Ex Parte Hoopman et al

Board of Patent Appeals and Interferences

Aug 30, 2006

09955604 (B.P.A.I. Aug. 30, 2006)

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The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte TIMOTHY L. HOOPMAN
and NELSON D. SEWALL
______________

Appeal 2006-1312
Application 09/955,604
Technology Center 1700
_______________

Decided: August 30, 2006
_______________

Before KIMLIN, PAK, and WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the
Examiner finally rejecting claims 23, 24, 30 through 32, 89, 90, 92, 93,
134 through 136, 138 through 143, and 145 through 148, all of the claims in
the application.
Claims 30, 136, and 138 illustrate Appellants’ invention of a
production tool suitable for use in manufacturing an abrasive article, and are
representative of the claims on appeal:
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30. A production tool suitable for use in manufacturing an abrasive
article comprising a plurality of cavities defining at least a first, a second,
and a third group, wherein a first group of cavities has a first shape, a second
group of cavities has a second shape, a third group of cavities has a third
shape, wherein the first, second, and third shapes are all different, and
wherein each of the cavities has a single opening.
136. A production tool suitable for use in manufacturing an abrasive
article comprising a first, second, and third row of cavities, wherein the
cavities each have a geometric shape including a base and a plurality of base
edge lengths forming the base of the geometric shape, wherein at least one of
the base edge lengths of the first row of cavities is different from all the base
edge lengths of the second and third rows of cavities, wherein at least one of
the base edge lengths of the second row of cavities is different from all the
base edge lengths of the first and third row of cavities, and wherein each of
the cavities has a single opening.
138. The production tool of claim 136, wherein the geometric shape
of the cavities in the first, second, and third rows are pyramidal.
The references relied on by the Examiner are:
Rochlis US 3,312,583 Apr. 4, 1967
Bloecher US 4,799,939 Jan. 24, 1989
Larson US 4,903,440 Feb. 27, 1990
Pieper US 5,152,917 Oct. 6, 1992
The Examiner has rejected appealed claims 23, 24, 30 through 32, 89,
90, 92, 93, 134 through 136, 138 through 143, and 145 through 148 under 35
U.S.C. § 103(a) as being unpatentable over Pieper in view of Rochlis and
either of Larson or Bloecher (Answer 4-8), and has provisionally rejected
appealed claims 23, 24, 30 through 32, 89, 90, 92, 93, 134 through 136,
138 through 143 and, 145 through 148 under the judicially created doctrine
of obviousness-type-double patenting as being unpatentable over claims 23,
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24, 30 through 32, 89, 90, 92, 93, 134 through 136, 138 through 143, and
145 through 148 of copending Application 09/955,604.1 (Answer 8-9).
Appellants argue claims 23, 24, 30 through 32, 89, 90, 92, 93, 134
through 136, 138 through 143, and 145 through 148 as a first group and
claims 134, 135, 138, 139, 145, and 146 as a second group with respect to
the first ground of rejection, and generally address the second ground of
rejection (Br. 9, 11 and 12). Thus, we decide this appeal based on appealed
claims 30 and 138 as representative of the grounds of rejection and
Appellants’ groupings of claims. 37 CFR § 41.37(c)(1)(vii) (2005).
We affirm.
We refer to the Answer and to the Brief and Reply Brief for a
complete exposition of the positions advanced by the Examiner and
Appellants.
Opinion
We have carefully reviewed the record on this appeal and based
thereon find ourselves in agreement with the supported position advanced by
the Examiner that, prima facie, the claimed a production tool for
manufacturing an abrasive article encompassed by appealed claims 30 and
138 would have been obvious over the combined teachings of Pieper,
Rochlis, Larson, and Bloecher to one of ordinary skill in this art at the time
the claimed invention was made. Accordingly, since a prima facie case of
obviousness has been established by the Examiner, we again evaluate all of
the evidence of obviousness and nonobviousness based on the record as a

1 We concurrently enter an opinion in related appeal 2006-1578 in
application 09/520,032.
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whole, giving due consideration to the weight of Appellants’ arguments in
the Brief and Reply Brief. See generally, In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We agree with the Examiner’s findings of fact from the references and
conclusions of law based on this substantial evidence as set forth in the
Answer, to which we add the following for emphasis.
Appellants submit with respect to claims 30 and 138, that there is no
motivation for one of ordinary skill in this art to combine Pieper and Rochlis
and modify the production tools of Pieper by using different shaped cavities
as suggested for production tools by Rochlis because the teachings of Pieper
are limited to production tools having consistent or uniform cavities
throughout, citing, inter alia, Pieper at col. 1, ll. 57-61, col. 7, ll. 4-15
and 63-68, col. 7, l. 55, to col. 8, l. 15, col. 8, ll. 15-25, and the Pieper
figures (Br. 9-10; Reply Br 1-4). Appellants maintain this position even in
view of the Examiner’s contention that Pieper would have taught “that the
surface can have varied shapes” at col. 7, ll. 4-15, and col. 8, ll. 15-25
(Answer 9; Reply Br. 2-4). Appellants argue that there is no basis for the
proposed modification of Pieper’s production tool by using cavities of
different dimensions as taught by Rochlis because the motivating advantages
that the Examiner finds in this relationship, citing Answer at 7, are “already
attributed to the uniformity and consistency found in the abrasive articles”
prepared with Pieper’s production tools (Reply Br. 5).
Appellants point out, with respect to claim 138, that the claimed
“geometric shape of the cavities of the first, second, and third rows are
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pyramidal” and that Rochlis, Larson and Bloecher do not teach pyramidal
shaped cavities. Appellants submit that while Pieper does teach pyramidal
cavities, for the reasons set forth with respect to both claims 30 and 138, the
combined teachings of all four references do not teach or suggest all of the
limitations of the claims (Br. 11-12).
The plain language of claim 30 specifies a production tool that
comprises at least three groups of cavities, each having a different shape.
The plain language of claim 138, dependent on claim 136, specifies that the
at least three groups of cavities are all pyramidal shaped and have different
base dimensions.
We find that Pieper would have disclosed to one of ordinary skill in
this art a production tool for manufacturing an abrasive article which can
have abrasive composites formed in a non-random array of cavities of a
“wide variety of shapes” wherein the cavities of the array have “at least one
specified shape.” Pieper, e.g., col. 2, ll. 1-30, col. 3, l. 61, to col. 4, l. 48,
col. 6, ll. 46-53, col. 7, l. 48, to col. 8, l. 49, to col. 9, l. 23. The production
tool of Pieper can be metal or plastic in the shape of, inter alia, “a sheet, a
coating roll, a sleeve mounted on a coating roll.” Pieper, col. 9, ll. 13-43.
We find that Rochlis would have disclosed to this person a production
mold or tool which can be used to form an abrasive article, wherein the tool
can be flat or cylindrical or drum shaped and the cavities can have different
dimensions including the base dimension. Rochlis, e.g., col. 1, ll. 51-56, col.
2, ll. 26-44, col. 3, ll. 25-35, col. 6, ll. 17-22, col. 7, ll. 67-71, col. 8, ll. 12-
21, col. 9, ll. 72-75, col. 10, ll. 41-51, col. 11, ll. 56-61, col. 12, l. 5, to
col. 13, l. 5, and col. 14, ll. 3-18. Rochlis would have illustrated in Figs. 21
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and 22 a production tool which is a flat sheet having adjacent pairs of
cavities that have different geometric shapes and dimensions. Rochlis would
have taught that such a production tool can also be “arcuate so as to produce
a cylindrical or drum-like mold.” The geometrically different cavities are in
non-random, uniform and consistent arrays as illustrated, wherein the
cavities 140 and 142 have different angles of intersection and can be
adjacent when the sections shown in Fig. 21 are aligned next to each other.
Rochlis, col. 13, ll. 6-61. As pointed out by the Examiner, “Rochlis does
teach pyramids (Fig 13A) and truncated pyramids (Fig. 12)” (Answer 10).
Contrary to Appellants’ contentions based on the combined teachings
of teachings of Pieper and Rochlis, we find substantial evidence in such
teachings supporting the Examiner’s position. Indeed, we fail to find any
basis in Pieper which establishes that one of ordinary skill in this art would
have reasonably interpreted the plural instances of the teaching that the
cavity arrayed in the tool can have “at least one . . . shape” to mean that the
cavities can have only one geometric shape instead of the literal meaning in
context that more than one shape can be employed in the cavity arrays.
We are not convinced otherwise by Appellants’ argument that the
teachings and objectives of consistent and uniform arrays of cavities taught
by Pieper exclude geometrically different cavities. This is because one of
ordinary skill in this art would have reasonably found in the teachings of
Pieper the direction that the use of more than one geometric cavity in the
array will achieve the stated objectives as long as pattern of the different
geometric cavities is non-random, consistent and uniform. In this respect, it
is well settled that a reference stands for all of the specific teachings thereof
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as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985). We found above that the teachings of Rochlis with respect
to Fig. 21 thereof would have disclosed to this person a non-random,
consistent and uniform array of different geometrically shaped cavities.
Thus, we determine that the Examiner has established that one of
ordinary skill in this art would have combined Pieper and Rochlis as applied
on the basis the disclosures therein to address the matter of production tools
for preparing abrasive articles wherein the cavities in the production tool are
of the same or different geometric shapes, thus arriving at the claimed
production tools encompassed by claims 30 and 138, including all of the
limitations thereof arranged as required therein. See generally, In re Kahn,
441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38 (Fed. Cir. 2006). Indeed,
it is apparent from Rochlis Fig. 21 that the cavities 140, 141, and 142 have
different angles of intersection and when adjacent would satisfy the different
angle of intersection and different dimension limitations in claims 20 and 25,
respectively. With respect to the “pyramidal” geometric shape limitation in
claim 138, Rochlis would have disclosed such shapes as the Examiner points
out, and indeed, Appellants have not argued otherwise.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Pieper, Rochlis, Larson, and Bloecher with
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Appellants’ countervailing evidence of and argument for nonobviousness
and conclude that the claimed invention encompassed by appealed claims
23, 24, 30 through 32, 89, 90, 92, 93, 134 through 136, 138 through 143 and,
145 through 148 would have been obvious as a matter of law under 35
U.S.C. § 103(a).
We summarily affirm the provisional ground of rejection under the
judicially created doctrine of obviousness-type-double patenting because
Appellants have stated their intention to “appropriately” respond “upon an
indication of otherwise allowable subject matter and in the event that this
rejection is maintained” (Br. 12).
The Examiner’s decision is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED

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