Ex Parte Kreager et alDownload PDFBoard of Patent Appeals and InterferencesJan 24, 200810426376 (B.P.A.I. Jan. 24, 2008) Copy Citation 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 2 Appeal 2008-0444 Application 10/426,376 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. 3 Appeal 2008-0444 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) 4 Appeal 2008-0444 Application 10/426,376 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 5 Appeal 2008-0444 Application 10/426,376 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 6 Appeal 2008-0444 Application 10/426,376 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 7 Appeal 2008-0444 Application 10/426,376 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 8 Appeal 2008-0444 Application 10/426,376 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. 9 Appeal 2008-0444 Application 10/426,376 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. 10 Copy with citationCopy as parenthetical citation