Ex Parte Garelli

Board of Patent Appeals and Interferences

Dec 1, 2010

11879125 (B.P.A.I. Dec. 1, 2010)

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

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784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640