Ex Parte Jungers

Board of Patent Appeals and Interferences

Sep 17, 2007

10252032 (B.P.A.I. Sep. 17, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JON W. JUNGERS
____________

Appeal 2007-2797
Application 10/252,032
Technology Center 3700
____________

Decided: September 17, 2007
____________

Before LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 39-55, 57-59, 61-67, 69, 70, and 74-81.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 39, 57, 80, and 81 are
representative of the claims on appeal, and read as follows:
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39. A ductwork component sized and shaped for installation in a
residential, commercial or industrial air handling system, the ductwork
component comprising a tubular, rigid polyethylene-based foam first layer
and a thin, non-metal second layer, the foam first layer characterized as
providing requisite strength for use of the component within an air handling
system without an additional metal-based layer.

57. A method of manufacturing a ductwork component for installation in
a residential, commercial, or industrial air handling system, the method
comprising:
providing a foam-related material;
providing a plastic material; and
molding the foam-related material and the plastic material via
rotational molding to form a rigid ductwork component comprising a
tubular, first foam layer and a plastic second layer;
wherein the step of molding results in the ductwork component being
sized and shaped for installation in an air handling system, the foam layer
having a requisite strength for use of the ductwork component in an air
handling system without requiring an additional metal layer.

80. A method of forming an air handling system at a residential,
commercial or industrial site, the method comprising:
providing a ductwork component by rotomolding a polyethylene-
based resin and a foaming agent to produce the ductwork component as
having a rigid, polyethylene-based foam first layer and a second thin, non-
metal second layer;
installing the ductwork component at the site;
fluidly connecting the ductwork component to a forced air supply;
fluidly connecting the ductwork component to an opening in a room
of the site; and
operating the forced air supply to direct air from the forced air supply
through the ductwork component and into the room.

81. The method of claim 80, wherein the ductwork component is a pipe,
and further wherein installing the ductwork component includes burying the
ductwork component underground.

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The Examiner relies upon the following references:
Murphy ’942 US 5,095,942 Mar. 17, 1992
Murphy ’403 US 5,219,403 Jun. 15, 1993
Strebel US 5,922,778 Jul. 13, 1999
Akedo US 6,076,561 Jun. 20, 2000
Davis US 6,579,170 B1 Jun. 17, 2003

We affirm.

BACKGROUND
The invention is drawn to ductwork components for air handling
systems, wherein the ductwork components are an integrally formed, foam-
based air handling system (Specification 1). Thus,
[o]ne aspect of the present invention relates to a
ductwork component for an air handling system comprising a
tubular, foam interior layer integrally formed with a thin, non-
metal outer layer. The combination interior and outer layers are
characterized as providing requisite strength for use of the
component within an air handling system without inclusion of a
metal-based layer. In one preferred embodiment, the interior
layer is a closed cell foam and the outer layer is plastic.
Regardless, the ductwork component can assume a wide variety
of forms, such as a duct, pipe, elbow, boot, tee, register, wall
stack, take-off, plenum, etc.

(Specification 3.) In a preferred embodiment, the ductwork components are
formed using a rotational molding operation (id.). According to the
Specification of Appellant,
In general terms, rotational molding is a process in which parts
are formed with heat and rotation. A mold that has been tooled
to a desired shape (e.g., a duct) is placed in a rotational molding
machine that provides loading, heating, and cooling areas. A
pre-measured plastic resin is loaded into the mold in the
machine loading area. Subsequently, the mold and resin are
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subjected to a source of heat to melt the plastic resin under
controlled conditions. In particular, the mold is rotated bi-
axially (vertically and horizontally) such that the melting resin
sticks to the hot mold and evenly coats every surface thereof.
The mold continues to rotate during a cooling cycle so that the
resulting part retains an even wall thickness. Rotational
molding has conventionally been employed to produce various
plastic-only parts such as furniture and toys. With the present
invention, however, it has . . . been found that an acceptable
combination foam interior layer and plastic outer layer
ductwork component can be provided via rotational molding.

(Id. at 7.)
A “foam” or “foam material,’ as defined by the Specification, is “a
lightweight cellular material resulting from the introduction of gas bubbles
into a reacting polymer.” (Id. at 6.)
Preferably, the plastic resin is polyethylene, but other plastic resins,
such as “other polyolefins, ethylene-vinyl acetate, polyvinyl chloride,
polyester, nylon, polycarbonate, polyurethane, etc., can be employed.” (Id.)

DISCUSSION
Claims 39-41, 43-49, 53, 54, and 74-791 stand rejected under
35 U.S.C. § 103(a) as being obvious over the combination of Murphy ’403
and Strebel. In addition, claims 39-41, 43-49, 53, 54, and
74-79 stand rejected under 35 U.S.C. § 103(a) as being obvious over the
combination of Murphy ’942 and Strebel. As the disclosures of Murphy
’403 and Murphy ’942 are substantially identical, the below discussion is
applicable to both rejections, and, for convenience, when we refer Murphy,

1 It is unclear to us why claim 57, and the claims dependent thereon, were not
included in this rejection, as Strebel is drawn to rotational molding.
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we are referring to Murphy ’942. As Appellant does not argue the claims
separately, we focus our analysis on claim 39. 37 C.F.R. § 41.37(c)(1)(vii)
(2006).
Murphy is cited by the Examiner for teaching the structure of the
ductwork component of claim 39, except for forming the foam core using “a
specific type of rigid foam, specifically polyethylene, HDPE or LLDPE.”
(Answer 4.)
Strebel is cited for teaching the use of rotational molding to form a
hollow formed product having foam with a non-foam coating (id.). Strebel
is also cited for teaching that rigid PE, LLDPE or HDPE may be used in the
process (id.).
The Examiner concludes that “[i]t would have been obvious to modify
the polyurethane foam core of Murphy by substituting therefor a rigid
polyethylene foam as such is a known equivalent type of foam used to form
insulated wall structures as suggested by Strebel where such teaches the
equivalent use of a foamed material and that PE can be used in place of PU
when making foamed insulative layers, where such would allow for alternate
materials to be used in different environments, where rigid PE foam is
known to have good heat insulative properties, and would thereby save
money by reducing heat loss.” (Id.)
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). In order to
determine whether a prima facie case of obviousness has been established,
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we considered the factors set forth in Graham v. John Deere Co., 383 U.S.
1, 17 (1996); (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; (3) the level of ordinary skill in
the relevant art; and (4) objective evidence of nonobviousness, if present.
Murphy teaches “a pre-formed plastic ductwork system,” (col. 1, ll.
13), comprising a plastic outer shell with an inner foam layer, and
optionally, another plastic layer sandwiching the foam layer (see, e.g., col. 5,
ll. 37-41). According to Murphy, “[a]ll plastic layers and all expanded foam
layers may be formulated to meet any required conditions of insulation,
service, fire regulations or special requirements of any sort.” (Col. 10, ll.
16-20).
Strebel teaches that rotomolding, a process “for producing rotationally
molded articles having foamed materials and non-foamed exterior skins”
(col. 1, ll. 14-16), “is widely used to produce hollow articles such as toys,
sporting equipment, containers, water tanks, etc.” (col. 1, ll. 20-22). Strebel
also teaches that rigid PE, LLDPE or HDPE may be used in the process (see,
e.g., col. 2, ll. 38-65). Strebel teaches that a rotomolded tank formed using
the process disclosed in the patent “had good rigidity and mechanical
strength,” with the exterior skin being “smooth and substantially free of
surface pitting,” and that there was “a sharp boundary between the foam and
skin layers and uniform thickness of the layers throughout the entire part.”
(Col. 10, ll. 15-23.)
Thus, we conclude that it would have been obvious to the ordinary
artisan at the time of invention to use the rotomolding process utilizing
polyethylene as taught by Strebel to form the plastic ductwork of Murphy
having a layer of foam on the inside, because Strebel teaches that the process
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may be used for a wide variety of hollow articles and that the formed
products have good mechanical strength and uniform thickness of the layers.
The rejection of claims 39-41, 43-49, 53, 54, and 74-79 over the
combination of Murphy and Strebel is thus affirmed.
Appellant argues that the Examiner’s motivation for the combination
flowed from the assertion that polyethylene foam is a known equivalent of
polyurethane foam, but from a good faith review of Strebel it does not
appear that polyurethane is even mentioned (Appeal Br.2 19). Appellant
asserts that the reference to “hollow articles” including toys, sporting goods,
containers, water tanks, etc., in Strebel, “does not necessarily teach or
suggest ductwork components or provide any evidence of equivalency
between the methods, structures, and materials described in Strebel with
those of Murphy.” (Id.)
Appellant also takes issue with the Examiner’s motivational statement
that it would have been obvious to the ordinary artisan to substitute
polyethylene for polyurethane “where such would allow for alternate
materials to be used in different environments, where rigid PE foam is
known to have good heat insulative properties, and would thereby save
money by reducing heat loss.” (Br. 20.) Appellant asserts that the
motivation to use alternative materials is insufficient, and that “[n]either
Murphy nor Strebel identify any source of a need to replace the materials
and methods taught in Murphy with those in Strebel in order to save money
by reducing heat loss.” (Id.)

2 All references to the Appeal Brief (Appeal Br.) are to the Appeal Brief
dated September 5, 2006.
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First, we note that the use of a rigid, teaching, suggestion, motivation
test to determine obviousness has been rejected by the United States
Supreme Court. See KSR International Co., v. Teleflex Inc., 127 S.Ct. 1727,
1739, 82 USPQ2d 1385, 1395 (2007). As noted above, Murphy teaches a
plastic, foamed filled ductwork component, and Strebel teaches a method of
forming a wide variety of hollow plastic articles with an inside foam layer.
Thus, one of ordinary skill would have been motivated to use the method of
Strebel to form the ductwork component of Murphy. In addition, it would
have been obvious to use polyethylene in a rotomolding process as taught by
Strebel, and the ordinary artisan would recognize that its use would result in
a ductwork component having a hard plastic shell with a foam interior, as
required by the ductwork of Murphy. As set forth in KSR,
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.

127 S. Ct. at 1740, 82 USPQ2d at 1396.
Appellant asserts that since Murphy teaches using separate,
prefabricated components that are subsequently assembled by gluing,
Murphy “teach[es] away from rotational molding as described in Strebel.”
(Br. 21.) In addition, Murphy teaches the use of plastic ribs through the
entire thickness of the foam layer, and it would not be possible to
incorporate such stiffeners through rotational molding (id.).
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“Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of applicant’s invention. A statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.” Syntex (USA) LLC v. Apotex, Inc.,
407 F.3d 1371, 1380, 74 USPQ2d 1823, 1830 (Fed. Cir. 2005) (citations
deleted). In this case, Murphy teaches the formation of a hollow plastic
ductwork component having an interior foam layer. Although not
mentioning ductwork components specifically, Strebel is specifically drawn
to methods of producing such articles. Thus, the artisan of ordinary skill
would recognize that the ductwork of Murphy could be produced using the
method of Strebel, and Murphy cannot be read as teaching away from the
combination.
In addition, as to the plastic ribs, Murphy teaches that, in larger sizes,
ribs may be incorporated to provide support (col. 8, ll. 13-19). Thus,
Murphy only suggests that the ribs may be used for extra support, but does
not require their use. Moreover, Strebel teaches in an Example relating to
the formation of a water tank that it has good rigidity and mechanical
strength (col. 10, Ex. 1). The ordinary artisan would therefore have
recognized that the process of Strebel would also provide ductwork having
good rigidity and mechanical strength.
Appellant argues that that the first Jungers Declaration and exhibits A-
C of the Appeal Brief illustrate commercial success (Br. 22).
The Jungers Declaration dated October 4, 2004 (first Jungers
Declaration), states at paragraph 7 that “I believe that prior to my invention,
a polyethylene-based foam ductwork component has never been
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accomplished or marketed in the HVAC industry.” Such a statement speaks
to novelty and not to obviousness.
The Declaration also states at paragraph 8 that neither Murphy nor
Davis discloses the use of a polyethylene based foam, but instead describe
polyurethane, Styrofoam, or Styrofoam. The Declarant states that “[t]hese
materials do not provide sufficient rigidity and/or insulation properties for
many common installation environments.”
That statement, however, is contrary to the teachings of the
Specification, which states that the plastic resin preferably is polyethylene,
but other plastic resins, such as “other polyolefins, ethylene-vinyl acetate,
polyvinyl chloride, polyester, nylon, polycarbonate, polyurethane, etc., can
be employed.” (Specification 7.) Thus, the Specification recognizes that
other materials would have the required rigidity and/or insulation properties
for many common installation environments. If Appellant is arguing that the
polyethylene foam provides for unexpected results, there is no evidence of
such on the record.
As to commercial success, the Declaration at paragraphs 10 and 11
cites Exhibits A-C, which are purchase orders from various sources,
concluding that “[b]ased on the above, as well as multiple other contacts by
me with other distributors and general contractors, HVAC components
comprised of a polyethylene-based foam material, as well as HVAC
ductwork components formed by rotomolding, have met with commercial
success.”
In order to establish commercial success, there must be a nexus
between the claimed invention and the commercial success. Ormco Corp. v.
Align Technology, Inc., 463 F.3d 1299, 1311-12, 79 USPQ2d 1931, 1933
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(Fed. Cir. 2006). In this case, the only evidence presented is purchase
orders, with no explanation of the parts that are being sold. Thus, Appellant
has not established the requisite nexus between the claimed invention and
the alleged commercial success. In addition, commercial success is usually
shown by significant sales in a relevant market. The purchase orders of
Exhibits A-C do not demonstrate “significant sales.” Finally, the Examiner
has established a strong prima facie case of obviousness which Appellant’s
purported showing of commercial success is not sufficient to rebut. See
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162,
82 USPQ2d 1687, 1692 (Fed. Cir. 2007).
Appellant relies on the second Jungers Declaration, paragraph 2,
asserting that “one of ordinary skill in the art does not view claim 39 as
being obvious over Strebel, nor would one of ordinary skill understand the
teaching of Strebel, relating to toys, sporting equipment, etc., as being
related to air handling system ductwork components.” (Br. 22.)
In the Declaration dated March 28, 2005 (second Jungers
Declaration), the Declarant states that he “would not view Strebel’s
described method of manufacturing toys, sporting equipment, etc.,
purportedly produced using the composition of Strebel, as being related to
air handling system ductwork, nor would [he] view Strebel or Davis as
suggesting modifying the pour-in-place technique to be rotomolding.”
However, the question “is not whether the combination was obvious to the
patentee but whether the combination would have been obvious to a person
of ordinary skill in the art,” presented with the problem of forming the
ductwork taught by Davis comprising a hard plastic outer shell and an inside
foam layer.
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Appellant also relies on the Steinmetz Declaration, specifically
paragraphs 5, 6, and 7, as providing “an unbiased statement as to the
relevance of the secondary considerations of commercial success and long
felt, but unmet need to the patentability of claim 39.” (Br. 22.)
The Declarant states that he has never seen a ductwork component
structure utilizing a polyethylene foam based material (paragraph 7), but that
is drawn more to the novelty of the invention, and not whether or not it
would have been obvious over the prior art. The Declarant also states in
paragraph 5 that one of the problems with existing ductwork is fiberglass on
the interior, and that the ductwork of the claimed invention solves that
problem. However, the ductwork of Murphy and Davis also solves that
problem. Finally, the Declarant merely states in paragraph 7 that it his belief
“that Mr. Junger’s inventive ductwork design will be highly commercially
successful,” but as discussed above, that one statement is not sufficient to
establish commercial success. In fact, it does not provide evidence of
commercial success but merely forecasts what the Declarant believes it will
be some time in the future.
Claims 42 and 52 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Murphy ’403 and Strebel, as further
combined with Akedo. As Appellant did not argue the claims separately, we
focus our analysis on claim 52. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The Examiner relied on the combination of Murphy and Strebel, as set
forth above, noting that Murphy is silent on whether an open or closed foam
is used (Answer 6).
Akedo is cited for teaching “the recited duct comprising a foam layer
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. . . which can be formed of either open or closed cell foam, and can have
layers . . . sandwiching the foam layer.” (Id.)
The Examiner concludes that “[i]t would have been obvious to one
skilled in the art to modify the foam in Murphy as modified to be a closed
cell foam as such is a known equivalent foam used in insulated ducts as
suggested by Akedo . . . as such would be less susceptible to water soaking
in to the insulation and lessening it's ability to insulate against heat loss.”
(Id.)
Appellant argues that a non-rigid polyurethane foam is preferred in
Akedo, and thus “Akedo specifically teaches away from the limitations of
independent claim 39 relating, in part, to a rigid polyethylene-based foamed
first layer.” (Br. 33.)
Claim 52 is drawn to the ductwork component of claim 39, “wherein
the foam layer defines an innermost surface of the ductwork component,”
which is taught by the combination of Murphy and Strebel. The rejection is
thus affirmed for the reasons set forth above. In addition, the fact that
Akedo teaches that a non-rigid polyurethane foam is particularly preferred,
is not a teaching away from rigid materials.
Claims 39-47, 49, 50, 51, 55, 57-59, 61-67, 69, 70, 74, 75, 80, and 81
stand rejected under 35 U.S.C. § 103(a) as being obvious over the
combination of Davis and Strebel. Appellant argues the claims in four
groups: Group I comprising claims 39-47, 51, 52, 55, 74, and 75 (Br. 24), of
which we choose claim 39 to be representative; Group II comprising claims
57-59, 61-67, 69, and 70 (id. at 30), of which we choose claim 57 to be
representative; Group III comprising claim 80 (id.); and Group IV
comprising claim 81 (id. at 31).
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Davis is cited by the Examiner for teaching the structure of the
ductwork component of claim 39, except for forming the foam core using
“rigid PE, LLDPE, or HDPE in place of PU, and to form the duct using a
rotational molding method.” (Answer 5-6.)
Strebel is cited for teaching the use of rotational molding to form a
hollow formed product having foam with a non-foam coating (id.). Strebel
is also cited for teaching that rigid PE, LLDPE or HDPE may be used in the
process (id. at 5.).
The Examiner concludes:
It would have been obvious to one skilled in the art to modify
the foam used for the core by substituting a PE, HDPE, or
LLDPE rigid foam for the PU foam used, and to modify the
method in which Davis’ duct is formed to be made from a
rotational mold method and to use LLDPE, PE, or HDPE to
form the ductwork as such is a known material which can be
used to make rotational mold foamed articles with non foamed
coverings as suggested by Strebel as such would result in an
improved article which would be more uniform throughout it's
thickness with a smoother surface with less flaws as suggested
by Strebel. It is considered merely intended use to bury the
ductwork in Davis where such would not change the method of
forming the duct resulting in a material difference in the final
product obtained, specifically changing the make up of the duct,
where the duct in Davis is capable of being buried. It is
considered inherent that the article made by the method of
rotational molding would have a smooth transition between
foamed and unfoamed same as applicants as such would
inherently be how such would form without any suggestion of a
different step to create this other than rotational molding.

(Id.)
Davis teaches rigid foam ductwork system comprising an outer shell
and an inner shell that may be a thermoset polymeric material (col. 3, ll. 48-
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51), with a core between the two shells comprising a polymeric cellular
material (col. 4, ll. 3-7). The teachings of Strebel are discussed above.
We therefore conclude that it would have been obvious to the ordinary
artisan at the time of invention to use the rotomolding process utilizing
polyethylene as taught by Strebel to form the plastic ductwork of Davis
having a layer of foam on the inside of the plastic shells, because Strebel
teaches that the process may be used for a wide variety of hollow articles
and that the formed products have good mechanical strength and uniform
thickness of the layers. The rejection of claims 39-47, 49, 50, 51, 55, 57-59,
61-67, 69, 70, 74, 75, 80, and 81 over the combination of Davis and Strebel
is thus affirmed.
Appellant argues “that the Examiner’s proffered motivation for
combining the cited references is improper.” (Br. 25.) According to
Appellant, “[t]here is no guidance as to whether Strebel’s methodology and
materials would be any improvement over Davis’s pour-in-place and
extrusion methods using polyurethane. Thus, one having ordinary skill in
the art would not necessarily view Strebel as teaching greater uniformity in
comparison to the methods and materials explicitly disclosed in Davis, but
only with respect to the rotational molding examples provided in Strebel.”
(Id.) Davis, Appellant asserts, teaches a quick and simplistic method of
forming the disclosed ductwork-either pour-in-place molding, or extrusion,
with the pour-in-place allowing the fitting to be removed from the mold in
less than 10 minutes and assembled into the duct system within the hour (id.
at 26). Moreover, Appellant asserts, the Examiner’s rationale that the
combination would provide an article with a smoother surface is improper,
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as Davis is entirely unconcerned with the characteristics of the outer shell
(id. at 25-26).
As noted above with respect to the combination of Murphy and
Strebel, the United States Supreme Court has rejected a rigid application of
the teaching, suggestion, motivation test. Here, we find that Strebel teaches
a method of forming a wide variety of hollow, plastic articles with a layer of
foam on the inside, and that the ordinary artisan would have known that the
method could be used in forming the ductwork components of Davis.
Appellant argues further that Strebel is non-analogous art, as it is not
from the same field of endeavor as Strebel relates to rotomolding to produce
hollow articles, whereas the present invention is drawn to integrally formed,
foam-based ductwork components (Br. 26). Citing In re Clay, 966 F.2d 656,
658, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992), Appellant argues that
“even if the present invention and Strebel were considered to be in the same
overly broad field, e.g., foam-walled members, In re Clay indicates that
there must be a closer relationship between the fields of endeavor under the
analogous art standard.” (Br. 27.) With regard to the particular problem,
Appellant “seeks to provide integrally formed, foam-based ductwork
components capable of providing requisite strength for use of the
components with an air handling system without an additional metal-based
layer,” whereas “Strebel desires to address the problem of rotomolding
hollow components, such as water tanks, including flexible, semi-rigid, or
rigid designs,” but is unconcerned with ductwork components (Br. 27).
The criteria for determining whether prior art is analogous are: (1)
whether the art is from the same field of endeavor regardless of the problem
to be addressed; and (2) if the reference is not within the field of endeavor,
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whether it is still reasonably pertinent to the particular problem with which
the inventor is involved. Clay, 966 F.2d at 658-59, 23 USPQ2d at 1060.
We find that Strebel is in the same field of endeavor and also is reasonably
pertinent to the particular problem with which the inventor is involved,
which is the formation of ductwork components having a hard plastic shell
and an interior foam layer. See KSR, 127 S.Ct. at 1742, 82 USPQ2d 1397
(“Under the correct analysis, any need or problem known in field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”).
Appellant reiterates the arguments with respect to the two Jungers
declarations, as well as the Steinmetz declaration (Br. 28-29). These
arguments are not found to be convincing for the reasons set forth supra
with respect to the rejection over the combination of Murphy and Strebel.
As to claims 57-59, 61-67, 69, 70 and 80, Appellant reiterates his
arguments that there is no motivation to combine the references, that Strebel
is non-analogous art, and that the secondary considerations of non-
obviousness rebut any prima facie case of obviousness. These arguments
are not found to be persuasive for the reasons set forth above.
As to claim 81, Appellant argues that “[w]hile burying the ductwork
of Davis may not change its characteristics, the physical characteristics of
the air handling system are clearly modified according to the limitations of
claim 81,” and that “the limitations of claim 81 relating to burying the
ductwork component are further limiting to claim 80, should be given due
weight, and are absent from the cited references.” (Br. 31 (emphasis in
original).)
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We do not find Appellant’s argument to be convincing. Burying
ductwork is routine in the art of forming an air handling system, and the
combination of Davis and Strebel provides a reasonable expectation that the
ductwork could be buried as Davis teaches a rigid foam duct system and
Strebel teaches that the formed products have good mechanical strength and
uniform thickness of the layers. To establish obviousness, all that is
required is a reasonable expectation of success, not absolute predictability of
success. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988).
CONCLUSION
In summary, we conclude that the Examiner has set forth a prima
facie case of obviousness. Thus, we affirm the rejection of claims 39-41,
43-49, 53, 54, and 74-79 under 35 U.S.C. § 103(a) as being obvious over the
combination of Murphy ’403 as combined with Strebel; the rejection of
claims 39-41, 43-49, 53, 54, and 74-79 under 35 U.S.C. § 103(a) as being
obvious over the combination of Murphy ’942 and Strebel; the rejection of
claims 42 and 52 under 35 U.S.C. § 103(a) as being obvious over the
combination of Murphy ’403 and Strebel, as further combined with Akedo;
and the rejection of claims 39-47, 49, 50, 51, 55, 57-59, 61-67, 69, 70, 74,
75, 80, and 81 under 35 U.S.C. § 103(a) as being obvious over the
combination of Davis and Strebel.

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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).

AFFIRMED

dm

DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS MN 55402e
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