Ex Parte Eastman

Board of Patent Appeals and Interferences

Jul 29, 2005

09906564 (B.P.A.I. Jul. 29, 2005)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KAREN EASTMAN
_____________
Appeal No. 2005-1435
Application No. 09/906,564
______________
ON BRIEF
_______________
Before PAK, WARREN and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 6 and 8 through
12. Claims 13 through 17, the other claims pending in the above-
identified application, stand withdrawn from consideration by the
examiner as being directed to a non-elected invention.
Appeal No. 2005-1435
Application No. 09/906,564
1 We limit our consideration to only those claims which have
been separately argued in the Brief in accordance with 37 CFR
§ 41.37(c)(1)(vii)(2004).
2
APPEALED SUBJECT MATTER
Claims 1, 3, 4 and 8 are representative of the subject
matter on appeal and read as follows1:
1. A process for utilizing purged resin discharged
from an injection molding machine comprising the steps of:
discharging said purged resin through a port located
spaced above a collecting surface so that streams of
discharged resin collect in a puddled mass on said surface;
allowing cooling and solidification of said discharged
resin;

preparing said solidified resinous mass for use as a
decorative article; and
selling said decorative article.
3. The method according to claim 1 wherein said
preparing step includes the step of trimming projecting
appendages from said solidified mass.
4. The method according to claim 1 wherein said step
includes the step of reheating at least a portion of said
solidified resinous mass and reshaping said reheated
portion.
8. A method of constructing a decorative article
comprising the steps of:
discharging a stream of molten resin out of a port
elevated above a collecting surface while allowing said
resin stream to descend down onto a said collecting surface
to form a randomly contoured, irregular puddled resinous
mass;
Appeal No. 2005-1435
Application No. 09/906,564
2 See the Answer, pages 3-5 and the Brief, page 5.
3
allowing cooling of said molten resin to solidify into
a preform having one or more appendages formed by a
solidifed stream of resin; and
preparing a decorative article from said preform.
PRIOR ART REFERENCES
The prior art references relied upon by the examiner are:
Lanyon, Jr. (Lanyon) Des. 21,497 Apr. 26, 1892
Ito et al. (Ito) 5,505,606 Apr. 9, 1996
Kastl et al. (Kastl) 6,103,173 Aug. 15, 2000
(filed Jun. 16, 1998)

THE 35 U.S.C. § 103(a) REJECTIONS
The appealed claims stand rejected as follows2:
1) Claims 1 through 3, 5, 6, 8, 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over the combined disclosures of
Ito and Lanyon; and
2) Claims 4, 6, 9, 10 and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Ito, Lanyon
and Kastl.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the arguments advanced by both the
examiner and the appellant in support of their respective
Appeal No. 2005-1435
Application No. 09/906,564
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positions. This review has led us to conclude that the
examiner’s Section 103 rejections are well founded.
Accordingly, we will sustain the examiner’s Section
103 rejections for essentially those findings of fact and
conclusions set forth in the Answer. We add the following
primarily for emphasis and completeness.
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, explicit and/or implicit teachings in the applied
prior art references and/or knowledge generally available
to a person having ordinary skill in the art that would have
suggested the claimed subject matter are required. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981; In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968). The knowledge generally available to a person having
ordinary skill in the art includes the appellant’s admission
regarding what was known in the art at the time of the
appellant’s invention. See In re Nomiya, 509 F.2d 566, 570-71,
184 USPQ 607, 611-12 (CCPA 1975)(the admitted prior art in an
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Application No. 09/906,564
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applicant’s specification may be used in determining the
patentability of a claimed invention); See also In re Davis, 305
F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).
With these precedents in mind, we turn to the examiner’s
section 103 rejections. The examiner finds that Ito teaches “an
injection molding machine for discharging purged resin through a
port located above a collecting surface so that streams of
discharged resin [are] collect[ed] [as] a puddle mass on the
surface, see Fig. 13 and col. 8, lines 18-20.” See the Answer,
page 3. Consistent with this finding, the appellant states
(Specification, page 4) that:
An injection machine normally has a purge port
from which there is a discharge of plastic during a
purge cycle required to clear the internal chambers
when shutting down or changing over resins. According
to one aspect of the invention, such purge resin is
utilized as a preform for constructing a decorative
article to gain value from the material and avoid the
need to regrinding to recycle the material or to
dispose of the same in a landfill. [Emphasis added.]
The appellant also acknowledges that clear and tinted high
strength polycarbonates of the type used for automotive glazing
are known to be purged from an injection molding machine. See
the specification, pages 1 and 2. Implicit in these statements
is that the appellant’s invention lies in using the preform
resulting from conventionally discharged and collected purged
Appeal No. 2005-1435
Application No. 09/906,564
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resin to construct a decorative article. In other words,
discharging, collecting and allowing cooling and solidifying of a
puddled mass of purged resin to form randomly shaped masses of
clear and tinted plastic waste are admittedly known.
Thus, with respect to claims 1, 2, 3, 4, 6 and 8 through 12,
the dispositive question is whether one of ordinary skill in the
art would have been led to employ the randomly shaped masses of
plastic as decorative articles, i.e., “preparation” and “selling”
of the randomly shaped masses of clear and tinted plastic as
decorative articles. On this record, we answer this question in
the affirmative.
As correctly found by the examiner (Answer, page 4),
Lanyon teaches mounting irregular body shapes, especially
lustrous irregular body shapes, on rectangular bases (fitting
them into holes of the rectangular bases) to make aesthetic
paper-weights. See also Lanyon in its entirety. These lustrous
irregular body shapes taught in Lanyon encompass the randomly
shaped masses of clear and tinted plastic produced in an
admittedly known purging process. Since these desired lustrous
irregular body shapes (plastic waste) useful for paperweights are
known to be readily and economically available, we concur with
the examiner that one of ordinary skill in the art would have
Appeal No. 2005-1435
Application No. 09/906,564
3 An old adage “one’s trash is another’s treasure” is
relevant in this case, especially since the popularity of
abstract art is well known.
4 An old adage “beauty is in the eye of a beholder” holds
true in this case. With the advent of abstract art, beauty has
always been in the eye of a beholder.
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been led to use such plastic waste (randomly shaped masses of
clear and tinted plastic) as paper-weight materials (decorative
articles).3 See In re Clinton, 527 F.2d 1226, 1229, 188 USPQ
365, 367 (CCPA 1976)(“Economics alone would [have] motivate[d] a
person of ordinary skill in the art” to arrive at the claimed
invention). To form the paperweights that can be sold, as
indicated by the examiner (Answer, page 4), the randomly shaped
mass of clear and tinted plastic (polycarbonate) must necessarily
be prepared (bent and trimmed) so that at least a portion thereof
can form a shape that can be fitted into the hole of the
rectangular base as taught by Lanyon.
Moreover, with respect to claims 4, 5, 9 and 10, as
correctly found by the examiner (Id.), combining and/or bending
the randomly shaped masses of clear and tinted plastic to produce
an another aesthetically pleasing irregular shaped paper-weight
is well within the ambit of one of ordinary skill in the art.4
See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
Appeal No. 2005-1435
Application No. 09/906,564
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1985)(Skill is presumed on the part of those practicing in the
art); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969) (the conclusion of obviousness may be made from “common
knowledge and common sense” of the person of ordinary skill in
the art). As is apparent from Kastl, bending plastics in
general, including polycarbonate plastics, via heating is
conventional.
CONCLUSION
For the factual findings set forth in the Answer and above,
we are not persuaded by the appellant’s arguments. Thus, on this
record, we concur with the examiner that one of ordinary skill in
the art armed with the knowledge indicated supra would have been
led to the claimed subject matter. Accordingly, we affirm the
examiner’s decision rejecting the claims on appeal under
35 U.S.C. § 103(a).
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Application No. 09/906,564
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CKP:hh
Appeal No. 2005-1435
Application No. 09/906,564
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