Ex parte Gupta

Board of Patent Appeals and Interferences

Oct 30, 1998

08063819 (B.P.A.I. Oct. 30, 1998)

Application for patent filed May 20, 1993. According to1
the appellant, the application is a division of Application
No. 07/780,684, filed October 18, 1991, now abandoned.
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journal and (2) is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GYANENDRA GUPTA
____________
Appeal No. 95-1711
Application No. 08/063,8191
____________
ON BRIEF
____________
Before JOHN D. SMITH, WEIFFENBACH and PAK, Administrative
Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 17, 19, 21, 23 and 36-39.
Claim 17 is representative and reproduced
below:
Appeal No. 95-1711
Application No. 08/063,819
2
17. A method of degating molded parts comprising the
steps of:
(a) providing an injection molding material capable of
being molded in an injection molding apparatus;
(b) molding a solid configuration from said molding
material comprising parts secured to a runner system by gates
of said molding material, said gates having a cross-section
substantially smaller than any cross-section of said molded
configuration which is contacting and integral therewith;
(c) cooling the surfaces of said configuration to a
temperature and for a time until only said gates become
brittle; and
(d) applying an impact to said configuration while said
gates are brittle to cause said configuration to sever at said
gates and separate said runner system from said parts.
The references of record relied upon by the examiner are:
Jones et al. (Jones) 3,468,077
Sep. 23, 1969
Oishi et al. (Oishi) 5,190,712
Mar. 2, 1993
The appealed claims stand rejected for obviousness
(35 U.S.C. § 103) as unpatentable over Oishi or certain
admitted prior art in view of Jones. Additionally, claims 17,
19, 21 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, “enablement requirement.”
We reverse.
Appeal No. 95-1711
Application No. 08/063,819
3
The subject matter on appeal is directed to a process of
degating molded parts by the steps of molding, cooling, and
applying an impact to a solid configuration of molding
material comprising parts secured to a runner system by gates,
wherein the gates have a cross-section subtaintially smaller
then any cross-section of the molded configuration.
With respect to his obviousness rejection of the appealed
claims, the examiner broadly contends that it is well known
and conventional to freeze and impact to remove flash in the
molding art. To support this contention the examiner cites
Jones as disclosing the removal of flash by cooling with
liquid nitrogen and tumbling to apply impact. Thus, according
to the examiner, it would have been obvious to one of ordinary
skill in the art at the time of the invention to deflash a
molded article with cryogenic deflashing as described in
Jones.
On the other hand, appellant contends that the removal of
flash as in the Jones process has nothing whatsoever to do
with degating, the subject matter of the appealed claims.
Thus the appealed claims require inter alia, cooling and
application of impact (e.g. tumbling) to a specific solid
Appeal No. 95-1711
Application No. 08/063,819
4
configuration which is defined as the molded parts secured to
a runners system by gates of the molding material to effect
degating. Although the examiner has asserted in his answer at
page 5 that an attached runner, sprue and gate to a molded
part is commonly referred to in the art as “flash,” the
examiner has pointed to no objective evidence in the record to
support this factual assertion. Thus, it is apparent that the
examiner has failed to satisfy his burden of establishing a
prima facie case of obviousness for the subject matter defined
by the appealed claims. In contending that the appellant has
provided no objective evidence that degating and flash removal
are entirely different operations, the examiner has put the
cart before the horse. It is well settled that it is the
examiner’s burden, in the first instance, to establish a prima
facie case of obviousness. This he has not done.
Accordingly, we are constrained to reverse the examiner’s
rejection of the appealed claims for obviousness.
Claims 17, 19, 21 and 23 also stand rejected under 35
U.S.C. § 112, first paragraph, because, according to the
examiner, the disclosure is enabling only for claims limited
to polyvinyl alcohol resins. We also reverse this rejection.
Appeal No. 95-1711
Application No. 08/063,819
5
It is well established that the examiner has the “burden
of giving reasons, supported by the record as a whole, why the
specification is not enabling. . . . Showing that the
disclosure entails undue experimentation is part of the PTO’s
initial burden. . . .” In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214, 219 (CCPA 1976). In determining whether any given
disclosure would require undue experimentation to make the
claimed subject matter, the examiner must consider not just
the breadth of the claims, as here, but also the quantity of
experimentation necessary, the amount of direction or guidance
presented, the presence or absence of working examples, the
nature of the invention, the state of the prior art, the
relative skill of those in the art, and the predictability or
unpredictability of the art. Determining enablement is a
question of law based on factual findings. In re Vaeck, 947
F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991). Here,
it is apparent that the examiner has not made the requisite
factual findings to support a conclusion that the present
disclosure would require undue experimentation to carry out
the claimed process. While the examiner contends that
injection molding compounds such as concrete, metallics,
Appeal No. 95-1711
Application No. 08/063,819
6
ceramics, and sugars would be inoperable in the instant
invention, appellant points out that the claims require the
provision of an injection molding material “capable of being
molded in an injection molding apparatus.” Moreover, the
examiner should be aware that it is not the function of patent
claims to specifically exclude possibly inoperative
enbodiments. In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ
789, 793 (CCPA 1974). Accordingly, the examiner’s rejection
under
35 U.S.C. § 112, first paragraph, is also reversed.
Appeal No. 95-1711
Application No. 08/063,819
7
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
)
)
BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
jrg
Appeal No. 95-1711
Application No. 08/063,819
8
Rene E. Grossman
Texas Instruments Incorporated
Patent Department, M/S 219
P.O. Box 655474
Dallas, TX 75265
JENINE GILLIS

Appeal No. 95-1711
Serial No. 08/063,819
Judge JOHN D. SMITH
Judge PAK

Judge WEIFFENBACH
Received: 28 Oct 98
Typed: 28 Oct 98

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1305
Index Sheet-2901 Rejection(s): ___________
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