Ex Parte Baban et al

Patent Trial and Appeal BoardMar 1, 2017

11640999 (P.T.A.B. Mar. 1, 2017)

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. 11/640,999 12/19/2006 Alberto Baban 47624-234894 (TNA0001US2) 7742 23413 7590 03/03/2017 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street RUMMEL, JULIA L 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/03/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERTO BABAN and MIGUEL ESCOBAR Appeal 2016-001541 Application 11/640,999 Technology Center 1700 Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 10 and 12—20 under 35 U.S.C. 103(a) as being unpatentable over Paisley (Paisley et al.; US Pat. No. 4,507,405), with either of Lu (US PG Pub. No. 2003/0034328) or Lauer (US PG Pub. No. 2003/0161985). The Examiner also maintains a rejection of claims 10 and 13-20 under 35 U.S.C. 112 as failing to comply with the written description requirement (Ans. 2), and a rejection of claims 19 and 20 under 35 U.S.C. 1 The Real Party in Interest is stated to be Tapi NorthAmerica, S.A. de C.V. (App. Br. 2). Appeal 2016-001541 Application 11/640,999 112 as indefinite (Ans. 3). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 13 is illustrative of the subject matter on appeal: 13. A synthetic stopper produced by a method comprising: forming a mold having on its inner surface randomly arranged surfaces contours, including contours, bumps and ridges, wherein said mold includes a smooth interior surface around said randomly arranged contours, bumps and ridges; introducing a soft synthetic material into the mold, so as to impress surface defects, including contours, bumps and ridges, into the synthetic material to form desired surfaces defects in the synthetic material, the resulting holes, markings and dimples being the negative of the surface contours of the mold; allowing the synthetic material to harden so as to render the impressed surface defects permanent on the exterior surface of the synthetic material. ANALYSIS The §112 Rejections With respect to the § 112 rejection based on a lack of written description, upon consideration of the evidence on this record and each of Appellants’ contentions, the preponderance of evidence supports the Appellants’ position that they were in possession of the invention as claimed with the mold used to make the claimed product having “a smooth interior surface around” the contours, bumps, and ridges as recited in claims 10 and 13. The Examiner appears to focus on the absence of the phrase “smooth interior surface around said randomly arranged contours, bumps, and ridges” 2 Appeal 2016-001541 Application 11/640,999 from the Specification (Ans. 14). However, it has been established that the claim need not use the same words as the specification, but rather it is enough that one of ordinary skill in the art would recognize that the inventor invented what is claimed. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). As explained by Appellants, a person of skill in the art reading the Specification would have reasonably understood that the mold was smooth but for the added features used to make the holes, markings and dimples in the molded product (App. Br. 4; Reply Br. 2). Indeed, Appellants’ Fig. 2 exemplifies that the mold interior is “smooth”, that is, free of contours, bumps, and ridges in between the exemplified contours, bumps and ridges 18 (Spec. 115; Fig. 2). Based on this disclosure, we find that the Specification describes embodiments where the mold is smooth around the contours, bumps, and ridges. We, therefore, conclude Appellants’ Specification and drawings convey with adequate clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991). Accordingly, we reverse the Examiner’s § 112 first paragraph rejection. On the other hand, with respect to the § 112 rejection of claims 19 and 20 based on indefiniteness, a preponderance of the evidence supports the Examiner’s position that it is not clear what constitutes “an additional non linear surface feature away from the circumference of the first curved surface” (Ans. 14, 15). Appellants have not adequately responded to this rejection (App. Br. 4, 5; Reply Br. 2), and have not addressed what defines 3 Appeal 2016-001541 Application 11/640,999 “a non-linear feature away from the circumference of the first curved surface” (id.). Accordingly, we affirm the Examiner’s § 112 rejection of claims 19 and 20 based on indefiniteness. The §103 Rejections The claims are argued as a group in each § 103 rejection (App. Br. 6- 10; Reply Br. 2-6). Accordingly all of the claims stand or fall together in each rejection. We have reviewed each of Appellants’ arguments for patentability. However, we sustain the Examiner’s § 103 rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. The Examiner’s determination that the claims are directed to products and that the key limitations in dispute involve the process by which the product(s) were made is not in dispute (generally App. Br., Reply Br.; Ans.). Appellants’ main argument focuses on the lack of the applied prior art to explicitly state that the molds have contours, bumps and ridges so as to make holes, markings and dimples in the synthetic stopper product as recited in claim 13 (as well as claim 11, and as implied in product claim 10). Appellants rely upon the Escobar Declaration filed August 16, 2011 to support their position that the stoppers made in the prior art, focusing on Lauer’s process, are not the same product as claimed (App. Br. 5, 8). These arguments are not persuasive of error in the Examiner’s position. It has been well established that, when a product recited in product- by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art 4 Appeal 2016-001541 Application 11/640,999 product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). The applied prior art establishes that a synthetic stopper was known to be made via an injection molding process as exemplified in Paisley (Paisley, e.g., Abstract). Paisley’s stopper has “randomly oriented grain lines” that “closely resembles natural cork” {id., col. 10,11. 60-62), while Lu exemplifies that molds may contain patterns to increase texture quality of surfaces, e.g., making products look like real leather or wood (Lu 14), and Lauer teaches that one may add by, e.g., embossing or etching (Lauer | 66) textured appearances and three dimensional effects and “any desired indicia,” in addition to a natural, wood-grain appearance on a synthetic “cork” stopper. Lauer teaches that one may add textured appearances and three dimensional effects (Lauer | 65) as well as “any desired indicia” by, e.g., embossing or etching (Lauer | 66). Thus, a synthetic stopper having holes, markings and dimples in it would have been obvious from the teachings of Paisley in view of Lu or Lauer. Moreover, Appellants have not shown reversible error in the Examiner’s position that it would have been obvious to achieve these effects by modifying the mold of Paisley based on the teachings of either Lu or Lauer to incorporate features such that the resultant synthetic cork had a more realistic appearance of natural cork (e.g., Ans. 16, 17). Appellants reliance on the Escobar declaration is misplaced, since that declaration focuses on the Lauer reference per se, and not on the Examiner’s findings or reasons for the combination of prior art as presented for review on appeal. Accordingly, on this record, Appellants have failed to 5 Appeal 2016-001541 Application 11/640,999 demonstrate that a synthetic stopper product having an overall smooth surface with “holes, markings, and dimples,” made from, e.g., injection molding into a mold as taught in Paisley, with the mold modified to have features thereon to emboss the stopper to have a more realistic wood cork texture as suggested by either of Lu or Lauer, is any different than the product made from Appellants’ process as claimed. In re Thorpe, 111 F.2d at 697; cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977). Appellants have not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of obviousness as to the claims on appeal. Accordingly, we sustain the § 103 rejections of all of the claims on appeal. The decision of the Examiner 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). AFFIRMED 6