Ex parte HEYN et al.

Board of Patent Appeals and Interferences

Aug 12, 1999

08333292 (B.P.A.I. Aug. 12, 1999)

Application for patent filed November 1, 1994. 1
According to appellants, this application is a division of
Application 08/174,059, filed December 28, 1993, now U.S.
Patent No. 5,360,588, issued November 1, 1994, which is a
division of Application No. 07/764,546, filed September 24,
1991, now U.S. Patent No. 5,273,416, issued December 28, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM M. HEYN,
ROBERT W. FRASER
and DONALD J. ROTH
____________
Appeal No. 96-4165
Application No. 08/333,2921
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-4165
Application No. 08/333,292
2
This is a decision on appeal from the examiner's final
rejection of claim 13. Claims 19 and 20, which are all of
remaining claims pending in this application, have been
indicated as allowable by the examiner (answer, page 1).
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Application No. 08/333,292
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BACKGROUND
The appellants' invention relates to a method of molding
a peripheral frame with a panel insert. An understanding of
the invention can be derived from a reading of claim 13, which
has been reproduced below.
13. A method of injection molding an article having a
peripheral frame forming an opening and carrying an insert
panel for closing said opening, said method comprising the
steps of providing a split mold including an inner open
quadrant, associating a strip of material with said mold in
facing relation to said open quadrant, providing a punch
opposing said strip material remote from said mold and in
alignment with said mold, moving said punch towards said mold
to first shear from said strip material a panel insert, then
by continuing to move said punch towards said mold, clamping
the panel insert against said mold with the panel insert and
said punch forming parts of said mold and closing said open
quadrant of said mold, and injecting a flowable material into
said mold.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
De Pass et al. (De Pass) 3,463,845 Aug.
26, 1969
Hatakeyama 4,459,092 Jul. 10,
1984
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over De Pass in view of Hatakeyama.
OPINION
Appeal No. 96-4165
Application No. 08/333,292
4
We have carefully reviewed the respective positions
presented by appellants and the examiner. In so doing, we
find ourselves in agreement with appellants that the applied
prior art fails to establish a prima facie case of obviousness
regarding the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection for essentially those
reasons advanced by appellants, and we add the following
primarily for emphasis.
At the outset, we note that the examiner has the initial
burden of presenting a prima facie case of obviousness based
on the disclosure of the applied prior art. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
According to the examiner, De Pass discloses "...a
process for forming an injection molded frame having a panel
insert..." including the use of a punch for moving the insert
(answer, page 3). Recognizing that De Pass does not teach the
claimed step of "moving said punch towards said mold to first
shear from said strip material a panel insert," the examiner
relies on Hatakeyama for this step. According to the examiner,
"[i]t would have been obvious for an artisan at the time of
Appeal No. 96-4165
Application No. 08/333,292
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the invention, to modify the step of feeding the panel insert
as taught by De Pass in view of Hatakeyama '092 to punch the
insert from a continuous strip at the molding station rather
than supplying discrete, pre-punched inserts to the mold
assembly, since such would avoid the occurrence of non-uniform
feed of the inserts to the mold cavity" (answer, page 4).
We cannot subscribe to the examiner's position regarding
the combined references teachings as reproduced above. In our
view, De Pass describes a molding process and device that
explicitly relies on the use of sequentially fed blanks of
material for forming composite container lids such as paper
and plastic container lids (De Pass, columns 1-3) and does not
describe any problems with the feeding of preformed blanks
that would suggest the claimed process including the shearing
step. Moreover, while Hatakeyama teaches use of a punch for
punching out (shearing) an ornamental plate from a continuous
strip of material for a plastic body, such as a cap for a
bottle, the examiner has not identified any suggestion in the
applied prior art for the use of such a technique for forming
the composite container lids of De Pass especially in light of
the sequential blank feed method taught by De Pass. In this
Appeal No. 96-4165
Application No. 08/333,292
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regard, we note that the examiner has not shown where
Hatakeyama teaches or would have suggested that the ornamental
plates formed by its punch out (shearing) method can be used
in a process as disclosed by De Pass wherein a sheared panel
insert closes an opening in the article formed by an injection
molding step.
The mere fact that the prior art may be modified to
reflect features of the claimed invention does not make the
modification obvious unless the desirability of such
modification is suggested by the prior art. The claimed
invention cannot be used as an instruction manual or template
to piece together the teachings of the prior art so that the
claimed invention is rendered obvious. See In re Fritch, 972
F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992). Accordingly, on
this record, the rejection fails for lack of a sufficient
factual basis upon which to reach a conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
Accordingly, the rejection of claim 13 under 35 U.S.C. § 103
as unpatentable over De Pass in view of Hatakeyama cannot be
sustained.
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Application No. 08/333,292
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CONCLUSION
Based on the present record, we are unpersuaded that the
examiner has met the initial burden of establishing a prima
facie case of obviousness of the claimed process. The
decision of the examiner is reversed.
Appeal No. 96-4165
Application No. 08/333,292
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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).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/dal
Appeal No. 96-4165
Application No. 08/333,292
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WILLIAM H. HOLT
727 TWENTY-THIRD ST. SO
ARLINGTON, VA 22202