Ex Parte Nevin

Board of Patent Appeals and Interferences

Dec 7, 2010

11318202 (B.P.A.I. Dec. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD NEVIN
____________

Appeal 2009-008940
Application 11/318,202
Technology Center 3700
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Donald Nevin (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-20, which are all of the claims on
appeal. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention relates to the use and construction of
thermoform plastic material sheets for use in vacuum molding that are
heated by wires internal to the thermoform plastic material sheet. Spec. 1-2.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. In combination, a plastic material sheet for use in
vacuum thermoforming and a source of electric current, said
sheet comprising:
a sheet of thermally deformable polymer material
suitable for thermoforming, and
electrically conductive means, at least a portion of which
is situated within said sheet and adapted to conduct an electrical
current so as to heat said sheet sufficiently to soften said
polymer material sheet to permit same to be deformed, and
means for connecting said electric current source to said
electrically conductive means.
THE REJECTIONS
Appellant seeks review of the following Examiner’s rejections:
1. Rejection of claims 1, 2, 8-10, 14, 15, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Gross (US 4,021,640, issued May 3, 1977)
and Haag (US 2004/0155029 A1, published August 12, 2004).
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2. Rejection of claims 3-6, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Gross, Haag, and Rock (US 2001/0006173 A1,
published July 5, 2001).
3. Rejection of claims 11 and 20 under 35 U.S.C. § 103(a) as unpatentable
over Gross, Haag, Rock, and Williams (US 6,137,086, issued October 24,
2000).
4. Rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Gross, Haag, and Karklin (US 4,676,938, issued June 30, 1987).
5. Rejection of claims 7 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Gross, Haag, and Bayless (US 4,967,057, issued October 30, 1990).
CONTENTIONS AND ISSUES
Appellant argues that the proposed combination of Gross and Haag
does not meet each limitation of independent claim 1 because neither
reference discloses the use of an electrically conductive means, at least a
portion of which is situated within the polymer material sheet and adapted to
conduct an electrical current so as to heat the sheet sufficiently to soften the
polymer material sheet to permit the sheet to be deformed. App. Br. 8. The
Examiner interpreted the claim limitations calling for the thermally
deformable polymer to be used for thermoforming as being related to the
method of making or using the claimed article (i.e., the sheet), and therefore
not germane to the issue of patentability of the article itself. Ans. 6.
Appellant responds that the electrically conductive means limitation is
germane to the issue of patentability of the claimed combination because it
does not relate to how the plastic sheet is made or how the plastic sheet is
used; rather, this limitation calls for the electrically conductive means to be
adapted to conduct an electrical current so as to heat the sheet sufficiently to
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soften the polymer material sheet to permit the sheet to be deformed. Reply
Br. 2.
The first issue presented by this appeal is whether the proposed
combination of Gross and Haag discloses an electrically conductive means
adapted to conduct electrical current to heat a sheet sufficiently to soften the
polymer material sheet to permit the sheet to be deformed as called for in
independent claim 1.
Appellant argues claims 14, 15, 19, and 20 as a group. App. Br. 5-9;
Reply Br. 3. We select claim 14 as the representative claim, and claims 15,
19, and 20 stand or fall with claim 14. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Haag’s conductive layer 12 is deposited on
material 16, and thus is not embedded in layer 16 as called for in
independent claim 14. Reply Br. 3. The Examiner found that Haag
discloses a thermoformed article (preformed heating element 10) with a
conductive layer 12 embedded therein. Ans. 4.
The second issue presented by this appeal is whether Haag discloses a
thermally deformed sheet of polymer material having an electrically
conductive means at least partially embedded therein as called for in
independent claim 14.
ANALYSIS
Rejection of claims 1, 2, 8-10, 14, 15, 19, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Gross and Haag
Claims 1, 2, 8-10
Independent claim 1 is directed to the combination of a plastic
material sheet for use in vacuum thermoforming and a source of electric
current, the sheet comprising a thermally deformable polymer material and
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an electrically conductive means. The electrically conductive means
includes at least a portion that is situated within the sheet, and is adapted to
conduct an electrical current sufficient to heat the sheet to soften the
polymer material sheet to permit it to be deformed. Appellant’s
Specification describes the conductive elements are internal to the
thermoform plastic material sheet so that heat from the conductive elements
is transferred directly to the plastic sheet. Spec. 13:2-4. Appellant’s
Specification further describes that when the conductive elements transfer
enough heat to soften the sheet, vacuum means 16 actuates and draws the
sheet over the mold, conforming the sheet to the mold’s surface. Spec. 13:4-
11.
We agree with Appellant’s claim construction that independent claim
1 calls for the electrically conductive means to be adapted to conduct an
electrical current so as to heat the sheet sufficiently to soften the polymer
material sheet to permit the sheet to be deformed. Because the Examiner’s
claim construction gave no patentable weight to this limitation, the Examiner
made no determination that the combined teachings of Gross and Haag
would have rendered such an electrically conductive means obvious,2 and

2 More specifically, the Examiner did not find that either Gross or Haag
discloses the claimed electrically conductive means. The Examiner found
that Gross does not explicitly show a thermally deformable polymer used for
vacuum thermoforming. Ans. 4. While the Examiner found that Haag
discloses a thermally deformable polymer material used for vacuum
thermoforming, the Examiner did not find that Haag discloses use of an
electrically conductive means adapted to heat the thermally deformable
polymer material sufficiently to soften said polymer material sheet to permit
it to be deformed. Id. Nor did the Examiner find that the device of either
Gross or Haag was capable of such use.
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consequently, the Examiner’s conclusion of obviousness is in error. Claims
2 and 8-10 depend from independent claim 1, and the rejection of these
claims suffers from the same shortcoming as that of independent claim 1.
Claims 14, 15, 19, and 20
Independent claim 14 is directed to a thermoformed article.
Independent claim 14, like independent claim 1, calls for the electrically
conductive means to be at least partially embedded in the sheet. However,
unlike claim 1, claim 14 does not call for the electrically conductive means
to be adapted to conduct an electrical current so as to heat the sheet
sufficiently to soften the polymer material sheet to permit the sheet to be
deformed. Also, claim 14 includes a limitation, not found in claim 1, that
the embedded portion of the electrically conductive means is in direct
contact with the polymer material sheet. Nothing in claim 14 precludes the
thermally deformed sheet of polymer material from being formed of two
sheets.
Haag discloses that the thermoformed article (preformed heating
element 10) is comprised of material 16, electrically conductive layer 12
deposited directly on material 16, and layer 19 applied on top of conductive
layer 12 and which encapsulates conductive layer 12. Haag 2, para. [0027];
3, paras. [0039]-[0040]. Appellant admits that Haag discloses a
thermoformed article comprised of material 16, electrically conductive layer
12, and layer 19 which is applied on top of the conductive layer 12. App.
Br. 6. As we stated supra, nothing in claim 14 requires the thermally
deformed sheet of polymer material to be formed from a single sheet of
material. Hence, we agree with the Examiner’s finding that Haag’s
preformed heating element 10, which includes conductive layer 12
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embedded therein, meets the claimed thermally deformed sheet of polymer
material.
We thus find that Haag anticipates claim 14. Hence, we affirm the
rejection of claim 14, and claims 15, 19, and 20 falling with claim 14, under
35 U.S.C. § 103, as anticipation is the epitome of obviousness, see In re
Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (citation omitted); In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (citation omitted), at least
where, as here, Appellant has provided no evidence of secondary indicia of
nonobviousness.
Rejection of claims 3-6, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Gross, Haag, and Rock; claims 7 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Gross, Haag, and Bayless; and claims 11 and
20 under 35 U.S.C. § 103(a) as unpatentable over Gross, Haag, Rock, and
Williams
Claims 3-7 and 11
Claims 3-7 and 11 depend indirectly from independent claim 1. The
Examiner’s rejection does not use Rock, Bayless, or Williams to overcome
the shortcomings of the combination of Gross and Haag identified in the
analysis of the rejection of claim 1, supra. Thus, we cannot sustain the
rejection of claims 3-7 and 11.
Claims 16-18 and 20
Claims 16-18 and 20 depend indirectly from claim 14. Appellant
relies upon the same arguments presented in response to the rejection of
claim 14 with respect to these claims. App. Br. 9-10. We find nothing in
claims 16-18 and 20 warranting a deviation from our conclusion regarding
independent claim 14, supra, and we thus sustain the rejection of claims 16
and 17 as unpatentable in view of Haag and Rock, the rejection of claim 18
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as unpatentable in view of Haag, Rock, and Bayless, and the rejection of
claim 20 as unpatentable in view of Haag, Rock, and Williams.
Rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Gross, Haag, and Karklin
Independent claim 12 is a method claim that, similarly to independent
claim 1, contains the limitation of “causing current to flow through the
conductive element so as to heat the sheet sufficiently to soften same.”
Claim 13 depends from claim 12 and consequently also contains this
limitation. The Examiner’s rejection of claims 12 and 13 does not use
Karklin to remedy the shortcomings of the combination of Gross and Haag
analyzed in the rejection of claim 1, supra. Thus, we cannot sustain the
rejection of claims 12 and 13.
CONCLUSIONS
The proposed combination of Gross and Haag does not disclose an
electrically conductive means adapted to conduct electrical current to heat a
sheet sufficiently to soften the polymer material sheet to permit the sheet to
be deformed as called for in independent claim 1.
Haag discloses a thermally deformed sheet of polymer material
having an electrically conductive means as least partially embedded therein
as called for in independent claim 14.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-13 and we
AFFIRM the Examiner’s decision to reject claims 14-20.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

nlk

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