Ex Parte Fung et al

Board of Patent Appeals and Interferences

Mar 31, 2011

11039239 (B.P.A.I. Mar. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL Y. FUNG,
ANTHONY D. ONUSCHAK,
RAYMOND J. HULL, JR.,
and JOHN ORENGA
__________

Appeal 2010-004136
Application 11/039,239
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1, 3-5, and 9-15. Claims 16-27 are also pending but
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have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a method for applying an
adhesive and superabsorbent polymer mixture to a substrate. Claim 1,
reproduced below, is illustrative.
1. A method for applying an adhesive and superabsorbent
polymer mixture to a substrate comprising the steps of:

heating an adhesive and superabsorbent polymer mixture
to a first temperature at a first pressure in a heating tank, said
first temperature being less than the boiling temperature of said
mixture at said first pressure;

conveying said mixture through a first length of conduit
from said heating tank to a heat exchanger arranged in spaced
relationship to said heating tank;

heating said first length of conduit to maintain a
temperature of said mixture within said first length of conduit
substantially constant;

passing the heated mixture through a heat exchanger at a
second pressure, the second pressure being higher than the first
pressure, the heat exchanger being adapted to raise the
temperature of the mixture to a second temperature that is
higher than said first temperature;

conveying said mixture through a second length of
conduit from said heat exchanger to an adhesive applicator
arranged in spaced relationship to said heat exchanger; and

selectively applying the mixture to a substrate.

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Br., Claims Appendix.1
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 3, 4, and 9-14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Zhou,2 Schultz,3 Scholl,4 and
Heider.5
(2) Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zhou, Schultz, Scholl, Heider, and
Yapel.6
The Appellants focus their arguments on the patentability of claim 1.
Br. 4-6. Therefore, for purposes of this appeal, claims 3, 4, and 9-14 stand
or fall with the patentability of claim 1. As to rejection (2), the patentability
of claims 5 and 15 will be based on the arguments set forth in support of the
patentability of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
B. DISCUSSION
The Examiner concludes that the method recited in claim 1 would
have been obvious to one of ordinary skill in the art in view of the combined
teachings of Zhou, Schultz, Scholl, and Heider. Ans. 5-10.7 The Appellants
do not direct us to any error in the Examiner’s conclusions of obviousness or
underlying factual findings. Instead, the Appellants generally argue that the
Examiner engaged in an “improper hindsight reconstruction,” the
Examiner’s reliance on four references weighs against a conclusion of

1 Appeal Brief dated July 9, 2009.
2 US 2002/0123726 A1 published September 5, 2002.
3 US 2003/0131791 A1 published July 17, 2003.
4 US 4,066,188 issued January 3, 1978.
5 WO 01066800 A1 published August 29, 2002.
6 US 6,720,025 B2 issued April 13, 2004.
7 Examiner’s Answer dated October 16, 2009.
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obviousness, and the Examiner does not identify the specific portion in each
of the cited references that suggests the Examiner’s proposed combination.
Br. 4-5.
The Appellants’ arguments are not persuasive of reversible error for
the reasons well stated in the Examiner’s Answer. We add the following for
emphasis.
First, as explained in In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971):
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants’ invention and does not include
knowledge gleaned only from the Appellants’ disclosure. Significantly, the
Appellants do not direct us to a single instance to the contrary.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 5-10. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007), the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
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skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
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.

In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 5-10. Significantly, the Appellants do not
direct us to a single instance to the contrary. See Br. 5 (“the Examiner has
clearly explained how such ‘general knowledge’ would lead one of ordinary
skill in the art to make the plurality of specific combinations required to
‘arrive’ at the claimed invention”).
Finally, the Examiner’s reliance on four references, without more,
does not weigh against a holding of obviousness. In re Gorman, 933 F.2d
982, 986 (Fed. Cir. 1991).
In sum, our review of the record on appeal establishes that the
Examiner’s findings of fact and conclusions of law are supported by a
preponderance of the evidence. Therefore, the § 103(a) rejections on appeal
will be affirmed.
C. DECISION
For the reasons set forth above and in the Examiner’s Answer, the
decision of the Examiner is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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