Ex parte Savonuzzi

Board of Patent Appeals and Interferences

Oct 26, 1999

08133283 (B.P.A.I. Oct. 26, 1999)

Application for patent filed October 7, 1993. 1
According to appellant, this application is a continuation of
Application No. 07/780,060 filed October 21, 1991, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREA SAVONUZZI
____________
Appeal No. 1996-4072
Application No. 08/133,2831
____________
ON BRIEF
____________
Before PAK, OWENS and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 46-57, 59, 61 and 63-65. Claims 58, 60
Appeal No. 1996-4072
Application No. 08/133,283
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and 62, which are all of the remaining claims pending in this
application, stand objected to as being dependent upon a
rejected base claim (answer, page 2).
BACKGROUND
The appellant's invention relates to a method of forming
a panel member useful in an automobile. An understanding of
the invention can be derived from a reading of exemplary
claims 46 and 59, which are reproduced below.
46. A method of producing an essentially self-supporting
stratiform article usable as an interior automotive panel,
comprising the steps of:
disposing a pre-formed, contoured laminate insert
comprising a generally flexible outer cover and an inner
thermoplastic layer in a female mold shaped in conformity with
the outer cover of the insert, with the outer cover disposed
in conformity with the female mold but having an exposed edge
portion; and
injection molding a thermoplastic polymer composition
that is substantially compatible with the inner thermoplastic
layer into a mold cavity formed by a male mold and the female
mold containing the insert so that the thermoplastic
composition substantially fills the cavity, contacts the
thermoplastic layer and interfuses therewith, and the
thermoplastic polymer composition contacts and covers the
exposed edge portion of the insert on its front, back and
edge;
allowing the thermoplastic polymer composition to
solidify, thereby forming a substrate which is interbonded to
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the inner thermoplastic layer of the insert, and having a
recess in which the edge portion of the insert is disposed,
wherein the insert covers only a portion of an outer surface
of the substrate, the substrate and insert together forming a
panel member; and
removing the panel member from the mold cavity.
59. A method of producing an essentially self-supporting
stratiform article usable as an interior automotive panel,
comprising the steps of:
disposing a pre-formed, contoured laminate insert
comprising a generally flexible outer cover consisting
essentially of a material selected from a textile material and
a leather, and an inner thermoplastic shielding layer, in a
female mold shaped in conformity with the outer cover of the
insert, with the outer cover disposed in conformity with the
female mold;
then injection molding a thermoplastic polymer
composition that is substantially compatible with the inner
thermoplastic shielding layer into a mold cavity formed by a
male mold and the female mold containing the insert so that
the thermoplastic composition substantially fills the cavity,
contacts the thermoplastic shielding layer and interfuses
therewith, the thermoplastic shielding layer acting as a
permeation barrier for the thermoplastic polymer composition;
allowing the thermoplastic polymer composition to
solidify, thereby forming a substrate which is interbonded to
the shielding layer of the insert, the substrate and insert
together forming a panel member; and
removing the panel member from the mold cavity.
Appeal No. 1996-4072
Application No. 08/133,283
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Morello et al. (Morello) 4,307,058 Dec.
22, 1981
Bree 4,481,160 Nov.
06, 1984
European Patent Application 0 326 408 Aug. 02,
1989
(Uchiyama)
Claims 46-57, 59, 61 and 63-65 stand rejected under 35
U.S.C. § 103 as being unpatentable over Morello in view of
Bree and Uchiyama.
OPINION
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellant that the applied
prior art fails to establish a prima facie case of obviousness
of the claimed subject matter. Accordingly, we will not
sustain the examiner's rejections.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
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obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). Furthermore, the
conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
The examiner relies on Morello for the teaching of
placing an applique (15, fig. 3) in a molding cavity prior to
injection molding a base material (11) in the formation of a
panel. The examiner notes that Morello discloses forming more
layers on the "resultant panel" (answer, page 3). Morello
does not teach that the applique as placed in the mold
comprises more than one layer. Moreover, the examiner
acknowledges that Morello does not expressly disclose covering
the exposed edge portion of the applique (insert) on its
front, back and edge as called for in claim 46 (answer, pages
5 and 6).
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Bree discloses a method of producing a decorative emblem
using a multi-step casting method for encapsulating a foil in
plastic material, the foil, for example, being inserted and
pressed into a bezel base that is previously covered with
plastic material so that the plastic material forms a bead
around the upper periphery thereof (column 2, lines 20-60).
Other methods of using plastic material, the foil, and bezel
in forming a decorative emblem are also disclosed (column 3,
lines 9-35).
Uchiyama (column 2, line 36 through column 3, line 11)
discloses a method of forming a multilayered molding that
includes the steps of bringing a multi layer sheet or film
including an intermediate foamed layer or a single layer film
into contact with a mold inner surface, clamping the mold, and
injecting synthetic resin into the mold to form the composite
product molding. The various layers are comprised of
specified resins with the outer layer including a rubber
material. The resultant product may be used in automobile
parts.
According to the examiner (answer, page 4), it would have
been obvious to use a multi layer laminate in the process of
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Morello (presumably as the applique thereof) and to
"encapsulate the ends of the decorative film." Appellant
argues, in effect, (brief, pages 10-13) that the examiner has
not established how the subject matter defined by the appealed
claims can be arrived at from the applied references'
teachings without the application of impermissible hindsight
reasoning. On this record, we agree with appellant.
With regard to claim 46 and the claims depending
therefrom, the examiner has not adequately explained how the
cited art would have reasonably suggested a modification to
the process of Morello to include the use of a preformed,
contoured laminate having both a flexible outer cover and an
inner thermoplastic layer with an exposed edge portion as a
mold insert (applique) wherein the insert covers only a
portion of an outer surface of the substrate formed in the
injection mold and includes an exposed edge portion that is
covered on its front, back and edge by the injection molded
polymer. In this regard, we note that Uchiyama, which is
relied upon by the examiner for showing the use of a multi
layer film positioned in a mold before injection molding, does
not teach the provision of an exposed edge portion of the
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multi layer film being covered on its front, back and edge
with polymer during the injection molding step so as to cover
only a portion of the substrate formed in the injection mold.
Rather, Uchiyama teaches using a multi layer film to "cover
the opening portion of the cavity" (page 5 and figure 1),
which would result in the substrate formed in the mold being
covered with the multi layer film as apparently intended by
Uchiyama to obtain a desired surface layer. Additionally, it
is our opinion that the teachings of Bree regarding the
migration of plastic around the edges of a foil in the
manufacture of a decorative emblem using a preformed bezel to
which the foil is thereby bonded would not have suggested a
modification of the injection molding process of Morello as
suggested by the examiner.
The examiner apparently appreciates that the laminate
insert called for in claim 59 requires an outer cover made of
leather or textile material (answer, page 7); however, the
mere assertion by the examiner that such materials are known
(answer, page 7) does not adequately explain how the examiner
considers that it would have been obvious to form the applique
of Morello with separate inner and outer layers as called for
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by claim 59. In this regard, we also note that the relied on
Uchiyama reference does not disclose or suggest the use of
leather or textile materials for forming the outer layer of a
multi layer film placed in the mold, but rather specifically
calls for resinous materials and rubber as the outer layer
thereof (page 3, lines 24-59).
From the above, it is not clear how the teachings of
Uchiyama and Bree would have suggested modifications of the
process of Morello to arrive at the claimed invention herein.
Here, the most that can be concluded from the collective
teachings of the applied references is that it might have been
obvious for one of ordinary skill in the art to try selecting
a multi layer preformed laminate as the applique to be used in
the process of Morello as generally taught by Uchiyama. Of
course, it is by now well settled that such is not the proper
standard for determining obviousness under 35 U.S.C. § 103.
In this regard, our court of review has made clear that
"obvious to try" is not the correct standard for determining
obviousness under 35 U.S.C. § 103. See In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). In
our view, the examiner has not furnished an adequate
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evidentiary foundation from which a conclusion of obviousness
can be reached.
Accordingly, we are constrained to reverse the rejection
of the appealed claims under 35 U.S.C. § 103 because the
examiner has simply failed to meet his burden of establishing
an evidentiary record to establish a prima facie case of
obviousness of the claimed subject matter as a whole within
the meaning of 35 U.S.C. § 103.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 46-57, 59, 61 and 63-65 under 35 U.S.C. § 103 as being
unpatentable over Morello in view of Bree and Uchiyama is
reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1996-4072
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bae
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Timothy G. Newman
Brooks & Kushman
1000 Town Center
Twenty-Second Floor
Southfield, MI 48075