11258122 (P.T.A.B. Jun. 25, 2013)

Ex Parte W. Zeyfang

Patent Trial and Appeal BoardJun 25, 2013

11258122 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/258,122 10/26/2005 Frederick W. Zeyfang 3914-0116PUS1 1985 7590 06/26/2013 James W. Hellwege 1302 Westgrove Blvd. Alexandria, VA 22307 EXAMINER PICKETT, JOHN G ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 06/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FREDERICK W. ZEYFANG ____________ Appeal 2011-005647 Application 11/258,122 Technology Center 3700 ____________ Before: JAMES P. CALVE, WILLIAM A. CAPP and SCOTT A. DANIELS Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1 and 7-9 as unpatentable under 35 U.S.C. § 103(a) over Tive (US 5,280,809, iss. Jan. 25, 1994) and Boogaard (US 6,197,377 B1, iss. Mar. 6, 2001). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-005647 Application 11/258,122 - 2 - THE INVENTION Appellant’s invention is an end cap with a grip surface. Spec. 2. Claim 1, reproduced below with paragraph indents added, is illustrative of the subject matter on appeal. 1. A polyvinyl chloride pull cap having a texturized grip surface comprising a tubular polyvinyl chloride dip-molded tubular member having a closed end and an open end, said tubular member having an outer second texturized dip-molded polyvinyl chloride surface layer covering at least a portion of said tubular member, said second surface layer comprising polyvinyl chloride particles having a size of from 50 to 200 microns to provide a texturized outer polyvinyl chloride surface. OPINION Appellant argues claims 1 and 7-9 as a group. App. Br. 4-11. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Tive discloses all of the elements of claim 1 except that it is silent regarding a texturized surface layer of polyvinyl chloride (“PVC”) particles. Ans. 3. The Examiner relies on Boogaard as disclosing a non-slip preparation of synthetic particles. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to achieve the claimed invention by applying Boogaard’s disclosure of a non-slip layer to Tive. Id. According to the Examiner, a person of ordinary skill in the art would be motivated to do this because it would provide a non-slip surface for better gripping, thus making easier the removal of the cap from its associated receptacle. Ans. 3-4. Appeal 2011-005647 Application 11/258,122 - 3 - Appellant traverses the Examiner’s rejection by arguing that the Examiner failed to make out a prima facie case of obviousness. App. Br. 4- 5. Appellant argues that Tive is silent regarding a second, dip-molded texturized surface layer of PVC particles. App. Br. 6. This argument is not persuasive because the Examiner relied on Boogaard for a second textured layer. Nor does this argument persuade us of error in the Examiner’s stated reason for combining this feature of Boogaard with the cap of Tive as set forth in the Answer at pages 3-4 and 4-5. Appellant also argues that the invention is an improvement over Tive because prior art articles were notoriously difficult to grip and Appellant solved this problem by adding a dip-molded, non-slip layer. Appellant argues that Boogaard fails to cure the acknowledged deficiencies of Tive. App. Br. 7-8. Appellant differentiates Boogaard, stating that it teaches cross-linking and the use of synthetic granules so that a relatively apolar coating is obtained. App. Br. 8. Also, Appellant argues that Boogaard’s anti-slip coating is for hard surfaces such as bathtubs and tile floors. App. Br. 8. Furthermore, Appellant argues that the instant invention does not require cross-linking. App. Br. 9. Appellant also argues that there is no reason to add a second layer to Tive as suggested by the Examiner and that the proposed modification of Tive is pure hindsight conjecture on the part of the Examiner. Id. Finally, the Appellant faults the Examiner for failing to give patentable weight to the dip-molding aspect of the claims. Id. Having fully considered Appellant’s arguments, we do not find them to be persuasive. Tive discloses a medical conduit end cap formed from a plastisol. Col. 1, ll. 50-55. Appellant’s own Specification readily admits Appeal 2011-005647 Application 11/258,122 - 4 - that dip-molding involving multiple or “double-dipped” plastisol layers was known to those skilled in the art at the time of the invention. Spec. 5 (citing US 3,904,720 and US 4,800,116 as examples). Thus, Appellant’s claim to patentable novelty resides solely in the addition of undissolved and/or partially dissolved PVC particles in the size range of 50 to 200 microns to the composition for the second dip of the dip molding process, which particles add surface texture to the finished product. Boogaard discloses a preparation and method for applying an anti-slip layer to a surface. Boogaard discloses that it was known to use PVC resin particles in an anti-slip coating. Col. 1, ll. 29-30. The background section of Boogaard discloses that it was known to use dioctyl phthalate as a plasticizer in anti-slip plastisol compositions, citing US 2,793,136 to Root, issued May 21, 1957 (hereinafter “Root”). In turn, Root teaches that its anti-slip coating can be applied by dip coating. Col. 3, ll. 18-22. With respect to Appellant’s argument that the purpose of Boogaard is to place anti-slip coatings on bathtubs, not end caps, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). “It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). We agree with the Appeal 2011-005647 Application 11/258,122 - 5 - Examiner that the rejection does not require hindsight analysis, as it would have been reasonable for a person who noticed that Tive’s end cap was slippery to add texturing to provide a grip surface and to turn to Boogaard’s teaching that textured coatings can be matched to a desired use. Ans. 5 (citing Boogaard, col. 3, ll. 20-27). Moreover, we agree with the Examiner that Appellant has not established how the product-by-process dip-forming limitation adds patentable novelty to claim 1, because Appellant has not explained how this limitation imparts any structure or function that distinguishes the claimed cap over the cap of Tive and Boogaard. See Ans. 5-6. The controlling law on the validity of product-by-process claims was summarized by our reviewing court recently in the case of Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261 (Fed. Cir. 2012). In determining validity of a product-by-process claim, the focus is on the product and not the process of making it . . . That is because of the long-standing rule that an old product is not patentable even if it is made by a new process . . . 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 product was made by a different process. Id. at 1269 (internal citations omitted). The Greenliant decision acknowledges an exception to the foregoing rule that applies where the process imparts a structural or functional difference that distinguishes the claimed product from the prior art. Id. However, Appellant fails to provide any evidence or technical reasoning to convince us that the exception, rather than the general rule, applies under the facts and circumstances of this case. Finally, Appellant’s arguments about cross-linking and apolar coatings in Boogaard are not persuasive as they are not commensurate with Appeal 2011-005647 Application 11/258,122 - 6 - the scope of the claim and Appellant has not explained how such coatings are precluded by claim 1. Thus, we sustain the Examiner’s unpatentability rejection of claims 1 and 7-9. DECISION The decision of the Examiner to reject claims 1 and 7-9 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls