Ex Parte Sudo et al

Board of Patent Appeals and Interferences

Mar 27, 2008

09956215 (B.P.A.I. Mar. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MASAMICHI SUDO, MORIHIRO SUDO, and KOUICHI ASAI
___________

Appeal No. 2008-0122
Application No. 09/956,215
Technology Center 3700
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Decided: March 27, 2008
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Before WILLIAM F. PATE, III, TERRY J. OWENS, and DAVID B. WALKER,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal from a rejection of claims 1-4, 7 and 8, which are all
of the pending claims.
THE INVENTION
The Appellants claim a rubber member and a rubber article comprising a
rubber sheet connecting one or more rubber members. The Appellants state that
the rubber member is useful as a closure to be inserted into the mouth of a
container or as a piston to be inserted into a syringe (Spec. 1). Claim 1 is
illustrative:
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Application 09/956,215
1. A rubber member produced by a process comprising the steps of:
selecting a quantity of masticated rubber material;
placing the masticated rubber material in a molding die assembly, the
molding die assembly comprising an upper die and a lower die having opposed
substantially flat surface portions, at least one of said upper and lower dies being
provided with one or more cavities in an associated one of said opposed
substantially flat surface portions, and at least one of said upper and lower dies
being provided with one or more projections extending substantially around said
one or more cavities and projecting from an associated one of said opposed
substantially flat surface portions;
bringing together said upper and lower dies such that said opposed
substantially flat surface portions are separated by a spacing, wherein said spacing
is dictated by a thickness of the quantity of the masticated rubber material, and
wherein the distance between said upper and lower dies at said projection is
smaller than the spacing between the opposed substantially flat surface portions of
said upper and lower dies;
compression molding the masticated rubber material in the molding die
assembly to form
one or more rubber members, each said one or more rubber members
associated with one of said one or more cavities,
a connecting rubber sheet, said connecting rubber sheet extending between
and connecting said one or more molded rubber members, said connecting rubber
sheet complementarily formed between said opposed substantially flat surface
portions of said upper and lower dies, and
one or more recess areas, each said recess areas complementarily formed by
one of said projections and substantially extending around one of said molded
rubber members; and
cutting through said recess areas to thereby separate said molded rubber
members from said connecting rubber sheet;
wherein each said molded rubber member has a cut surface formed by
said cutting step, said cut surface having a thickness less than said spacing
between said opposed substantially flat surface portions of said upper and lower
dies during said bringing together step.

THE REFERENCES
Amberg US 4,036,675 Jul. 19, 1977
Tatsumi US 5,078,941 Jan. 7, 1992

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Application 09/956,215
THE REJECTIONS
The claims stand rejected as follows: claims 1-3 under 35 U.S.C. § 102(b)
over Tatsumi, and claims 7 and 8 under 35 U.S.C. § 103 over Tatsumi in view of
Amberg.
OPINION
We reverse the Examiner’s rejections. We need to address only the
independent claims, i.e., claims 1, 7 and 8.
Those claims are product-by-process claims. The patentability of the
claimed invention is determined based on the product itself, not on the method of
making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in
a product-by-process claim is the same as or obvious from a product of the prior
art, the claim is unpatentable even though the prior art product was made by a
different process”).
Claim 1
Claim 1 claims a rubber member formed by placing a masticated rubber
material in a compression molding die assembly comprising upper and lower dies
having opposed substantially flat surface portions (item 12 in the figures). At least
one of the upper and lower dies has one or more cavities (item 11 in the figures) in
an associated one of the opposed substantially flat surface portions, and at least one
of the upper and lower dies has one or more projections (items 13, 14, 23 and 24 in
the figures) extending substantially around the one or more cavities and projecting
from an associated one of the substantially flat surface portions. Because the
distance between the upper and lower dies is less at the one or more projections
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Application 09/956,215
than at the substantially flat surface portions,1 there is a recess (34 in fig. 2) around
the compression molded product formed in the one or more cavities. Cutting
through the recess to separate the molded product from the rubber sheet
surrounding it results in a thinner exposed surface (items 33 and 43 in figs. 10 and
11) than would exist if the one or more cavities had no surrounding projection and,
consequently, the thickness of the rubber sheet at the cut were the distance between
the dies at the substantially flat surface portion. The Appellants state that
the exposed cut surfaces 33 or 43 are adhesive, so that if the exposed
surfaces 33 or 43 are brought into contact with each other, the cut surfaces
may adhere to each other. Moreover, when a large number of rubber pistons
31 or rubber closures 41 are conveyed along a conveyance line, they may
interfere with a part of the conveying apparatus, interrupting the conveyance
operation. Furthermore, the cut surface 33 of the rubber piston 31 increases
the sliding resistance with respect to the inner barrel of the syringe. In
addition to the foregoing, if the cut surface is large, i.e., if the axial length of
the cut surface is large, the thickness of the connecting rubber sheet 32 or 42
is also large, thus resulting in an increased amount of wasted rubber material
[Spec. 4].

Tatsumi discloses a process for making a rubber closure or plug for a
medicine vial or bottle (col. 1, ll. 11-12). Tatsumi compression molds a rubber
plate (5) and cuts off a burr part (8) to form a primary molded article (7), then
places primary molded article 7 in a different mold, compression molds a rubber
plate (13) onto it, and cuts off a burr part (15) to form the product (col. 3, l. 38 –
col. 4, l. 2).
Tatsumi’s molds lack the one or more projections required by the
Appellants’ claim 1.

1 Claim 1 recites that “said opposed substantially flat surface portions are separated
by a spacing, wherein said spacing is dictated by a thickness of the quantity of the
masticated rubber material”.
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Application 09/956,215
The Examiner argues:
The process by which the cut surface is formed, as claimed, does not result
in a structure different from that of Tatsumi ‘941, since the plug disclosed
therein is also cut from a molding web, and would thus result in the same
claimed structural features [Ans. 3].
* * *
By cutting the thinned cut surface from the rubber member – i.e. removing it
entirely from the rubber member – the Appellant is left with the claimed
invention, that being a rubber member. There is no materially [sic] affect of
the final product. In other words, by shearing the thinned cut surface off of
the rubber member, all that is left is the rubber member [Ans. 4].
* * *
While Tatsumi ‘941 does not teach a thinned cut surface like that of the
instant invention, the final product is cut from a web, and will also retain a
cut surface. To an ordinary observer presented with the final product of
Tatsumi ‘941 and that of the instant invention, the differences between the
two would be indistinguishable. The observer would find no evidence on
either plug that a web portion had a reduced thickness. The observer would,
at best, only see a region which appeared to have once been connected to a
web [Ans. 4].

The test for anticipation is whether the Tatsumi ‘941 product is the same as
the product made by the Appellants’ process, not whether any differences would
go unnoticed by an ordinary observer. The Examiner has not established that the
Tatsumi ‘941 product made without the one or more projections recited in the
Appellants’ claim 1 is the same as the Appellants’ claimed product, i.e., has an
exposed part thinner than it would be in the absence of the Appellants’ one or more
projections. The Appellants’ Specification states (Spec. 4-5):
Obviously, the size of the cut surface can be, in theory, reduced by
decreasing the closest distance “d” between the lower die 10 and the upper
die 20. However, since the size of the cut surface is determined depending
on the thickness of the masticated rubber material as mentioned above, it is
very difficult in practice to make the cut surface smaller. In particular, if the
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Application 09/956,215
masticated rubber material preformed in the form of a sheet is too thin, mold
defects occur.

The Examiner has not established that by using a thinner masticated rubber
material or by some other technique, the Appellants’ claimed product can be made
without using the Appellants’ one or more projections.
Hence, the Examiner has not established a prima facie case of anticipation of
the inventions claimed in the Appellants’ claim 1 or its dependent claims 2-4.

Claims 7 and 8
The product claimed in the Appellants’ product-by-process claims 7 and 8 is
a rubber article having a recess area formed by the one or more die projections
discussed above regarding the rejection of claim 1. Claims 7 and 8 do not require
cutting through the recess area.
Amberg discloses a low cost or throwaway foamed polystyrene plastic
container formed from a foamed polystyrene sheet (19) having a polyolefin film
(20, 21) adhesively attached to one or both of its surfaces (col. 1, ll. 8-12; col. 2, l.
67 – col. 3, l. 7). The container is made by vacuum forming a polyolefin film-
covered foamed polystyrene blank (12a) in a mold having a peripheral lip (45)
(col. 10, ll. 29-49). At peripheral lip 45 the foamed polystyrene blank is pressed
against a heated block (46), thereby collapsing the foamed polystyrene material
and clamping the blank firmly in position (col. 10, ll. 47 – 56). Amberg discloses
that
[t]he stepped contour provided by the lip 45 at the rim of the vacuum mold
41 produces a thinned section 48a along the periphery of the bowl 48 as best
seen in FIG. 5, which is then trimmed in the manner indicated in FIG. 6.
The trimming step could be conducted in the mold itself by means of a
vertically activated ring-shaped trimming blade (not shown) mounted
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immediately adjacent to the peripheral lip 45. However, and as shown in
FIG. 6, the thinned portion 48a can be neatly trimmed by a ring-shaped knife
50 and backing plate 51 in a separate trimming step after the receptacle 48
has been removed from the mold forming apparatus 40 [col. 11, ll. 19-30].

The Examiner argues:
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to modify the molding operation of
Tatsumi ‘941, providing a molding die projection in order to form a molding
die recess (48a), motivated by the benefit of reducing the cutting resistance
when removing the plug from the molding web [Ans. 3].

Amberg does not disclose that the polyolefin film-covered foamed
polystyrene blank 12a would have less cutting resistance where collapsed than
where not collapsed. It appears that blank 12a is collapsed at lip 45 to hold the
blank firmly in position (col. 10, ll. 50-56) and to form a seal around the mold so
that a vacuum can be pulled in the mold (figs. 4, 5).
The Examiner argues that “[o]ne having ordinary skill would recognize a
thinned portion to be easier to cut than a thicker portion” (Ans. 5).
The Examiner has not provided evidence that one of ordinary skill in the art
would have considered a collapsed polyolefin film-covered foamed polystyrene
blank to be easier to cut than one that has not been collapsed. Nor has the
Examiner established that one of ordinary skill in the art would have used
Amberg’s lip 45 to make Tatsumi’s rubber plate 5 easier to cut, or would have
used Amberg’s lip 45 for some other reason in Tatsumi’s compression molding
process.
The Examiner, therefore, has not established a prima facie case of
obviousness of the inventions claimed in the Appellants’ claims 7 and 8.

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DECISION
The rejections of claims 1-3 under 35 U.S.C. § 102(b) over Tatsumi, and
claims 7 and 8 under 35 U.S.C. § 103 over Tatsumi in view of Amberg are
reversed.
REVERSED

JRG

McCormick, Paulding & Huber
City Place II
185 Asylum Street
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