Ex Parte Cloutier et al

Patent Trial and Appeal BoardSep 25, 2012

11326558 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/326,558 01/05/2006 Bryan R. Cloutier 2802-257-117 1338 7590 09/26/2012 John A. Molnar, Jr. PARKER-HANNIFIN CORPORATION 6035 Parkland Boulevard Cleveland, OH 44124-4141 EXAMINER NGO, HUNG V ART UNIT PAPER NUMBER 2835 MAIL DATE DELIVERY MODE 09/26/2012 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 BRYAN R. CLOUTIER, WILLIAM FLANDERS, STEVEN L. THORNTON, and WILLIAM G. LIONETTA ____________ Appeal 2010-004974 Application 11/326,558 Technology Center 2800 ____________ Before SCOTT R. BOALICK, JEFFREY S. SMITH, and BARBARA A. BENOIT, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a flame retardant, electromagnetic interference (EMI) shielding gasket. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-004974 Application 11/326,558 2 STATEMENT OF THE CASE Appellants’ invention is directed to a flame retardant, EMI shielding gasket and methods of constructing the same. (See Abstract; Spec. 1:6-11.) Claims 1, 2, 4-9, 11-14, 16-21, and 23 are on appeal. The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is illustrative and reads as follows, with key disputed limitations emphasized: 1. A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: a resilient core member having an outer surface, the core member being formed of an elastomeric polymeric material; an electrically-conductive fabric member surrounding the outer surface of the core member, the fabric member having an interior surface disposed facing the outer surface of the core member and an oppositely- facing exterior surface, and the fabric member having a first edge and a second edge adjoining the first edge to form a seam therebetween, the seam extending along at least a portion of the core member; and a layer of a cured, thermoset, flame retardant film adhesive comprising a polyester or copolyester resin interposed between the interior surface of the fabric member and the outer surface of the core member, the layer bonding the first and second edges of the fabric member to the core member along at least a portion of the seam effective to afford the gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94 (1991). Claims 1, 2, 4-9, 11-14, 16-21, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bunyan (US 6,410,137 B1; June 25, 2002) in view of Nienart (US 4,163,821; Aug. 7, 1979) and Kim (US 6,653,556 B2; Nov. 25, 2003). Ans. 3-7.1 1 Throughout this opinion, we refer to the Appeal Brief filed July 8, 2009 and the Examiner’s Answer mailed November 12, 2009. Appeal 2010-004974 Application 11/326,558 3 Issue The Examiner finds that Bunyan discloses every recited limitation of illustrative claim 1 (Ans. 3-4) except for the limitations “the film adhesive comprising polyester or copolyester resin” and “the second edge adjoining the first edge to form a seam therebetween, the seam extending along at least a portion of the core member” (Ans. 6-7). For these features, the Examiner cites Nienart and Kim, respectively, in concluding that the claim would have been obvious. (Id.) Appellants contend that Nienart cannot properly be combined with Bunyan and do not dispute that Kim is properly combined with Bunyan. (App. Br. 9-10.) The issue with respect to this rejection is: Under § 103, is the Examiner’s reason to combine the teachings of Bunyan and Nienart supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? Analysis Based on the record before us, we find no error in the Examiner’s obviousness rejection of illustrative claim 1. The Examiner finds that Nienart teaches the use of a film adhesive which is made of polyester for preventing fabric from fraying when subjected to flexing and torsioning. (Ans. 7 (citing Nienart, Abstract, col. 16, l. 23).) The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made [to] use polyester for the film adhesive of Bunyan for preventing the fabric from fraying when subjected to flexing and torsioning.” (Ans. 7.) Appellants argue that Nienart’s polyester adhesive cannot be used in Bunyan’s shielding because Nienart’s polyester adhesive must be cured to a Appeal 2010-004974 Application 11/326,558 4 solid state and therefore would be unusable in Bunyan’s shielding. (App. Br. 9.) We agree with the Examiner’s explanation of how Nienart is combined with Bunyan: [Nienart’s] liquid adhesive will be applied between the interior surface of the fabric member and the outer surface of the core member of Bunyan and then it will be cured to a solid state to complete the adhesive bond. . . . One of ordinary skill in the art would substitute the adhesive of Bunyan with the adhesive of Nienart . . . because the adhesive of Nienart would result in a strong adhesion . . . and prevent the core member and fabric member from fraying. (Ans. 8 (citing Nienart, col. 1, ll. 53-56, col. 3, l. 34) (citation omitted).) We also note that claim 1 recites “a layer of a cured, thermoset, flame retardant film adhesive comprising a polyester or copolyester resin interposed between the interior surface of the fabric member and the outer surface of the core member” (emphasis added). Accordingly, we do not find Appellants’ argument persuasive that Nienart’s polyester adhesive cannot be combined with Bunyan’s adhesive because Nienart’s polyester adhesive is used in a different manner in that Nienart’s liquid adhesive must be cured to a solid state. (See App. Br. 9.) Appellants also argue that Nienart’s polyester adhesive cannot be combined with Bunyan’s adhesive because Nienart uses the polyester adhesive for a different purpose. (App. Br. 9.) We agree with the Examiner who is not persuaded by this argument because both adhesives are used in shielding applications. (See Ans. 9 (citing Bunyan, title; Nienart, col. 2, ll. 30-35).) The Examiner’s proposed combination of Bunyan and Nienart predictably uses prior art elements according to their established functions— an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, Appeal 2010-004974 Application 11/326,558 5 417 (2007). Accordingly, we find the Examiner’s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. We are therefore not persuaded that the Examiner erred in rejecting claim 1 and its dependent claims 2, 4-9, and 11, which are not separately argued with particularity. Accordingly, we will sustain the obviousness rejection of claims 1, 2, 4-9, and 11. Independent claim 12 recites, in pertinent part, “bonding the first and second edges of the fabric member to the core member along at least a portion of the seam with a layer of a cured, thermoset, flame retardant film adhesive comprising a polyester or copolyester resin interposed between the interior surface of the fabric member and the outer surface of the core member” (emphasis added). Neither claim 12 nor its dependent claims were separately argued with particularity. (App. Br. 8-10.) Claim 12 recites similar limitations to claim 1–namely, claim 1 recites “a layer of a cured, thermoset, flame retardant film adhesive comprising a polyester or copolyester resin interposed between the interior surface of the fabric member and the outer surface of the core member.” Therefore, for the same reasons described above with respect to claim 1, we are not persuaded that the Examiner erred in rejecting independent claim 12 or its dependent claims 13, 14, 16-21, and 23. Accordingly, we also will sustain the obviousness rejection of claims 12-14, 16-21, and 23. CONCLUSION OF LAW The Examiner did not err in rejecting claims 1, 2, 4-9, 11-14, 16-21, and 23 under 35 U.S.C. § 103(a) as unpatentable over Bunyan in view of Appeal 2010-004974 Application 11/326,558 6 Nienart and Kim. SUMMARY We affirm the rejection of claims 1, 2, 4-9, 11-14, 16-21, and 23. 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). 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