Ex Parte ShanleyDownload PDFPatent Trial and Appeal BoardAug 29, 201814299115 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/299,115 06/09/2014 William C. Shanley IV 23370 7590 09/05/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 UNITED ST A TES OF AMERICA 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. 62219.910993 2866 EXAMINER HOHENBRINK JR, LAWRENCE D ART UNIT PAPER NUMBER 1743 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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 KTSDocketing2@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 Appeal2017-005419 Application 14/299, 115 Technology Center 1700 Before MICHELLE R. OSINSKI, BEYERL Y M. BUNTING, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-005419 Application 14/299,115 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant William C. Shanley IV appeals from the Examiner's decision, as set forth in the Final Office Action dated September 20, 2016 ("Final Act."), rejecting claims 21-26. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to selective thermoforming systems. Claims 21 and 26 are the independent claims on appeal. Claim 21, reproduced below with disputed limitations italicized for emphasis and with numbering in brackets added, is illustrative of the claimed subject matter: 21. A thermoforming system comprising: a. a plastic material (i) defining integral first and second regions and (ii) comprising printing in the second region; b. a mold configured to be evacuated; c. means for positioning the plastic material adjacent the mold; and d. means for [l] thermoforming the first region [2] but not thermoforming the second region following evacuation of the mold, such thermoforming means [3] (i) forming a holder of a coin in the first region and [ 4] (ii) avoiding material distortion of the printing in the second region. Claims 1-20 are cancelled. Appeal Brief, dated November 1, 2016 ("Appeal Br."), at 11-12 (Claims App.). 2 Appeal2017-005419 Application 14/299,115 REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Wendt Eschenfelder us 4,878,826 us 6,102,686 REJECTIONS Nov. 7, 1989 Aug. 15, 2000 The Examiner made the following rejections: 1. Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Eschenfelder. 2. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Eschenfelder and Appellant's Admitted Prior Art (Wendt). 2 3. Claims 21-26 stand rejected on the ground ofnonstatutory double patenting as being unpatentable over claims 1-3 and 5 of U.S. Patent No. 8,727,763 B2. Appellant seeks our review of the first two rejections. Appeal Br. 3. 2 The Examiner's summary statement does not reference the "admitted prior art (Wendt)" (see ,r 22 on Final Act. 6) but discusses it in detail in the substantive reasons for the rejection (see ,r 27 on Final Act. 7 and ,r 18 on Examiner's Answer dated February 6, 2017 ("Ans.") 6-7). Thus, we conclude that the omission of "admitted prior art (Wendt)" from the summary statement is a typographical error. 3 Appeal2017-005419 Application 14/299,115 DISCUSSION Rejection 1: Claims 21-25 as Unpatentable Over Eschenfelder Appellant argues claims 21-25 as a group. Appeal Br. 7-9. We select independent claim 21 as the representative claim, and dependent claims 22- 25 stand or fall with claim 21. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Eschenfelder discloses all of the limitations of claim 21. In particular, the Examiner finds that the regions of Eschenfelder' s substrate denoted by items 22 is thermoformed and corresponds to the claimed "first regions", and the regions between items 22 and covered by the clamp plate are not thermoformed and correspond to the claimed "second regions." Final Act. 5 (citing Eschenfelder 1:55---67, Fig. 2); Ans. 5---6. The Examiner also finds that Eschenfelder "discloses [that] the substrate may be printed with a single continuous layer of ink, thus the plastic material may comprise printing in both the first and second regions." Final Act. 5 ( citing Eschenfelder 2:64---65); Ans. 5---6. The Examiner further finds that Eschenfelder "discloses the apparatus is capable of thermoforming a contoured 3D workpiece from the plastic material" (Final Act. 5 ( citing Eschenfelder 1:64---65)) and "is capable ofholding coins" (Ans. 6 (citing Eschenfelder 1 :64---65, Fig. 5)). Appellant asserts that the rejection is erroneous because Eschenfelder does not perform all of the functions specified by the "means for thermoforming" required by claim 21, namely: [2] not thermoforming the [printed] second region [of the plastic material]; [3] forming a holder of a coin in the first region [ of the plastic material]; and 4 Appeal2017-005419 Application 14/299,115 [ 4] avoiding material distortion of the printing in the second region [ of the plastic material]. Appeal Br. 9. With respect to functions [2] and [ 4] above, Appellant asserts that "items 22 correspond[] to the 'second region' of [Appellant's] claimed printed material," and ''printed items 22 of the Eschen/elder patent intentionally are thermoformed so they may be raised above the remainder of substrate 20 by contact with tool faces 42." Appeal Br. 7 (citations omitted). The Examiner, however, finds that items 22 correspond to the first region, not the second region. Final Act. 5; Ans. 5---6. The Examiner correctly finds that Eschenfelder's second region (i.e., the regions between items 22 and covered by the clamp plate) contains printed material and is not thermoformed, as recited in claim 21. Id. Because Appellant does not address the rejection as articulated by the Examiner, Appellant does not identify error by the Examiner. With respect to function [3] above, Appellant concedes that Eschenfelder "discloses thermoforming 'a contouring three dimensional workpiece,"' but argues the workpieces are only "identified as being 'switch faces' for 'automotive instrument clusters"' and "[n]o thermoforming means producing 'a holder of a coin in the [thermoformed] region' is suggested by the Eschenfelder." Reply Br. 4. Appellant's argument is not persuasive. As the Examiner correctly finds, and Appellant does not dispute, Eschenfelder's first region (i.e., items 22) forms a "contoured 3D workpiece" "capable of holding coins," and "the claims do not recite any particular structure for the coin holder." Ans. 6. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual 5 Appeal2017-005419 Application 14/299,115 application is beyond that person's skill." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, Appellant does not persuasively explain why using the first region (i.e., item 22) to hold coins is beyond the capabilities of the skilled artisan. We note, for example, that item 22, without further modification, would apparently hold a small coin, as recited in claim 21. For the reasons above, the rejection of claim 21 is sustained. Appellant does not argue claims 22-25 apart from claim 1. We discern no error in the Examiner's rejection of claims 22-25, and also sustain the rejection of those claims. Rejection 2: Claim 26 as Unpatentable Over Eschenfelder and Wendt Claim 26 recites "means for heating the mold." The Examiner finds that Eschenfelder's riser plate 52 corresponds to the recited mold. Final Act. 6. The Examiner also finds that Eschenfelder "does not explicitly disclose a means for heating the mold," but Appellant's "admitted prior art [i.e., Wendt] discloses it is well known in the art to use a heating means comprising hot oil circulating through an associated manifold to heat a mold for the benefit of increasing the crystallinity of a sheet of plastic material." Id. at 7 (citing Specification 2:1-7 ("One such heating means is described as being hot oil circulating through an associated manifold such that it crystallizes a sheet of plastic material. See Wendt, col. 10, 11. 9-12.")). The Examiner determines that one of ordinary skill in the art would have found it obvious "to modify Eschen/elder with this well known technique to gain the benefit of increasing the crystallinity of the plastic material." Id.; Ans. 7 ("One of ordinary skill in the art at the time of 6 Appeal2017-005419 Application 14/299,115 the invention would appreciate applying this well-known technique to provide additional heat for increasing crystallinity and the results would have been predictable to one of ordinary skill in the art ( citing KSR, 550 U.S. at 415-421; MPEP § 2143(1)(C)). Appellant argues that in addition to the arguments provided with regards to Eschenfelder alone, the rejection is erroneous because: [the] apparatus of the Eschenfelder patent lacks any means for heating its riser plate 52, which the Examiner equates with Applicant's claimed mold. . . . This is because top and bottom ovens 3 8 and 40 of the Eschenfelder patent are used to heat both sides of plastic substrate 20, so no need to heat riser plate 52 exists. Appeal Br. 9-10. Appellant's arguments are not persuasive for the reasons discussed above with regards to Eschenfelder alone and additionally because it attacks Eschenfelder individually when the Examiner's rejection is based on the combination of Eschenfelder and Appellant's Admitted Prior Art (Wendt). In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). Here, the Examiner finds that Appellant's Admitted Prior Art discloses the recited means for heating and proposes to modify Eschenfelder "to gain the benefit of increasing the crystallinity of the plastic material," as described by Wendt. Final Act. 6-7; Ans. 6-7. Appellant does not address the Examiner's articulated reasoning for combining the teachings of Eschenfelder and Wendt, and, thus, does not identify error by the Examiner. 7 Appeal2017-005419 Application 14/299,115 Rejection 3: Claims 21-26-Nonstatutory Double Patenting Because Appellant "does not appeal the non-statutory double patenting rejection of the pending claims based on claims of related U.S. Patent No. 8,727,763" (Appeal Br. 3), the rejection is sustained. DECISION For the above reasons, the Examiner's rejections of claims 21-26 under 35 U.S.C. § 103 are AFFIRMED. The Examiner's rejection of claims 21-26 on the ground of nonstatutory double patenting is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation