Ex Parte Feldhahn et al

Patent Trial and Appeal Board

Sep 23, 2016

11661650 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/661,650 02/27/2007
13897 7590 09/27/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Karl-Andreas Feldhahn
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.
6580-P50042 2627
EXAMINER
BUCKLEY, AUDREA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL-ANDREAS FELDHAHN, GERD SCHULZ,
MARTIN EIFLER, ARNOLD FRERICHS, THOMAS MARX, and
ELMAR VITT
Appeal2015-001394
Application 11/661,6501
Technology Center 1600
Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and
KRISTI L. R. SA WERT Administrative Patent Judges.
SAWER T, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 143-152 and 156-199 of U.S. Patent Application No. 11/661,650
("the '650 application"). We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Appellants identify Weinmann Gerate fiir Medizin GmbH
& Co. KG, as the real party in interest. Appeal Br. 3.
Appeal2015-001394
Application 11/661,650
STATEMENT OF THE CASE
Claims 143-152 and 156-199 are on appeal and stand rejected under
35 U.S.C. § 103(a) for obviousness over Thornton2 in view of Siegel,3
Rearick4, and Brown5. Final Off. Act. 3. Independent claim 143 is
representative. Claim 143 provides:
143. A molded body, wherein the molded body is a
protruding edge for a face mask and is made of plastic material,
and wherein a surface of the molded body comprises elevations
formed by particles fixed on at least one or more portions of the
surface.
Appeal Br. 24.
We limit our consideration of the merits of the appealed rejections to
the elected species. See Ex parte Ohs aka, 2 USPQ2d 1460, 1461 (BP AI
1987). Thus, we read the claims as limited to the use of the elected species:
silicone (the elected species of plastic) and silicates (the elected species of
particles), and take no position respecting the patentability of the broader
generic claims, including the remaining, non-elected species. See Final Off.
Act. 2.
2 W. Keith Thornton, U.S. Patent Publication No. US 2004/0079374
Al (Apr. 29, 2004) ("Thornton").
3 Rolf Siegel, U.S. Patent Publication No. US 2004/0157943 Al (Aug.
12, 2004) ("Siegel").
4 Brian K. Rearick and M. Lisa Perrine, US Patent Publication No.
US2004/0191420 Al (Sept. 30, 2004) ("Rearick").
5 CraigC.Brown,USPatentNo.4,643,181(Feb.17,1987)
("Brown").
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Application 11/661,650
DISCUSSION
We have reviewed Appellants' arguments in the Briefs, the
Examiner's final Office Action, and the Examiner's Answer to the
Appellants' arguments. Upon review of the record, we find that the
Examiner did not establish by a preponderance of the evidence that the
claimed invention would have been obvious over the cited prior-art
references. For this reason, we reverse the rejection of the claims 143-152
and 156-199, as limited to the elected species of silicone and silicates.
Background
The claimed invention is directed to a molded body that is a
protruding edge for a face mask. Appeal Br. 24 (claim 143). The molded
body is made of silicone. Id.; Final Off. Act. 2. The surface of the molded
body contains elevations formed by particles made of silicate. Id.; Final Off.
Act. 2. The Specification explains that "at least some sections of the surface
of the molded body are rendered antiseptic by reducing the surface
adhesion." Spec. 7-8. Specifically, "[t]he surface of the invention prevents
the adherence of bacteria and other microorganisms and is thus
bacteriophobic and/or antimicrobial." Id. at 8.
The closest prior art reference, Thornton, discloses a custom-fitted
face mask for medical and clinical applications. Thornton i-f 1. As the
Examiner explained, and Appellants do not contest, the mask has a
protruding edge configured for resting on a patient's face. Id. at i-f 14; Final
Off. Act. 4. Thornton teaches making the mask out of polycaprolactone
polymers (i.e., polyesters). Thornton i-f 18. Thornton does not disclose that
the face mask may be made of silicone, nor does Thornton disclose that the
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Application 11/661,650
face mask contains elevations formed by silicate particles. Final Off. Act.
4--5. The Examiner relied on the secondary references to teach these
claimed features. Id. Specifically, the Examiner relied on Siegel to teach
molded bodies made of silicone. Id. (citing Siegel iii! 1, 8, 13, 18, 21). The
Examiner relied on Rearick to demonstrate a sheet comprising "silica filler
particles such as various silicates including calcium silicate, aluminum
silicate, sodium aluminum silicate, and aluminum polysilicate." Id. (citing
Rearick iii! 2, 13, 28, 29, 31). And, finally, the Examiner relied on Brown to
teach "elevations." Id. at 7 (citing Brown Abstract).
Analysis
We decide this case by determining whether an ordinarily-skilled
artisan would have been motivated to add Rearick's silicate particles to
Thornton's face mask. We agree with Appellants that the Examiner did not
adequately set forth a persuasive reason explaining why a skilled artisan
would have combined Rearick with Thornton. See Appeal Br. 9-10. Thus,
we reverse the rejection of the claims.
Rearick teaches that microporous sheets comprising polyethylene and
silica filler particles are known in the art for use "in many applications such
as cards, tags, labels, menus, in-mold graphics, commercial printing and
specialty printing." Rearick if 2. But, Rearick explains, those microporous
sheets are susceptible to ultraviolet radiation damage, and have a low QUV
(weathering) resistance. Id. if 3. To solve this problem, Rearick discloses
protective coatings for the microporous sheets that improve the QUV
resistance of the sheets. Id. if 5. Rearick states that, once coated, the
microporous sheets are "particularly useful for outdoor applications such as
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Application 11/661,650
on promotional banners, truck placard advertisements, billboards, sports
equipment and the like." Id.
The Examiner reasoned that an ordinarily-skilled artisan would have
been motivated to add Rearick's silicate particles to Thornton's face mask
"to achieve the functionality (i.e., mechanical stabilization from fillers)
possible from incorporating the particles taught in Rearick's thermoplastic
polymers." Final Off. Act. 6. We find that the Examiner's articulated
rationale lacks evidentiary support in the record. For example, the Examiner
does not point us to any evidence, nor provide any sound scientific
explanation, supporting the notion that mechanical stability of face masks
was a known problem. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (stating that "the mere application of a known technique to a piece of
prior art ready for the improvement" generally would have been obvious).
Moreover, the Examiner does not point us to any evidence that it was known
in the art that silicate particles would necessarily, or would have been
expected to, provide mechanical stabilization.
Rearick focuses on improving the weatherability, rather than the
mechanical stability, of microporous sheets. Thus, we discern that even if an
ordinarily-skilled artisan would have added Rearick's coated microporous
sheets to a piece of sports equipment (arguendo a face mask), the addition of
that sheet would merely guard against fading of graphics or decoration on
the sports equipment, instead of necessarily improving the mechanical
stability of the sports equipment. See Rearick i-f 2 (stating that microporous
sheets are useful for "in-mold graphics").
Finally, although the Examiner correctly states that no explicit
motivation-to-combine must be present in the prior art, Ex. Ans. 10, "[ w ]e
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Application 11/661,650
must still be careful not to allow hindsight reconstruction of references to
reach the claimed invention without any explanation as to how or why the
references would be combined to produce the claimed invention."
Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir.
2008). In this case, we find that the Examiner has failed to provide a
specific, credible reason to combine Thornton and Rearick based on the
evidence of record.
SUMMARY
The Examiner has not provided sufficient reasoning or evidence that
one of ordinary skill would have had a reason add Rearick' s silicate particles
to Thornton's face mask, as required by representative claim 143. We
therefore reverse the rejection of claims 143-152 and 156-199 under 35
U.S.C. § 103(a).
REVERSED
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