Ex Parte Sudo et alDownload PDFBoard of Patent Appeals and InterferencesMar 27, 200809956215 (B.P.A.I. Mar. 27, 2008) Copy Citation 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 ___________ Decided: March 27, 2008 ___________ 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: Appeal 2008-0122 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 2 Appeal 2008-0122 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 3 Appeal 2008-0122 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”. 4 Appeal 2008-0122 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 5 Appeal 2008-0122 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 6 Appeal 2008-0122 Application 09/956,215 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. 7 Appeal 2008-0122 Application 09/956,215 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 Hartford, CT 06103-3402 8 Copy with citationCopy as parenthetical citation