Ex Parte Reynolds

Board of Patent Appeals and Interferences

Jul 22, 2005

09486875 (B.P.A.I. Jul. 22, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD ARTHUR REYNOLDS
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Appeal No. 2005-1484
Application 09/486,875
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ON BRIEF
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Before KIMLIN, WARREN and JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief1 and reply brief,
and based on our review, find that we cannot sustain the rejection of appealed claims 1, 9, 11 and
12,2 all of the claims in the application, under 35 U.S.C. § 103(a) as being unpatentable over
Eagles in view of Mathellier.3
It is well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill

1 We consider the brief filed July 27, 2004.
2 See the appendix to the brief and the amendment filed July 27, 2004.
Appeal No. 2005-1484
Application 09/486,875
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in this art would have led that person to the claimed invention as a whole, including each and
every limitation of the claims arranged as required by the claims, without recourse to the
teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness
is whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); see also In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor
is it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”).
We have carefully considered the record before us and based on our review, find that we
agree with appellant’s argument that neither reference evinces removing a portion of the rear
surface of each of the two plastic extrusions at the miter joint and then “restoring,” in claim 9, or
“rebuilding,” in claim 11, the portion of each of the extrusions that was removed (brief,
unnumbered page 4).
We are mindful that in this respect, the examiner finds that “[t]o rebuild the removed
portion, Eagles inserts element 24 into the void left by the removed portion” and that “Mathellier
shows that it is known to carry out a method of rebuilding a removed back corner of an
extrusion” (answer, pages 4-5). However, we find that in Eagles Fig. 4, after the mitered gasket
sections from which a portion of base 20 and retaining portion 21 have been removed and a piece
of uncured or vulcanizable rubber 26 has been inserted therebetween in mold female part 23,
L-shaped mold male part 24 is inserted into such areas of the mitered gaskets for the purpose of

3 The examiner states that the ground of rejection is set forth in the Office action mailed
Appeal No. 2005-1484
Application 09/486,875
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holding the gaskets in place during the curing or vulcanizing process forming the completed joint
with uncured or vulcanizable rubber 26 which bonds the gasket sections (page 1, second col., l.
32, to page 2, first col., l. 32). Thus, Eagles would not have taught one of ordinary skill in this
art to rebuild the removed portions of the gasket sections, and we find no teaching or suggestion
in the teachings in Mathellier to rebuild the outer face or surface of sealing portion 4 of the
disclosed sealing strip as shown in Mathellier Fig. 1 (e.g., col. 3, l. 57, to col. 4, l. 4) which
would have led this person to rebuild the interior or back portion of the gasket sections of Eagles.
Accordingly, we are of the opinion that at best, the combined teachings of Eagles and
Mathellier would have reasonably suggested to one of ordinary skill in this art to inject the
bonding material 26 rather than insert a piece of such material between the two gasket sections in
the mold of Eagles which, of course, would not have resulted in the claimed method
encompassed by the appealed claims. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
The examiner’s decision is reversed.

\

February 17, 2004 (answer, page 3).
Appeal No. 2005-1484
Application 09/486,875
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Reversed

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

Appeal No. 2005-1484
Application 09/486,875
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