Ex Parte Shanley

Patent Trial and Appeal Board

Aug 29, 2018

14299115 (P.T.A.B. Aug. 29, 2018)

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
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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.).
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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.
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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
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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
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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
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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.
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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
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