Ex Parte Bunyan et al

Patent Trial and Appeal Board

Oct 31, 2016

13059110 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/059,110 02/15/2011
23984 7590 11/02/2016
JOHN MOLNAR JR.
PARKER-HANNIFIN CORPORATION
6035 PARKLAND BOULEVARD
CLEVELAND, OH 44124-4141
FIRST NAMED INVENTOR
Michael H. Bunyan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2802-257-150 6984
EXAMINER
ALONZO MILLER, RHADAMES J
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
paula.hurley@parker.com
jmolnar@parker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL H. BUNYAN, GEORGE R. WATCHKO, and
WILLIAM G. LIONETTA1
Appeal2015-003644
Application 13/059,110
Technology Center 2800
Before PETER F. KRATZ, JEFFREY T. SMITH, and
MONTE T. SQUIRE Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 According to the Appeal Brief, the Real Party in Interest is Parker-Hannifin
Corporation. (Br. 2).
Appeal2015-003644
Application 13/059,110
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6.
Appellants' claimed invention relates to a method of EMI shielding
electronic circuitry of an electronic device by enclosing the circuitry within
an EMI shield. (Spec. 2). Claim 1 is illustrative:
1. A method of EMI shielding electronic circuitry of
an electronic device by enclosing the circuitry within an EMI
shield having at least one compartment, the method comprising
the steps of:
(a) providing a resilient layer formed of a
thermoformable, electrically-conductive foam, the layer having
first surface and a second surface defining an uncompressed
thickness dimension (T 1) there between, and the layer having an
interior portion surrounded by a perimeter portion;
(b) hot-compressing the interior portion of the layer
through the uncompressed thickness dimension (T 1) thereof to
permanently form a top wall portion of the shield having a
compressed thickness dimension (T 2), the uncompressed
thickness dimension (T 1) of the perimeter portion extending
downwardly from the top wall portion to form a side wall
portion of the shield which together with the top wall portion
defines at least a portion of the compartment; and
( c) receiving the compartment of the shield over the
circuitry of the device.
Appellants request review of the following rejections (Br. 5) from the
Examiner's final office action:
1. Claims 1---6, 8-16, 18-23, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McFadden et al. (US Publ. No. 2004/0155308
Al, published Aug. 12, 2004) ("McFadden") in view of Rapp et al. (WO
Publ. No. 01/65903 A2, published Sept. 7, 2001) ("Rapp").
2
Appeal2015-003644
Application 13/059,110
2. Claims 7, 17, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McFadden, Rapp, and Clupper et al. (EP Publ. No. 1 272
024 Al, published Jan. 2, 2003) ("Clupper").
OPINION2
We sustain the appealed rejections for the reasons well stated by the
Examiner in the Answer. The following comments are added for emphasis.
The Examiner found that McFadden teaches an EMI shield formed of
a conductive foam, having a compressed thickness dimension (T 2) and an
uncompressed thickness dimension (T 1) and Rapp teaches the use of a
thermoformable foam in the manufacture of EMI shield. The Examiner
determined it was well known in the art to make EMI shields using
thermoformable foams, thus it would have been obvious to use a
thermoformable foam in the device of McFadden. (Ans. 3--4).
In rebuttal to the rejection, Appellants argue the Examiner's rejection
is premised on hindsight because Rapp describes a thermoformable film and
does not disclose the use of a thermoformable foam. (Br. 8). Appellants
further argue the Examiner's rejection fails to explain how McFadden's
layer could be permanently deformed only in the compressed areas,
particularly in view of the teaching of Rapp to thermoform the entirety of its
film layer.
Appellants' arguments are not persuasive of reversible error.
McFadden discloses the use of deformable electrically conductive foam that
can be preformed/ shaped to create insulating islands over the components.
2 Appellants did not argue the dependent claims separately in the Brief.
Accordingly, the dependent claims stand or fall together with sole
independent claim 1.
3
Appeal2015-003644
Application 13/059,110
(McFadden if 5). A person of ordinary skill in the art would have had
sufficient skill to compress only portions of McFadden's foam so as to have
obtained both compressed and uncompressed areas. McFadden describes
the use of foams generally and does not specify a particular type of foam.
(Id.). It has not been disputed that thermoformable foams are known to
persons of ordinary skill in the art. Rapp describes the EMI shield is
manufactured from a polymer thick film (thermoformable film) 3 that is
molded into a 3-D form. (Rapp 5). Appellants, in support of their
arguments, have not explained that the thermoformable films of Rapp are
formed from materials that exclude foams. A person of ordinary skill in the
art would have had sufficient skill to select known materials for the
formation of EMI shields including thermoformable materials.
Given the above teachings, we determine that a preponderance of the
evidence supports the Examiner's obviousness determination. A person of
ordinary skill in the art, using no more than ordinary creativity, would have
recognized the suitability of utilizing know compressible foams, such as
thermoformable foams in the formation of EMI shields. KSR Int 'l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ").
For the foregoing reasons and those set forth in the Answer, based on
the totality of the record, we determine that the preponderance of evidence
weighs in favor of obviousness, giving due weight to Appellants' arguments.
Accordingly, the Examiner's rejections are affirmed.
3 Rapp, pg. 5, describes a variety of materials by their trademark names that
are suitable for forming the polymeric thermoformable films.
4
Appeal2015-003644
Application 13/059,110
ORDER
The rejections of claims 1-27 under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
5