Ex Parte West et al

Board of Patent Appeals and Interferences

Jun 11, 2010

10535493 (B.P.A.I. Jun. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte COLIN J. WEST and MICHAEL A. TAYLOR
____________

Appeal 2009-009371
Application 10/535,493
Technology Center 1700
____________

Decided: June 11, 2010
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-23. We have jurisdiction pursuant to
35 U.S.C. § 6. An oral hearing was held on April 13, 2010.

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Appellants’ claimed invention is directed to a method of joining
components together, such as aircraft structural components, with a sealed
joint between mating surfaces using a polysulphide sealant and a product
assembly formed thereby.
Claims 1 and 22 are illustrative and reproduced below:
1. A method of assembling components together in sealed
relationship, the components have respective mating surfaces, the method
including the steps of:

applying to at least one mating surface a layer of polysulphide sealant
and allowing the sealant to cure;

after allowing said sealant to cure, bringing together the mating
surfaces; and

applying a pre-determined pressure therebetween for a pre-determined
period whereby to bring about a sealed joint between the two mating
surfaces.

22. An assembly of two components for forming a fluid-tight seal
together, each component having a mating surface for sealing to a mating
surface of the other component, said assembly comprising at least one said
mating surface having a layer of polysulphide sealant cured thereon prior to
assembly.

In addition to reliance on alleged admitted prior art (Specification 1),
the Examiner relies on the following prior art references as evidence in
rejecting the appealed claims:
John 3,022,870 Feb. 27, 1962
Smith 3,659,896 May 2, 1972
Lester 3,904,038 Sep. 9, 1975
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Cheron1 FR2498871 Jul. 30, 1982
Hanson 4,697,970 Oct. 6, 1987
Ishihara2 JP11-72999 Mar. 16, 1999

Akmal, “Handbook of Adhesive Technology”, pp. 319-327 (1994)
Appellants Specification Page 1 “The admitted prior art”

Appellants provide additional evidence in the form of a Declaration
under C.F.R. § 1.132 by Dr. Steven Harris (App. Br., Evid. Appdx.).
The Examiner maintains the following grounds of rejection.
Claims 22 and 23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by John. Claims 1-10, 14, and 20-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over John in view of Cheron, Ishihara,
or Hanson. Claims 11-13, 14(11-13), and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over John in view of Cheron, Ishihara, or
Hanson, and further in view of Smith. Claims 16-19 are rejected under 35
U.S.C. § 103(a) as being unpatentable over John in view of Cheron, Ishihara,
or Hanson, and further in view of Akmal. Claims 1, 3-10, 14(1 and 3-10),
and 20-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
the admitted prior art (Specification page 1) in view of John. Claims 2 and
14 (2) are rejected under 35 U.S.C. § 103(a) as being unpatentable over the
admitted prior art in view of John and Lester. Claims 11-13, 14(11-13), and
15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the
admitted prior art in view of John and Smith. Claims 16-19 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art in
view of John and Akmal. Claims 22 and 23 are rejected on the ground of

1 Our references to Cheron are to the English language translation of record.
2 Our references to Ishihara are to the English language translation of record.
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non-statutory obviousness-type double patenting over claims 1 and 22 of
copending Application No. 11/020,873.
We affirm the Examiner’s prior art rejections as applied to claims 22
and 23 generally for reasons set forth by the Examiner in the Examiner’s
Answer, and as further discussed below. We reverse the Examiner’s prior
art rejections as applied to claims 1-21. We affirm the provisional
obviousness-type double patenting rejection. Our reasoning follows.

Anticipation Rejection
At the outset, we note that Appellants do not separately argue
dependent claim 23; hence, we focus on independent claim 22 in deciding
this appeal as to product claims 22 and 23.
The Examiner has found that:
John discloses an assembly which forms part of a fuel
storage system for an aircraft which comprises two components
assembled and sealed together in a fluid-tight relationship each
component having a mating surface sealed to the mating surface
of the other component with a layer of cured polysulphide
sealant therebetween (the Figure and Column 1, lines 10-20 and
Column 2, lines 63-72 and Column 3, lines 1-23 and Column 4,
lines 41-57).
Ans. 3.

Appellants do not specifically dispute the above-reproduced factual
determinations of the Examiner (see generally Appeal Brief and Reply
Brief).
As for the manner of making the assembly with “at least one said
mating surface having a layer of polysulphide sealant cured thereon prior to
assembly” as called for in product-by-process claim 22, the Examiner
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basically asserts that John discloses all of the structurally defined limitations
of the assembly set forth in representative claim 22 and under these
circumstances it is appropriate that Appellants bear the burden to establish
that the manner of making the assembly, as recited in claim 22, results in a
patentable difference in Appellants’ product over that produced by John
(Ans. 3-4).
Appellants produce evidence and counter the Examiner’s rejection
position by urging that the claimed pre-assembly curing of the sealant, as
opposed to post assembly curing as allegedly taught in John, yields an
assembly that has: (1) a thicker sealant layer; (2) a layer that extends more
uniformly; (3) sealant in the fastener area; and (4) a sealant layer that is in
compression normally as set forth in the Declaration of Dr. Harris (Decl.)
(App. Br. 11, 14, and 15; Decl. paras. 28-31).
Not withstanding Appellants’ rebuttal evidence, the Examiner
maintains the rejection asserting:
The declaration does not demonstrate via any quantitative
result any of the above differences. Further, it is unclear how
this conclusion is reached in view of the teachings in John that
(1) the cured sealant layer does not flow (Column 2, lines 66-
71) and the cured sealant layer does not squeeze out from the
sealant area (Column 1, lines 32-37 and Column 3, lines 21-23),
(2) the cured sealant is uniformly present as evidenced by
forming a continuous sealing layer capable of withstanding the
usual air pressures for aircraft (Column 1, line 68 to Column 2,
line 2), and (3) the cured sealant forms a sealant area in the area
of fasteners (Column 3, lines 15-23).
Ans. 16.

Consequently, a principal issue before us with respect to the
Examiner’s rejection of product claims 22 and 23 is: has the Examiner
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reasonably established that John anticipates representative claim 22 when
reconsidered in light of Appellants’ arguments and the additional opinion
evidence presented in the Declaration of Dr. Harris?
We answer this question in the positive and we affirm the Examiner’s
anticipation rejection of claims 22 and 23.
As required by representative claim 22, John discloses an assembly of
two components (such as metal plates as depicted with legends in the sole
drawing Figure) with a polysulphide polymer sealant interposed between
mating surfaces of the plates.
John discloses that a mixture including a liquid polysulphide polymer
has a curing agent added thereto and the composition is cured “to an
effectively non-plastic state” while placed between two polyethylene sheets
(col. 2, ll. 40-71). John teaches that the produced sealant film can be
removed from one of the polyethylene films and adhered to a metal
(aluminum) sheet surface using slight finger pressure, the other polyethylene
film stripped, and then the other metal sheet placed over the uncovered face
of the sealant film (col. 3, ll. 7-12). When the two metal layers are
mechanically combined or assembled, such as with rivets or bolts, John
teaches that the sealant film adheres to both metal surfaces and resists forces
that would tend to squeeze the sealer from the seam area (col. 3, ll. 12-23).
As stated by our predecessor reviewing Court in In re Brown, 459
F.2d 531, 535 (CCPA 1972):
[W]hen the prior art discloses a product which
reasonably appears to be either identical with or only slightly
different than a product claimed in a product-by-process claim,
a rejection based alternatively on either section 102 or section
103 of the statute is eminently fair and acceptable. As a
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practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before it
and then obtain prior art products and make physical
comparisons therewith.

Consequently, the disclosure of John supports the Examiner’s
assertion that an assembly made in accordance with the teachings of John
would reasonably be expected to result in a structure corresponding to the
assembly called for by product-by-process claim 22.
Turning to the Declaration of Dr Harris under 37 C.F. R. § 1.132, Dr.
Harris states, inter alia, that:
12. During the known and conventional sealant process
as disclosed in John, sealant is applied in the liquid phase to one
of the mating surfaces which is then brought into contact with
the other mating surface and they are fastened together within
the working time of the sealant, i.e., prior to its becoming
cured. The joint is then left undisturbed until a significant level
of cure is attained.
13. The consequence of post-assembly curing is that the
resulting layer of sealant will be thin, owing to the mating
surfaces being fasted together with the sealant still in the liquid
phase being squeezed out from between the surfaces.
14. The post-assembly cured sealant will also be under
slight tension due to the inherent shrinkage occurring during
curing process.
15. The post-assembly cured sealant will be almost
completely absent from area immediately surrounding fasteners
(holding the two mating surfaces together) because the fasteners
hold the areas tightly against one another, thereby excluding
sealant therefrom.
16. With the cured sealant assembly process, there is a
thicker layer of sealant in the vicinity of fasteners, there is no
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metal-to-metal contact (which could otherwise take place with
the uncured sealant being squeezed out of the space between the
two contact surfaces), especially in the vicinity of the fasteners.
The uncured sealant is simply not stable enough to resist
squeezing of the sealant out of the joint when the joining
pressure is applied. In the present invention, because the sealant
is fully cured, it does not squeeze or flow under assembly
pressure.
Harris Declaration, paras. 12-16.

In paragraphs seventeen through twenty-eight of the Declaration, Dr.
Harris opines on why it is believed that John does not teach pre-assembly
curing based on the express disclosure in John pertaining to completely
curing the polysulphide sealant. In this regard, Dr. Harris opines that the
complete curing described in the 12 hour curing time disclosed in John
would, at most, represent a 50 to 70 percent cure whereas the exemplified 14
day cure set forth in Appellants’ Specification would result in a sealant that
is approximately 99 percent cured (Declaration, paras. 18 and 19).
In paragraph twenty-nine, the submitted Declaration under 37 C.F. R.
§ 1.132 of Dr. Harris states, inter alia, that:
Numerous differences between the resultant assembly
when accomplished in the manner of the John patent and when
accomplished in the manner of claims 1 and 22 have been
noted, i.e., (a) the assembled components utilizing pre-assembly
curing in accordance with the presently claimed invention have
a thicker sealant layer (whereas in John, the un-cured sealant
will be squeezed out from between the faying surfaces); (b) the
cured layer extends more uniformly across the mating surfaces;
(c) there is also a sealant layer in the area of the fasteners
(whereas in the post-assembly cured process of John, the
sealant layer will be squeezed out under the fasteners allowing
metal-to-metal contact); and (d) as a result of the pre-assembly
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curing, the sealant layer, after assembly, will normally be in
compression (whereas due to shrinkage during curing, the
sealant layer in John will be under tension).

Consequently, Dr. Harris concludes that the assembly formed via pre-
assembly curing as required by Appellants’ claim 22 is substantially
different from the assembly of John (Declaration, para. 31).
Of course, it goes without saying that it is within the province of the
Board to weigh declarations expressing opinions as to fact and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368
(Fed. Cir. 2004); cf. In re Thompson, 545 F.2d 1290, 1295 (CCPA 1976)
(affidavit fails if it recites conclusions without reciting the underlying facts
to support those conclusions).
Here, the evidence adduced by the Examiner (John) expressly
indicates that the sealant is cured to a non-plastic (non-flowing) state prior to
assembly, and the cured sealant resists forces that would serve to squeeze the
sealant from the seam area during the mechanical assembly of the metal
sheets using bolts or rivets, in seemingly direct contravention to the
conclusions reached by Dr. Harris. In this regard, Dr. Harris presents no
comparative evidence based on tests showing that the assembly made in
accordance with the disclosure of John with a twelve hour cure time would
not behave as John discloses it would. After all, the issued U.S. Patent
description of John carries a strong presumption of correctness and would
require substantially irrefutable corroborated evidence to establish
otherwise.
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In addition, the opinion presented by Dr. Harris appears to correlate or
conflate the description of the prior art referred to in John with the disclosed
invention of John (Compare Declaration paragraphs 10-16 with Declaration
paragraph 29). In this regard, John describes prior art wherein a liquid
sealant is applied to a mating surface and wherein a sealant may be squeezed
from a seam area during post-assembly curing (col. 1, ll. 26-39).
Correspondingly, a liquid phase is referred to in paragraphs 10, 12, and 13 of
the Declaration as being attributed to John. However, the disclosed
invention of John is described as using a cured sealant film wherein the
cured non-plastic sealant film is applied to a mating surface before assembly
and whereby sealant flow from a seam area is forestalled during the
assembly operation (col. 1, l. 54 – col. 4, l. 57).
Further, the opinion presented by Dr. Harris appears to rely on
Appellants’ exemplified embodiments wherein a 14 day curing time under
specified temperature and humidity conditions of a particular sealant (PR-
1770C-12) and a specified activator was employed to achieve a fully cured
sealant to assert a ninety nine percent cure for Appellants’ claimed sealant
(Declaration, paras. 17 and 19; Spec., p. 6). Then, Dr Harris compares that
disclosed embodiment of Appellants with the disclosed embodiment of John
employing a twelve hour cure time to opine about a lower curing of the
sealant being obtained in John without explaining how the differences in the
sealants, activators, and curing conditions of Appellants’ exemplified
embodiment and those of John are taken into account.
Given the above and the fact that representative claim 22 does not
require use of the sealant (PR-1770C-12), the activator, cure time, and/or
cure conditions, as specified in Appellants’ exemplified embodiment
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referenced in the Declaration, we agree with the Examiner that the
Declaration of Dr. Harris does not outweigh the evidence furnished by the
Examiner (John) and establish a product difference in the claim 22 assembly
based on the broadly claimed manner of preparing the assembly set forth in
product-by-process claim 22.
Moreover, Dr. Harris’s employment of the particular Specification
embodiment and the above-noted characterization of John to allege a
product distinction for a product made in accordance with the breadth of
claim 22 over that of John based on opined differences in cure layer
uniformity and compression characteristics are similarly unpersuasive and
entitled to little weight because of the conclusory nature of the opinions
provided by Dr. Harris in the face of the teachings of John , as discussed
above (see Declaration, para. 0029).
We agree with Appellants that the Examiner’s reference to page 8 of
Appellants’ Specification with respect to alleged sealant curing times
employed by Appellants incorrectly confuses Appellants’ disclosed bonding
times for a cured sealant to a mating surface with the time employed for the
initial curing of the sealant (Reply Br. 4; Ans. 13-14). However, we
disagree that this oversight by the Examiner materially affects the
Examiner’s anticipation presentation to the extent such may have been
asserted by Appellants. In this regard, Appellants’ arguments are primarily
directed to the asserted differences set forth in the Declaration of Dr. Harris
as a product distinction, which we have found unpersuasive of a product
difference of representative claim 22 over the disclosed assembly of John
based on the argued product-by-process limitation (App. Br. 14-15; Reply
Br. 3-12).
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On this record, the Examiner has reasonably established that John
anticipates representative claim 22 when reconsidered in light of Appellants’
arguments and the additional opinion evidence presented in the Declaration
of Dr. Harris.
Obviousness Rejections
We affirm the Examiner’s obviousness rejections over John in view of
Cheron, Ishihara, or Hanson, and over the admitted prior art taken with John
as applied to product claims 22 and 23 for the reasons set forth by the
Examiner, as further discussed above with respect to the anticipation
rejection over John. After all, anticipation is the epitome of obviousness.
However, our disposition of the Examiner’s obviousness rejections
with respect to the appealed method claims is another matter.
We start with the obviousness rejection over John taken with Cheron,
Ishihara, or Hanson as it pertains to method claims 1-10, 14(1 and 3-10), 20,
and 21, and the obviousness rejection over the admitted prior art in view of
John as the latter rejection pertains to method claims 1, 3-10, 14(1 and 3-10),
20, and 21. Claim 1 is the sole independent method claim subject to both of
these rejections.
With respect to each of the stated obviousness rejections of method
claim 1, the Examiner relies on John for teaching pre-assembly curing of a
polysulphide sealant so as to form a film and thereafter placing the cured
polysulphide film on a first mating surface and mechanically combining
another mating surface to the first mating surface, such as with rivets or
bolts, without squeezing out the cured polysulphide film (Ans. 3, 4, 8, and
9).
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Independent claim 1 involves a method of assembling components,
each having respective mating surfaces, together in a sealed relationship
wherein a polysulphide sealant is allowed to cure on at least one of the
mating surfaces before the mating surfaces are assembled together. The
Examiner seemingly recognizes that John does not teach the claim 1 method
step sequence of applying a polysulphide sealant to at least one mating
surface, allowing the sealant to cure, and, thereafter, after allowing said
sealant (the sealant applied to a mating surface) to cure, bringing together
the mating surfaces (Ans. 4-5).
According to the Examiner with respect to the first stated obviousness
rejection involving claim 1, Cheron, Ishiara, or Hanson disclose the
functional equivalence of providing an adhesive as a film or directly coating
at least one mating surface with the adhesive (Ans. 5). In this regard, the
Examiner asserts that:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to apply the polysulphide
sealant as taught by John to at least one of the mating surfaces
(or both) by directly coating the sealant (and subsequently
curing the sealant) as opposed to providing the sealant as a
cured film as both coating the sealant directly on at least one of
the mating surfaces and providing the sealant as a film were
well taken in the art as functionally equivalent techniques as
shown by any one of Cheron, Ishiara, or Hanson wherein
directly coating at least one of the mating surfaces with the
sealant has the advantage of not requiring a separate step of
forming the sealant film.
Regarding the limitation of bringing together the mating
surfaces after allowing the sealant to cure, John as modified by
Cheron, Ishiara, or Hanson is considered to bring together the
mating surfaces after allowing the sealant to cure as John
requires the sealant be cured prior to bringing the mating
surfaces together otherwise the sealant will squeeze out from
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between the mating surfaces preventing an accurate amount of
sealant to be applied to effectively adhere and seal the mating
surfaces.
Ans. 5.
With respect to the second stated obviousness rejection pertaining to
the sole independent method claim (claim 1), the Examiner acknowledges
that the relied upon admitted prior art in the Specification is silent about
curing a sealant prior to assembling components having mating surfaces
(Ans. 8, Spec., p. 1. 9-24). In other words, the Examiner cannot find an
admission made in the Specification about that which the Examiner
acknowledges the alleged admission to be silent about. The Examiner turns
to John and asserts that:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to cure the sealant as
taught by the admitted prior art prior to contacting the mating
surfaces as shown by John to apply an accurate amount of the
sealant, prevent the sealant from squeezing out from between
the mating surfaces, and effectively adhere and seal the mating
surfaces.
Ans. 9.

Aside from arguing improper claim construction of claim 1 and
improper reference construction of John by the Examiner with respect to the
degree of cure required by the limitation “allowing the sealant to cure” and
the degree of pre-assembly sealant cure taught by John, a principal
contention of Appellants is that both of the Examiner’s obviousness
rejections of independent method claim 1 involve the John reference and
John does not teach the claim 1 pre-assembly curing method wherein a
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sealant is placed on a component mating surface and allowed to cure thereon
(App. Br. 11-13, 15, 16, and 21; Reply Br. 10-11). Similarly, Appellants
argue that the Examiner has not established that Cheron, Ishihara, or
Hanson, as combined with John in the first obviousness rejection pertaining
to claim 1, or the admitted prior art, as employed in combination with John,
in the Examiner’s second-stated obviousness rejection that pertains to claim
1, reasonably teaches or suggests the above-discussed pre-assembly curing
methodology, as recited in claim 1 (App. Br. 13, 16-18, 20-22; Reply Br. 10,
11, 14, and 15).
A principal issue before us is:
Has the Examiner established that John taken with Cheron, Ishihara,
or Hanson and/or John taken with the admitted prior art would have taught
or suggested to an ordinarily skilled artisan Appellants’ claim 1 method,
including the step of allowing a polysulphide sealant to cure on a mating
surface of a component prior to bringing the mating surface of that
component together with the mating surface of another component to form a
sealed joint between the mating surfaces of the components?
We answer this question in the negative.
As noted above, John forms a cured polysulphide-containing film,
applies the cured film to a component mating surface and then brings the
mating surface of another component together therewith. In the
aforementioned rejections pertaining to claim 1, the Examiner either does
not rely on John for teaching or has not established that John teaches
applying a polysulphide sealant to a mating surface, allowing that sealant to
cure and then bringing together the component having the polysulphide
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sealant cured while on a mating surface thereof together with another
component mating surface.
Cheron is directed to a self-adhesive weather stripping seal made of
two materials having differing elasticity for use in the rabbits of windows or
doors (abstract; pp. 2-4). Cheron discloses that an alternative extrusion seal
could be adhered using double-sided tape or hot-melt glue and silicone-
treated protective paper (p. 4).
Ishihara is directed to a material for sealing a toner supply aperture
wherein, as part thereof, a tackiness or adhesive agent can be applied to a
rear surface or top face of a plate wherein the aperture is located or a double
sided adhesive tape can alternately be attached to the respective plate surface
(abstract; pp. 5-8).
Hanson is directed to a cover for binding sheets, such as sheets of
paper, wherein a strip of adhesive can be formed on the backing of the cover
by applying a continuous strip of adhesive or by applying adhesive, which
has been previously coated on a release liner and applied as a tape to the
cover (col. 5, ll. 37-42).
The admitted prior art relates to the use of curable liquid polymers
that are applied to a mating surface of an aircraft metallic wing box
component using a brush or roller and bringing such components together
while the polymer is soft to join the components with a fluid tight seal (Spec.
p. 1, ll. 9-24). One disclosed problem with such a liquid sealant application
method is that liquid sealant can be squeezed out of bolt holes during bolt
tightening (Spec. 2, ll. 8-15).
Concerning the Examiner’s first stated obviousness rejection, the
Examiner has not reasonably explained how the disparate teachings of any
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of Cheron with respect to alternatively adhering weather stripping to
windows or doors with double-sided tape or using hot melt glue and release
paper, Ishihara with respect to the alternative of using double-sided adhesive
tape or an adhesive agent applied to a plate aperture as part of a toner supply
aperture sealing technique, or Hanson with respect to using direct
application of adhesive or indirectly as a tape to a cover for binding paper
sheets would have led one of ordinary skill in the art to any modification of
the process of manufacture of a polysulphide sealant film and use thereof in
joining aircraft metal components together in a sealed manner, much less
suggest a particular modification to John that would result in the process of
claim 1.
At best, the Examiner’s rejection rationale appears circular in going
back to John for suggesting how the mating surfaces would be brought
together after allowing the sealant to cure (Ans. 5). This is because John
suggests curing a polysulphide sealant on a polyethylene sheet to form a
film, which cured film is then adhered to a component mating surface and
subsequently brought together and assembled with another component; not
curing the sealant after application of the sealant to a component mating
surface, as claim 1 requires. Certainly, none of the three secondary
references teach curing a sealant on a component mating surface before
joining that component to another component to form an assembly of
components with a sealed joint between mating surfaces of the joined
components.
As for the second obviousness rejection pertaining to independent
method claim 1, it is manifest from the discussion above that the Examiner’s
conclusive observations do not reasonably explain how John taken together
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with acknowledged prior art that is either silent about pre-assembly curing,
as asserted by the Examiner, or cures a sealant after components are
assembled together (post assembly curing), as urged by Appellants, teaches
or suggests a modification to John’s preassembly curing method that would
result in Appellants’ materially different pre-assembly curing method.
After all, it is well settled that the Examiner bears the initial burden,
on review of prior art or on any other ground, of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In this case, this initial burden was not met for the stated obviousness
rejection because the Examiner’s conclusive basis for the rejections falls
short of identifying a persuasive rationale that would have led an ordinarily
skilled artisan to combine selected features from each reference in a way that
would have resulted in a method corresponding to the claimed method.
In this regard, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
All of the other rejected method claims depend from or through claim
1 and the Examiner does not explain how the other additional references
applied against some of the dependent claims in separate obviousness
rejections remedy the aforementioned inadequacy in the Examiner’s
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proposed modification of John based on Cheron, Ishihara, or Hanson or the
flaw in the Examiner’s combination of the admitted prior art and John.
Consequently, we reverse all of the obviousness rejections as they
pertain to the appealed method claims.

Obviousness-Type Double Patenting
Appellants do not present any substantive argument with respect to
the Examiner’s provisional obviousness-type double patenting rejection (see
generally Appeal Brief and Reply Brief. Accordingly, we summarily affirm
the Examiner’s provisional obviousness-type double patenting rejection of
claims 22 and 23 over claims 1 and 22 of copending Application No.
11/020,873.
CONCLUSION/ORDER
The Examiner’s decision to reject claims 22 and 23 under 35 U.S.C. §
102(b) as being anticipated by John; to reject claims 22 and 23 under 35
U.S.C. § 103(a) as being unpatentable over John in view of Cheron, Ishihara,
or Hanson; to reject claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over the admitted prior art (Specification page 1) in view of
John; and to provisionally reject claims 22 and 23 on the ground of non-
statutory obviousness-type double patenting over claims 1 and 22 of
copending Application No. 11/020,873 is affirmed.
The Examiner’s decision to reject claims 1-10, 14, 20, and 21 under
35 U.S.C. § 103(a) as being unpatentable over John in view of Cheron,
Ishihara, or Hanson; to reject claims 11-13, 14(11-13), and 15 under 35
U.S.C. § 103(a) as being unpatentable over John in view of Cheron, Ishihara,
or Hanson, and further in view of Smith; to reject claims 16-19 under 35
Appeal 2009-009371
Application 10/535,493

20
U.S.C. § 103(a) as being unpatentable over John in view of Cheron, Ishihara,
or Hanson, and further in view of Akmal; to reject claims 1, 3-10, 14(1 and
3-10), 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable over the
admitted prior art (Specification page 1) in view of John; to reject claims 2
and 14(2) under 35 U.S.C. § 103(a) as being unpatentable over the admitted
prior art in view of John and Lester; to reject claims 11-13, 14(11-13), and
15 under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior
art in view of John and Smith; and to reject claims 16-19 under 35 U.S.C. §
103(a) as being unpatentable over the admitted prior art in view of John and
Akmal is reversed.
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)(v).

AFFIRMED-IN-PART

PL Initial:
sld

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