Ex parte Butler et al.

Board of Patent Appeals and Interferences

Jul 27, 1998

08119245 (B.P.A.I. Jul. 27, 1998)

Application for patent filed December 15, 1993. This1
application is a national stage application under 35 U.S.C. §
371 of PCT/CA91/00107, filed April 2, 1991.
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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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DONALD J. BUTLER, MURRAY C. JEFFERIES,
and HENRIQUE M. C. DOS REIS
________________
Appeal No. 96-1633
Application 08/119,2451
________________
ON BRIEF
________________
Before MEISTER, McQUADE and STAAB, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1, 3-11
Appeal No. 96-1633
Application 08/119,245
An amendment filed on June 9, 1995 subsequent to the2
final rejection (Paper No. 13, duplicate unsigned copy
designated Paper No. 12) has been entered. See the advisory
letter mailed June 20, 1995 (Paper No. 14).
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and 13-18, all the claims remaining in the application.2
Appellants’ invention pertains to a composite joint
sealing gasket (claims 1 and 3-11), and to a method of making
a composite joint sealing gasket (claims 13-18). Appellants’
composite gasket is said to be capable of establishing both a
“wet” seal and a “dry” seal between a panel and a supporting
frame by providing the gasket with both a flowable joint
sealing mastic composition and a flexible resilient sealing
member. Independent claims 1 and 13 are representative,
respectively, of the gasket and method claims on appeal, and
copies thereof can be found in the appendix to appellants’
brief.
The following references of record are relied upon by the
examiner in support of rejections under 35 U.S.C. § 103:
Wohl et al. (Wohl) 3,388,517 Jun. 18, 1968
Zahn 3,456,408 Jul. 22, 1969
Bouchey 3,881,290 May 6, 1975
Claims 13 and 15-18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Wohl in view of Zahn.
Appeal No. 96-1633
Application 08/119,245
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Claims 1, 3-11 and 14 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wohl in view of Zahn as applied
in the rejection of claim 13 et al., and further in view of
Bouchey.
Considering first the rejection of independent method
claim 13, the examiner finds that Wohl “discloses the seal
essentially as claimed,” and that Zahn “discloses a similar
seal having a sealing composition 30 which is pre-applied to
the resilient member” (answer, page 3). In rejecting claim
13, the examiner concedes that Wohl does not disclose that the
sealing composition 70 is pre-applied to Wohl’s resilient
member A. Nevertheless, the examiner concludes that it would
have been obvious to one of ordinary skill in the art to
modify Wohl by pre-applying the sealing composition 70 to the
resilient member A, “thereby providing an alternative method
of making of the seal and providing a seal that is easy to
install” (answer, pages 3-4). Although not specifically
stated, it appears to be the examiner’s position that the
gasket arrangement of Wohl modified in the above manner would
result in the practice of the claimed method because the steps
of method claim 13 would necessarily result from providing
Appeal No. 96-1633
Application 08/119,245
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Wohl with a pre-applied resilient member.
As to independent article claim 1, the examiner further
relies on Bouchey for its teaching of using a release
substrate on a window seal. According to the examiner, the
basic combination of Wohl and Zahn teaches essentially all
that is claimed in claim 1, with the exception of a release
substrate removably adhered to the tacky sealing composition
70. With respect to this deficiency of the basic combination,
the examiner further posits:
Although Zahn does not specifically disclose the use
of a release substrate, some covering would be
necessary for shipping and handling since the tacky
sealing composition is pre-applied to the resilient
member. Also, Bouchey discloses that it is known to
use a release substrate on a window seal. It would
have been obvious to include a release substrate,
since it is necessary with the Zahn seal, and since
Bouchey discloses that it is desirable to keep the
seal clean. [answer, page 4]
We will not sustain these rejections.
Our court of review has repeatedly cautioned against
employing hindsight by using appellants’ disclosure as a
blueprint to reconstruct the claimed invention out of isolated
teachings of the prior art. See, e.g., Grain Processing Corp.
v. American-Maize Products Co., 840 F.2d 902, 907, 5 USPQ2d
Appeal No. 96-1633
Application 08/119,245
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1788, 1792 (Fed. Cir. 1988). That court has also cautioned
against focusing on the obviousness of the differences between
the claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as § 103
requires. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (CCPA 1986), cert.
denied, 480 U.S. 947 (1987). In the present instance, we
think that the examiner has lost sight of the claimed
invention as a whole and has improperly focused upon the
supposed obviousness of the differences between the claimed
invention and the prior art cited against the claims.
Appellants’ invention as a whole in this case is a
composite gasket capable of establishing both “wet” and “dry”
seals, wherein the gasket has a tacky, viscous, flowable joint
sealing composition pre-applied to the resilient member, i.e.,
applied at a time prior to assembly of the gasket with the
panel and supporting frame. This is reflected in method claim
13 by calling for the steps of “advancing a continuous length
of a flexible resilient member,” and “feeding a tacky,
viscous, flowable joint sealing composition onto [an] inner
Appeal No. 96-1633
Application 08/119,245
As aptly pointed out by appellants on page 6 of the3
brief, presumably with respect to article claim 1, “[t]he
recitation of the release paper serves to emphasize the
‘composite’ nature of the gasket having both the dry sealing
element and the wet sealing composition in an integral
structure prior to application.”
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edge portion [of the resilient member] . . . to form a
continuous composite joint sealing gasket.” In article claim
1, the composite nature of the gasket is reflected in the
preamble, where the claim is characterized as being drawn to a
“composite gasket,” and in the body of the claim, which states
that the composite gasket comprises “an elongated flexible,
resilient member[,] . . . a tacky viscous, flowable joint
sealing composition supported [thereon,] . . . and further
including a release substrate on
said first side [of the resilient member], removably adhered
to said sealing composition.”3
Admittedly, when the Wohl sealing arrangement is in its
finished installed form (see Figure 10), the mastic 70
provides a “wet” seal between the panel B and the support
frame C, and the resilient sealing member A provides a “dry”
seal between the panel and the support frame. Thus, it would
Appeal No. 96-1633
Application 08/119,245
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reasonably appear that Wohl’s sealing arrangement in its
final, installed form is quite similar to appellants’ sealing
arrangement in its final, installed form. However, as is made
clear by Wohl (see Figure 8), the mastic 70 is not pre-applied
to the resilient sealing member A prior to commencement of the
assembly process, but rather is applied with a mastic gun 90
having a nozzle 92 which forces the mastic body 70 against the
lower edge of the windowpane B (column 5, lines 33-35). This
is followed by installing the molding 40 to complete the frame
(see Figure 9), and finally by forcing the resilient sealing
member A into the space 48 between the molding 40 and the
windowpane B (see Figure 10) to form a completed joint. When
viewed in this sense, Wohl is relevant to appellants’ claimed
subject matter only in that the final product produced thereby
is similar to the final product produced by using appellants’
composite gasket. The examiner then looked to another
reference, Zahn, for its teaching a “[flowable] sealing
composition 30 which is pre-applied to the resilient member”
(answer, page 3), and in the case of the article claims, to
yet another reference, Bouchey, for its teaching “that it is
known to use a release substrate on a window seal” (answer,
Appeal No. 96-1633
Application 08/119,245
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page 4).
While at first blush there is some logic to the
examiner’s rationale for combining the teachings of Wohl and
Zahn when viewed in the abstract, the error in the examiner’s
line of reasoning, as we see it, is its focus on the
obviousness of the modifications rather than on the
obviousness of the claimed invention as a whole. Our first
difficulty with the examiner’s rejection is that the proposed
modification of Wohl runs directly counter to the Wohl’s clear
teaching that the mastic 70 is applied by flowing it into the
partially formed joint at the time the joint is assembled. It
is not clear that Wohl’s mastic compound is even capable of
being maintained in place on the resilient sealing member A as
a pre-applied element, or that Wohl’s sealing arrangement is
in any way deficient because the mastic is not pre-applied.
In this regard, Wohl appears to have given no thought
whatsoever to pre-applying the mastic to any of the members
that make up the finished joint, much less the resilient
member A, as called for in the appealed claims.
Another difficulty we have with the rejection relates to
Zahn. Unlike Wohl, Zahn is not concerned with providing a
Appeal No. 96-1633
Application 08/119,245
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composite seal capable of providing two types of sealing,
i.e., “wet” sealing and “dry” sealing. This is because Zahn’s
strip 24 is not intended to provide any meaningful sealing
function, but is rather for the purpose acting as a dam to
prevent the mastic 30 from being extruded out of the space
between the panel and the supporting frame when the frame
members are brought into their final assembled position
(column 1, lines 16-21; column 1, lines 63-68; column 3, lines
47-56).
Finally, there is the matter of the motivation for the
proposed combination of Wohl and Zahn. It appears to be the
examiner’s position that the rationale for the proposed
combination is (1) to provide an alternative method of making
the seal of Wohl, and (2) to provide a seal that is easy to
install. As to (1), the fundamental differences in structure,
function, and manner of application of the seals of Wohl and
Zahn suggest that an ordinarily skilled artisan would not
consider one to be an alternative to the other. Concerning
(2), there is no basis for concluding that the pre-applying
Wohl’s mastic to resilient sealing member A would necessarily
make the resulting gasket easier to install, and an argument
Appeal No. 96-1633
Application 08/119,245
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could be made that the resulting gasket would be more
difficult to install.
In light of the foregoing, we will not sustain the
standing rejection of claims 13 and 15-18 under 35 U.S.C. §
103 as being unpatentable over Wohl in view of Zahn.
Considering the rejection of claims 1, 3-11, and 14 under
35 U.S.C. § 103 as being unpatentable over Wohl in view of
Zahn and further in view of Bouchey, as aptly pointed out by
appellants, Bouchey adds little to the evidentiary basis of
the rejection. This is so because the teaching of Bouchey
relied upon by examiner, i.e., “that it is known to use a
release substrate on a window seal” (answer, page 4), is also
taught by Wohl at release substrate 80 used to cover the
adhesive surface 64 of tape 60. In brief, the additional
teachings of Bouchey do not make up for the shortcomings of
Wohl and Zahn discussed above. Accordingly, we also will not
sustain the standing rejection of claims 1, 3-11, and 14.
As stated by the court in Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
Appeal No. 96-1633
Application 08/119,245
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cert. denied, 488 U.S. 825 (1988), “it is impermissible to use
the claims as a frame and the prior art references as a mosaic
to piece together a facsimile of the claimed invention.” In
our opinion, this is precisely what the examiner has done in
arriving at the subject matter of the appealed claims. We are
therefore unable to agree with the examiner that one of
ordinary skill in the art would have arrived at the subject
matter of the appealed claims based on the teachings of Wohl
and Zahn, with or without the additional teachings of Bouchey.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1633
Application 08/119,245
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Carmen R. Adams
Calfee, Halter & Griswold
800 Superior Avenue, Suite 1400
Cleveland, OH 44114