Ex Parte Malkin

Board of Patent Appeals and Interferences

May 10, 2010

10437078 (B.P.A.I. May. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD MALKIN
____________

Appeal 2009-012701
Application 10/437,078
Technology Center 1700
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Decided: May 10, 2010
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 13 to 16, 19, and 20. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was held on April 21, 2010.

STATEMENT OF THE CASE

Appeal No. 2009-012701
Application 10/437,078

Claims 13 and 20 are representative of the subject matter on appeal
and are set forth below:

13. A method of manufacturing a reusable filtration device for
removing particulate matter from a liquid in a photographic processing
system, said method comprising:

providing a tubular sleeve from a filtration material;

disposing the tubular sleeve about a mold core;

placing the mold core within a mold cavity; and
injection molding the filtration device within the mold cavity in an
injection molding process, thereby forming the filtration device comprising a
tubular body having a body wall defining a rigid support structure having a
plurality of inlet openings, the body wall further comprising an inside wall
structure and an outside wall structure; a central bore extending through the
tubular body and being coextensive with the body wall; the body wall
terminating in a pair of opposing end portions, one of said end portions
defining an attachment end portion adapted for attachment to a filtration
device holder in the photographic processing system and said opposing end
portion defining an outlet end portion including an outlet opening adapted
for passage of filtered liquid exiting the central bore; and the tubular sleeve
of filtration material being disposed between the inside wall structure and
the outside wall structure of the body wall, thereby filling the plurality of
inlet openings;
wherein said injection molding includes forming the outside wall
structure as a plurality of transverse and longitudinal struts so as to define
the plurality of inlet openings therebetween; and
wherein said injection molding includes forming the inside wall
structure as a plurality of longitudinally extending ribs, the ribs being axially
aligned with the longitudinal struts such that the filtration material is sealed
therebetween during said molding step.
20. The method of claim 13 wherein said injection molding step
comprises a single step injection molding process.
Appeal No. 2009-012701
Application 10/437,078

The prior art relied upon by the examiner in rejecting the claims on
appeal is:
Pawlak US 4,130,622 Dec. 19, 1978
Rieker US 5,699,683 Dec. 23, 1997
VanderWerf US 6,517,659 B1 Feb. 11, 2003

THE REJECTIONS1

1. Claims 13 through 16, 19, and 20 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.

2. Claims 13, 16, 19, and 20 stand rejected under 35 U.S.C. § 103 (a) as
being obvious over Pawlak.

3. Claim 14 is rejected under 35 U.S.C. § 103 (a) as being obvious over
Pawlak in view of Ricker.

4. Claim 15 is rejected under 35 U.S.C. § 103 (a) as being obvious over
Pawlak in view of Ricker and further in view of VanderWerf.

ISSUES

1. Has the Examiner erred in determining that the Specification fails to
disclose the structure of a mold assembly for performing a single step
injection molding step as recited in claims 13 and 20?

1 On page 3 of the Answer, the Examiner rejected claims 1-12 under 35
U.S.C. § 112, second paragraph, as being indefinite. However, these claims
have been cancelled as indicated on page 2 of the Appeal Brief. Therefore,
this rejection is moot.
Appeal No. 2009-012701
Application 10/437,078

2. Has the Examiner erred in determining that claim 13 is obvious over
Pawlak?

3. Has the Examiner erred in determining that claim 20 is obvious over
Pawlak?

FINDINGS OF FACTS and ANALYSIS

1. The 35 U.S.C. § 112 first paragraph rejection

On page 3 of the Answer, the Examiner states that the Specification
fails to adequately disclose the structure of a mold assembly for performing
a single step injection molding step, as recited in method claims 13 and 20.
On pages 4 through 5 of the Appeal Brief, Appellants explain that the
Specification, on page 7, line 27 to page 8, line 2, indicates that a single
mold is used to form the filtration device. As such, Appellants submit that
the only reasonable interpretation is that the mold core member, with the
sleeve therearound, is placed in one mold, and the filtration device is
injected molded in that mold.
In response, on pages 7 through 8 of the Answer, the Examiner
discusses the Wands factors, and in particular, states that “the state-of-the-art
concerning the invention is new since no prior art could be found teaching
the simultaneous application of rigid polymeric support structure to both
sides of a filtration material by injection molding”. We cannot agree with
this position stated herein as it is unsupported by evidence or affidavit.
As such, we agree with Appellants’ explanation, supra, that the
Specification is enabling regarding a structure of a mold assembly for
Appeal No. 2009-012701
Application 10/437,078

performing a single step injection molding step in view of the fact that it is
disclosed that a single mold is used for the filtration device. In re Alton, 76
F.3d 1168, 1172 (Fed. Cir. 1996).
Accordingly, we reverse the 35 U.S.C. § 112, first paragraph,
rejection of claims 13 through 16, 19, and 20, as failing to comply with the
enablement requirement.

2. The 35 U.S.C. § 103 (a) rejection

As an initial matter, we confine our discussion to appealed claims 13
and 20, which contains claim limitations representative of the arguments
made by Appellants, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Hence, our
focus is on the obviousness rejection involving the single reference of
Pawlak, and our determination made with respect to independent claim 13 in
this rejection applies to the other obviousness rejections involving claims 14
and 15.

Claim 13

We refer to Examiner's findings made on pages 4 through 5 of the
Answer. Therein, the Examiner explains how Pawlak teaches the elements
of claim 13. The Examiner recognizes that Pollack does not teach a single
injection molding step as recited in claim 20. Ans. 5.
On page 6 of the Appeal Brief, Appellants state that Pollack fails to
disclose the one step injection molding process as recited in pending claims
13 and 20. It therefore appears that Appellants believe claim 13 requires a
one step injection molding step as does claim 20. However, claim 13 does
Appeal No. 2009-012701
Application 10/437,078

not have the same scope as claim 20 in this regard, based upon claim
differentiation between claim 13 and claim 20.2 As interpreted by the
Examiner, claim 13 does not require a one step injection molding step as
does claim 20.
Therefore, we agree with the Examiner that claim 13 is unpatentable
over Pawlak.

Claim 20

On page 5 of the Answer, it is the Examiner's position that eliminating
the molding step employed using the first mold of Pawlak would have been
obvious in the case that the advantages achieved with the first step were not
needed or desired, for example in flow applications where high strength
along the seam of the tubular sleeve was not required, and the Examiner
refers to Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) in this
regard.
On page 7 of the Appeal Brief, Appellants explain that because both
inner and outer ribs are necessary to form a self-supporting filter structure,
both molding steps must be utilized in Pawlak in all instances to form a self-
supporting filter. Appellants submit that it therefore would not have been
obvious to eliminate the molding step with mold 41, as the Examiner
contends, because such a modification would eliminate the formation of the
inner ribs necessary for the structural rigidity of filter 9. Br. 7. In response,

2 An important rule of claim interpretation is the “doctrine of claim
differentiation.” This doctrine, in effect, assumes that two claims will not
have the identical scope, but instead, that there is likely an intended
difference in scope between the two.
Appeal No. 2009-012701
Application 10/437,078

the Examiner disagrees and explains that mold core 31 is also employed
within mold cavity 51 as shown in Figure 5. Ans. 9.
On page 8 of the Brief, Appellants then state:
Appellant submits there is no suggestion or motivation in Pawlak to
provide a basis for the single step injection molding process of the claimed
invention. Pawlak very clearly describes and claims a complicated and
burdensome process requiring two molds and two injection steps to achieve
the desired result. For the sake of argument, even if the mold core 31 with
the sleeve 11 thereon were placed in mold 51 without first being molded in
mold 41, there is no suggestion in Pawlak to simultaneously inject
thermoplastic material into the channels 33 of the core pin and
the grooves 55 of the mold 51, there is no teaching as to how the pressure of
injection molding will effect the sleeve suspended between the channels 33
and the grooves 55, particularly along the seam thereof, and there is no
suggestion that a working filter could even be obtained if made according to
the modification proposed by the Examiner.

Notably, the Examiner does not specifically address this argument
made by Appellants. See Answer generally. As such, we agree with
Appellants’ position.
In view of the above, we reverse the rejection of claim 20.

CONCLUSION

1. The Examiner erred in determining that the Specification fails to
disclose the structure of a mold assembly for performing a single step
injection molding step as recited in claims 13 and 20.
2. The Examiner did not err in determining that claim 13 is obvious over
Pawlak.

Appeal No. 2009-012701
Application 10/437,078

3. The Examiner erred in determining that claim 20 is obvious over
Pawlak.

DECISION
1. The rejection of claims 13 through 16, 19, and 20 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is reversed.

2. The rejection of claims 13, 16, and 19 under 35 U.S.C. § 103(a) as
being obvious over Pawlak is affirmed.

3. The rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious
over Pawlak is reversed.

4. The rejection of claim 14 under 35 U.S.C. § 103 (a) as being obvious
over Pawlak in view of Ricker is affirmed.

5. The rejection of claim 15 under 35 U.S.C. § 103 (a) as being obvious
over Pawlak in view of Ricker and further in view of VanderWerf is
affirmed.

Appeal No. 2009-012701
Application 10/437,078

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)(v).

AFFIRMED-IN-PART

PL Initial:
sld

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