Ex Parte Huang

Board of Patent Appeals and Interferences

Aug 26, 2008

10876186 (B.P.A.I. Aug. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUNNY E.L. HUANG
____________

Appeal 2008-1796
Application 10/876,186
Technology Center 3600
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Decided: August 26, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOSPEH A. FISCHETTI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Sunny E.L. Huang (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-10. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to collapsible shades
designed to fit in an automobile window to prevent entrance of sun rays and
the generation of heat in the interior of the automobile (Spec. 2). Claim 1,
reproduced below, is representative of the subject matter on appeal (some
paragraphing added).
1. A sunscreen for use in conjunction with an
automobile window and
which is formed having front and back
layers, and
an intermediate layer therebetween,
at least the front layer having reflective
properties to reflect sunlight from the automobile
to reduce the generation of heat within the
automobile interior,
said intermediate layer formed from an
insulating material, and arranged laminarly with
the front and back layers of the formed sunscreen,
a series of fold lines formed within the
sunscreen upon both of said front and said back
layers to facilitate its folding into a reduced size,
said fold lines being formed by ultrasonic
welding.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rauenbusch US 5,915,445 Jun. 29, 1999
Humphries US 6,092,584 Jul. 25, 2000
The Appellant seeks our review of the Examiner’s rejection of claims
1-10 under 35 U.S.C. § 103(a) as being unpatentable over Humphries and
Rauenbusch.

ISSUES
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-10 under 35 U.S.C. § 103(a) as being
unpatentable over Humphries and Rauenbusch. This issue turns, in part, on
whether the claimed subject matter would have been obvious to one having
ordinary skill in the art in view of the sun shade construction of Humphries
and the welding technique disclosed in Rauenbusch.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Humphries discloses a foldable sunshield for automobile and
vehicle windows (Humphries, col. 1, ll. 4-5 and 51-52).
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2. In one embodiment of Humphries, the sunshield material 11
includes a foam core material layer 29 arranged laminarly with
front and back layers 28 and 29 (Humphries, col. 6, ll. 56-60;
Fig. 7).
3. Humphries discloses that the front layer film 28 may be a Mylar
film, a polyester, an acrylic, a polyvinylchloride, a polyethylene, or
other suitable exterior film coating and have a reflective coating on
the inside surface 28A or the outside surface 28B of the film 28
(Humphries, col. 6, l. 60 – col. 7, ll. 2).
4. The sunshield of Humphries also includes a series of creases which
allow the sunshield to be easily folded and put away and, later,
unfolded and thus used many times (Humphries, col. 1, ll. 48-50).
5. Humphries discloses that a folded sunshield can be made with
folds on each side of the folded sunshield resulting from a wide
crease 65 followed by two v-shaped creases 66 and 67 on alternate
sides of the sunshield material, followed by one wide crease 68 on
the same side as crease 67 (Humphries, col. 8, ll. 25-39; Figs. 13
and 13A).
6. Humphries discloses the creases being formed by heated rollers or
dies (Humphries, col. 6, ll. 42-50) and does not disclose the creases
being formed by ultrasonic welding.
7. Rauenbusch describes a layered panel having a foam core member
13 and outer face plastic layers 11 and 12 (Rauenbusch, col. 2,
ll. 30-53, Fig. 1).
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8. Rauenbusch discloses that depressions can be formed in the panels
such that both outer face layers are connected to one another
through welding to create jointless surfaces (Rauenbusch, col. 2,
ll. 54-65).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
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Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. 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.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate the application of this doctrine.” Id. at 1739. “In
United States v. Adams, … [t]he Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1739-40. “Sakraida
and Anderson’s-Black Rock are illustrative – a court must ask whether the
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improvement is more than the predictable use of prior art elements according
to their established function.” Id. at 1740.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
“A product-by-process claim is ‘one in which the product is defined at
least in part in terms of the method or process by which it is made.’”
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SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir.
2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 (1989)). “The purpose of product-by-process claims is to allow
inventors to claim ‘an otherwise patentable product that resists definition by
other than the process by which it is made.’” SmithKline, 439 F.3d at 1315
(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Such claims are
still directed to the ultimate product, not the underlying process. See id. at
1317 (“Regardless of how broadly or narrowly one construes a product-by-
process claim, it is clear that such claims are always to a product, not a
process.”). “Once a product is fully disclosed in the art, future claims to that
same product are precluded, even if that product is claimed as made by a
new process” SmithKline, 439 F.3d at 1315. Thus, “[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 777 F.3d at 697. In other words,
“[t]he patentability of a product does not depend on its method of
production.” SmithKline, 439 F.3d at 1317.

ANALYSIS
The Examiner found that Humphries discloses a sunscreen panel
construction as claimed having front and back layers and an intermediate
layer (Ans. 3). We agree with the Examiner’s findings (Facts 1-5). The
Examiner further found that while Humphries does not set forth the use of
ultrasonic welding for forming fold lines, Rauenbusch discloses a panel
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construction which uses welding to form fold lines between layers, and to
incorporate such a well known technique as ultrasonic welding, as
exemplified by Rauenbusch, into the construction of the sunscreen of
Humphries would have been obvious to one of ordinary skill (Ans. 3). The
Examiner further noted that claim 1 has been drafted as a product-by-process
claim in that the last limitation of the claim recites the method by which the
fold lines are formed (Ans. 5).
The Appellant argues that the Examiner erred in rejecting claim 1
because the creases in Humphries are either all on one side of the sunshield
or, in those situations where the creases are provided on both sides, the same
creases extend all the way to the opposite side (Br. 8). The Appellant
concludes that Humphries does not disclose fold lines formed within the
sunscreen on both of the front and back layers, as in claim 1 (Br. 8). We are
not persuaded of error in the rejection, because this argument is not
commensurate in scope with claim 1. Claim 1 requires only that fold lines
are formed within the sunscreen on both of the layers. It does not require
that the same fold line be formed in both layers. Humphries discloses
multiple fold lines or creases, some of which are formed within the screen
on the front layer and others of which are formed within the screen on the
back layer (Fact 5). Thus, the sunscreen of Humphries contains fold lines
formed on both of the front and back layers, as claimed.
The Appellant further notes that the claimed screen can fold with
either side facing out and the welds must withstand folding of the sections to
at least a 360º exterior angle (Br. 10). The Appellant argues that even if
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Humphries were modified by the teaching of Rauenbusch, the combination
suggests folding in one direction and in a 90º angle, but not a complete
folding in both directions, along the front or back layers (Br. 10). These
arguments are not commensurate in scope with claim 1. Claim 1 does not
require that the screen can fold with either side facing out1, nor does it
require that the welds must withstand folding of the sections to at least a
360º exterior angle. Rather, claim 1 merely requires that the series of fold
lines formed within the sunscreen upon both of the front and back layers
facilitate its folding into a reduced size. Such fold lines or creases are
disclosed in Humphries (Facts 4 & 5).
The Appellant further notes that the claimed screen is specifically
welded by ultrasound, with little or no heat buildup (Br. 10). This claim
limitation fails, however, to distinguish the claimed product from the
sunscreen of Humphries, because even though Humphries does not disclose
forming the creases by ultrasonic welding (Fact 6), it discloses a sunscreen
having the structural features as recited in claim 1 (Facts 1-5). In re Thorpe,
777 F.3d at 697 (“If the product in a product-by-process claim is the same as
or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”).
Even if one were to find that the ultrasonic welding limitation were a
patentable distinction, the Examiner still set forth a prima facie case of
obviousness based on the combination of Humphries and Rauenbusch. The

1 The Appellant makes a similar argument with regard to claim 9, which is
addressed infra.
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Appellant argues that Rauenbusch is directed to an overhead gate and not a
sunscreen, and when welding is performed on both faces of the gate, as
shown in Figure 7, the depressions are covered on both sides with cover
sheets (Br. 8). First, as correctly noted by the Examiner, “the claims of the
instant application do not preclude the presence of cover sheets” (Ans. 4).
Second, the fact that Rauenbusch is directed to an overhead gate does not
persuade us that the Examiner erred in determining that one having ordinary
skill in the art would have applied the welding technique for creating
depressions in a layered panel, as taught by Rauenbusch, to the sunscreen of
Humphries. Rauenbusch describes a layered panel having a foam core
member 13 and outer face plastic layers 11 and 12 (Fact 7). Rauenbusch
discloses that depressions can be formed in the panels such that both outer
face layers are connected to one another through welding to create jointless
surfaces (Fact 8). We agree with the Examiner that it would have been
obvious to one having ordinary skill in the art to use ultrasonic welding to
form the fold lines in Humphries, in view of the teaching of using welding to
join a similarly layered panel in Rauenbusch. See KSR, 127 S. Ct. at 1740
(“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.”).
As such, the Appellant has failed to persuade us of error in the
Examiner’s rejection of claim 1. The Appellant does not present any
separate arguments for patentability of dependent claims 2-8 and 10.
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Accordingly, these claims fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant further contends that the shade of Humphries does not
appear capable of being collapsed optionally with either the front layer
outwards or the back layer outwards, as recited in claim 9 (Br. 8). Claim 9
further limits claim 3 and recites, “wherein the fold lines provide for a
reduction in the size of the sunscreen for storage as said sunscreen is
collapsed optionally with either said front layer outwards or said back layer
outwards.” We must construe what is meant by “optionally” in the language
of claim 9. In particular, we must determine whether “optionally” modifies
“collapsed,” such that the claim is met by a sunscreen that provides the
option to collapse, or whether “optionally” is referring to the option to fold
the sunscreen in either of two ways, viz., with the front layer outwards or the
back layer outwards.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). When we consulted the Appellant’s Specification, we found no
description of the configuration of the sunscreen once the screen has been
collapsed. The Specification does not provide a figure showing the screen in
a collapsed configuration, nor does the Specification describe such a
configuration. The Specification describes only that the sun shade is
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provided with fold lines 32 which extend from one edge to the opposite edge
to facilitate folding (Spec. 5). The Specification does not, however, provide
any detail as to whether the front layer or the back layer is directed
outwardly when the screen is collapsed. We further note that the claims as
originally filed do not contain the language now presented in appealed
claim 9. As such, we construe claim 9 broadly to cover a sunscreen that is
collapsible, and we construe the limitation of claim 9 following the word
“optionally” as being purely optional claiming that does not further limit the
scope of claim 9. Humphries discloses a collapsible sun shade (Fact 4). As
such, we sustain the rejection of claim 9.

CONCLUSION
We conclude the Appellant has failed to show that the Examiner erred
in rejecting claims 1-10 under 35 U.S.C. § 103(a) as being unpatentable over
Humphries and Rauenbusch.

DECISION
The decision of the Examiner to reject claims 1-10 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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FISCHETTI, Administrative Patent Judge, concurring in result.
The record supports the Examiner having made out a prima facie case
that the prior art generally discloses that weld lines are formed in the
laminate of Rauenbusch (Final 2), which weld lines although not specifically
disclosed as being ultrasonic welds, appear to result in structure reasonably
the same as Appellant’s ultrasonically formed weld lines recited in the
claims as fold lines.
The Final Office Action dated January 9, 2006 maintains that
“…Rauenbusch disclose[es] [sic] a panel construction which utilizes
welding to form fold lines 17 between layers 11,12,13, wherein, to
incorporate such a well known technique such as ultrasonic welding as
exemplified by Rauenbusch into the construction of the sunscreen of
Humphries would have been obvious to one of ordinary skill in the art.”
(Final 2) Thus, Examiner took the position that Rauenbusch’s disclosure of
welding encompasses ultrasonic welding.
Appellant does not challenge the Examiner’s position that ultrasonic
welding is exemplified by Rauenbusch, and hence the issue is deemed
conceded.
However, had the issue not been conceded, it is important to note
what response would have constituted a proper challenge to a product by
product claim limitation. In such a case, Appellant must show how the
structure of his fold lines formed by ultrasonic welding, differs from that of
the prior art. Once the PTO has made out a prima facie case that the
applicant's claimed product and the product of the prior art reasonably
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appear to be the same, the burden shifts to the applicant to demonstrate how
the structure of the invention differs from the prior art to make that structure
patentable. See In re Fessman, 489 F.2d 742, 744-745 (CCPA 1974). The
burden of proof on the PTO in making out a case of prima facie obviousness
for product-by-process claims is less than when a product is claimed in the
more conventional fashion. Id.
In the case at hand, even if the point was not conceded, I cannot see
how Appellant could have pointed to significant differences in the laminate
structures created by the weld lines at issue. Specifically, Appellant’s
Specification describes that the fold lines are formed as a result of
ultrasonically welding a three-ply laminate comprised of a front layer 24, a
back layer 26 and an intermediate layer 28 (Specification 5:6,7). Appellant
further describes that “[t]he intermediate layer 28 is preferably made from a
pliable insulating material, such as an expanded foam, which can be a closed
cell foam.” (Specification 5:12,13) The ultrasonic welding process
described by Appellant causes the intermediate layer 28 to become
“compressed (and melted) by the ultrasonic welding process, to bring the
front and back layers closer together.” (Specification 5: 18,19) Thus, the
end result of Appellant’s ultrasonic welding process is a reduced thickness
section of laminate at the weld lines defined by a portion of the intermediate
layer being compressed to effect the reduction in overall thickness of the
laminate at these lines.
Similarly, Rauenbusch discloses a laminate made up of face layers 11
and 12 (analogous to Appellant’s front and back layers 24 and 26) and a core
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member 13 (analogous to Appellant’s intermediate layer 28) (FF 6). Also,
Rauenbusch discloses that the core layer may be made from a compressible
foamed or honeycombed material (Rauenbusch, col. 4, ll. 7, 8). Depressions
14 (analogous to Appellant’s fold lines 32) are formed in the laminate by a
welding process (FF 8) which, like the process disclosed by Appellant’s
ultrasonic method, also compresses or compacts the core member 13
(Rauenbusch, col. 4, ll.53-55) along the weld lines to define the depressions
14. Thus, the resulting structure of the laminate along the weld lines in the
laminates of both Rauenbusch and Appellant are reasonably similar, if not
identical, to one another.
Appellant’s present arguments which distinguish the prior art weld in
Rauenbusch from his own by alleging an increased ability of his weld line to
swing through a greater desired angle (Appeal Br. 10) would fail under this
test because such arguments are directed to the behavior of the weld line and
not to differences in the resultant structure of the laminate as reformed by
the welding process. Since Appellant does not point out any dissimilarities
between the structure of the welds forming his fold lines 32 and those
forming the depressions 14 in Rauenbusch, he would not have met his
burden of showing how the structure of these welds differs from one another
sufficient make Appellant’s fold line structure patentable.

ewh

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