Ex Parte Eberl et al

Board of Patent Appeals and Interferences

Mar 19, 2010

10738112 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREG R. EBERL
and THE THOMAS TRAN
____________________

Appeal 2009-010396
Application 10/738,112
Technology Center 1700
____________________

Decided: March 19, 2010
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-3, 12, 14, 16, 17, 20, 22, 23, 30-35, and 38-44.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Appellants’ invention relates to a method of making expandable-
collapsible bodies, such as balloons for use with catheters, using temperature
gradient expansion molding (Spec. ¶ [0001]). Specifically, an immersion
fluid of a first temperature provides a lower temperature to an exterior
surface of a precursor body than an expansion fluid of a second temperature
provides to an inner surface of the precursor body (Spec. ¶ [[0031]). Claims
1, 22, and 33 are illustrative:
1. A method for making an expandable-collapsible
body, comprising:
providing a precursor body having a wall, an exterior
surface, and an interior surface that defines a lumen along an
axis of the precursor body;
providing a mold having an interior surface that defines a
selected expanded shape of the expandable-collapsible body to
be formed;
inserting the precursor body into the mold;
immersing the mold containing the precursor body in a
first fluid such that the first fluid enters the mold and envelops
at least a portion of the precursor body;
delivering a second fluid into the lumen of the precursor
body, wherein the first fluid has a temperature that softens the
exterior surface of the precursor body, and the second fluid has
a temperature that softens the interior surface of the precursor
body to a degree greater than a degree to which the exterior
surface of the precursor body is softened, wherein a temperature
gradient in the wall of the precursor body is created;
after the temperature gradient has been created in the
wall of the precursor body, inflating the precursor body with the
second fluid until its exterior surface is in intimate contact with
the interior surface of the mold, expelling the first fluid from
the mold;
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cooling the mold and the newly formed expandable-
collapsible body; and
removing the expandable-collapsible body from the
mold.
22. A method for making an expandable-collapsible
body, comprising:
providing a precursor body having a wall, an exterior
surface, and an interior surface that defines a lumen along an
axis of the precursor body;
immersing the precursor body in a first fluid that is at a
first temperature;
delivering a second fluid into the lumen of the precursor
body, wherein the first fluid has a temperature that softens the
exterior surface of the precursor body, and the second fluid has
a temperature that softens the interior surface of the precursor
body to a degree greater than a degree to which the exterior
surface of the precursor body is softened, wherein a temperature
gradient in the wall of the precursor body is created;
after the temperature gradient has been created in the
wall of the precursor body, inflating the precursor body with the
second fluid into the lumen of the precursor body; and
cooling the newly formed expandable-collapsible body
after the precursor body has been inflated to a desired size.
33. A method for making an expandable-collapsible
body, comprising:
providing a precursor body having an exterior surface
and an interior surface that defines a lumen along an axis of the
precursor body;
immersing the precursor body in a first liquid that is at a
first temperature;
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delivering a second liquid into the lumen of the precursor
body, the second liquid being at a second temperature higher
than the first temperature;
inflating the precursor body with the second liquid after
the exterior surface of the precursor body has equilibrated to the
first temperature and the interior surface of the precursor body
has equilibrated to the second temperature; and
cooling the newly formed expandable-collapsible body
after the precursor body has been inflated to a desired size.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Hartig
Wallace
Jackowski
Noddin
Downey
Leonhardt
Wang
Simhambhatla
US 3,941,546
US 4,130,617
US 4,938,676
US 4,963,313
US 5,304,340
US 5,522,961
US 5,714,110
US 6,620,128 B1
Mar. 2, 1976
Dec. 19, 1978
Jul. 3, 1990
Oct. 16, 1990
Apr. 19, 1994
Jun. 4, 1996
Feb. 3, 1998
Sep. 16, 2003
Herweck US 2005/0154416 A1 Jul. 14, 2005
The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 1, 2, 16, 17, 20, 22, 23, 30-32, 43, and 44
under 35 U.S.C. § 103 as obvious over Wallace in view of Hartig;
2. The rejection of claims 3 and 25 under 35 U.S.C. § 103 as obvious
over Wallace in view of Hartig and Noddin;
3. The rejection of claims 12 and 14 under 35 U.S.C. § 103 as obvious
over Wallace in view of Hartig, Jackowski, and Wang; and
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4. The rejection of claims 1-3, 12, 14, 16, 17, 20, 22, 23, 30-35, and
38-44 under 35 U.S.C. § 103 as obvious over Downey in view of
Simhambhatla and Leonhardt or Herweck.
II. DISCUSSION
A. WALLACE IN VIEW OF HARTIG
Appellants do not present separate arguments for any rejected claim.
Thus, we address independent claim 1 as a representative claim.
1. ISSUE ON APPEAL
The Examiner states that:
[s]ince Wallace immerses the precursor body in a
room temperature/ambient atmosphere and the
claims do not set forth any specific materials or
temperatures and the specification itself suggests
such a condition is adequate to provide the
required extent of softening, the examiner submits
the combination is proper and does meet the
argued limitation.
(Ans. 9-10.) The Examiner finds that “the description of ‘ambient’ in the
instant disclosure makes it clear that the intent is to include ‘room
temperature’ air and to equate it with ‘ambient’ air” and thus “instead of
using heated air the body may ‘simply be left exposed to’ air at room
temperature” (Ans. 10)(citing ¶ [0029] of Appellants' Specification). The
Examiner further finds that “the teaching of the specification appears to be
that fluids with temperatures of about 20 ºC – 60 ºC are the intended
immersion fluid for processing precursor bodies, including polymers, and
that such a temperature ‘will cause slight to moderate softening’ of the
body” (Ans. 11)(citing ¶ [0031]).
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Appellants contend that Appellants’ Specification indicates the
preferred temperature of the immersion fluid will depend upon the material
in which the precursor body is composed, and there is no disclosure in the
Specification that PVC and polyurethane (the material used for the precursor
body taught by Wallace) softens at room temperature (Reply Br. 2).
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: did the Examiner reversibly err in finding that Hartig
teaches a step of immersing a precursor body in a fluid (claimed first fluid)
that has a temperature that softens the exterior surface of the precursor body
as required by claim 1? We answer this question in the affirmative.
2. FACTUAL FINDINGS
Appellants’ Specification repeatedly states that the desired
temperature for the first immersion fluid depends on the materials from
which the precursor body is made and would be readily apparent to one of
ordinary skill in the art without undue experimentation (Spec. ¶¶ [0024],
[0031], and [0032]).
In defining the term “immersed,” Appellants’ Specification states
By “immersed” is meant that the precursor body is
completely surrounded by the fluid. Thus, the
body may be submerged in water, in one
embodiment, or in some other liquid or it may be
placed in an oven, where it would be ‘immersed’
in heated air, air being a fluid as defined herein, or
it may simply be left exposed to, and ‘immersed
in,’ air at ambient temperature.
(Spec. ¶ [0029]).
In the Illustrated Example, Appellants’ Specification states that “[t]he
water 45 can be at any temperature from about 20 °C to about 60 °C but,
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when precursor body 100 is polyurethane, approximately 45 °C is presently
preferred” (Spec. ¶ [0041]). The Specification makes clear that the material
for the Illustrated Example is polyurethane (Spec. ¶ [0046]).
Wallace teaches that the precursor body is preferably PVC or
polyurethane (Wallace, col. 3, ll. 38-42).
Wallace teaches heating a PVC tube 12 and mold 18 to a temperature
of about 250º-275ºF (about 121º-135ºC) “to decrease the distortion
resistance” of the PVC such that the tube “becomes more elastic and its
resistance to expansion from the internal pressurization decreases to the
point where the tube 12 expands” (Wallace, col. 5, ll. 56-66).
3. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Review of the specification is required as it
would be unreasonable to ignore any interpretive guidance afforded by the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[I]t
would be unreasonable for the PTO to ignore any interpretive guidance
afforded by the applicant's written description.”). However, “this
interpretation must be consistent with the one that those skilled in the art
would reach.” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)
4. ANALYSIS
According to the Examiner’s reasoning, the claim limitation “the first
fluid has a temperature that softens the exterior surface of the precursor
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body” (claim 1) will be met by any teaching of exposure to air at room
temperature, because Appellants’ Specification mentions a preferred range
that includes room temperature and leaving the precursor body in “ambient
temperature.” We disagree with the Examiner’s selective reading of
Appellants’ Specification.
Appellants’ Specification indicates that a softening temperature is
particular to the material used for forming the precursor body. Even with
respect to reciting a range of 20ºC to 60ºC, Appellants’ Specification makes
clear that temperatures within this range should be selected for particular
materials (specifically, approximately 45ºC for polyurethane).
We agree with Appellants that there is no suggestion in the teachings
of Wallace that any softening occurs with respect to the PVC or poly-
urethane body by exposure to air at room temperature. To the contrary,
Appellants’ Specification teaches that 45ºC is a more suitable temperature
for softening polyurethane, and Wallace teaches exposing PVC to
temperatures much higher before softening occurs. In this instance, ambient
air, without adding heat, is not sufficient to soften the material used for the
precursor taught by Wallace.
Since the Examiner has provided no other basis for finding that
Wallace teaches immersion in a fluid with a temperature that softens the
polyurethane or PVC precursor body other than exposure to air at room
temperature, we cannot sustain the Examiner’s rejection.
The Examiner applied the teachings of Wallace and Hartig in the
same way for separately rejected dependent claims 3 and 25 and claims 12
and 14. Accordingly, we cannot sustain any of the Examiner’s rejections
based on Wallace and Hartig.
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B. CLAIM 22 – DOWNEY, SIMHAMBHATLA, AND LEONHARDT
OR HERWECK
Appellants initially present general arguments directed to all the
rejected claims, for which we select independent claim 22 as representing
the group of rejected claims.
1. ISSUE ON APPEAL
For this rejection, the Examiner finds that Downey teaches
establishing a temperature gradient in the wall of a precursor body by
softening the interior surface at a higher temperature than softening the
exterior surface (Ans. 6). However, since Downey teaches circulating a
heated transfer fluid through fluid passages in an outer mold jacket to heat
the outer surface of the precursor body (Downey, col. 4, ll. 27-32), the
Examiner admits that Downey does not teach immersing the precursor body
in a first fluid (Ans. 6). The Examiner relies on the teachings of Leonhardt
or Herweck, which both disclose heating a mold with a water bath, as
evidence that “it would have been prima facie obvious to one having
ordinary skill in the art at the time of the claimed invention to have modified
the method disclosed by Downey and to have immersed the mold in a liquid,
such as a water bath” as equivalent means of providing external heat (Ans.
7).
Appellants contend that (a) substituting the heating means of
Leonhardt or Herweck requires substituting the entire mold of Downey,
and,doing so would destroy the gradient teaching of Downey relied upon by
the Examiner (Reply Br. 6-7); (b) Leonhardt and Herweck, at best, teach
immersing only the mold and not the precursor body, which would not result
in the claimed invention because the fluid would not contact the body (Br.
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15 and 16); and (c) if contacting the precursor body is not necessary, there is
no teaching that immersing the mold would soften the exterior surface of the
precursor body prior to the inflation step, since the heat would have to be
conveyed through the resistances of the mold and the air within the mold to
reach the precursor body (Br. 17, 18, and 19, Reply Br. 5-6).
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: did the Examiner reversibly err in concluding that one
of ordinary skill in the art would have immersed the precursor body in a first
fluid at a first temperature that softens the exterior surface of the precursor
body to create a temperature gradient prior to inflating the precursor body, as
required by claim 22 based on the teachings of Downey and Leonhardt or
Herweck? We answer this question in the negative.
2. FACTUAL FINDINGS
The definition of “immersed” recited in ¶ [0029] of Appellants’
Specification, quoted above, is also relevant to the present issue.
Appellants’ Specification states that “[t]he immersion fluid is one in
which the precursor body is initially bathed and which is in contact with the
outer surface of the precursor body during inflation” (¶ [0026]).
Downey teaches establishing a reverse gradient across the sidewall of
a parison by providing a heated fluid through the parison and, in addition, by
“circulating a heated transfer fluid, such as hot water, to heat the outer
surface of the parison to a lower temperature than the heated fluid which
contacts the inner surface of the parison” (Downey, col. 4, ll. 28-32). The
hot water is circulated through an outer mold jacket 18 provided with fluid
passages 23 and 24 (Downey, col. 4, ll. 25-32; Figure 2).
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Downey teaches “expanding the parison while subject to said
temperature gradient” (Downey, col. 3, ll. 15-16; col. 3, ll. 57-61).
Figure 2 of Downey shows that heat jacket 18 is positioned exterior to
mold 10, such that the hot water flowing through fluid passages 23 and 24
would contact the outer surface of mold 10 (Downey, Figure 2). As such,
the heat from the mold jacket 18 conveys through mold 10 and the air within
mold 10 “to heat the outer surface of the parison to a lower temperature than
the heated fluid which contacts the inner surface of the parison” (Downey,
col. 4, ll. 28-32; Figure 2).
Leonhardt teaches that a “mold is dipped into hot water” and “[w]hen
the mold has been in the hot water for the required time” the tubing is
expanded (Leonhardt, col. 2, ll. 40-51).
Herweck teaches an embodiment in which a mold 202 is employed
during radial expansion of a tube, in which “[t]he mold is preferably heated
within the hot water chamber of an inflation system, such as inflation system
148 illustrated in FIG. 10” (Herweck, ¶ [0070]).
3. PRINCIPLES OF LAW
We consider the following principles of law in addition to the
principles of law discussed above.
“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (“[L]imitations are not to be read into the claims from the
specification.”).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417.
4. ANALYSIS
Claim 22 recites the step of “immersing the precursor body in a first
fluid that is at a first temperature . . . , wherein the first fluid has a
temperature that softens the exterior surface of the precursor body” (claim
22). There is no requirement in the claims that the precursor body contacts
the first fluid. Although Appellants’ Specification states that an “immersion
fluid” is in contact with the outer surface of the precursor body, claim 22
does not recite an “immersion fluid.” Rather, claim 22 recites a method step
of “immersing . . . in a first fluid.” The definition provided in Appellants’
Specification regarding the term “immersed” does not have any requirement
that the fluid contact the precursor body only that the precursor body is
“completely surrounded by the fluid.” We decline to read into claim 22 any
requirement that the first fluid contacts the precursor body without express
language as to that fact, or at least an express requirement to use an
“immersion fluid.”
Claim 22 is directed to a method which comprises steps and not to a
specific device for performing those steps. Claim 22 requires a step of
immersing the precursor body in a first fluid at a temperature to soften an
exterior surface of a precursor body. The heating methods of Leonhardt and
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Herweck (i.e., immersing the mold in a water bath) and the heating method
of Downey (i.e., providing a jacket 18 around the mold) are known methods
of heating tubing for expansion. We agree with the Examiner that replacing
the known heating method of Downey with either of the known heating
methods evinced by Leonhardt and Herweck would have been obvious to
one of ordinary skill in the art to obtain the desired and predictable result of
heating a tube via heating the mold.
In making the heating method substitution, the mold taught by
Downey would be completely surrounded by the water in the water bath. If
the mold is completely surrounded, the parison (tube) within the mold is
completely surrounded by the water in the water bath, even if the water does
not contact the surface of the parison. As such, the immersing step of claim
22 would be satisfied by this substitution.
One of ordinary skill in the art would have been capable of and would
have expected success in substituting the heating method taught by Downey
with a water bath as taught by Leonhardt or Herweck. A person of ordinary
skill in the art would recognize that the water bath of Leonhardt or Herweck
would heat the mold 10 of Downey in the same way the mold jacket 18
does, since both are well known methods of heating a mold.
We find no reason why merely substituting the heating method of
Downey with the heating method of Leonhardt and Herweck would destroy
the temperature gradient in the precursor body taught by Downey.
According to Figure 2 of Downey, the water flowing through mold jacket 18
contacts the outer surface of mold 10, just as the water in a water bath would
contact the outer surface of the mold. Neither the mold structure nor the
gradient formed in the parison would be altered if the mold 10 is immersed
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in a water bath rather than heated with a mold jacket around mold 10. As
such, the use of the water bath of Leonhardt or Herweck would have
softened the precursor body of Downey to the same extent as the mold jacket
18.
Downey clearly teaches establishing a temperature gradient in the
sidewall of the parison prior to expanding. Even if not expressly stated in
Downey, one of ordinary skill in the art would have used both the exterior
heat and the internal heat to establish a gradient prior to expanding the
parison. To suggest otherwise is to not consider the skill of the ordinary
artisan. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
C. CLAIM 1 – DOWNEY, SIMHAMBHATLA, AND LEONHARDT OR
HERWECK
Appellants present separate arguments directed to claim 1 and the
claims that depend therefrom, for which we select claim 1 as a representative
claim.
1. ISSUE ON APPEAL
Unlike claim 22, claim 1 specifically recites that “the first fluid enters
the mold and envelops at least a portion of the precursor body” (claim 1).
The Examiner finds that the holes 46 in the mold taught by Leonhardt would
allow fluids to travel in both directions and that “the most reasonable
conclusion based on the evidence of record is that fluid, at least some fluid,
would enter the mold through the vent holes” (Ans. 18). The Examiner
notes that Wallace also teaches the conventional feature of vent holes in a
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mold to show that the vent holes taught by Leonhardt are well known in the
art (Advisory Action of March 26, 2008 at 4; Ans. 18).
Thus, we must reconsider Appellants’ arguments that Leonhardt and
Herweck, at best, teach immersing only the mold and not the precursor body,
which would not result in the claimed invention because the fluid would not
contact the body (Br. 15 and 16). Appellants contend that the holes 46 used
in the Leonhardt mold are only designed to allow air to escape and would
have to be larger than that required to allow air to escape in order to allow
fluid to enter the mold (Br. 17-18 and 19). Appellants also respond to the
Examiner’s citation of Wallace by relying on Wallace’s teaching that such
holes are “minute” to support the contention that similar holes taught by
Leonhardt are too small to allow fluid to enter the mold (Reply Br. 9).
Appellants further contend that there is no suggestion to add holes to the
mold of Downey (Br. 18).
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: did the Examiner reversibly err in concluding that it would
have been obvious to one of ordinary skill in the art to immerse a mold in a
first fluid such that the first fluid enters the mold and envelops at least a
portion of the precursor body based on the teachings of Downey and
Leonhardt or Herweck? We answer this question in the negative.
2. FACTUAL FINDINGS
Claim 1 as originally filed in Appellants’ Specification includes this
limitation without any discussion in Appellants’ Specification as to how the
immersion fluid enters the mold and contacts the precursor body (originally
filed claim 1; see generally Spec.).
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Appellants’ Specification teaches that “[m]old 20 also includes one or
more openings 38 through which a fluid may escape void 36 during use”
(Spec. ¶ [0036]).
Leonhardt teaches “[h]oles 46 [in mold 30] provide for the escape of
air when the mold is filled by the expanding workpiece” (Leonhardt, col. 3,
ll. 61-63).
Wallace teaches that “vent holes 16 are drilled through the mold . . . to
prevent entrapment of air within the mold during expansion of the
thermoplastic tube 12. The vent holes 16 are preferably very minute, in the
order of about 0.013 inches in diameter so that no markings appear on the
finished cuff” (Wallace, col. 4, ll. 11-17). 1
3. PRINCIPLES OF LAW
The principles of law presented above are also relevant to the present
issue on appeal.
4. ANALYSIS
The Examiner has made a finding that fluids would travel both ways
through the holes taught by Leonhardt. We consider this finding to be
reasonable, and agree that at least some water from the water bath of
Leonhardt would get into the mold and would envelop at least some portion
of the precursor body.
Appellants have provided no evidence to successfully rebut this
finding. Leonhardt does not suggest in any way that the holes will forbid

1 The Examiner and Appellants point to the vent holes of Wallace as further
evidence of what one of ordinary skill in the art would have understood
about the vent holes of Leonhardt (Ans. 18; Reply Br. 9). As Appellants do
not object to the Examiner’s reliance on Wallace and, in fact, themselves
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fluid from the water bath from entering the mold. The fact that the holes are
described for the purpose of allowing air out does not, itself, negate the
Examiner’s finding that holes will also allow a fluid in. In fact, Appellants’
Specification teaches similar vent holes whose main purpose is for allowing
fluid to escape the mold cavity (void 36) during precursor expansion. There
is no convincing evidence that such venting holes are resized in order to
allow the fluid to enter and contact the precursor body. It is therefore
reasonable to conclude that vent holes for allowing air to escape are of the
same or substantially the same size that allow fluids to enter.
Neither does the fact that the Leonhardt’s vent holes may be known
by the skilled artisan to be “minute” mean that fluids cannot enter the holes.
Neither Leonhardt nor Wallace teach that the size of the holes will keep
fluids from entering. Rather, Wallace makes the holes “minute” so that the
shape of the holes will not imprint on the formed balloon.
One of ordinary skill in the art would have added the vent holes taught
by Leonhardt to the mold 10 taught by Downey, for the same reason they are
provided in Leonhardt. As the balloon expands to fill the mold of Downey,
air trapped within the mold will need to escape.
Moreover, we note that even if fluid from the water bath does not
enter the mold, the water bath would have heated the mold and the air within
the mold interior. As such, the precursor body would have been “immersed”
within the definition provided in Appellants’ Specification, i.e., “completely
surrounded by the fluid.” The Specification clearly indicates that simply

rely on Wallace, we consider the teachings of Wallace that are relevant to
the issue arising with regard to the vent holes of Leonhardt.
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heating the ambient air surrounding the precursor body (e.g., within an oven)
is encompassed by the term “immersed.”
D. CLAIM 33 – DOWNEY, SIMHAMBHATLA, AND LEONHARDT OR
HERWECK
Appellants present separate arguments directed to claim 33 and the
claims that depend therefrom, for which we select claim 33 as a
representative claim.
1. ISSUE ON APPEAL
Claim 33 recites the step of “inflating the precursor body with the
second liquid after the exterior surface of the precursor body has equilibrated
to the first temperature and the interior surface of the precursor body has
equilibrated to the second temperature” (claim 33). Thus, Appellants
contend that, while Downey teaches inflating the precursor body under a
temperature gradient, none of the references teach inflating the precursor
body only after the precursor body surfaces have equilibrated to the first and
second temperatures of the first and second fluids (Br. 20; Reply Br. 10-11).
The Examiner asserts that the teachings of Downey relating to
achieving a temperature gradient and then expanding the precursor body
while the temperature gradient exists “strongly suggest equilibrium prior to
expansion” (Ans. 19).
A fourth issue on appeal arising from the contentions of Appellants
and the Examiner is: did the Examiner err in concluding that it would have
been obvious to one of ordinary skill in the art to inflate the precursor body
only after the precursor body had equilibrated to a first and second
temperature on the exterior and interior surfaces, respectively, based on the
teachings of Downey? We answer this question in the negative.
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2. FACTUAL FINDINGS
In the comparative example, Downey states that “[t]he parison is
heated in an external mold at a temperature of 91º C. for a period of about
1.13 minutes, on the assumption that the temperature across the entire
sidewall of the parison will stabilize at 91ºC” (Downey, col. 6, ll. 10-14).
In Example 1, Downey states that the outer diameter temperature is
set by “utilizing the known mold temperature (91ºC.)” but raising the inside
temperature above 91ºC (Downey, col. 6, ll. 42-51).
In Example 2, Downey states that “the outer diameter (mold)
temperature is lowered” (Downey, col. 7, ll. 1-2). In other words, the outer
diameter temperature is the same as the mold temperature, thus the
temperature of the mold, as dictated by the temperature of the fluid, and the
temperature of the outer diameter of the parison have equilibrated.
Downey teaches forming a temperature gradient in the sidewall of the
parison “in order to produce a substantially uniform and high degree of
orientation across the sidewall and thus a higher average tensile strength”
(Downey, col. 3, ll. 5-12).
3. PRINCIPLES OF LAW
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
One of the ways in which a claim’s subject matter can be proved obvious is
by establishing that there existed at the time of invention a known problem
for which there was an obvious solution encompassed by the claims. Id.
at 419-20; see also In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006)
Appeal 2009-010396
Application 10/738,112

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(“[C]onsider what the combined teachings, knowledge of one of ordinary
skill in the art, and the nature of the problem to be solved as a whole would
have suggested to those of ordinary skill in the art.”).
4. ANALYSIS
The teachings of Downey provide sufficient evidence that one of
ordinary skill in the art would have understood that, given sufficient time,
the exterior surface of the precursor body will equilibrate to the temperature
of the mold and the temperature of the fluid used to heat the mold. In the
examples taught by Downey, which use mold jacket 18, equilibration time is
about 1.13 minutes when the desired temperature is 91ºC. Downey teaches
that the mold temperature and the desired outer diameter temperature are the
same, suggesting that the mold, having the temperature of the fluid used to
heat it, and the parison reach an equilibrium temperature. One of ordinary
skill in the art, through routine experimentation, would have been capable of
adjusting the time for achieving equilibration at desired temperatures using
the substituted water bath as a heating source. A skilled artisan is presumed
to know something about the art apart from what the references disclose.
See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Moreover, Downey teaches the desire for a substantially uniform
orientation across the sidewall. Thus, it would have been obvious to have
equilibrated temperatures, since sidewall temperatures in flux would not be
likely to have uniform orientation in the sidewalls.
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III. CONCLUSION
On the record before us2 and for the reasons discussed above, we
sustain the rejection of claims 1-3, 12, 14, 16, 17, 20, 22, 23, 30-35, and
38-44 under 35 U.S.C. § 103 as obvious over Downey in view of
Simhambhatla and Leonhardt or Herweck maintained by the Examiner,
but we cannot sustain the remaining rejections maintained by the Examiner.
IV. DECISION
We affirm the Examiner’s decision.
V. 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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).

AFFIRMED

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2Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).