Ex Parte Shepard et al

Board of Patent Appeals and Interferences

Feb 21, 2003

08684351 (B.P.A.I. Feb. 21, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte
ERWIN C. SHEPARD,
DEWAYNE R. HARTLEROAD,
and PAUL H. MITCHELL

Appeal No. 2002-0679
Application No. 08/684,351
ON BRIEF

____________________________
Before LIEBERMAN, DELMENDO and MOORE, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 21, 23 through 28, 30, 45 and 48, which are all the
claims pending in this application.
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Application No. 08/684,351
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THE INVENTION
The invention is directed to a sealed bladder inflated with a gas or liquid. The
bladder comprises a laminated membrane having thermoplastic polyurethane as a first layer
of the laminate. A second layer of the laminate is directed to a copolymer of ethylene and
vinyl alcohol. The contact between the first and second layer consists essentially of
hydrogen bonding. Additional limitations are described in the following illustrative claims.

THE CLAIM
Claim 1 is illustrative of appellants’ invention and is reproduced below.
1. A sealed bladder inflated with a media in the form of either a gas or liquid,
comprising:
a laminated membrane comprising
a first layer including a thermoplastic urethane that provides elasticity to said
laminated membrane; and
a second layer including at least one copolymer of ethylene and vinyl alcohol, said
second layer providing selective imperviousness from gaseous fluids to said laminated
membrane;
wherein contact between said first and second layers occurs upon laminating said
first and second layers together at a temperature of between about 300
to about 465
F
and consists essentially of hydrogen bonding.
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1Although the examiner restates the obviousness-type double patenting rejection, we consider both
of the rejections together.
THE REFERENCES OF RECORD
As evidence of anticipation and obviousness, the examiner relies upon the following
references:
Martin 4,513,058 Apr. 23, 1985
Kralik 4,660,831 Apr. 28, 1987
Smith 5,294,112 Mar. 15, 1994
Mitchell et al. (Mitchell) 5,952,065 Sep. 14, 1999

THE REJECTION
Claims 1, 2, 5, 11, 12, 16 through 18, 21 and 45 stand rejected under 35
U.S.C. §102(b) as anticipated by Martin.
Claims 1 through 21, 23 through 28, 30, 45 and 48 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Smith in view of Martin and Kralik
Claims 1 through 3, 5 through 7, 9 through 13, 15 through 19, 21, 23 through
26, 28, 30, 45 and 48 stand rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1 through 25 of U. S. Patent No.
5,952,065.1

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Application No. 08/684,351
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OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejections of the claims under
§§ 102(b) and103(a) are not well founded. Accordingly, we reverse both rejections.
We, however, agree with the examiner that the rejection of the grounds of obviousness-
type double patenting is well founded. Accordingly, we affirm this rejection.
The Rejection over Martin
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of
the elements of the claim must be found in one reference. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991).
Martin is directed to an inflatable polyurethane bladder. See column 12, lines
11-12. The bladder is prepared by applying a coating solution containing a polymer resin
to a polyurethane film. See column 1, lines 38-42. The class of coating films applied
include, among a limited number of coating resins, an ethylene vinyl alcohol polymer. See
column 2, lines 58-60. An ethylene vinyl alcohol polymer is exemplified in Example IV.
We find that the coating solution, “contains a small percent of an attack solvent which is
capable of dissolving the polyurethane film.” See column 1, lines 45-48. We find that
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utilization of the attack solvent provides improved bonding without dissolving the urethane
resin. See column 1, lines 50-52. As stated by Martin, “[b]y limiting the concentration
of the attack solvent, a fusion-type attachment can be obtained between the coated layer
and the polyurethane film." See column 3, lines 22-26. Finally, we find that the coating
is usually applied at room temperature, column 3, lines 45-48, and dried at a temperature
of 180 to 200o F. See column 3, lines 54-57.
In the statement of the rejection, however, the examiner does not address the
limitation of the claimed subject matter directed to the phrase, “wherein contact between
said first and said second layers occurs upon laminating said first and second layers together
at a temperature of between about 300o to about 465o F and consists essentially of
hydrogen bonding.” Only in the section directed to Response to Argument does the
examiner state that, "[t]here is nothing in the instant disclosure showing that the hydrogen
bonding is only occurred by contacting polyurethane layer and ethylene vinyl alcohol
copolymer layer at temperature of 300o to 465o F.” See Answer, page 7. The issue
before us, however, is not whether hydrogen bonding is present between polyurethane and
ethylene vinyl alcohol copolymer in Martin, but whether the contact is one that “consists
essentially of hydrogen bonding.” This is never addressed by the examiner and as such in
and of itself constitutes reversible error as the burden of proof rests with the examiner to
establish a prima facie case of anticipation and this element of the claim has not been
addressed.
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The Rejection under § 103(a)
The rejection of the claims as being unpatentable over Smith in view of Martin and
Kralik ultimately relies upon the disclosure of Martin for its teaching of a layer of
polyurethane next to a layer of ethylene vinyl alcohol copolymer. Smith is directed to a
bladder for holding pressurized air in a ball. See column 1, lines 11-12 and column 2,
lines 8-9. The bladder contains a series of thermoplastic elastomeric bands over an inner
core bonded together. See column 2, lines 10-12. The bladder comprises an inner core
which is preferably made of polyester or polyether urethane. See column 2, lines 52-57.
We find a disclosure of an alternative bladder wherein an inner core made of saran
(polyvinylidene chloride) and at least two outer bands of polyurethane material form a
bladder. See column 5, line 62 to column 6, line 3. There is however no disclosure of a
laminate of ethylene vinyl alcohol copolymer and thermoplastic polyurethane.
Kralik is likewise directed to an inflatable game ball having a bladder formed of at
least two layers of material. See column 1, lines 37-48. The bladder preferably contains
an outer and inner layer both made of polyurethane. See column 2, lines 51-53. There is
no disclosure of any polymers other than polyurethane.
Accordingly, this rejection ultimately relies upon Martin for its teaching and
disclosure of layers of polyurethane and ethylene vinyl alcohol copolymer. Each of the
independent claims before us requires contact at a temperature of 300o to about 465o F
and requires that the contact “consists essentially of hydrogen bonding.” See claims 1, 7,
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11, 17 and 24. As we discussed above in the rejection on the grounds of anticipation, the
examiner has not addressed the limitation directed to “consists essentially of hydrogen
bonding,” and this omission constitutes reversible error as the burden of proof likewise rests
with the examiner to establish a prima facie case of obviousness.
For the foregoing reasons, we determine that the examiner has neither established a
prima facie case of anticipation nor obviousness in view of the references of record.
Accordingly, the rejections are not sustained.
The Rejection Under Obviousness-type Double Patenting
All proper double patenting rejections rest on the fact that a patent has been issued
and a later issuance of a second patent will continue protection beyond the date of
expiration of the first patent of the very same invention claimed therein or of a mere
variation of that invention which would have been obvious to those of ordinary skill in the
relevant art. See In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986).
Our analysis of the examiner's rejection of claim1 under the doctrine of judicially
created double patenting parallels that for a § 103 rejection. While the double patenting
rejection is analogous to a failure to meet the non-obviousness requirement of 35 U.S.C.
§ 103, that section is not itself involved in double patenting rejections because the patent
principally underlying the rejection is not usually prior art. In re Braat, 937 F.2d 589,
592-93, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991); In re Longi, 759 F.2d 887,
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892-93, 225 USPQ 645, 648 (Fed. Cir. 1985); In re Braithwaite, 379 F.2d 594,
600 n.4, 154 USPQ 29, 34 n.4 (CCPA 1967). When considering whether the claimed
subject matter is an obvious variation of the invention defined in the claims of the Mitchell
patent, the disclosure of the patent may not be used as prior art. The specification
however can always be used as a dictionary to learn the meaning of a term in the patent
claim. In re Boylan, 392 F.2d 1017, 1018 n.1, 157 USPQ 370, 371 n.1 (CCPA
1968).
It is appellants' position that the claims of Mitchell fail to give rise to obviousness
type double patenting as the Mitchell claims do not disclose or suggest contact at the
temperatures required by the claimed subject matter. We disagree.
Claim 1 of Mitchell requires a membrane comprising two layers wherein one layer is
a thermoplastic polyurethane and the second layer is a copolymer of ethylene and vinyl
alcohol. Furthermore, claim 1 of Mitchell specifically requires that the reactive contact
“consists essentially of hydrogen bonding.” In contrast, the claimed subject matter likewise
requires the same components and that the contact is one which “consists essentially of
hydrogen bonding.” The claims further contain a product by process limitation of
“laminating said first and second layers together at a temperature of between about 300o
to about 465o F.” It is well settled however, that when appellants’ product and that of
the prior art appear to be identical or substantially identical, the burden shifts to the
appellant to provide evidence that the prior art product does not necessarily or inherently
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possess the relied-upon characteristics of appellants' claimed product. In re Fitzgerald, 619
F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re Best, 562 F.2d 1252,
1255-56, 195 USPQ 430, 433-34 (CCPA 1977). We conclude that inasmuch as the
laminate of Mitchell is prepared from the identical materials and has the requisite contact,
“which consists essentially of hydrogen bonding,” the claimed limitation likewise requiring
contact which “consists essentially of hydrogen bonding,” is met. Furthermore, the
appellants have not argued that the laminate of the claimed subject matter differs from that
of Mitchell let alone provided evidence that the product of the claimed subject matter
differs from the product of the Mitchell patent. Accordingly, we find no more than an
obvious variation between the claimed subject matter and that of the claims of Mitchell.
The appellants further argue that the claims are of a different scope stating that,
“there must be evidence that the variation of the narrower claims is obvious over the
broader claims to find a double patenting problem.” See Brief, page 18. We do not find
any patentable distinction in scope between the claims of the Mitchell patent and that of
the claimed subject matter. We acknowledge that the claims of Mitchell are directed to a
cushioning device. The appellants at least imply that the scope of a cushioning device is
broader than the scope of the sealed bladder of the instant claimed subject matter. In this
respect, we find that claim 25 of the patent is directed to a membrane “useful as a
cushioning device.” We find no unequivocal distinction between the membrane of claim
25 and the bladder of the instant claimed subject matter or for that matter from the
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2Webster’s 9th New Collegiate Dictionary, p. 157 (Merriam-Webster Inc., Springfield, MA,
1986).
cushioning device of claim 1 of Mitchell.
Our position is supported by Mitchell which in defining the term “cushioning
device," states that “a cushioning device [is] otherwise referred to herein as a membrane
in accordance with the teachings of the present invention.” See Mitchell column 7, lines
48-50. Furthermore, the term “bladder,” utilized in the claimed subject matter, is
ordinarily defined as “a membranous sac in animals that serves as the receptacle of a liquid
or contains gas: something (as the rubber bag inside a football) resembling a bladder.”2
Accordingly, even if the claims of Mitchell are broader than those of the claims subject
matter herein, we conclude that the claims of the instant application are merely an obvious
variation of the claims of the Mitchell patent. See In re Vogel, 422 F.2d 438, 441, 164
USPQ 619, 622 (CCPA 1970).
As such, claims 1 through 3, 5 through 7, 9 through 13, 15 through 19, 21, 23
through 26, 28, 30, 45 and 48 at issue constitute an extension of protection within the
meaning of obviousness-type double patenting and the rejection is sustained as to those
claims.
DECISION
The rejection of claims 1, 2, 5, 11, 12, 16 through 18, 21 and 45 under 35
U.S.C. §102(b) as anticipated by Martin is reversed.
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The rejection of claims 1 through 21, 23 through 28, 30, 45 and 48 under 35
U.S.C. §103(a) as being unpatentable over Smith in view of Martin and Kralik is reversed.
The rejection of claims 1 through 3, 5 through 7, 9 through 13, 15 through 19,
21, 23 through 26, 28, 30, 45 and 48 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1 through 25 of U. S.
Patent No. 5,952,065 is affirmed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
PAUL LIEBERMAN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
Appeal No. 2002-0679
Application No. 08/684,351
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JAMES T. MOORE )
Administrative Patent Judge )
PL/lp
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