Ex Parte Dunifon et alDownload PDFBoard of Patent Appeals and InterferencesAug 23, 201009956524 (B.P.A.I. Aug. 23, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation