Ex Parte Kuhmann et al

Board of Patent Appeals and Interferences

Mar 29, 2011

11341520 (B.P.A.I. Mar. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KARL KUHMANN, KLAUS HULSMANN,
MARTIN WIELPUTZ, WALTER-KONRAD MERTENS.
URSULA SCHAUB, KIRSTEN ALTING,
SIMON AMESODER, and LEO HOFFMANN
______________

Appeal 2010-004548
Application 11/341,520
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-20 in the Office Action mailed
December 2, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2008).
An oral hearing was held March 10, 2011.
We reverse the decision of the Primary Examiner.
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Claim 1 illustrates Appellants’ invention of a process for production
of a composite part, and is representative of the claims on appeal:
1. A process for production of a composite part, comprising:
treating at least one of components a) and b) of the composite part by
an atmospheric plasma process on a contact surface between the components
a) and b) prior to production of the composite, followed by molding-on of
the other component;
wherein:
component a) is a part comprising a molding composition comprising
at least 40% by weight of a polyamide whose monomer units contain an
average of at least 8 carbon atoms;
component b) is a part comprising another molding composition; and
in the atmospheric plasma process, the plasma is conveyed onto the
contact surface by a stream of carrier material.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 9 and 20 under 35 U.S.C. § 112, first
paragraph, written description requirement; claims 1-20 under 35 U.S.C.
§ 112, second paragraph; claims 1-9 and 11-20 under 35 U.S.C. § 103(a)
over Kodama (US 5,937,911) in view of Főrnsel (US 5,837,958); and claims
1, 2, 4-6, and 9-13 under 35 U.S.C. § 103(a) over Hebert (US 2002/0032080
A1), in view of Tanaka (US 5,820,486) and Főrnsel. App. Br. 3-4; Ans. 3,
4, and 6.
Opinion
I. Claim Interpretation
As an initial matter in considering the patentability of the appealed
claims under any statutory provision, we first interpret independent claims 1
and 15 by giving the claim terms thereof the broadest reasonable
interpretation consistent with the written description in the Specification.
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See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)
(“During reexamination, as with original examination, the PTO must give
claims their broadest reasonable construction consistent with the
specification.”) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.”).
We determine that claim 1 specifies a process for the production of a
composite part comprising at least the steps of treating a contact surface of at
least one of components a) and b) with any manner of atmospheric plasma
process in which “plasma is conveyed onto the contact surface by a stream
of carrier material,” which step is then followed by the step of molding-on
one of component on the other component at the contact surfaces in any
manner. Claim 1 further specifies that component a) is any manner of part
comprising at least any manner of molding composition comprising at least
40% by weight of any polyamide having monomer units containing an
average of at least 8 carbon atoms, and component b) is any part comprising
at least any manner of other molding composition. See Spec., e.g., 2-8. The
molding compositions specified for component parts a) and b) can be formed
into a component that provides “a contact surface” for forming the
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composite part from at least these two components, and can include
“moldings (e.g. injection molding, extrudate, compression molding) or
semifinished products (e.g. single- or multilayer films, textile structures,
etc.).” Spec. 3:17-18; see also Spec., e.g., 8-10. The term “comprising,”
used in transition as well as in the body of claim 1, opens the claim to
encompass processes for production of composite parts which include
additional component part(s) that can be articles formed from any manner of
composition. See Spec., e.g., 10:7-12. See, e.g., In re Baxter, 656 F.2d 679,
686 (CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”).
We determine that independent claim 15 is a product-by-process claim
that specifies any component part comprising at least the two parts a) and b),
specified in the same manner as in claim 1, wherein any atmospheric plasma
process, specified in the same manner as in claim 1, activates at least one
surface between the two parts. Accordingly, claim 15 encompasses any
composite part product having characteristics imparted by any manner of
process which includes activating at least one surface between the two parts
by any atmospheric plasma process in which “plasma is conveyed onto the
[contact] surface by a stream of carrier material.” See, e.g., In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited therein (“even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself”); In re
Bridgeford, 357 F.2d 679, 682-83 (CCPA 1966).

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II. Claims 9 and 20: § 112, first paragraph,
written description requirement
We determine that dependent claims 9 and 20 further limit
independent claims 1 and 15, respectively, by specifying that the parts a) and
b) “are moldings or unfinished products.” We found above that the parts a)
and b) are components formed from molding compositions that provide a
“contact surface,” and can be “moldings . . . or semifinished products” as
disclosed in the Specification. Spec. 3:17-18. We agree with Appellants
that the claim term “unfinished products” is synonymous with the
Specification term “semifinished products.” Indeed, given their common
dictionary usage, the former claim term denotes an “incomplete” product
and the latter Specification term denotes a “partially finished” product,
wherein such a product that is not a “molding” and thus is “unfinished” and
“semifinished” in that respect.1 App. Br. 5; Reply Br. 1-2.
Thus, we agree with Appellants’ position that the Examiner erred in
finding that the disclosure of the Application would not have reasonably
conveyed to those skilled in the art that Appellants were in possession of the
claimed invention encompassed by the language “unfinished products” in
claims 9 and 20 at the time the present Application was filed, as required by
§ 112, first paragraph, written description requirement. Ariad Pharm., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (‘“[T]he
test for sufficiency [of written description] is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that

1 See, e.g., unfinished, semifinished, The American Heritage Dictionary of
the English Language 1582, 1879 (4th ed., Houghton Mifflin Co., 2000).
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the inventor had possession of the claimed subject matter as of the filing
date.”) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991) (quoting Ralston Purina Co. v. Far-Mar-Co., 772 F.2d 1570, 1575
(Fed. Cir. 1985)). In this respect, the Examiner has the burden of initially
establishing that appealed claim 42 does not comply with § 112, first
paragraph, written description requirement, by setting forth evidence or
reasons why, as a matter of fact, the written description in the Specification
as filed would not reasonably convey to persons skilled in this art that
Appellants were in possession of the invention defined by theses claims,
including all of the limitations thereof, at the time the Application was filed.
See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76, (Fed. Cir. 1996) (citing
In re Wertheim, 541 F.2d 257, 262-64 (CCPA 1976)).
The Examiner submits that “[t]he disclosure of specific species[, that
is, single layer films, multilayer films, textile structures,] would not appear
to support the much broader disclosure of ‘unfinished products’, which
would encompass countless other materials not provided for in the
Specification.” Ans. 8. See Spec. 3:18. As Appellants point out, the
Examiner has not explained with evidence or reasons establishing as a
matter of fact that this is so in the context of the claimed invention and the
disclosure in the Specification. Reply Br. 2. In this respect, we determined
that as specified in claims 1 and 15, parts a) and b) are prepared from
molding compositions in a manner that provides a “contact surface,” and
claims 9 and 20 specify the articles that provide such a surface. Thus, the
“unfinished products” specified in claims 9 and 20, as illustrated by the
examples of “semifinished products” described in the Specification,
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encompass articles which can be the parts a) and b) that provide a “contact
surface.” The Examiner has not explained why the “semifinished products”
articles illustrated in the Specification are insufficient to convey to one
skilled in the art that Appellants were in possession of the “unfinished
products” specified in claims 9 and 20 as having a “contact surface” as
required in claims 1 and 15.
Accordingly, in the absence of a case of noncompliance with 35
U.S.C. § 112, first paragraph, written description requirement, we reverse
the ground of rejection of claims 9 and 20 under this statutory provision.
III. Claims 1-20: § 112, second paragraph
In this respect, the language of a claim, considered as a whole in light
of the written description in the Specification as it would be interpreted by
one of ordinary skill in the art, must in fact set out and circumscribe the
claimed invention encompassed by claims 1-20 with a reasonable degree of
precision and particularity in order to comply with 35 U.S.C. § 112, second
paragraph. See, e.g., Marley Mouldings Ltd. v. Mikron Industries, Inc.,
417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232,
1235 (CCPA 1971); see also, e.g., In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994); The Beachcombers Int’l. v. WildeWood Creative Prods., 31
F.3d 1154, 1158 (Fed. Cir. 1994); Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The initial burden of
establishing a case of non-compliance on any ground under the second
paragraph of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (citing In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984)).
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A. Claims 1 and 15
The dispositive issue is whether claims 1 and 15, in specifying “in the
atmospheric plasma process, the plasma is conveyed onto the contact surface
by a stream of carrier material,” and “an atmospheric plasma process in
which the plasma is conveyed onto the surface by a stream of carrier
material,” circumscribe the term “atmospheric plasma process” with a
reasonable degree of precision and particularity when considered in light of
the Specification. Ans. 3-4 and 5; App. Br. 5-6; Reply Br. 2. We agree with
Appellants’ position that the Examiner has not established that one of
ordinary skill in the art would not have reasonably understood the term
“atmospheric plasma process” as used in claims 1 and 15 when considered in
light of the disclosure at pages 7-8 of the Specification. App. Br. 6; Reply
Br, 2. We find that one skilled in the art would have recognized from the
cited disclosure in the Specification that an “atmospheric plasma process”
wherein “the plasma is conveyed onto the contact surface by a stream of
carrier material” is described and indeed illustrated with reference to patent
literature. The Examiner does not explain why “the noted portion [of the
specification] gives no guidance about how the process is ‘atmospheric’”
with respect to the specific disclosure in the Specification, and thus, has not
carried the burden of establishing that claims 1-20 are noncompliant with §
112, second paragraph. Ans. 9; see Ans. 3-4.
B. Claims 2, 4, 13, 16, and 18
The dispositive issue is whether dependent claims 2, 4, 13, 16, and 18,
in specifying acronyms for polyamide and rubber materials used in molding
compositions for parts a) and b), circumscribe the claimed invention with a
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reasonable degree of precision and particularity when considered in light of
the Specification. Ans. 4 and 9; App. Br. 6-7; Reply Br. 3. We agree with
Appellants that the Examiner has not established that one of ordinary skill in
the art would not have reasonably recognized commonly used abbreviations
for polyamides and rubber materials set forth in these claims. The Examiner
submits the unsupported position that while one of ordinary skill in the art
would have recognized some of the polyamide acronyms, Appellants have
provided no guidance for the rubber materials. Ans. 9. The Examiner has
the initial burden of establishing non-compliance and, in the absence of
evidence establishing that in fact one of skill in the art would not recognize
the materials represented by the acronyms in these claims, has improperly
shifted the burden to Appellants. Indeed, the disclosure in the Specification
is directed to one skilled in the art. See, e.g., In re Howarth, 654 F.2d 103,
105 (CCPA 1981) (“An inventor need not . . . explain every detail [of the
invention] since he is speaking to those skilled in the art. What is
conventional knowledge will be read into the disclosure.”). Indeed, we
notice that, as the Examiner appears to admit, the acronyms for polyamide
and rubber materials in claims are well known, and further find that the
Specification provides guidance to the acronyms for these materials. Spec.,
e.g., 5-6. Thus, the Examiner has not carried the burden of establishing that
claims 2, 4, 13, 16, and 18 are noncompliant with § 112, second paragraph.
C. Claims 9 and 20
The threshold issue is whether dependent claims 9 and 20 in
specifying “unfinished products” for components a) and b) in claims 1 and
15 circumscribe the claimed invention with a reasonable degree of precision
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and particularity when considered in light of the Specification. We have
interpreted the term “unfinished products” in light of the Specification above
and in light of the positions advanced by the Examiner and Appellants, and
on that basis, agree with Appellants that the Examiner not carried the burden
of establishing that one of ordinary skill in the art would not have reasonably
understood the term “unfinished products” in light of the disclosure in the
Specification. Ans. 3, 4, and 10; App. Br. 5 and 7; Reply Br. 1-2.
D.
Accordingly, in the absence of a case of noncompliance with 35
U.S.C. § 112, second paragraph, we reverse the ground of rejection of claims
1-20 under this statutory provision.
IV. § 103(a): claims 1-9 and 11-20 over Kodama and Főrnsel, and
claims 1, 2, 4-6, and 9-13 over Hebert, Tanaka, and Főrnsel
We agree with Appellants’ position that the Examiner erred in
concluding that one of ordinary skill in the art would have formed the
composite parts taught in Kodama and in Hebert by using Főrnsel’s
atmospheric plasma process as the plasma process used by each of Kodama
and Hebert for treating a surface of a component polymer layer part to
increase adhesion between component polymer layer parts of the composite
fuel transport hoses and golf balls, respectively. See Kodama, e.g., col. 4,
ll. 6-28, and col. 7, ll. 15-23; Hebert, e.g., ¶¶ 0035-0041; Főrnsel, e.g., col. 1,
ll. 8-13, and col. 1, l. 43 to col. 4, l. 47. Ans. 4-5, 6-7, and 10-12. App. Br.
7-11; Reply Br. 3-4. A discussion of Tanaka is not necessary to our
decision.
The Examiner carried the initial burden of establishing a prima facie
case of obviousness in concluding, based on findings from the references,
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that one of ordinary skill in the art would have combined Főrnsel with each
of Kodama and Hebert and thus would have been led to employ Főrnsel’s
atmospheric plasma process as the plasma process as the surface treatment
which provides adhesion between the component layer parts of the
composites in each of Kodama and Hebert, thus shifting the burden of going
forward to Appellants. Ans. 4-5 and 6-7.
Appellants responded by contending that the combined teachings of
each of Kodama and Hebert with Főrnsel would not have suggested to one
of ordinary skill in the art that Főrnsel’s atmospheric plasma process can be
employed as a surface treatment process in the composite forming processes
of each of Kodama and Hebert with a reasonable expectation of successfully
increasing the adhesion between the component layer parts. According to
Appellants, it would not have been clear to one of ordinary skill in the art
from Főrnsel that the atmospheric plasma process disclosed therein would
yield a plasma that can replace a traditional plasma treatment in treating a
surface polymer surface to increase adhesion therebetween when molded
together in the processes of Kodama and of Hebert. Appellants contend that
Főrnsel discloses that whether the flame that, “for the time being, is denoted
as plasma jet 34,” is really “a plasma in the true sense. i.e., an at least
partially ionized medium, is not completely clear;” and that “plasma jet 34
has the desired pre-treatment effect on the surface of the workpiece [made of
plastic] placed under the jet” which can “then be wetted with water;” and
that the surfaces so treated are coated with a liquid such as glue and paint
and not adhered to another surface in a molding process. App. Br. 7-11,
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citing Kodama, col. 3, ll. 20-27, col. 5, ll. 25-34, col. 7, ll. 15-23; Főrnsel,
col. 1, ll. 11-13; col. 4, ll. 25-27. Reply Br. 3-4, citing Főrnsel, col. 1,
ll. 8-13, and col. 4, ll. 39-46. See Főrnsel, col. 4, ll. 14-18.
We are of the opinion that Appellants’ position shifted the burden
back to the Examiner to determine patentability on the totality of the record
in light of Appellants’ arguments. See, e.g., Oetiker, 977 F.2d at 1445, and
case cited therein (“After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
argument.”). We agree with Appellants that the Examiner has not addressed
Appellants’ position that one of ordinary skill in the art would not have
considered Főrnsel’s process suitable for use as a plasma process to treat a
surface of one part to increase adhesiveness when combined with the surface
of another part in the molding processes of Kodama and of Hebert. Reply
Br. 2. In this respect, we agree with Appellants that, on this record, the fact
that Főrnsel’s process may be an atmospheric plasma process does not alone
establish that one of ordinary skill in the art would have recognized that
Főrnsel’s process can be used in the processes of Kodama and of Hebert, as
the Examiner contends. Ans. 10-12; Reply Br. 3-4. Indeed, as Appellants
argue, while the Examiner argues that Főrnsel discloses that the application
of the process to the surface of PTFE results in a surface that can be wetted
with water, the Examiner has not explained why one of ordinary skill in the
art would have been led by this disclosure to reasonably expect that the
process would result in a treated surface that exhibits increased adhesion for
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another polymer layer. See Főrnsel col. 4, ll. 38-46. Ans. 11-12; Reply Br.
4.
Accordingly, in the absence of a case of obviousness, we reverse the
ground of rejection of claims 1-20 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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