11893428 (B.P.A.I. Jan. 20, 2012)

Ex Parte Monk et al

Board of Patent Appeals and InterferencesJan 20, 2012

11893428 (B.P.A.I. Jan. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/893,428 08/15/2007 Russell A. Monk J-HITT.1039 4738 56703 7590 01/20/2012 JON M. DICKINSON, P.C. 8015 S.E. 31st Ave PORTLAND, OR 97202 EXAMINER SCHIFFMAN, BENJAMIN A ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 01/20/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUSSELL A. MONK, THOMAS S. OHNSTAD, and LANCE A. HICKS ____________ Appeal 2010-009855 Application 11/893,428 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and PETER F. KRATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009855 Application 11/893,428 2 Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-6, 8, and 9. We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellants claim a method wherein an object 24 is embedded in a solid-state material 22 which comprises heating a region/portion 26 of the material so as to liquefy the material, and advancing/pressing the object into the liquefied material (claims 1, 8, 9; Figs. 1-5). Representative claims 1, 8, and 9, which are all of the independent claims on appeal, read as follows: 1. A method of forming an embedded-object, composite- material product utilizing a solid-state mass of PET as an embedding-and-object-receiving (EOR) material, said method comprising establishing, in a prospective contact-interface region intended ultimately to exist between an embedded object and a selected, solid-state mass of EOR material, a level of heat which, when exposed to that selected mass, is sufficient to cause EOR material therein to undergo a non-destructive, reversible state change from solid to flowable-liquid, positioning an object which is to be embedded in the EOR mass, and the mass per se, in relative juxtaposition adjacent the intended contact-interface region, with said positioning accomplished, and using relative- motion pressure adjacent the intended contact-interface region, advancing the to-be-embedded object into an embedded and received condition in the EOR material mass utilizing liquid flow in the EOR mass to accommodate such embedment, Appeal 2010-009855 Application 11/893,428 3 by said advancing, realizing the once-intended contact- interface region between the now-embedded object and the EOR mass, following said realizing, cooling the realized contact- interface region to return the EOR material therein to a solid state, and by said cooling, creating the intended, embedded-object composite product. 8. A method of uniting embedding and embeddable components comprising providing, in a solid-state condition, and as an embedding component, a predetermined-volume mass of an embedding material which is non-destructively heatable and coolable to switch reversibly between solid and liquid states, heating, in relation to a selected embeddable component, at least an appropriately sized portion of the provided mass to liquefy that portion, pressing at least a portion of the selected embeddable component completely into the liquefied mass portion thereby to produce a condition of embedment wherein the overall embedding-component material and the embedded portion of the embeddable component collectively possess a volume substantially equaling the mentioned predetermined-volume, and thereafter, cooling the liquefied embedding-material mass portion to solidify it. 9. A method of forming, without material removal, a composite-material, embedded-component product comprising preparing an embedment-receiving region in a body for an embeddable component of a receiving component without removing material from that body, including heating, in relation Appeal 2010-009855 Application 11/893,428 4 to a selected embeddable component, at least an appropriately sized portion of the provided body to liquefy that region, and also without performing any material-removal action, but in a manner reducing the volume of the receiving component, pressing an embedment component at least partially into the prepared embedment-receiving region to produce the desired embedded-component product, wherein, within and throughout the embedment-receiving region, an overall, intimate contact interface exists between the receiving and embedded components. The references listed below are relied upon by the Examiner in the rejections before us: Yakubik 2,936,814 May 17, 1960 Siggel et al. 3,429,854 Feb. 25, 1969 Miller et al. 5,888,439 Mar. 30, 1999 Hochet et al. 6,537,413 B1 Mar. 25, 2003 The Examiner rejects claims 8 and 9 under 35 U.S.C. Â§ 102(b) as anticipated by Yakubik. The Examiner rejects claims 1-6 under 35 U.S.C. Â§ 103(a) as unpatentable over Yakubik in various combinations with the other references listed above. Each of the above rejections is based on the Examiner's finding that Yakubik's method of embedding particles in plastic sheet material includes the step of heating the material to the point that it becomes a liquid, as required by all appealed claims (Ans. 4-9). Appellants correctly argue that the Examiner's finding is erroneous because Yakubik teaches heating the material above its softening point but below its melting point (App. Br. 8-10; Yakubik col.2, ll. 50-52, col. 3, Appeal 2010-009855 Application 11/893,428 5 ll. 32-35, 46-47). In response to this argument, the Examiner does not dispute the fact that Yakubik teaches heating the material below its melting point but notes that this heated material is flowable (Ans. 10). The Examiner then states that "a material that flows and is formed by heating a solid above its softening point is necessarily a liquid" (id.). The Examiner's statement is unsupported by evidence and is incompatible with common experience. As properly observed by Appellants, "a material may flow without being considered a liquid" (App. Br. 10) (e.g., sand flows through an hourglass). On the record before us, the Examiner has provided no support whatsoever for the proposition that Yakubik's material becomes a liquid when rendered flowable by heating to a temperature above its softening point but below its melting point. Because of this deficiency, we cannot sustain any of the above rejections. The decision of the Examiner is reversed. REVERSED bar