ans. 5-6.
On page 13 of the Brief, Appellants argue that the change in shape in
the instant case has a substantive effect that renders their invention
patentable. However, Appellants have not presented convincing evidence
showing this “substantive effect” or that such a “substantive effect” is
Appeal 2010-005165
Application 09/956,524

5
unexpected. For example, an Applicant must further show that the results
were superior to those which would have been expected from the prior art to
an unobvious extent, and that the results are of a significant, practical
advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586, 1589 (BPAI
1991). We therefore are not convinced by such argument.
In view of the above, we affirm each of the rejections.
CONCLUSIONS OF LAW AND DECISION
The Examiner did not err in determining that the applied prior art
suggests the claimed subject matter, in particular, the claimed subject matter
of “including a plurality of curved heating elements disposed through said
male mold, each of said plurality of curved heating elements defining a
curved length, and the length being curved such that it follows the contoured
shape of the pressing surface”, and we accordingly affirm each rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

kmm

MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604