Ex parte Stiles

Board of Patent Appeals and Interferences

Jun 15, 1999

08172773 (B.P.A.I. Jun. 15, 1999)

Application for patent filed December 27, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNEST D. STILES
____________
Appeal No. 96-3501
Application No. 08/172,7731
____________
ON BRIEF
____________
Before JOHN D. SMITH, HANLON and SPIEGEL, Administrative
Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 and 2, all the claims
remaining in this application.
Claim 1 is representative and is reproduced below:
1. A method of making a plastic fuel tank having an
integrally molded heat shield comprising:
Appeal No. 96-3501
Application No. 08/172,773
2
placing said heat shield against the interior surface of
a mold, said heat shield having an insulating layer contacting
said interior mold surface and a polyolefin foam pad having a
heat fusible surface;
extruding a hot pliable parison within said mold;
inflating said parison and causing said parison to
contact said heat fusible surface of said pad; and
raising and lowering the pressure within said parison
wherein said parison and said fusible surface of said pad
intermingle and fuse.
As evidence of obviousness, the examiner relies on the
following references:
Giese et al. (Giese) 4,617,077 Oct. 14,
1986
Ufer et al. (Ufer) 4,830,810 May 16,
1989
Ohashi et al. (Ohashi) Kokai 59-81221 May 10, 1984
The appealed claims stand rejected under 35 U.S.C. § 103
as unpatentable over Ohashi in view of Ufer or Giese.
The subject matter on appeal is directed to a method of
integrally molding a plastic fuel tank with a heat shield
having, inter alia, a polyolefin foam pad having a heat
fusible surface. In appellant’s method, the heat shield is
placed within the interior of an open blow-molding tool
wherein a plastic parison is extruded and inflated to cause
the parison to contact the heat fusible surface of the
Appeal No. 96-3501
Application No. 08/172,773
Appellant’s brief contains no specific arguments or2
analysis of Ohashi, nor any arguments that the references have
been improperly combined.
3
polyolefin foam pad. Importantly, the pressure within the
parison is raised and lowered to cause the parison and heat
fusible surface of the foam pad to intermingle and fuse when
“the pad and parison are made from the same material”
(specification, page 3, lines 14-16). This is said to insure
a secure attachment of the fuel tank to the heat shield
(brief, page 2).
As evidence of obviousness of the claimed method, the
examiner relies on the disclosures in Ohashi, Geise, and Ufer.
That Ohashi discloses a method of making a plastic fuel tank
substantially identical to that claimed with the exception of
the pressure raising and lowering step is not disputed by
appellant. Appellant contends, however, that none of the2
references teach “increasing and decreasing the pressure
within the parison to aid in intermingling the foam and
parison interfacial surfaces (emphasis added).” See the brief
at page 4, lines 1-4. Appellant acknowledges that Giese and
Ufer teach pressure changes to promote fluorination of a blow
Appeal No. 96-3501
Application No. 08/172,773
4
molded container, but appellants emphasize the changing the
pressure during a fluorination step “is not at all suggestive
of the welding action currently claimed.” See the brief at
page 4, lines 21 and 22.
Based on the disclosure in Giese at column 4, lines 3-28,
it may be somewhat speculative to argue, as the examiner has
in the answer at page 6, that increasing and decreasing the
pressure during the conventional fluorination step would
inherently lead to “some degree of enhanced intermingling as
claimed.” The examiner’s broader finding, however, that
Giese and Ufer show that “pressurization/depressurization
steps” are “conventional in enhancing the blow molding of
thermoplastic articles” (answer, page 4) is factually
supported in Geise at column 7, line 52 to column 8, line 17
which indicates that plastic components to be mounted to the
inner surface of a blow molded hollow body may be welded “in
the course” of raising the pressure to a value of about 6 bars
(column 7, lines 62 and 63) and that the pressure may then be
reduced at a time when the blow molded body “has not yet
hardened or which is only partially hardened” (column 8, lines
13 and 14). These teachings, in our view, are suggestive of
Appeal No. 96-3501
Application No. 08/172,773
No claim on appeal is limited to “alternatingly” raising3
and lowering the pressure to form a type of “pulsing” as
described in the specification at page 7, lines 1-6.
5
“the welding action currently claimed” . A similar teaching3
is found in Ufer at column 2, lines 60 and 61 and Figure 2
which illustrates a preferred pressure sequence for a prior
art blow molding operation.
Although appellant argues that the claimed method results
in an enhanced attachment strength of the weld between the pad
and parison (brief, page 3), no objective evidence is of
record demonstrating that a weld strength produced by the
claimed method differs at all from the weld strengths produced
by the prior art processes.
In view of the above, we affirm the rejections of the
appealed claims under 35 U.S.C. § 103. However, because we
have relied on portions of the prior art references not
specifically referred to in the answer as factual support for
the obviousness conclusion, we denominate our affirmance as
involving a new rejection under 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
Appeal No. 96-3501
Application No. 08/172,773
6
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “a new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 96-3501
Application No. 08/172,773
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Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of
Appeal No. 96-3501
Application No. 08/172,773
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Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for
reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED; 37 CFR § 1.196(b)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
jrg
Damian Porcari
Ford Motor Company
Parklane Towers East
Suite 911, One Parklane Boulevard
Dearborn, MI 48126