Ex Parte GarelliDownload PDFBoard of Patent Appeals and InterferencesDec 1, 201011879125 (B.P.A.I. Dec. 1, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/879,125 07/16/2007 Stephen T. Garelli MSH-449DIV 3153 8131 7590 12/01/2010 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER MALEKZADEH, SEYED MASOUD ART UNIT PAPER NUMBER 1743 MAIL DATE DELIVERY MODE 12/01/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEPHEN T. GARELLI ____________ Appeal 2009-014971 Application11/879,125 Technology Center 1700 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable 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 2009-014971 Application 11/879,125 2 over Milner (US 2,304,190, issued Dec. 8, 1942) alone, or in view of Anderson (US 2,396,406, issued Mar. 12, 1946).3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention is directed to a mold which can be used in an injection molding process for manufacturing polymeric flexible envelopes. (See Spec.4 1:9-13.) Claim 1 is reproduced below from the Claims Appendix to the Appeal Brief: 1. A mold, said mold comprising: (I) an upper mold segment having an upper surface; (II) a lower mold segment having a bottom surface, and (III) a moveable core having a top surface, a bottom surface and centered opening therethrough, said opening having a near end and a distal end; wherein each mold segment has a confronting flat surface, each mold segment capable of mating with the other mold segment at their respective confronting flat surfaces; there being located in the confronting flat surface of each segment, a concavity, each concavity having an opening centered in said concavity; the opening in the concavity of the lower mold segment running through the lower mold segment and exiting through the bottom surface of the lower mold segment; the opening in the concavity of the upper mold segment running through the upper mold segment and exiting through the upper surface of the upper mold segment; 2 Final Office Action mailed Aug. 28, 2008 (“Final”). 3 Appeal Brief filed Jan. 26, 2009 (“Br.”). 4 Specification filed Jul. 16, 2007. Appeal 2009-014971 Application 11/879,125 3 the moveable core having an outside configuration essentially identical to the concavities when the mold segments are mated with each other, the core having integrally attached to the bottom thereof, a stem, said stem being slidably mounted in the opening in the concavity of the lower mold segment and extending beyond the bottom surface of the lower mold segment, said stem having centered therethrough, an opening; the centered opening in the core having an air valve located in and near the near end thereof, said centered opening in the core and said centered opening in the stem being interconnected to allow the intermittent passage of gas therethrough, there being a space created between the outside configuration of the core and the concavities when the mold segments are mated. The Examiner found that Milner discloses a mold as claimed with the exception of an “opening in the concavity of the upper mold segment running through the upper mold segment and exiting through the upper surface of the upper mold segment” (claim 1). (Ans.5 3-4.) The issues we consider are: did the Examiner reversibly err in concluding that it would have been obvious to have modified Milner to include an opening in the upper mold segment, and that such modification would have resulted in the invention as recited in claim 1? We determine the Examiner did not reversibly err for the reasons that follow. Appellant does not dispute the Examiner’s findings that, at the time of the invention, it was known in the art to provide a compression mold with: (1) spew ways to permit excess rubber to flow from the mold chamber, as evidenced by Milner (see Ans. 4-5; Milner, p. 2, col. 1, ll. 59-60 (reference numeral (40)); and (2) vent ports for exit of air or other gases from inside the 5 Examiner’s Answer mailed Apr. 28, 2009. Appeal 2009-014971 Application 11/879,125 4 mold cavity, as evidenced by Anderson (see Ans. 7; Anderson, p. 1, col. 2, ll. 26-31 and p. 2, col. 1, ll. 20-21). Based on the aforementioned findings, the Examiner determined it would have been obvious at the time of Appellant’s invention to have provided an opening in Milner’s upper mold segment “to permit flowing of excess rubber from the mold cavity” (Ans. 4) or “for exit of the air or other gases from the inside of the mold cavity, as suggested by Anderson” (Ans. 7). If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. . . . For the same reason, if 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. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In our view, the facts and reasons relied on by the Examiner (Final 3- 7; Ans. 3-7) provide a reasonable basis for the Examiner’s conclusion that the claimed invention would have been obvious in view of Milner alone, or in combination with Anderson. We have fully considered Appellant’s arguments in support of patentability, but are not persuaded of error in the Examiner’s obviousness determination for the reasons expressed by the Examiner in the Response to Argument (Ans. 10-17). As explained by the Examiner, claim 1 is broadly directed to a “mold.” Appellant attempts to distinguish the claimed invention from the prior art on the basis that the inventive mold is used for injection molding. However, the structure recited in the claims fails to distinguish the claimed mold from the prior art molds. Appeal 2009-014971 Application 11/879,125 5 Appellant has not argued that the Examiner failed to establish proper motivation for modifying Milner to include an opening in Milner’s upper mold segment either to provide a spew way or a vent port. Nor has Appellant argued that it would not have been within the level of skill of the ordinary artisan to have modified Milner’s mold to provide an opening in the upper mold cavity as claimed. Absent such arguments, we are not convinced of error on the part of the Examiner. Accordingly, we affirm both grounds of rejection. The decision of the Examiner to reject claim 1 is affirmed. 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). AFFIRMED cam MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 Copy with citationCopy as parenthetical citation