Ex Parte SHANLEYDownload PDFPatent Trial and Appeal BoardMay 5, 201613008066 (P.T.A.B. May. 5, 2016) Copy Citation 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 Claims 1- 12 and 1 7 are withdrawn and claims 18 and 21 are cancelled.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 2 Appeal2014-001191 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, 3 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. 4 Appeal2014-001191 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 5 Copy with citationCopy as parenthetical citation