Ex Parte Kreager et al

Board of Patent Appeals and Interferences

Jan 24, 2008

10426376 (B.P.A.I. Jan. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW S. KREAGER,
STEPHEN P. ANDRZEJEWSKI,
PHILIP T. DODGE, and
BARRY T. AUBREY
____________

Appeal 2008-0444
Application 10/426,376
Technology Center 1700
____________

Decided: January 24, 2008
____________

Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 12-14 and 17-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-0444
Application 10/426,376

BACKGROUND
The invention relates to a method of making a three layer plastic part.
Claim 12 is illustrative:
12. A method of forming a three layered plastic part,
the method comprising:

transporting a first mold half through an oven wherein
the first mold half is heated by the oven;

introducing a powdered skin resin into the first mold half
after the first mold half exits the oven wherein a plastic skin
layer covering at least a portion of first mold half forms;

inverting the first mold half by a sufficient amount to
pour out any powdered skin resin not adhered to the first mold
half;

introducing a foam resin into the first mold half; and

joining the first mold half with a second mold half to
form joined mold halves, wherein a portion of the second mold
half is coated with a plastic skin layer.

The Examiner relies upon the following references as evidence of
unpatentability:
Milton 2,599,573 Jun. 10, 1952
Anestis 4,623,503 Nov. 18, 1986,
Bartels 4,900,493 Feb. 13, 1990
Tsuchihashi 5,059,362 Oct. 22, 1991

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Claims 12, 14, and 17-21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bartels in view of Tsuchihashi. To reject claim 13,
the Examiner adds Milton and Anestis.
Although all these claims have also been provisionally rejected under
the judicially created doctrine of obviousness-type double patenting1, the
Appellants state this ground of rejection presents no appealable issue (Br. 3).
The Examiner’s Answer does not contain this ground of rejection and thus it
is not before us on appeal. Appellants state they will file a terminal
disclaimer upon the indication of allowable subject matter (Br. 3).
Appellants do not separately argue with any reasonable specificity the
individual claims rejected under 35 U.S.C. § 103(a) (Br. 6). Therefore, we
select the broadest independent claim 12 to decide the issue on appeal
regarding claims 12-14 and 17-212.

DISCUSSION
with Findings of Facts
The issue raised by this appeal is whether Appellants have overcome
the rejections by showing that the applied reference evidence does not
support the Examiner’s conclusion of obviousness; specifically, whether it
would have been obvious to modify and reorder the method steps of Bartels

1 It is noted that the application (SN 10/405,458) that forms the basis of the
provisional obviousness-type double patenting rejection is also under appeal.
Since the Appeal Brief in the ‘458 application was filed prior to the Appeal
Brief in the instant application, Appellants and Examiner should have
identified SN 10/405,458 in the “Related Appeals and Interferences” section
of the Brief and Examiner’s Answer, respectively, in this application.
2 Claim 17 depends from canceled claim 16. This needs to be corrected in
any future prosecution.
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Application 10/426,376

to introduce a foam resin into the first mold half as required by all of the
claims before us.

Findings of Fact
A preponderance of the evidence of record supports the following Findings
of Facts (FF):
1. Bartels describes a method for forming a three-layered plastic part
(Fig. 4). The method includes a) transporting a first mold half through an
oven wherein the first mold half is heated by the oven (col. 3, ll. 9-23); b)
introducing a powdered skin resin into the first mold half after the first mold
half exits the oven wherein a plastic skin layer covering at least a portion of
first mold half forms (col. 3, ll. 23-47); and c) inverting the first mold half
by a sufficient amount to pour out any powdered skin resin not
adhered to the first mold half (col. 3, ll. 48-56). Bartels also describes
coating a second mold half with a plastic skin layer and that the two mold
halves are joined (col. 4, ll. 11-20).
2. Bartels describes every limitation in Appellants’ claim 1 except for
introducing a foam resin into the first mold half. Bartels describes
introducing foam after manufacturing of the skin, that is, after the mold that
formed the resin skin (namely, mold halves 3, 15 of Bartels) has been
removed (col. 4, ll. 25-35; col. 5, ll. 28-42).
3. Tsuchihashi describes a method for making a composite foam and
shaped article by the sequential steps of: (a) forming a first resin layer (a
skin layer) by filling a preheated slush molding die with powdered resin, (b)
turning the mold upside down to remove excess resin powder, and then (c)
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filling the mold with a mixed powder consisting of a foaming agent and
thermoplastic powder (that is, a foam resin) (col. 3., ll. 20-38).
4. Tsuchihashi describes that the advantages of putting the foam resin
into the heated mold die immediately after the first skin layer was formed
are: (a) there is no need to reheat the die in the second step, and (b) the time
required for molding the shaped article can be reduced (col. 4, ll. 20- 24).
5. One of ordinary level of skill in the art would be an engineer or
scientist who designs molding parts and methods as exemplified in the
applied references.
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 legal 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, and (3) the level of skill in the art. 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.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
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to their established functions.” KSR, 127 S. Ct. at 1740. The Supreme Court
also noted in KSR that an obviousness 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.” KSR, 127 S. Ct. at 1741.
It has long been established that the selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946).
Further, “[t]he fact that no single reference shows all the steps and that no
reference shows the steps in the exact order named does not change the
situation, since, in view of the prior art, what appellant has done would be
the obvious thing to do in order to produce the claimed results.” In re Lang,
97 F. 2d 626, 628 (CCPA 1938).
OPINION
The Examiner finds, and Appellants do not dispute, that Bartels
describes every limitation in claim 12 except for introducing the foam resin
into the first mold half (FF 1-2; App. Br. 3-6, Rep. Br. 2-3). Appellants also
do not dispute that Tsuchihashi teaches a mold in which a first resin skin
layer is formed and is then filled with foam resin material (FF 3). Thus, the
issue on appeal is whether the combination of Bartels and Tsuchihashi
would have taught or suggested to one of ordinary skill in the art the use of
the method steps as required by claim 12.
We agree with Appellants’ first contention that Bartels does not teach
the step of introducing a foam resin into the first mold half (FF 2; Rep. Br.
2-3). But Appellants also contend their invention is not a simple reordering
of steps of a prior art process (App. Br. 6; Rep. Br. 2-3), and that the
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combination of Bartels with Tsuchihashi as proposed by the Examiner does
not remedy the deficiencies of Bartels (Br. 5). We disagree. Adding a foam
resin to a molding die after a first resin skin layer was formed within the
mold was within the skill in the art as exemplified by Tsuchihashi (FF 3).
As also taught in Bartels, Tsuchihashi describes inverting the mold to
remove excess skin resin powder (FF 2, 3). Further, Tsuchihashi teaches the
advantages of adding the foam resin into the heated mold die right after the
first skin layer was formed are: (1) there is no need to reheat the die in the
second step, and (2) the time required for molding the article can be reduced
(FF 4). Thus, adding the foam resin to the first mold half of Bartels (which
was preheated for forming the skin resin) would have been obvious to one of
ordinary skill in the art in order to gain the same benefits taught in
Tsuchihashi of a shortened molding time.
The Supreme Court noted in KSR that an obviousness 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.” 127 S. Ct. at
1741. As pointed out by the Examiner, the selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. See In re Burhans, 154 F. 2d at 690. The fact that no
single reference shows all the steps and that no reference shows the steps in
the exact order named does not change the situation, since, in view of the
prior art, what Appellants have done would have been an obvious thing to do
as set forth by the Examiner. See In re Lang, 97 F. 2d at 628.
Further, the combination of familiar elements is likely to be obvious
when it does no more than yield predictable results, and the question is
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whether the improvement is more than the predictable use of prior art
elements according to their established functions. KSR, 127 S. Ct. at 1739,
1740. We find that the addition of a foam resin into the first mold half of
Bartels, instead of into the finished skin resin thereof, as suggested by
Tsuchihashi, achieves the predictable result of a streamlined molding
process that adds the foam in a more logical order for a myriad of desirable
reasons, such as eliminating the step of forming an aperture in the finished
skin of Bartels (Ans. 4-5). Appellants have not shown that there is more
than a predictable result flowing from the addition of a foam resin into the
first mold half of Bartels, instead of into the finished skin resin.
Therefore, we determine that adding the foam resin to the first mold
half of Bartels would have been prima facie obvious to one of ordinary skill
in the art for the foregoing reasons and those well articulated by the
Examiner (Ans. 3-4). Appellants have failed to successfully rebut this prima
facie case with argument or evidence of nonobviousness. Accordingly, we
hereby sustain the rejections of claims 12-14 and 17-21 advanced by the
Examiner on this appeal.
OTHER ISSUES
In any further prosecution of this case, the Examiner should consider
whether the “powder tip molding” method discussed in the Background Art
is prior art (Specification 2: 13-24). Specifically, it appears that Appellants
admit, by virtue of describing it as “Background Art”, that the process as
claimed herein is known, except that a “preformed foam middle layer” was
introduced into the mold half, rather than a “foam resin” as set out in claim
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12.3 Thus, the Examiner (and Appellants) should consider the question of
whether substituting a “foam resin” would patentably distinguish over the
prior art method using a “preformed foam layer”, or whether using a “foam
resin” was simply a known alternative way for one of ordinary skill in the art
to form a foam layer in manufacturing a plastic part.
Tsuchihashi exemplifies that forming a first resin layer (a skin layer)
by filling a preheated mold with powdered resin, then turning the mold
upside down (that is, tipping the mold) to remove excess resin powder, and
then introducing a “foam resin” (e.g., a resin which is subsequently activated
to form a foam layer, as explicitly claimed in Appellant’ claim 17) into a
mold after the skin layer was formed, was known in the art of molding
plastic parts.
The Examiner should consider whether, in light of the guidance
offered by Tsuchihashi on how to prepare a foam layer in situ after a first
skin layer was formed, including turning the mold upside down to remove
excess skin resin powder, one of ordinary skill in the art would have used
that familiar treatment to modify the tip molding process described as
“Background Art” to obtain a three layered plastic part as claimed, with the
results being predictable. See KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at
1739(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
The Examiner should also consider whether the broadest reasonable
interpretation of “foam resin” as used in claim 12 includes a “preformed

3 The Appellants should clarify in more detail what is meant by the phrase
“powder tip molding”; it appears that Appellants mean that the mold halves
are “tipped” to remove excess powder.
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foam layer”, such that the Background Art discussed above would read on at
least claim 124.
CONCLUSION
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. This prima facie case has not
been adequately rebutted by Appellants’ arguments. Therefore we AFFIRM
each ground of rejection presented in this appeal.
DECISION
The Examiner’s decision is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tf/ls

BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075

4 Dependent claim 17 is the first claim to call for “activating the foam resin”
and claims 18-20 further limit claim 17. Whether the apparently admitted
prior art “tip molding process” would read on claim 12 would also depend
on whether that process includes inverting (i.e., tipping) the mold half by a
sufficient amount to pour out excess powdered resin.
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