Ex Parte Laible et al

Patent Trial and Appeal Board

Apr 9, 2013

10791550 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARL-FRIEDRICH LAIBLE and HELMUT STEICHELE
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Appeal 2011-002915
Application 10/791,550
Technology Center 3600
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Before LINDA E. HORNER, PATRICK R. SCANLON, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Karl-Friedrich Laible and Helmut Steichele (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
30, 32-34, 38, and 39. Claims 1-29, 35, and 36 are canceled. Ans. 2-3.
Claims 31 and 37 are objected to as being dependent upon rejected base
claims, and the Examiner indicated each claim would be allowable if
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rewritten in independent form to include all of the limitations of the base
claim and any intervening claims. Id. at 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to “a foam-filled hollow body”
that includes a wall with an opening, a reinforcing part with a hole, and a
destructible layer disposed between the wall and the reinforcing part.
Spec. 6, ll. 19-25. Claims 30 and 34 are independent. Claim 30, reproduced
below, is illustrative of the subject matter on appeal.
30. A foam-filled hollow body, comprising:
an inner wall;
an outer wall spaced from the inner wall, the outer wall
having an opening therethrough;
a reinforcing plate positioned on an inner side of the outer
wall and coupled to the outer wall by a clinch connection, the
reinforcing plate having a hole therethrough, the hole in the
reinforcing plate being aligned with the opening in the outer wall;
a destructible layer positioned between the reinforcing
plate and the outer wall so as to cover the hole in the reinforcing
plate and the opening in the outer wall, the destructible layer
being formed of a substantially incompressible material, wherein
the clinch connection is made without substantial heating of the
destructible layer and without causing the destructible layer to
move such that the destructible layer would uncover the opening
in the outer wall; and
foam insulation located between the inner wall and the
outer wall, wherein the destructible layer prevents the foam
insulation from escaping from the opening in the outer wall.
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Independent claim 34 is also directed to a foam-filled hollow body.
Claim 34 differs from claim 30, in pertinent part, in that it omits the
limitations relating to a “clinch connection,” instead calling for the
reinforcing plate to be coupled to the outer wall “by a mechanical
connection,” and it calls for the destructible layer to be formed of a
“substantially inelastic material” rather than a “substantially incompressible
material.”
THE EVIDENCE
The Examiner relies upon the following evidence:
Saunders US 2,845,320 Jul. 29, 1958
Carey US 4,102,721 Jul. 25, 1978
Anell US 6,036,293 Mar. 14, 2000
Ueda US 6,471,313 B1 Oct. 29, 2002
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 30, 32, and 331 under 35 U.S.C. § 103(a) as being
unpatentable over Saunders, Anell, Ueda, and Carey; and
2. Claims 34, 38, and 392 under 35 U.S.C. § 103(a) as being
unpatentable over Saunders, Ueda, and Carey.

1 The Examiner withdrew this ground of rejection as applied to claim 31.
Ans. 3.
2 The Examiner withdrew a rejection of claim 37 under 35 U.S.C. § 103(a)
as being unpatentable over Saunders, Ueda, Carey, and Anell. Ans. 3.
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ANALYSIS
Rejection 1: Claims 30, 32, and 33
Appellants argue claims 30, 32, and 33 as a group. App. Br. 8-11.
We select claim 30 as representative, and claims 32 and 33 stand or fall with
claim 30. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Saunders discloses a foam-filled hollow
body as called for in claim 30 except for the clinch connection and the
destructible layer. Ans. 4. The Examiner found that Anell teaches the
claimed clinch connection and that it would have been obvious to use such a
connection to join the reinforcing plate and the outer wall of Saunders.
Ans. 5. Appellants do not contest these findings as to the scope and content
of Saunders and Anell or the Examiner’s proposed modification of Saunders
with the teaching of Anell.
The Examiner found that both Ueda and Carey disclose the idea of
using a destructible layer to prevent foam material from escaping through
openings in the housing during filling, and that Ueda further discloses
providing the destructible layer between a wall and a reinforcing plate of a
refrigerator housing and that Carey further discloses that the destructible
layer is formed of a substantially incompressible material. Id. The
Examiner determined that it would have been obvious to provide a
destructible layer between the reinforcing plate and outer wall of Saunders to
cover the openings therein to prevent foam material from escaping during
filling of the housing, as taught by Ueda and Carey, with the destructible
layer being formed of a substantially incompressible material, as taught by
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Carey, “since the references teach alternate conventional refrigerator
housing structure[s], used for the same intended purpose, thereby providing
[the] structure as claimed.” Id. at 5-6.
Appellants argue that Ueda teaches away from substituting the
destructible layer of Carey for the destructible layer of Ueda because Ueda
teaches that its sponge rubber element 51 “should be highly elastic so that
when the cover plate 18 is mounted on the structure, the projections 22 on
the back of the mounting plate do not pierce through the material layer.”
App. Br. 10. Appellants argue that if a less elastic material such as Carey’s
were used instead, the projections on the rear of the cover plate would pierce
the material, and this would allow foam to escape from within the hollow
body. Id. This argument is not persuasive for two reasons.
First, the argument does not address that Examiner’s proposed
modification of Saunders. As the Examiner noted, the Examiner is not
suggesting modifying the structure of Ueda to use the destructible layer of
Carey. Ans. 8-9.
Second, Appellants’ teaching away argument is refuted by Ueda itself,
which discloses alternate embodiments that use either a sheet of
polychlorovinyl or polyethylene having a closed cell structure, or a rubber or
paper adhesive tape for sheet 51 in place of the sponge rubber material.
Ueda, col. 9, ll. 59-63. Ueda discloses:
In the case where either one of these sheets or tapes is used, the
engagement protrusions 22 break through the sheet or tape
when inserted. Accordingly, there is a possibility that the heat-
insulating material 4 may leak out through broken portions of
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the sheet or tape. However, since the gaps between the
decorative frames 6 and the opposed ends of the reinforcement
14 are reliably closed by the sheet or tape, there is almost no
possibility that the heat-insulating material 4 leaks outside the
corner cover 17.
Id. at col. 9, l. 63 – col. 10, l. 5. Thus, while Ueda’s alternate sheets and
tape, which are punctured by the protrusions, may be less preferable than the
sponge rubber material, Ueda indicates that these alternate materials are
suitable for use as a backing material for the reinforcement 14. Accordingly,
we disagree with Appellants’ argument that Ueda teaches away from using
materials, such as the destructible material disclosed in Carey, that are
capable of being punctured by the protrusions on Ueda’s cover plate.
Appellants argue for the first time in the Reply Brief that Ueda’s layer
51 is not destructible because it is “intended to be highly elastic and to
deform, not break.” Reply Br. 2. While it is true that Ueda’s sponge rubber
layer 51 is not designed to be punctured by the engagement protrusions 22,
Appellants’ argument is not true as to the alternate sheets 51 discussed
supra, which Ueda explicitly describes as being broken through by the
engagement protrusions 22 when the corner cover 17 is inserted. See Ueda,
col. 9, l. 59 – col. 10, l. 5. As such, Ueda discloses a destructible layer 51.
Appellants further argue in the Reply Brief that Carey’s barrier tape is
not destructible because it is “porous and elastic.” Reply Br. 2. This
argument is countered by the position Appellants took in the Appeal Brief
that Carey’s barrier tape would be punctured by the protrusions 22 of Ueda’s
corner cover 17 were Carey’s tape used in place of Ueda’s sponge rubber
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layer 51. App. Br. 10. Having admitted that Carey’s tape is destructible by
Ueda’s protrusions 22, Appellants cannot assert convincingly that Carey’s
tape is not destructible.
Appellants further argue that the sponge rubber layer 51 of Ueda is
not “substantially incompressible” and the elastic barrier tape of Carey is
also not “incompressible” as called for in claim 30. Reply Br. 3. First, we
note that claim 30 does not call for the material to be completely
incompressible. While Carey discloses that “[u]nder compression, the
resilient barrier structure will compact somewhat” (col. 2, ll. 18-19), under
the broadest reasonable interpretation of “substantially incompressible”
Appellants have not persuaded us that the Examiner erred in finding that
Carey’s barrier tape is substantially incompressible even if it compacts
somewhat under pressure. Further, Ueda’s alternate materials for sheet 51,
such as paper adhesive tape, are substantially incompressible.
For these reasons, Appellants have not persuaded us of error in the
Examiner’s rejection of claim 30 as being unpatentable over Saunders,
Anell, Ueda, and Carey. We affirm the rejection of claim 30 and claims 32
and 33 which fall with claim 30.
Rejection 2: Claims 34, 38, and 39
Appellants offer arguments pertaining to all the claims subject to this
rejection and offer additional arguments for dependent claim 39. App.
Br. 12. For the arguments pertaining to all of the claims, we select claim 34
as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We separately
consider the additional arguments pertaining to claim 39.
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Claim 34
Appellants rely on the same arguments presented in the Appeal Brief
for claim 30 to argue for the reversal of the rejection of claim 34, viz. “that
the combination of Ueda and Carey with the Saunders [sic] reference is
improper.” App. Br. 12. For the same reasons discussed supra, we find
these arguments unpersuasive of error in the Examiner’s rejection.
Appellants further argue for the first time in the Reply Brief that
neither Ueda nor Carey discloses or suggests a “destructible layer.” Reply
Br. 4-5. For the reasons discussed supra with regard to claim 30, we find
these arguments unpersuasive of error in the Examiner’s rejection.
Appellants also argue that “both Ueda and Carey Jr. utilize layers
formed of elastic materials, not inelastic materials as recited in claim 34.”
Reply Br. 5. First, we note that claim 34 does not call for the material to be
completely inelastic. While Carey discloses that “[t]he pressure of the foam
upon the barrier structure is sufficient to deform the barrier, causing it to
bulge slightly” it also discloses that the pressure is not enough to cause the
barrier to protrude beyond the wall. Carey, col. 2, ll. 22-25; col. 5, ll. 5-7.
Under the broadest reasonable interpretation of “substantially inelastic”
Appellants have not persuaded us that the Examiner erred in finding that
Carey’s barrier tape is substantially inelastic, even if it deforms slightly
under pressure during the foaming process.3 Further, Ueda’s alternate
materials for sheet 51, such as paper adhesive tape, are substantially

3 We note that Appellants’ destructible layer 15 also appears to bulge
slightly under pressure. See Spec., fig. 5d.
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inelastic. For these reasons, Appellants have not persuaded us of error in the
Examiner’s rejection of claim 34 as being unpatentable over Saunders,
Ueda, and Carey. We affirm the rejection of claim 34 and claim 38 which
falls with claim 34.
Claim 39
Claim 39 depends indirectly from claim 34 and calls for “a hinge plate
that is attached to the outer wall by a fastener that passes through the
opening in the outer wall and that is coupled to the threaded hole in the
reinforcing plate by screw threads, wherein the fastener pierces the
destructible layer.” Appellants argue that the rejection of claim 39 should be
reversed because “[t]he references of record also fail to disclose or suggest
an embodiment where a fastener pierces a destructible layer in order to
attach a hinge plate to an outer wall” and that “the Ueda reference teaches
against a fastener piercing a destructible layer.” App. Br. 12.
As we discussed supra, we are not persuaded by Appellants’ teaching
away argument. As noted, Ueda discloses alternative destructible layers that
are pierced by protrusions 22.
Further, Appellants admit that were one to use the barrier tape of
Carey in the structure of Ueda, the protrusions 22 would pierce Carey’s
barrier tape. App. Br. 10. Based on this admission, the Examiner’s finding
that “it is inherent that the threaded fasteners 37 which couples hinge plate
36 to the outer wall of Saunders, as modified, would pierce the destructible
layer” is based on a sound basis. Ans. 7. For these reasons, we affirm the
rejection of claim 39.
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DECISION
We AFFIRM the decision of the Examiner to reject claims 30, 32-34,
38, and 39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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