Ex parte Yenni et al.

Board of Patent Appeals and Interferences

May 28, 1998

07748708 (B.P.A.I. May. 28, 1998)

Application for patent filed August 22, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD M. YENNI, JR., ROBERT L.
LAMBERT, JR., CLYDE D. CALHOUN, DAVID
C. KOSKENMAKI and DAVID J. LUNDIN
_____________
Appeal No. 95-0785
Application 07/748,7081
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C.§ 134 from the examiner’s
final rejection of claims 1 through 16, 18, 20 and 21. Claims 17
and 19, the only other claims in this application, stand
withdrawn from consideration as being directed to a non-elected
invention.
Appeal No. 95-0785
Application 07/748,708
2
According to appellants, the invention is directed to a
thermoformable add-on EMI shielding sheet comprising a carrier
material with a partially embedded metal fiber mat therein
(brief, page 4). The carrier material must have a softening
temperature lower than the highest temperature reached during the
thermoforming process, while the metal fibers must have a melting
point lower than this highest thermoforming temperature (Id.).
Claims 1, 16 and 18 are illustrative of the subject matter
on appeal and are reproduced below:
1. A thermoformable add-on EMI shielding sheet
comprising a carrier material selected from the group consisting
of polymeric fibrous webs and sheet materials having the
capability of becoming porous during a thermoforming process,
said carrier material having a metal mat at least partially
embedded therein, said mat comprising a plurality of fine,
randomly-oriented metal fibers, said carrier material having a
softening temperature and said metal mat having a melting
temperature lower than the highest temperature reached during
said thermoforming process.
16. A thermoformed article comprising a substrate
polymer having an EMI shielding layer on a portion thereof, said
portion being less than the entire article, said shielding layer
having been precut from an add-on EMI shielding sheet, placed
atop said substrate polymer, and thermoformed therewith.
18. A thermoformed article made by a method comprising
the steps of:
a) providing a polymeric substrate having an area
where EMI shielding is desired;
Appeal No. 95-0785
Application 07/748,708
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b) preheating said polymeric substrate for
sufficient time for it to attain some portion of its
thermoforming temperature;
c) forming an article by placing a precut add-on
EMI shielding sheet comprising a carrier material, including its
metal mat, over said area where EMI shielding is desired;
d) heating said article for a sufficient time for
said carrier material to soften and said metal mat to melt and
for said article, including the polymeric substrate to reach
completely its thermoforming temperature;
e) thermoforming said article into a desired shape.
The examiner has relied upon the following references in
refusing to allow the appealed claims:
Kritchevsky et al. (Kritchevsky) 4,678,699 Jul. 7, 1987
Gaughan 4,689,098 Aug. 25, 1987
Komito et al. (Komito) 176823 Aug. 3, 1987
(Japanese Kokai)
Nakanishi et al. (Nakanishi) 276297 Nov. 13, 1990
(Japanese Kokai)
Claim 16 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Nakanishi. Claims 18 and 20 stand rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103 as unpatentable over Gaughan or Komito.
Claims 1-16, 18, 20 and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Nakanishi or Kritchevsky in view of Gaughan.
We reverse all stated rejections for reasons which follow.
Appeal No. 95-0785
Application 07/748,708
4
OPINION
A. The Rejection Under § 102(b)
Under 35 U.S.C. § 102(b), every limitation of a claim must
identically be disclosed, either expressly or under the
principles of inherency, in a single prior art reference for it
to anticipate the claim. See In re Bond, 910 F.2d 831, 832, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990).
The thermoformed article recited in claim 16 requires, inter
alia, that the substrate polymer have “an EMI shielding layer on
a portion thereof, said portion being less than the entire
article”. The examiner fails to address this limitation (see the
answer, pages 3 and 5). In the final rejection, the examiner had
addressed this limitation by citing Figures 1 and 2 of Nakanishi
(see the final rejection, the paragraph bridging pages 2 and 3).
However, as pointed out by appellants on page 7 of the brief,
Figures 1 and 2 both show the EMI shield covering all of the
article. There is no disclosure or teaching in Nakanishi
regarding partial covering of the substrate polymer with the EMI
shield.
Furthermore, the article of claim 16 also requires that the
shielding layer was precut from “an add-on EMI shielding sheet”.
The specification defines this term as a sheet with softened
Appeal No. 95-0785
Application 07/748,708
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carrier material and metal fibers which have begun to melt during
the thermoforming (specification, page 11). Contrary to the
examiner’s assertions on page 3 of the answer, the article of
claim 16 is specifically required to be “thermoformed”. See In
re Wilder, 429 F.2d 447, 166 USPQ 545 (CCPA 1970)(Every
limitation positively recited in a claim must be given effect in
order to determine what subject matter that claim defines).
Therefore the article of appealed claim 16 must have softened
carrier material and melted metal fibers. See In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)(In
proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with
the specification, and that claim language should be read in
light of the specification as it would be interpreted by one of
ordinary skill in the art). Nakanishi fails to disclose any
melting of metal fibers during the thermoforming process. The
thermoformed article of Nakanishi therefore does not meet every
positive limitation of appealed claim 16. Accordingly the
rejection of claim 16 under § 102(b) in view of Nakanishi is
reversed.
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Application 07/748,708
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B. The Rejection Under §§ 102(b)/103
Claims 18 and 20 are written in product-by-process form. It
is well settled that the PTO bears a lesser burden of proof in
making a case of prima facie obviousness for product-by-process
claims because of their peculiar nature than when a product is
claimed in the conventional fashion. See In re Fessman, 489 F.2d
742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner
provides a rationale tending to show that the claimed product
appears to be the same or slightly different than that of the
prior art, although produced by a different process, the burden
shifts to applicant to come forward with evidence establishing an
unobvious difference between the claimed product and the prior
art product. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
Both claims 18 and 20 require the metal mat fibers to melt.
The examiner has not pointed out where this feature of the
claimed article can be found in the Gaughan or Komito references
(answer, pages 4 and 6). In fact, Komito teaches use of molding
temperatures below that at which the metal alloy melts or
“dissolves” (page 7). Gaughan teaches that the aluminum whiskers
are molten when they are produced (column 3, lines 16-20), but
fails to disclose that the metal is melted during thermoforming
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(column 4, lines 21-24). We find that the examiner has failed to
meet the initial burden of proof since the prior art product does
not reasonably appear to be the same or only slightly different
from the product claimed. Accordingly, the rejection of claims
18 and 20 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over Gaughan
or Komito is reversed.
C. The Rejection Under § 103
The EMI shielding sheet of appealed claim 1 comprises a
carrier material and a partially embedded metal fiber mat, with
the requirement that the carrier material have a softening
temperature and the metal mat having a melting temperature lower
than the highest temperature reached during the thermoforming
process.
None of the references applied by the examiner disclose or
suggest that the metal mat must have a melting temperature lower
than the highest temperature reached during the thermoforming
process (as admitted by the examiner in regard to the primary
references, see page 4 of the answer). Contrary to the
examiner’s assertions, Gaughan makes no distinction between high
and low melting metals in the EMI shielding sheets (see Gaughan,
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Application 07/748,708
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column 2, lines 61-68, and the answer, page 4). The examiner
cites column 3, lines 53-63, of Kritchevsky for the teaching that
the metal fibers “are melted during the process” (answer, page
6). However, it is clear from the context of column 3, lines 60-
63, of Kritchevsky, that the thermoplastic fibers are the only
component that melts during processing. As a result of this
melting, the metal fibers are believed to contact each other
forming a more effective shielding grid but Kritchevsky does not
disclose that the metal fibers melt. This disclosure of
Kritchevsky is clarified by reference to Example 8, at column 12,
lines 1-2, where it is disclosed again that the thermoplastic
fibers melt resulting in the metal fibers contacting. There is
no disclosure or suggestion in Kritchevsky that the metal fibers
melt.
Where the legal conclusion of obviousness is not supported
by facts it cannot stand. See In re Warner, 379 F.2d 1011, 1016-
17, 154 USPQ 173, 177-78 (CCPA 1967). Accordingly, the rejection
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Application 07/748,708
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of claims 1-16, 18, 20 and 21 under 35 U.S.C. § 103 as
unpatentable over Nakanishi or Kritchevsky in view of Gaughan is
reversed.
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 95-0785
Application 07/748,708
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Darla P. Neaveill
3M Office of Intellectual Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427