Ex Parte Shanley

Patent Trial and Appeal Board

May 5, 2016

13008066 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/008,066 01/18/2011 WILLIAM C. SHANLEY IV
23370 7590 05/09/2016
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
62219/412383 8050
EXAMINER
CHEUNG, CHUN HO!
ARTUNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
05/09/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM C. SHANLEY, IV
Appeal2014-001191
Application 13/008,066
Technology Center 3700
Before NEALE. ABRAMS, BEYERL Y M. BUNTING, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, William C. Shanley, IV, appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 13-16 and 19-21. Claims 1-
12 and 1 7 are withdrawn and claims 18 and 21 are cancelled. Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-001191
Application 13/008,066
THE CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and methods for selective
thermoforming. Spec. 1 (Title). Claim 13, reproduced below, is the only
independent claim and illustrative of the claimed subject matter:
13. A thermoformed product comprising integral first and
second regions, the first region having been thermoformed but
not printed and the second region having been printed but not
thermoformed.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Benardelli us 5,033,774 July 23, 1991
REJECTIONS
The Examiner made the following rejection:
1. Claims 13-16 and 19-21 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Benardelli.
Appellant seeks our review of the rejection.
OPINION
Appellant argues claims 13-16 and 19-21 as a group. Br. 5-7. We
select claim 13 as the representative claim, and claims 14--16 and 19-21
stand or fall with claim 13. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner states that claim 13 is a product-by-process claim. The
only reason given for this conclusion is that
appellant discloses a package that is formed by a process of
thermoformed, and the phrase "thermoformed" is incorporated
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Application 13/008,066
in product claim 13 making claim 13 a product (product) -by-
process (thermoformed) claim. In appellant's specification
(Specification, page 1, lines 12-14 ), appellant also describe a
"thermoforming process" which involves heating a polymer
sheet to a pliable forming temperature, and forming a sheet to a
specific shape on a mold." Thermoforming is clearly a process.
Ans. 3. The Examiner reasons that
Applicant clearly claiming the product-by-process claim, the
determination of patentability in a product-by-process claim is
based on the product itself, even though the claim may be limited
and defined by the process. That is, the product in such a claim
is unpatentable if it is the same as or obvious from the product of
the prior art, even if the prior product was made by a different
process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). A product-by-process limitation adds no
patentable distinction to the claim, and is unpatentable if the
claimed product is the same as a product of the prior art. (Same
cite as above). With regarding to this current application,
Benardelli discloses all the structural limitations as claimed by
the applicant but having a different process of making the
product. The product as claimed is still unpatentable if it is the
same as or obvious from the product of the prior art, even if the
prior product was made by a different process.
Final Act. 4.
In response, Appellant argues that independent claim 13 is not a
product-by-process claim.
Axiomatic is that "[a] product-by-process patent is one
which claims [a] product in terms of a process of preparation
described in the patent." See, e.g., G. Walsh, ed.,
"Biopharmaceuticals, an Industrial Perspective," p. 250 (1999).
Identified in Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282,
1291-92 (Fed. Cir. 2009) are multiple examples of product-by-
process claims, including recitations such as "the molded
innersole produced by the method of claim 1," crystalline
cefdinir "which is obtainable by acidifying a solution ... at room
temperature or under warming," or "[a]rtificial alizarine,
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Appeal2014-001191
Application 13/008,066
produced ... by either of the methods herein described." By
contrast, claims lacking "descriptions of processes used to
obtain" products are not "product-by-process" claims under U.S.
law. Id.
Appeal Br. 5. Appellant explains that
claim 13 merely specifies characteristics of two integral regions
of a thermoformed product, with one region having been
thermoformed but not printed and another region printed but not
thermoformed. Such a claim is analogous to one describing a
chair with one component being smoothed but not curved and
another component being curved but not smoothed. In neither
instance is any "process of preparation" recited or otherwise
included in the claim, precluding either claim from being
characterized as a "product-by-process" claim as the Examiner
alleges.
Id. We agree with Appellant that the limitations in claim 13 to "the first
region having been thermoformed" and "the second region having been
printed but not thermoformed" recite physical characteristics of the recited
first and second regions, not a process for preparing the two regions. We
cannot sustain the Examiner's finding that claim 13 is a product-by-process
claim.
Turning to Bemadelli, Appellant argues that Bemadelli does not
discloses the "second region" required by claim 13. As Appellant correctly
states, Bemadelli teaches that
the entirety of upper element 1 is thermo/ ormed, consistent with
conventional practices. See Benardelli Patent, col. 3, n. 32-34.
Upper element 1 thus undeniably lacks any "second region" that
is "printed but not thermoformed" as required by claim 13.
Appeal Br. 6. Thus, Bemadelli fails to anticipate the subject matter recited
in independent claim 13 and, therefore, the rejection of claim 13 and
dependent claims 14--16 and 19-21 is not sustained.
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Application 13/008,066
DECISION
For the above reasons, we REVERSE the Examiner's rejection of
claims 13-16 and 19-21under35 U.S.C. § 102(b) as being anticipated by
Benardelli.
REVERSED
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