Ex Parte Jakus et al

Patent Trial and Appeal Board

Nov 15, 2013

11389455 (P.T.A.B. Nov. 15, 2013)

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.
11/389,455 03/24/2006 Guy Jakus 36387 2705
23589 7590 11/18/2013
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
PLUMMER, ELIZABETH A
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
11/18/2013 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 GUY JAKUS and TOM EIJKELENBERG
____________________

Appeal 2011-013197
Application 11/389,455
Technology Center 3600
____________________

Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/389,455

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-16, 18-21, 23-38, and 40-46. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 21 are the independent claims on appeal. Claim 1 is
reproduced below and is illustrative of the appealed subject matter.
1. A non-metallic explosion vent for protecting a confined
space from a high overpressure condition comprising:
a composite panel of a synthetic resin, said resin being
reinforced with material having greater tensile strength than the
resin,
said panel having a pair of opposed surfaces and
provided with an elongated groove therein that extends
transversely inwardly from one of the surfaces of the panel
through at least a portion of the thickness of the panel,
said groove interrupting the reinforcing material to define
a line of weakness that presents a relief area of the panel that
opens under said overpressure condition, said groove being
filled with a filler composition.

REJECTIONS
Appellants seek review of the following rejections:
(1) the rejection of claims 1-3, 5-16, 19, 20, and 40-46 under 35
U.S.C. § 103(a) as unpatentable over Wilson (US 4,498,261, iss. Feb. 12,
1985), Weatherby (WO 2004/090411 A1, pub. Oct. 21, 2004), and Hume
(US 5,967,170, iss. Oct. 19, 1999) (Ans. 5-11);

1 Appellants identify the real party in interest as Fike Corporation. App. Br.
5.
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(2) the rejection of claims 18, 21, 23, 24, and 26-382 under 35 U.S.C.
§ 103(a) as unpatentable over Wilson, Weatherby, Hume, and Short (US
5,036,632, iss. Aug. 6, 1991) (Ans. 11-17); and
(3) the rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable
over Wilson, Weatherby, Short, Hume, and Martin (US 2,721,157, iss. Oct.
18, 1955) (Ans. 18).

ANALYSIS
Rejection (1)
The Examiner’s rejection relied on Wilson to teach many of the claim
limitations, but acknowledged that Wilson “does not disclose that said
gro[o]ve is filled with a filler composition.” Ans. 5-6. The Examiner
indicated that “it is well known in the art that grooves can be filled with a
filler composition,” and cited Hume as an example of this. Id. at 6. More
particularly, the Examiner found that Hume teaches a filler composition 22
sealing an elongated groove defining a line of weakness that presents a relief
area of a panel that opens under an overpressure condition. Id. (citing

2 We consolidated the Examiner’s ground of rejection of claim 18 on pages
11-12 of the Answer and the Examiner’s ground of rejection of claims 21,
23, 24, and 26-38 on pages 12-17 of the Answer because both grounds of
rejection are based on Wilson, Weatherby, Hume, and Short. We consider
the Examiner’s reference to “Strong” instead of “Short” in connection with
the ground of rejection of claims 21, 23, 24, 26-38 on pages 12-17 of the
Answer and the ground of rejection of claim 25 on page 18 of the Answer to
be a typographical error in light of the accompanying reference to “US
Patent 5,036,632” which identifies Short, the use of “Short” in discussing
claim 21 (Ans. 13), and references to the disclosure of Short, such as “(tabs
of 56) (Fig. 7)” (Ans. 16). In addition, a brief review of the application
underlying this appeal reveals that there is no reference of record having the
first inventor named “Strong.”
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Hume, figs. 6, 8; col. 1, ll. 47-51; col. 3, ll. 13-20). The Examiner concluded
that:
It would have been obvious to one of ordinary skill in the art
. . . to modify Wilson . . . to use . . . filler composition in the
groove, such as taught by Hume . . . , in order to seal the groove
and simplify construction by eliminating the need for an
additional gasket.
Id.
Appellants contend that the Examiner fails to articulate reasoning with
rational underpinning and instead utilizes improper hindsight reconstruction.
App. Br. 14, 20. More particularly, Appellants contend that the Examiner
has not identified a sufficient reason that one of ordinary skill in the art
would be prompted to add a sealing strip since “Wilson . . . already provides
structure, namely[,] sealing membrane 3, which accomplishes this function
[i.e., sealing]” and there is “no evidence suggesting how this [proposed]
construct would provide any better sealing than the sealing membrane alone
which already completely overlies the rupture body.” Id. at 15, 16; see also
id. at 18 and Reply Br. 6-7.
Although the Examiner has provided additional findings that Hume
“teaches that there can optionally be other sealing sheets [for panel 1 of
Hume] to serve as additional protective layers, citing the need for extra
protection and supplementary seals in panels to be used in vessels containing
corrosive materials” (Ans. 19; see also Hume, col. 2, ll. 34-39), we agree
with Appellants that the Examiner’s first articulated reason—i.e., to seal the
groove—is insufficient to explain what would have prompted a person
having ordinary skill in the art to specifically use a filler composition in the
groove, rather than simply add additional sealing sheets that overlie the
entire panel as suggested by Hume. First, Wilson already includes a sealing
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membrane 3 that overlies the entire rupture body 2. See Wilson, col. 4, ll.
40-48; fig. 5. Second, Appellants point out that “placing the sealing strip of
Hume . . . underneath the sealing membrane [3] of Wilson . . . , as suggested
by the Examiner, would create a three-dimensional surface that would no
longer be able to lie flush with the membrane 3 or with the support vacuum
39” creating “gaps between the rupture body 2 and the non-elastic seal 36”
which “would only create additional problems for the operability of the
vent.” App. Br. 19. Thus, the first reason proffered by the Examiner to
modify Wilson, i.e., to add sealing strips 22 into grooves for supplementary
sealing, lacks rational underpinning.
Appellants also contend that the Examiner’s second articulated
reason—i.e., to simplify construction by eliminating the need for an
additional gasket—is insufficient to explain what would have prompted a
person having ordinary skill in the art to use filler composition in the
grooves. App. Br. 15-16. More particularly, Appellants contend that the use
of sealing strip 22 would require “multiple sealing strips 22 due to the
petaled nature of the Wilson . . . rupture body 2” which would not result in a
simplified construction. Id. Appellants further contend that multiple
sealing strips “would make assembly of the vent panel much more difficult”
and “would complicate assembly of . . . a laminar construct.” Reply Br. 7, 8.
Moreover, the benefit outlined in Hume of simplifying assembly and
avoiding the need for a separate gasket is due to the T-shape of sealing strip
22 being able to “cover[] both sets of slots 5 and 9 where they are present,
although it may have only a single leg 23.” Hume, col. 3, ll. 14-17; fig. 6.
The Examiner does not adequately explain how applying Hume’s teaching—
a sealing strip adapted to cover multiple slots that are substantially parallel
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to each other—to Wilson would eliminate the need for an additional gasket
when none of Wilson’s slits 24, 28 are similarly proximate to each other as
in Hume. Thus, the second reason proffered by the Examiner to modify
Wilson, i.e., to add sealing strips 22 into grooves to simplify construction by
eliminating the need for an additional gasket, lacks rational underpinning.
Without a persuasive articulated reason based on a rational
underpinning for modifying the reference as proposed, the Examiner’s
rejection appears to be the result of an impermissible hindsight
reconstruction. See App. Br. 20; see also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)) (“rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). Absent hindsight, we fail to see why one
having ordinary skill in the art would have been led to modify the teachings
of Wilson based on the teachings of Hume in the manner proposed by the
Examiner.
Accordingly, we do not sustain the rejection of independent claim 1,
and claims 2, 3, 5-16, 19, 20, and 40-46 which depend directly or indirectly
from independent claim 1, under 35 U.S.C. § 103(a) as unpatentable over
Wilson, Weatherby, and Hume.

Rejections (2)-(3)
The Examiner’s rejections rely on the same reasoning that lacks a
rational underpinning as discussed supra in connection with the first
rejection. See Ans. 11, 12, 14, 18. Accordingly, we likewise do not sustain
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the rejections, under 35 U.S.C. § 103(a), of: claims 18, 21, 23, 24, and 26-38
as unpatentable over Wilson, Weatherby, Hume, and Short; and claim 25 as
unpatentable over Wilson, Weatherby, Short, Hume, and Martin.

DECISION
The Examiner’s rejections of claims 1-3, 5-16, 18-21, 23-38, and 40-
46 under 35 U.S.C. § 103(a) are REVERSED.

REVERSED

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