Ex Parte Woody et al

Board of Patent Appeals and Interferences

Mar 29, 2011

09614898 (B.P.A.I. Mar. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CLARK WOODY, P. GREGORY VELEZ,
JEFFREY S. HOFFMAN, and STEPHEN P. GANGLER
____________________

Appeal 2009-006942
Application 09/614,898
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006942
Application 09/614,898
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
4, 7, 8, 11, 12, 15-18, 22-24, 26-30 and 34-39. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to an apparatus for and method of severing
and sealing thermoplastic film. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of severing and sealing a plurality of layers of film
formed of a thermoplastic material, the method comprising the
steps of:
heating a cutting edge implement to a temperature
between about 600° F and about 800° F for severing and sealing
a plurality of layers of the film, the temperature being sufficient
to melt but not to burn a thermoplastic material;
feeding the plurality of layers of the film between the
heated cutting edge implement and an opposing surface;
moving the heated cutting edge implement and the
opposing surface relative to one another to pinch the plurality
of layers of film therebetween; and
thereafter, suspending any relative lateral movement
between the heated cutting edge implement, the plurality of
layers of the film, and the opposing surface, while relatively
biasing the heated cutting edge implement and the opposing
surface together with the plurality of layers of film pinched
therebetween, until the cutting edge implement, heated to the
temperature between about 600° F and about 800° F, severs the
plurality of layers of the film by melting but not burning the
plurality of layers, contacts the opposing surface, and seals the
plurality of layers of the film together.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wildmoser
Dworak
Coleman
Noel
Motomura
Gorlich
US 4,115,182
US 5,094,657
US 5,546,732
US 5,718,101
US 6,260,336 B1
US 6,305,149 B1
Sep. 19, 1978
Mar. 10, 1992
Aug. 20, 1996
Feb. 17, 1998
Jul. 17, 2001
Oct. 23, 2001

REJECTIONS
Claims 1, 2, 8 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coleman and Gorlich. Fin. Rej. 2.
Claims 3, 7 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coleman, Gorlich and Motomura. Fin. Rej. 5.
Claims 4, 11, and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coleman, Gorlich, and Noel. Fin. Rej. 6.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coleman, Gorlich, and Dworak. Fin. Rej. 6.
Claims 15-18, 22, 36 and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Coleman, Gorlich, and Noel. Fin. Rej. 7.
Claims 27, 30, 33-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wildmoser, and Gorlich. Fin. Rej. 9.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wildmoser, Gorlich, and Motomura. Fin. Rej. 10.
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coleman, Gorlich, Noel, and Dworak. Fin. Rej. 12.

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OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review, we
have reached the conclusion that the applied prior art establishes the prima
facie obviousness of claims 15-18, 22, 27-30, and 34-39. However, we have
also reached the conclusion that the applied prior art does not establish the
prima facie obviousness of claims 1-4, 7, 8, 11, 12, 23, 24, and 26. Our
reasons follow.
We first turn to a construction of the claimed subject matter.
Appellants’ claims are directed to a temperature range of 600° F to 800° F,
the temperature being sufficient to melt but not burn the thermoplastic
material. We find that “burn” is a non-technical term. The Examiner
discussed a claim construction of the term “burn” on page 3 of the Answer
without reaching an explicit conclusion. Appellants discuss “burning” on
page 2 of the Specification: “For example, as the hot wire burns its way
through the film, a significant amount of smoke is produced. Some of this
smoke condenses on the components of the machine, leaving behind a wax
residue.” Therefore, for purposes of applying the art to the claimed subject
matter, we will construe “burn” as a process that produces smoke or vapor
which condenses on the apparatus leaving a waxy residue.
With this claim construction in mind, it is our conclusion that Gorlich
does not render prima facie obvious the process claims on appeal. It is clear
to us that Gorlich teaches vaporization as the desired process for severing
the thermoplastic film. Col. 8, ll. 55-64 and col. 10, ll. 7-20. Since the
Examiner relies on Gorlich to teach the process step of melting without
burning, and we have determined that Gorlich severs the thermoplastic film
by vaporization, the rejections of claims 1, 2, 8 and 23, as unpatentable over
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Coleman in view of Gorlich; claims 3, 7, and 24 as unpatentable over
Coleman in view of Gorlich and Motomura; claims 4, 11, and 26 as
unpatentable over Coleman in view of Gorlich and Noel; and claim 12 as
unpatentable over Coleman in view of Gorlich and Dworak are reversed.
The Examiner also supports the rejections of the method claims on a
finding of inherency. Fin. Rej. 3. Choosing the argument most favorable to
the Examiner, it is as follows. First, in Coleman a plurality of films 28, 30,
34 are severed and sealed. However, in Gorlich a single thermoplastic film
92 is being severed. As such, even though the plurality of films of Coleman
are heated to 600-800 deg. F, due to the thermal resistance at the interface of
the heater and the first plastic layer, the existence of multiple layers with
their respective interfacial thermal resistances, and as the Examiner noted,
the heating time (Ans. 3, Examiner refers to it as dwell time), the plurality of
layers of Coleman do not heat up to 600-800 deg. F so as to "burn" as in
Gorlich's single layer film.
The problem with this analysis is that it is based on speculation. We
must emphasize that the applicable jurisprudence requires that a case of
inherency be founded upon evidence that necessarily flows from the
disclosure. “Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claims limitations, it
anticipates.” Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics,
Inc., 976 F.2d 1559, 1565 (Fed.Cir.1992)(quoting Mehl/Biophile Int'l Corp.
v. Milgraum, 192 F.3d 1362, 1365 (Fed.Cir.1999)). Thus, this conjecture or
speculation is insufficient to support the Examiner’s finding of inherency.
However, turning to the apparatus claims on appeal, we agree with the
Examiner’s claim construction that the temperature being sufficient to melt
but not to burn a thermoplastic material is a function or desired result of the
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use of the claimed controller. In view of this claim construction, the
jurisprudence is clear. Apparatus claims must be distinguished from the prior
art based on their structure not their function. See, e.g., In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function);
see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[W]here the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”).
Accordingly, we agree with the Examiner’s finding that Gorlich
teaches a controller that heats the cutting apparatus of Gorlich to a
temperature between 600°F and 900°F. Col. 8, ll. 55-64. Thus the controller
of Gorlich is able to maintain Appellants’ temperature of 600°F and 800°F
as claimed. We further agree with the Examiner that it would have been
obvious to use this heater of Gorlich in either Coleman or Wildmoser. Ans.
3-4. For this reason we sustain the rejections of claims 15-18, 22, 36 and 39
as unpatentable over Coleman in view of Gorlich and Noel; claims 27, 30,
34 and 35 as unpatentable over Wildmoser in view of Gorlich; claims 28 and
29 as unpatentable over Wildmoser in view of Gorlich and Motomura; and
claims 37 and 38 as unpatentable over Coleman in view of Gorlich, Noel
and Dworak.
On page 15 of the Brief, Appellants argue that there are unexpected
results with respect to the claimed subject matter. Even if Appellants had
provided evidence of unexpected results (which Appellants have not), we
note that the results do not go to the apparatus claims wherein Gorlich
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clearly anticipates the claimed controller having the ability to be controlled
to a temperature range between 600°F and 800°F. On page 17, Appellants
again argue unexpected results, and that Gorlich teaches away from the
claimed subject matter. In our view, these arguments are irrelevant to
Appellants’ apparatus claims when Gorlich clearly teaches a controller that
controls the temperature of the cutting edge implement to Appellants’
claimed range.

DECISION
The rejections of claims 1-4, 7, 8, 11, 12, 23, 24, and 26 under 35
U.S.C. § 103 are reversed.
The rejections of claims 15-18, 22, 27-30, and 34-39 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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