Ex Parte Salameh et al

Board of Patent Appeals and Interferences

Apr 9, 2008

10844927 (B.P.A.I. Apr. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RALF SALAMEH and THOMAS HEMMRICH
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Appeal 2008-1189
Application 10/844,927
Technology Center 1700
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Decided: April 9, 2008
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the decision of the Examiner finally rejecting
claims 10-13. Claims 1-9 and 14-16 are also pending in the application and
stand finally rejected, but are not the subjects of this appeal. (App. Br. 1).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2008-1189
Application 10/844,927

The invention relates to a process for creating a seal on a component
(Spec. [0002]), for example, a seal positioned in the flange of an oil pan used
in an automobile (Spec. [0020]). Claims 10 and 11 are illustrative of the
invention and are reproduced below:
10. The process of claim 1 including heating the surface of the
component and applying the uncured sealant material to the heated surface.1

11. A process for forming a seal on a surface of the component,
comprising:

applying a layer of uncured sealant material to the surface of the
component;

providing a tool having a face with a contour corresponding to the
desired shape of the seal therein; and

moving the face of the tool toward the layer of uncured sealant
material on the surface of the component and imprinting the material by
causing at least a portion of the layer of material to conform substantially
with the contour of the tool.

The Examiner relies on the following prior art references to show
unpatentability:
Gibbon U.S. 4,719,065 Jan. 12, 1988
Tensor U.S. 5,885,514 Mar. 23, 1999

1 Claim 1 reads as follows:
1. A process for forming a seal on a surface of a component,
comprising:
applying uncured sealant material onto the surface of the component;
and
contacting the sealant material with a heated shaping tool to shape and
cure the sealant material to yield a finished seal on the surface of the
component that is imprinted with the shape of the tool.
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Appeal 2008-1189
Application 10/844,927

Appellants appeal from the following rejections:
1. Claim 11 under 35 U.S.C. § 102(b) as anticipated by Gibbon.
2. Claims 10 and 12 under 35 U.S.C. § 103 as unpatentable over
Gibbon in view of Tensor.
3. Claim 13 under 35 U.S.C. § 103 as unpatentable over Gibbon in
view of Tensor.

Rejection of claim 11 under 35 U.S.C. § 102(b) as anticipated by
Gibbon
The Examiner finds that Gibbon discloses a process of forming a seal
on a surface of a component which meets the limitations of claim 11. More
specifically, the Examiner finds that Gibbon discloses a process comprising
“applying uncured sealant material (silicone rubber) onto the surface of the
component (metal member) and contacting the sealant material with a heated
shaping tool (mold) to shape and cure the material to yield a finished seal on
the surface of the component that is imprinted with the shape of the tool.
(Answer 3-4, citing Gibbons claim 1). Appellants contend that the Examiner
erred in rejecting claim 11 as anticipated by Gibbon, because Gibbon fails to
disclose a step of "moving a tool toward a layer of uncured sealant that has
been applied to a component.” (Reply Br. 2). The Examiner responds by
arguing that claim 11 requires only a relative movement between the face of
the tool and the sealant material. (Answer 6). The Examiner thus maintains
that the claim 11 step of “moving” is met by Gibbon’s step of “contacting
the sealant material with a heated shaping tool (mold).” (Answer 4).
Based on the contentions of the Appellants and the Examiner, the first
issue presented is: Has the Examiner correctly interpreted claim 11 as
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Appeal 2008-1189
Application 10/844,927

requiring only a relative movement between the face of the tool and sealant
material? We answer this question in the affirmative.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the Specification as they would be understood
by one of ordinary skill in the art. See In re Bigio, 381 F.3d 1320, 1324-25
(Fed. Cir. 2004)(noting that the PTO should only limit the claim based on an
express disclaimer of a broader definition). In our view, the Examiner’s
interpretation of the claim 11 step of “moving” as requiring only a relative
movement between the face of the tool and sealant material is reasonable in
light of the Specification. In particular, we note that the Specification
broadly states that “the sealant material 3 is brought into operational contact
with a preheated tool 5.” (Spec. [0020]). Appellants have not presented
persuasive arguments or evidence to support a narrower claim interpretation.
Having determined that the Examiner properly interpreted the
language of claim 11, we consider a second issue: Has the Examiner
correctly found that Gibbon’s step of “contacting the sealant material with a
heated shaping tool (mold)” involves relative movement between the face of
the tool and sealant material such that Gibbon discloses a step of “moving”
as claimed in claim 11. We likewise answer this question in the affirmative.
Appellants argue that Gibbon’s process does not involve “moving any
structure relative to the uncured silicone” because Gibbon injects uncured
material directly into a mold cavity in which the structures are fixed. (Reply
Br. 3). Appellants thus focus on the fact that Gibbon does not disclose
movement of a tool (i.e., the mold), but fail to address the basis for the
Examiner’s rejection which is that Gibbon discloses relative movement
which falls within the scope of the claimed “moving” step. In other words,
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Appeal 2008-1189
Application 10/844,927

Appellants have not presented arguments which establish that that the
Examiner erred in determining that the claim 11 step of “moving” is met by
the movement of uncured silicon rubber relative to the mold during injection
of the uncured silicon rubber material into the mold cavity during Gibbon’s
step of contacting. See Answer 6 (“moving of the sealant towards the plate
will effect the moving of the plate towards the sealant as claimed”). Cf. In
re Freeman, 108 F.2d 244, 245 (CCPA 1939) (“[A]ppellants rely not on the
steps in their process to define patentable invention, but rather upon the
means by which their process is carried out. It is well settled that the means
employed cannot lend patentability to a claimed method.”).
The decision of the Examiner rejecting claim 11 as anticipated by
Gibbon is affirmed.
Rejection of claims 10 and 12 under 35 U.S.C. § 103 as unpatentable
over Gibbon in view of Tensor
The Examiner finds that Gibbon discloses the invention as claimed in
claims 10 and 12 with the exception of heating the surface of the mold and
applying the uncured sealant material to the heated surface. (Answer 4).
The Examiner notes that Tensor applies uncured sealant material to a surface
at a temperature of 15-50 ºC. (Answer 4). According to the Examiner, 50
ºC constitutes a “heated condition.” (Answer 4). The Examiner contends
that it would have been obvious to have heated Gibbon’s mold surface prior
to applying the sealant material in order to improve flowability and
formability of the sealant material as taught by Tensor. (Answer 4).
Appellants argue that both Gibbon and Tensor specifically disclose
applying sealant to a surface which is at room-temperature. (Reply Br. 1).
Appellants thus contend that the combined teachings of Gibbon and Tensor
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Application 10/844,927

fail to disclose or suggest a step of “heating the surface of the component
and applying the uncured sealant material to the heated surface” as recited in
claims 10 and 12.
Based on the contentions of the Examiner and the Appellants, the
issue presented is: Has the Examiner provided a reasonable basis to
conclude that Tensor’s process necessarily includes a step of heating the
mold surface when uncured sealant material is applied to a mold surface
having a temperature of 50 ºC? We answer this question in the negative.
As pointed out by Appellants, Tensor defines a temperature range of
15-50 ºC as “ambient temperature” (Reply Br. 1 (citing Tensor, col. 3, l.
55)). “Ambient” is defined as “surrounding” or “encircling.” The American
Heritage® Dictionary of the English Language, Fourth Edition. In other
words, Tensor’s mold surface is at the temperature of the surrounding
environment, i.e., room temperature. The Examiner has not identified any
disclosure in Tensor which supports a finding that Tensor’s process includes
a step of heating the surface of the component either directly or indirectly,
e.g., by heating the surrounding environment or through the initial contact of
heated elastomer with the mold surface (see Answer 5). To the contrary,
Tensor implies that additional heating steps are undesirable since an
objective of the invention is to allow “for faster, lower cost injection
molding when compared to a typical injection molding machine which
requires high pressures . . . and high temperatures” (Tensor, col. 1, ll. 63-66).
Therefore, we are in agreement with Appellants that the combined teachings
of Tensor and Gibbon fail to teach or suggest a step of “heating the surface
of the component” prior to applying the uncured sealant material.
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Appeal 2008-1189
Application 10/844,927

We note that we would have reached this same conclusion even if the
Examiner had established that the ordinary artisan would have understood
Tensor’s disclosure as suggesting the use of a heating step to raise the
temperature of the mold surface to 50 ºC. As pointed out by Appellants,
“Gibbon specifically teaches cooling the component prior to introducing the
sealant material” (Appeal Br. 3, citing Gibbon, col. 2, ll. 63-64); Gibbon,
col. 4, ll. 48-55 (stating that the metal rails are allowed to cool to room
temperature prior to placing them in the mold cavity and injecting the
uncured sealant). Thus, we are in agreement with Appellants that the
ordinary artisan would have been discouraged from including in Gibbon’s
process a step of heating the mold and applying uncured sealant material to
the heated surface. (App. Br. 3).
The decision of the Examiner rejecting claims 10 and 12 as obvious
over Gibbon in view of Tensor is reversed.

Rejection of claim 13 under 35 U.S.C. § 103 as unpatentable over
Gibbon in view of Tensor
In rejecting claim 13, the Examiner again relies on a finding that
Tensor discloses a process which includes a step of heating the mold prior to
applying uncured sealant material. Having determined that this finding is
not supported by the reference disclosure for the reasons stated in connection
with rejection of claims 10 and 12, we likewise reverse the decision of the
Examiner rejecting claim 13 as obvious over Gibbon in view of Tensor.

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Appeal 2008-1189
Application 10/844,927

ORDER
The decision of the Examiner rejecting claim 11 is affirmed. The
decision of the Examiner rejecting claims 10, 12, and 13 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(i)(iv).
AFFIRMED-IN-PART

PL Initial:
sld

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