Ex Parte Kalinoski et alDownload PDFBoard of Patent Appeals and InterferencesNov 7, 200709970159 (B.P.A.I. Nov. 7, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board.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 JOHN P. KALINOSKI and MICHAEL H. BUNYAN ____________ Appeal 2007-0684 Application 09/970,1591 Technology Center 1700 ____________ Decided: 7 November 2007 ____________ Before FRED E. McKELVEY, Senior Administrative Patent Judge, RICHARD E. SCHAFER, and JAMES T. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL The Appellants want to be in an interference against Patent 6,329,014, issued December 11, 2001 to Helmut Kahl and Bernd Tiburtius from application 09/393,907, filed March 10, 1999. (Br. at 5). 1 Application filed 02 October 2001. The real party in interest is identified as Parker-Hannafin Corporation. Br. 3. Appeal 2007-0684 Application 09/970,159 -2- To that end, the Appellants copied claims 43 and 48-51 from the ‘014 Patent. (Br. at 5). The Examiner rejects those claims and claims 23-26 and declined to forward the application to the Board with a recommendation for an interference. An interference is not requested with claim 52. Interferences are not declared when potentially interfering claims are not allowable; this appeal followed. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the final rejection entered May 18, 2004 in this application. The Appellants also appeal a new ground of rejection entered in the Answer of September 27, 2006 of claims 23-26, 43, and 48-51.2 Claim 52, the only other pending claim, is not before us on appeal as it has been determined to be allowable by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b) (2002). The broadest independent claim on appeal reads as follows: 23. A process for forming a form-in-place conductive EMI [electromagnetic interference] shielding gasket on a substrate comprising the steps of: a) providing a substrate to be gasketed; 2 We have considered and address only the Final Rejection of May 18, 2004 (“Fin. Rej.”); the Brief of December 19, 2005 (“Br.”), the Answer of September 27, 2006, (“Answer”) and the Reply of October 6, 2006 (“Reply”). We have not considered the Brief of January 18, 2005, the Answer of March 23, 2005, the Reply of April 28, 2005, Supplemental Answer of April 27, 2005, or the Supplemental Reply of June 15, 2005, which are superseded by the more recent filings. Appeal 2007-0684 Application 09/970,159 -3- b) providing a supply of conductive gasket material formed from a conductive filled silicone resin; c) applying the material to the substrate’s surface in a predetermined pattern; and d) curing the material in place upon the substrate. (material in brackets added) The rejections under review in this appeal are as follows. Claims 43 and 48-51 stand rejected for failure to comply with the written description requirement of 35 U.S.C. §112, first paragraph. Claims 23-26, 43, and 48-51 stand rejected as being unpatentable under 35 U.S.C. §103(a) as being obvious over the combination of Morgan and Nakagawa. Claims 23-26 stand rejected as being unpatentable under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. §103(a) as obvious over, Bogan. Claims 43 and 48-51 stand rejected under 35 U.S.C. §102(f) as not being invented by the Applicants. Appeal 2007-0684 Application 09/970,159 -4- DISCUSSION FINDINGS OF FACT The following findings of fact and any set out in the Discussion section are supported by a preponderance of the evidence of record. Any conclusions of law should be treated as such. A. Background The application disclosure 1. According to the Applicants’ Specification (“Spec.”), the application is concerned with electromagnetic interference (EMI) shielding gaskets to be used on electronic equipment. (Spec. at 3:1–2.) 2. One way the gaskets are rendered electrically conductive is by the use of a conductive filler incorporated into an elastomer base (Spec. at 9:1- 10). Application Claims 3. Claims 23, 43, and 49 are representative of the issues on appeal. 4. Claim 23 reads: A process for forming a form-in-place conductive EMI shielding gasket on a substrate comprising the steps of: a) providing a substrate to be gasketed; b) providing a supply of conductive gasketing material formed from a conductive filled silicone resin; c) applying the material to the substrate’s surface in a predetermined pattern; and Appeal 2007-0684 Application 09/970,159 -5- d) curing the material in place upon the substrate. (Br. at 12 (Claims Appendix); paragraphing added.) 5. Claim 43 (copied from claim 1 of Patent 6,329,014) reads: A method for the manufacture of a housing having two adjacent housing parts for accommodating electronic functional elements, comprising: forming a screening seal to fill a gap between said two adjacent housing parts, said seal being made from an electrically conductive elastic plastic material, said electrically conductive elastic plastic material including a silicon polymer that dries rapidly in air and at ambient temperature, said forming including ejecting said polymer in a pasty initial state with a pressure nozzle over one of said housing portions that is to be sealed, so that said polymer is deposited directly on said one of said housing portions, to form said screening seal with a predetermined profile without a molding tool; and allowing said screening seal to cure on said one of said housing portions wherein said screening seal adheres to a surface of said one of said portions in such a manner that the screening seal maintains its electrical and sealing characteristics even after repeated opening of the housing. (Br. at 12-13 (Claims Appendix); paragraphing added.) 6. Claim 49 (copied from claim 14 of Patent 6,329,014) reads: A method for the manufacture of a housing having two adjacent housing parts for accommodating electronic functional elements, comprising: forming a screening seal to fill a gap between said two adjacent housing parts, said seal being made from an electrically conductive elastic plastic material, said electrically conductive elastic plastic material including a silicon polymer Appeal 2007-0684 Application 09/970,159 -6- which hardens at room temperature that is applied at ambient temperature, said forming including ejecting said polymer in an pasty initial state with a pressure nozzle and passing said pressure nozzle over one of said housing portions that is to be sealed, so that said polymer is deposited directly on said one said housing portions, to form said screening seal with a predetermined profile without a molding tool; and allowing said screening seal to cure on said one of said housing portions wherein said screening seal adheres to a surface of said one of said portions in such a manner that the screening seal maintains its electrical and sealing characteristics even after repeated opening of the housing. (Br. at 13 (Claims Appendix); paragraphing added.) The Prior Art 7. The Examiner has relied on the following references: Bogan US 4,662,967 May 05, 1987 Nakagawa US 4,980,516 Dec. 25, 1990 Morgan US 5,284,888 Feb. 08, 1994 Kahl US 6,329,014 B1 Dec. 11, 2001 Bogan 8. Bogan describes a method of making a gasket for an electronics enclosure to help keep out electrical interference (1: 18-20). 9. Bogan describes including metallic micro-particles in an elastomer during fabrication of the gasket. (1:28-30). Appeal 2007-0684 Application 09/970,159 -7- Nakagawa 10. Nakagawa describes an electromagnetic-shielding gasket placed around a joint between conductive housings of electronic components or between the conductive housing and a cover member (1:5-8). 11. Nakagawa describes the use of a gasket including an elastomer containing conductive metallic particles or carbon black (1:26-28). Morgan 12. Morgan is concerned with the provision of an electromagnetic shielding gasket which reduces corrosion (1:9-15). 13. Morgan describes the problem of voids and airspace in the interface between substrates and gaskets when substrates are joined by preformed gaskets (1:50-57). 14. Morgan describes applying coatings directly to the surfaces to be joined to create a “formed in place” gasket to solve the problem of voids and airspace. (1:54-57). 15. Morgan describes one such form in place gasket including a nickel filler in elastomer applied to substrates. (1:58-62). 16. Morgan describes providing a composition suitable for use as a sealant, a form in place gasket caulk, or coating which will maintain good EMI/RFI shielding and cause minimal corrosion. (2:5-11). Kahl 17. Kahl describes casings for electronic circuits which are sealed with an elastomeric polymer including metal particles. (4:19-39). Appeal 2007-0684 Application 09/970,159 -8- The Examiner's Rejections and Appellants’ Arguments A. Lack of Written Descriptive Support (35 U.S.C. § 112, First Paragraph) 18. The Examiner rejects claims 43 and 48-51 as failing to comply with the written description requirement of 35 U.S.C. §112, first paragraph (Answer at 4) 19. The Examiner has found that the phrase in these claims “forming a screening seal to fill a gap” lacks support in that “to fill a gap” is not found in the Applicant’s disclosure. (Answer, 4-5). Specifically, the Examiner finds that the Applicant places material on the edges of substrates which will mate when joined, not gaps. 20. The Examiner has additionally found that the phrase “including a silicone polymer that dries rapidly in air and at ambient temperature” likewise lacks support. Analysis The rejection cannot be sustained. The claims at issue establish by their specific language (“forming a screening seal to fill a gap between said two adjacent housing parts”) that the “gap” being filled is conceptually the same as a seal around the edge of an opening of the housing. (See, e.g., Claim 43). The specification provides adequate support for this concept – p. 14, paragraph 1 describes forming a gasket from a silicone filled with conductive particles. The bead of silicone rubber is placed along the peripheral edge of a substrate to be shielded, such as a cell phone housing. Appeal 2007-0684 Application 09/970,159 -9- Additionally, the specification supports a wide variety of curing mechanisms, including silicone with chemical curing agents (Spec. 15, lines 1-4). Note that original Claim 14 requires only a silicone resin and a curing agent which, when mixed and applied to a substrate, create a form stable- form in place gasket. We find that a silicone with curing agent as described on page 6, last paragraph as including those which cure either at a critical temperature or with a curing agent supports room-temperature curing, while the discussion at page 7 going to fast curing cycles supports a rapidly curing polymer. The adequate written description requirement, which is distinct from the enablement and best mode requirements, serves "to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the adequate written description requirement, the applicant does not have to utilize any particular form of disclosure to describe the subject matter claimed, but "the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Considering the Appellants’ specification and the claim language, we conclude that the Appellants have met this requirement and reverse the Examiner’s lack of written description rejection. Appeal 2007-0684 Application 09/970,159 -10- B. Obviousness over Morgan in view of Nakagawa 21. The Examiner rejects claims 23-26, 43, and 48-51 as obvious over the combination of Morgan and Nakagawa. (Answer at 5.) 22. The Examiner finds that Morgan describes a process of molding a form-in-place elastic plastic gasket material onto a substrate. The Examiner specifically finds that Morgan describes providing a composition that provides electromagnetic interference (EMI) shielding comprising a resin, conductive filler, and additives, which is mixed and applied to a substrate by extrusion molding. (Fin. Rej. May 18, 2004, p. 4). 23. The Examiner has additionally found that extrusion molding was well known to be performed by ejecting resin from a pressure nozzle which was conventionally pasty or liquid. (Fin. Rej. May 18, 2004 p. 5) 24. The Examiner has also found that Nakagawa describes using silicone as an EMI gasket material for the added benefit of increased resistance to heat, oil, and ozone cracks. (Fin. Rej. May 18, 2004, p. 5). The gasket includes a silicone material blended with a conductive filler material which is formed into a predetermined profile and then attached to a housing substrate. (Fin Rej. May 18, 2004, p. 5). 25. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to include silicone in a form-in-place gasket for the material benefits of increased resistance to heat, oil, and ozone cracks. (Fin Rej. May 18, 2004, p. 5-6). Appeal 2007-0684 Application 09/970,159 -11- 26. The Examiner finds that the further limitations recited in each of the dependent claims are met by specific elements in Morgan. (Answer at 5.) 27. The Appellants do not contest the Examiner's findings summarized above in these regards, nor did the Appellants argue any claim separately. (Br. at 8–9.) 28. However, the Appellants argue that one skilled in the art would not be motivated to combine the teachings of these references to arrive at the claimed invention. (Br. 8). 29. First, the Appellants urge that Morgan specifically selects a polyurethane resin for its chemical and corrosion resistance, and an azole component to achieve anti-corrosive effects which are synergistic. The Appellants urges that one of ordinary skill in the art would not substitute silicone for polyurethane as there is no reasonable expectation that silicone would achieve these results. (Br. 8-9). Analysis This argument is unpersuasive. First, we observe that it is unsupported by any persuasive evidence of record and is merely attorney conjecture. Second, it is the combination of references which renders the claimed invention obvious, not whether one reference may be bodily incorporated into another. Morgan teaches that: Conventional shielding gaskets have been used in these applications to provide EMI/RFI shielding. These gaskets generally provide satisfactory shielding, but can cause significant corrosion of the structural metal (e.g. aluminum). In fact, when the metal filler or Appeal 2007-0684 Application 09/970,159 -12- mesh in the shielding gasket is different from either of the adjacent substrates, a galvanic potential is established across all three elements, often causing the gasket itself, and eventually the entire assembly, to corrode. Further, the interface between such preformed gaskets, and the substrate to which they are applied typically contains voids and airspace which detracts from shielding effectiveness and may promote corrosion. Thus, it would be advantageous to provide a composition which could be used to form a gasket directly on the substrate (referred to hereinafter as a “form-in-place gasket”). Morgan (1:41-57). One of ordinary skill in the art, looking at Morgan, would have recognized the advantages flowing from a form-in-place gasket for any use, especially to enhance EMI shielding. Morgan teaches the method of applying a form-in-place EMI gasket. Nakagawa, on the other hand, teaches silicone rubber preformed gaskets with conductive particles are excellent for resistance to heat and oil in EMI shielding gaskets. (5:61-64). 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, 82 USPQ2d 1385, 1391 (2007). Both references, when considered together, teach different types of gaskets may be suitable for different types of service – a polyurethane based gasket may serve better in salt-corrosive environments, while a silicone rubber based gasket may serve better in heat and oil stressed environments. Appeal 2007-0684 Application 09/970,159 -13- Both preformed and form-in place were also known, with certain benefits to form-in-place. One of ordinary skill in the art is skilled. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397. 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, 82 USPQ2d at 1396. We must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. We find ample reason why one of ordinary skill in the art would have been prompted to use silicone in a form-in-place gasket, for the benefits of specific resistance to heat and oil, and better EMI shielding. Accordingly, we shall affirm the rejection of claims 23-26, 43, and 48-51 as obvious over the combination of Morgan and Nakagawa. We note the Appellants raise in their Reply, for the first time in the final briefing on this appeal, a specific issue relating to claim 48 (computer aided design not being disclosed in the reference) (Reply, p. 3, ll. 4-5). Raising an issue for the first time in the reply brief, and not the appeal brief, is not timely. In any event, the Appellant has not explained why the claim Appeal 2007-0684 Application 09/970,159 -14- is separately patentable, i.e. why forming a gasket by computer aided design, a known process, would not have been obvious to one of ordinary skill in the art at the time the invention was made. Simply stating what a claim recites is not separate argument for patentability. 37 CFR §41.37(c)(1)(vii). Accordingly, the argument does not persuade us of error. C. Anticipation by Bogan 30. The Examiner rejects claims 23-26 as anticipated (35 U.S.C. §102) by or obvious (35 U.S.C. § 103) over Bogan. (Answer at 7). 31. The Examiner finds that Bogan describes molding a conductive gasket material onto a substrate. (Answer at 7.) 32. The Examiner finds further that Bogan describes providing a substrate for receiving a gasket, providing a supply of conductive material that includes silicone material filled with conductive particles, applying the material to the substrate’s surface, and curing the material. (Answer at 7.) 33. The Examiner finds that the further limitations recited in each of the dependent claims are met by specific elements in Bogan. (Answer at 7- 8.) 34. The Appellants make no separate argument as regards those claims. 35. The Appellants urge that Bogan is not a “formed-in-place” gasket in that it is compression molded against one of the structural components and not formed between two components. (Br. 10). Appeal 2007-0684 Application 09/970,159 -15- 36. According to the Appellants, formed-in-place excludes compression molded gaskets. (Br. 10) Analysis It is evident that the scope of claim 23 needs to be interpreted carefully. Normally, the preamble of a claim is not limiting. DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758, 761 n.3 (Fed. Cir. 1985). However, the preamble may be limiting “when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). If the preamble is “necessary to give life, meaning and vitality” to the claim, then the claim preamble should be construed as limiting. Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951). This is determined “on the facts of each case in view of the claimed invention as a whole.” In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73, 40 USPQ2d 1481, 1488 (Fed. Cir. 1996) (“Whether a preamble stating the purpose and context of the invention constitutes a limitation . . . is determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.”). Claim 23 recites: A process for forming a form-in-place conductive EMI shielding gasket on a substrate comprising the steps of: a) providing a substrate to be gasketed; Appeal 2007-0684 Application 09/970,159 -16- b) providing a supply of conductive gasketing material formed from a conductive filled silicone resin; c) applying the material to the substrate’s surface in a predetermined pattern; and d) curing the material in place upon the substrate. In this instance, the Appellants’ invention as claimed is intimately related to the formation of the gasket in contact with the surface to be gasketed, avoiding some of the problems with nonconforming gaskets such as waste (Spec. p. 2, ll. 17-20), attachment, and labor costs (Spec. p. 2, ll. 1- 7). Additionally, the claim body notes that the material is cured “in place upon the substrate.” Consequently, we conclude that the preamble is limiting on the particular facts of this case. We next need to interpret the scope of “form-in-place.” Claims undergoing examination are given their broadest reasonable construction consistent with the specification. Burlington Industries v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987). The Appellants read “form-in-place” as excluding compression molding based upon discussion of the drawbacks of compression molding generally found on page 2 of the specification. We disagree with this interpretation. Rather, we find the claim language and specification supports a more inclusive interpretation of claim 23 - as requiring that the gasket be formed in place upon at least one substrate. This interpretation is supported by the claim language (“a substrate”) indicating that the gasket needs to be formed on at least one substrate. No Appeal 2007-0684 Application 09/970,159 -17- restriction on how the gasket is formed is found within the claim other than it must be on the substrate. The broader interpretation is also supported by the specification - compression molding is defined as making the gasket in a specially designed mold (Spec. p. 1). Compression molding of separate gaskets is then criticized for difficulty in “the ability to manufacture and attach such gaskets securely becomes very difficult and labor intensive” (Spec. p. 2). In other words, the criticized prior art gasket is pre-formed, and then attached. The Appellants’ invention as claimed is instead directed to forming the gasket in place. Turning now to Bogan, we conclude that the Appellants have not shown that the Examiner erred in determining that Bogan anticipates the language of claim 23. Bogan forms an EMI shielding gasket (Ref. Num. 18, see also 3:61) in place upon one housing element, in this instance what also acts as a mold cover 12 (3:61-66). The gasket is molded in place and is not cut (4:1-5) avoiding the prior art difficulties of waste and attachment. Bogan provides a substrate to be gasketed, the cover 12. Bogan proves a supply of conductive gasketing material formed from a conductive filled silicone resin. (4:21-26). Bogan applies the material to the substrate’s surface in a predetermined pattern (as a flowable elastomer, bonding agent, and filler into a mold over the cover’s surface)(3:55-59) Appeal 2007-0684 Application 09/970,159 -18- Bogan cures the material in place upon the substrate (using pressure and heat)(3:60) Appellants’ argument notwithstanding, Bogan describes all the elements of claim 23. Accordingly, we affirm the rejection of claims 23-26 as anticipated by Bogan. There is some controversy as to whether there is also an obviousness rejection in place. (Reply, p. 4, l. 7-8, contra Answer, p. 7). However, as the anticipation rejection is affirmed, we summarily affirm the obviousness rejection of claims 23-26 in view of Bogan. Anticipation is the “ultimate or epitome of obviousness” In re Kalm, 378 F.2d 959, 962, 154 USPQ 10, 12 (CCPA 1967). D. The 35 U.S.C. §102(f) Rejection 37. The Examiner has rejected claims 43 and 48-51 under 35 U.S.C. § 102(f). (Answer, p. 8) 38. The Examiner has found that the claimed subject matter is identical to claims 1 and 13-16 of Patent 6,329,014. (Answer, p. 8). 39. The Examiner concludes that the Applicant did not invent the subject matter of claims 43 and 48-51. Analysis This rejection cannot be sustained. The Examiner has provided no persuasive evidence that the Appellants did not independently invent the subject matter of claims 43 and 48-51, albeit the inventors named in U.S. Patent 6,329,014 may also have invented that same subject matter. Copying claims is a way to provoke an Appeal 2007-0684 Application 09/970,159 -19- interference where a patent is granted to another on the same patentable subject matter. It is not an admission that the Appellants are not themselves inventors of the subject matter of those claims. Rather, as correctly stated by the Appellant, copying claims is a mechanism to set up a potential interference. Accordingly, the rejection of claims 43 and 48-51 under 35 U.S.C. § 102(f) is reversed. E. Additional Observations To the extent we have affirmed rejections based on the prior art and the Appellants feel that the art is equally application to claims in U.S. Patent 6,329,014, the Appellants may wish to file a request for reexamination of those claims. CONCLUSION In view of the foregoing facts and considerations, it is: ORDERED that the rejection of claims 43 and 48-51 as failing to comply with the written description requirement of 35 U.S.C. §112, first paragraph is REVERSED. FURTHER ORDERED that the rejection of claims 23-26, 43, and 48-51 under 35 U.S.C. § 103 as obvious over the combination of Morgan and Nakagawa is AFFIRMED. FURTHER ORDERED that the rejection of claims 23-26 as anticipated by(35 U.S.C. §102) or as obvious over (35 U.S.C. § 103) Bogan is AFFIRMED. Appeal 2007-0684 Application 09/970,159 -20- FURTHER ORDERED that the rejection of claims 43 and 48- 51 under 35 U.S.C. § 102(f) is REVERSED. FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). AFFIRMED GOSZ AND PARTNERS LLP ONE STATE STREET BOSTON MA 02109 Copy with citationCopy as parenthetical citation