Ex Parte Hendry

Board of Patent Appeals and Interferences

Feb 28, 2011

10770932 (B.P.A.I. Feb. 28, 2011)

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.
10/770,932 02/03/2004 James W. Hendry IAC 04938 PUS 1624
25286 7590 03/01/2011
BROOKS KUSHMAN P.C.
INTL. AUTOMOTIVE COMPONENTS GROUP
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
HUSON, MONICA ANNE
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
03/01/2011 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 JAMES W. HENDRY
____________________

Appeal 2009-011456
Application 10/770,932
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 12, 14, and 16 under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious

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.
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Application 10/770,932

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over Shah (US 5,558,824; issued Sep. 24, 1996) and to reject claims 13, 17,
and 18 under 35 U.S.C. § 103(a) over Shah in view of Guergov (US
6,019,918; issued Feb. 1, 2000). We have jurisdiction under 35 U.S.C.
§ 6(b).
II. DISCUSSION
We affirm for the reasons expressed by the Examiner in the Answer.
We add the following for emphasis only.
Appellant’s claims are directed to a gas assisted injection molding
system. Appellant contends that Shah fails to teach the use of a gas pressure
valve as required by claim 12, and further fails to teach the use of an
infinitely adjustable pressure control valve at all (Br. 7-8). Appellant also
contends that Shah does not teach the use of a pressure switch to control the
operation of the infinitely adjustable pressure control valve as required by
claim 16. Claims 12 and 16, with the key limitations italicized, are
reproduced below:
12. A system for forming an injection molded plastic
part in a mold comprising:
a mold, said mold having a part-forming mold cavity
therein;
sealing members for sealing said mold cavity and
preventing gas leakage therefrom;
a first gas source for supplying a gas into the mold cavity
to pre-pressurize the mold cavity to a first pre-determined
value;
an electrical infinitely pressure controlled valve for
removing said pre-pressured gas from the mold cavity as
desired;
a gas control mechanism for maintaining the gas pressure
in the mold cavity at a second pre-determined value;
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Application 10/770,932

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a source for injecting molten plastic material into the
mold cavity;
a gas pin assembly for supplying gas into the plastic
material in the mold cavity; and
a second gas source for supplying gas to said gas pin
assembly.

16. The system as recited in claim 12 further comprising
a pressure switch for controlling the operation of said valve.
(Emphasis added.)
According to the Specification, the valve used by Appellant is an
electrically controlled gas pressure valve (Spec.¶ [0024]). It is “infinitely
pressure controlled and can be of any conventional type, such as a Tescom
servovalve.” (Id.)
The Examiner finds that Shah’s control valve 78 has the structure
required by claim 12 (Ans. 3), or that the use of a conventional valve, such
as the conventional valve mentioned in Appellant’s Specification, would
have been obvious for use as Shah’s control valve 78 (Ans. 3). Shah’s valve
is controlled by a pressure sensor and, therefore, is “pressure controlled” as
claimed. The valve responds to an electrical signal from a microprocessor
and is, therefore, electrical as also claimed. The electrical signal controls the
degree of opening of the valve. It is, therefore, reasonable to conclude that
Shah’s valve is capable of being infinitely pressure controlled just as other
conventional valves such as the Tescom servovalve used by Appellant are
capable of being infinitely pressure controlled.
The Examiner has properly focused on the structure required by the
claims. A claim to an apparatus or other type of structure must be
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Application 10/770,932

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differentiated from the prior art in terms of structure rather than function.
See Burr v. Duryee, 68 U.S. 531, 570 (1863) (“A machine is a concrete
thing, consisting of parts, or of certain devices and combination of
devices.”); Corning v. Burden, 56 U.S. 252, 268 (1853) (“it is well settled
that a man cannot have a patent for the function or abstract effect of a
machine, but only for the machine which produces it”); In re Casey, 370
F.2d 576, 580 (CCPA 1967) (“The manner or method in which such
machine is to be utilized is not germane to the issue of patentability of the
machine itself”); In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well
settled that patentability of apparatus claims must depend upon structural
limitations and not upon statements of function.”).
As pointed out by the Examiner, the “use” of the valve amounts to an
intended use or functional limitation in a claim directed to structure. In such
a situation, where the Examiner establishes a reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981).
The Examiner has provided reasons for finding that the valve is
inherently capable of operating as claimed (Ans. 3-5). These reasons
support the Examiner’s finding and have not been addressed by Appellant.
Moreover, the Examiner provides an alternative obviousness rationale not
addressed by Appellant.
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The evidence as a whole supports the Examiner’s finding of
anticipation and conclusion of obviousness with respect to claim 12.
With respect to claim 16, Appellant contends that Shah does not
disclose or teach the use of a pressure switch to control the operation of the
infinitely adjustable pressure control valve (Br. 6). However, in light of the
fact that the originally filed Specification describes no pressure switch so
controlling the infinitely adjustable pressure control valve 40,2 but only a
pressure switch that initiates the flow of gas to gas pin assembly 30 (see
Spec. ¶ [0032]), the Examiner’s finding that Shah’s control valve 78
operates as a pressure switch (Ans. 3) is reasonable based on the record
before us, particularly since Appellant does not address the specific finding
of the Examiner (see Br. 6).
Turning to the rejection of claims 13, 17, and 18, the only further
argument of any specificity made by Appellant is that there is no teaching,
motivation or suggestion to combine Shah and Guergov in a manner which
includes all of the features and limitations of claim 18 (Br. 8). However, the
Examiner has provided a rationale supporting the combination of the
references that is not specifically addressed by Appellant (Ans. 4 and 6).

2 In the Brief, Appellant refers to “the feature of a pressure switch 41 . . . for
controlling the operation of the valve 40” and indicates that “[t]his is shown
in Figures 1-5 and discussed in Paragraph 28” (Br. 4). However, a review of
these portions of the originally filed disclosure reveals no description of a
pressure switch 41 that controls valve 40, nor any indication by Appellant
where support for any amendments later filed existed (see Amendment filed
October 26, 2004). Nor is there any evidence that the symbol Appellant
later identified in Amended Figure 1 as switch 41 was a symbol understood
in the art as identifying a pressure switch.
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The evidence as a whole supports the Examiner’s finding of a reason
to combine.
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.
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).

AFFIRMED

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BROOKS KUSHMAN P.C.
INTL. AUTOMOTIVE COMPONENTS GROUP
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075