Ex Parte Jyawook et al

Board of Patent Appeals and Interferences

Dec 21, 2004

10077427 (B.P.A.I. Dec. 21, 2004)

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is not binding precedent of the Board.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
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Ex parte SAM M. JYAWOOK and SHAWN J. JYAWOOK
____________
Appeal No. 2005-0127
Application No. 10/077,427
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ON BRIEF
____________
Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1-7 and 15-20 which are all the claims pending in the
application. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.
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Application No. 10/077,427
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INTRODUCTION
The claims are rejected under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner relies upon the following prior art references:
Hendrix 6,458,301 Oct. 1, 2002
(filed Aug. 27, 2001)
Chen et al. (Chen) 6,602,064 Aug. 5, 2003
(filed Aug. 9, 2000)
The specific rejection is as follows: Claims 1-7 and 15-20 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hendrix in view of Chen.
Appellants state that “[c]laims 1-7 and 15-20 stand or fall together for purposes of this
appeal.” (Brief, p. 4). We, therefore, select one claim to represent the issues on appeal. We
select claim 1 which reads as follows:
1. A weather stripping for use in sealing an interface between selected portions of a
vehicle, comprising:
a body portion that is adapted to be supported on a selected one of the vehicle portions;
and
a sealing portion extending at least partially away from the body portion, the sealing
portion and the body portion comprising the same thermoplastic material having a microcellular
structure.
We affirm and, in so doing, we adopt the reasoning presented in the Answer and add the
following for emphasis.
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OPINION
Hendrix describes a weather stripping having a body portion (gripping portion 20) and a
sealing portion (sealing portion 30) as required by claim 1. Hendrix suggests a foamed
construction (Hendrix, col. 4, ll. 22-24 and ll. 41-43). However, Hendrix does not further
describe the cell size or density of the foam. Chen, on the other hand, indicates that
microcellular foams are a class of foams that have small cell sizes and high cell densities (Chen,
col. 1, ll. 22-24) and that “[t]he unique cell structure of microcellular foams lead to several
advantages over conventional foams including improved properties and appearance.” (Chen, col.
2, ll. 53-56). Chen describes a method for forming microcellular foams.
Appellants argue that the combination of the teachings of Hendrix and Chen does not
provide a workable result (Brief, p. 7). According to Appellants, Hendrix and Chen require
opposite approaches and the Hendrix approach is not compatible with forming a microcellular
product (Brief, p. 8). This is because, according to Appellants, Hendrix requires heating the
primary extrudate (which forms the gripping portion 20 of the weather stripping) after it exits the
die in order to secure the secondary extrudate (which forms the sealing portion 30) to the
primary extrudate (Brief, p. 7; see also Brief, pp. 4-5). According to Appellants, such heating is
not compatible with the formation of a microcellular structure because cooling upon exiting the
die is required to control the formation of cells in a microcellular material (Brief, pp. 7-8; see
also Brief, pp. 5-7).
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We are not persuaded by Appellants’ argument because Hendrix suggests forming the
product using foamed material. As made clear by Chen microcellular foams are a type of foam.
If the weather stripping of Hendrix can be formed from foam, it follows that it can be formed
from microcellular foam.
Moreover, Appellants’ argument is based on an erroneous reading of Hendrix. Hendrix
does not describe heating the primary extrudate after it exits from the die. In the process of
Hendrix, the primary extrudate and the first appendage extrudate “are joined in the die assembly
to form a unitary weatherseal 10 (Fig. 6).” (Hendrix, col. 4, ll. 44-49; emphasis added). “Heat
bonding” as described by Hendrix at column 9, lines 1-2 is not a process of heating extruded
materials after they exit the die, but is a process of urging two molten extrudates against each
other within the extrusion die to bond the molten materials together within the die (Hendrix, col.
8, ll. 63-67).
Upon a correct reading of the references, it is clear that one of ordinary skill in the art
would have understood how to obtain a workable result when combining the teachings of the
references. Hendrix describes a particular extrusion die arrangement for obtaining a weather
stripping having a body portion and sealing portion. Hendrix suggests forming a foamed
weather stripping (Hendrix, col. 4, ll. 22-24 and ll. 41-43). Chen describes a particular extruder
screw and blowing agent introduction system that can be configured to produce microcellular
material. As Chen is directed to the upstream extruder screw system and Hendrix the
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downstream die arrangement, one of ordinary skill in the art would have recognized how to
combine the teachings to produce a microcellular weather stripping.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-7 and 15-20.
Appellants rely upon evidence of secondary considerations, namely commercial success,
in an attempt to show non-obviousness. “Evidence of secondary considerations are but a part of
the ‘totality of the evidence’ that is used to reach the ultimate conclusion of obviousness.”
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181, 1187 (Fed. Cir.
1997). The usefulness of this type of evidence lies in the fact that it “serves as a guard against
slipping into hindsight” during the determination of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), in that it may demonstrate that the invention, while it appears to be
obvious upon looking back in time with hindsight, really was not. Stratoflex Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed. Cir. 1983). To properly consider
secondary considerations, we must consider all of the evidence under the Graham factors
together. Id.
Appellants’ evidence of commercial success is embodied in the Jyawook Declaration.
The Jyawook Declaration provides evidence that the weather stripping seals were the subject of a
purchase order from DaimlerChrysler (Exhibit A). But the bare numbers provided in the
purchase order provide insufficient information with regard to success in the marketplace. For
instance, it is unknown what proportion of the market the sales represent. Moreover, there is no
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evidence that the sales were due to the unique characteristics of the product as claimed. Both
significant success and a nexus between the unique characteristics of the weather stripping and
the sales are required for the evidence to be sufficiently probative as an indicia of non-
obviousness. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1689-90 (Fed. Cir. 1996).
“When a patentee offers objective evidence of nonobviousness, there must be a sufficient
relationship between that evidence and the patented invention.” In re Paulsen, 30 F.3d 1475,
1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994). “The term ‘nexus’ is used, in this context, to
designate a legally and factually sufficient connection between the proven success and the
patented invention, such that the objective evidence should be considered in the determination of
nonobviousness. The burden of proof as to this connection or nexus resides with the patentee.”
Id.(quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d
1222, 1226 (Fed.Cir.), cert. denied, 488 U.S. 956, 109 S.Ct. 395, 102 L.Ed.2d 383 (1988)).
Having considered all the evidence of record, we determine that the evidence of
obviousness, on balance, outweighs the evidence of non-obviousness. Hence, we conclude that
the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-7 and 15-20 under 35
U.S.C. § 103(a) 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).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CT/tdl
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Application No. 10/077,427
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