Ex Parte Oh

Patent Trial and Appeal Board

Jun 29, 2018

14320603 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/320,603 06/30/2014 Suk Kan Oh
47713 7590 07/02/2018
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ZIN-038 4822
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
07/02/2018 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 SUK KAN OH
(Applicant: Zinus Inc.)
Appeal 2016-003402
Application 14/320,603
Technology Center 3600
Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
ERIC C. JESCHKE, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
3 decision finally rejecting claims 1-16. Claims 17-20 have been withdrawn
4 from consideration. We have jurisdiction under 35 U.S.C. § 6(b ).
5 We REVERSE.
The Appellant identifies the real party in interest as the Applicant,
Zinus Inc. of San Leandro, California. (See Appeal Brief, dated Aug. 24,
2015, at 1).
Appeal 2016-003402
Application 14/320,603
1 Claims 1 and 9 are independent. Claim 9 is self-explanatory:
2
3
9. A building block for children comprising:
an inner core made of a polymer material;
4 an outer layer of foam conformally molded around
5 the inner core, wherein the polymer material of the inner
6 core has a lower density than that of the foam of the outer
7 layer; and
8 a barrier skin that forms an outer surface of the
9 block, wherein the barrier skin is integrally formed with
10 the outer layer of foam.
11 (Appeal Brief, dated August 24, 2015 ("App. Br."), at 31 (Claims App'x)).
12 The Examiner rejects:
13 Claims, 1, 7 and 9 stand rejected under 35 U.S.C. § I02(a)(l) as being
14 anticipated by Glydon (US 5,658,179, issued Aug. 19, 1997) or, in the
15 alternative, under 35 U.S.C. § 103 as being unpatentable over Glydon.
16 Claim 2 stands rejected under § 103 as being unpatentable over
17 Glydon, Mommer (US 2011/0192564 Al, publ. Aug. 11, 2011) and Switlik
18 (US 6,190,486 Bl, issued Feb. 20, 2001).
19 Claims 3, 5, 6, 8, 10-12, 15 and 16 stand rejected under§ 103 as
20 being unpatentable over Glydon and Wahrmund (US 2005/0278852 Al,
21 publ. Dec. 22, 2005).
22 Claim 4 stands rejected under § 103 as being unpatentable over
23 Glydon and Lehr (US 7,083,173 B2, issued Aug. 1, 2006).
24 Finally, claims 13 and 14 stand rejected under§ 103 as being
25 unpatentable over Glydon and Greer (US 2008/0292830 Al, publ. Nov. 27,
26 2008).
2
Appeal 2016-003402
Application 14/320,603
1 CLAIM INTERPRETATION
2 Claims 1 and 9 recite blocks "wherein the barrier skin is integrally
3 formed with the outer layer of foam." The Examiner correctly interprets this
4 limitation as being in product-by-process form. (Final Act. 2 & 3).
5 With regard to the alternative rejection of claims 1, 7 and 9 under
6 § 103, the Examiner observes that "it has been held that the term 'integral' is
7 sufficiently broad to embrace constructions united by such means as
8 fastening and welding." (Final Act. 5, citing In re Hotte, 475 F.2d 644, 647
9 (CCPA 1973)). Indeed, in a different context, our reviewing court held that
10 the term "formed integrally," as applied to an inflatable portion and an outer
11 tubular portion of a dilating catheter, was not limited to a one-piece
12 construction. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys.,
13 Inc., 887 F.2d 1070, 1072-74 (Fed. Cir. 1989). Nevertheless, the words
14 "integrally formed," as used in claims 1 and 9, are not broad enough in
15 meaning to encompass heat lamination.
16 As the Appellant correctly points out, the meaning assigned to the
17 word "integral" in Hotte is not binding in other cases. (See Appeal Brief
18 14 ). As Advanced Cardiovascular itself suggested, we must look to intrinsic
19 and extrinsic evidence to interpret a term as used in a particular claim. See
20 Advanced Cardiovascular Sys., 887 F.2d at 1072 (distinguishing Hotte).
21 Claim 1 recites "an outer layer of foam molded around the inner core"
22 and claim 9 recites "an outer layer of foam conformally molded around the
23 inner core." Because claims 1 and 9 are limited to blocks in which the outer
24 layer of foam is molded, the dictionary definition of "form" that most
25 closely aligns with the claimed subject matter is "[ t Jo become formed [or]
26 shaped;" or "[t]o assume a specified form, shape, or pattern." (AMERICAN
3
Appeal 2016-003402
Application 14/320,603
1 HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE ( 5th edition 2011)
2 ("form," V. intr., defs. 1 & 3), reproduced at THE FREE DICTIONARY,
3 https://www.thefreedictionary.com/fonn (last visited June 26, 2018)).
4 Therefore, the recitation "wherein the barrier skin is integrally formed with
5 the outer layer of foam" is satisfied if, at the time that the barrier skin
6 assumes its independent form or shape, the barrier layer is integral with the
7 outer layer of foam.
8 This interpretation is consistent with the teachings of the
9 Specification. The Appellant's Specification teaches that prior art children's
10 building blocks included vinyl fabric coverings sewn over foamed polymeric
11 bodies in order to prevent children from chewing on the polymer material of
12 the bodies. (See Spec., paras. 3 & 4). Among the disadvantages of such
13 blocks were that the sewing of the vinyl fabric coverings over the foam
14 bodies increased manufacturing costs and yielded uneven seams. (See Spec.,
15 para. 4 ). Consequently, the Appellant seeks to produce giant foam building
16 blocks that are light weight, durable and inexpensive to manufacture. To
17 this end, the Appellant teaches replacing the sewn vinyl fabric coverings of
18 prior art building blocks with durable barrier skins formed on the outside
19 surfaces of the blocks so that no separate covering is required. (See Spec.,
20 paras. 21 & 26).
21 The Specification describes a technique for insert molding the barrier
22 skin and the outer layer of foam around the inner core. As depicted in
23 Figures 5 and 6, a resin 3 9, such as a polyurethane elastomeric resin, is
24 sprayed on an inner surface 40 of a mold 41; the inner core 3 0 is positioned
25 in the mold; the mold is closed; and the resin that solidifies to form the outer
26 layer of foam is injected into the mold around the inner core. (See generally
4
Appeal 2016-003402
Application 14/320,603
1 Spec., paras. 32-37). According to the Specification, the "resin [39] is
2 allowed to cure partially before the foam raw materials of the outer layer of
3 foam are injected into second mold 41. However, the resin 39 is still tacky
4 when second mold 41 is filled with the foam of the outer layer." (Spec.,
5 para. 33). As the resins within the mold 41 solidify, the resin 39 integrates
6 with an outer skin layer of the injected resin to form the barrier layer. (See
7 id.)
8 The interpretation whereby the recitation "wherein the barrier skin is
9 integrally formed with the outer layer of foam" is satisfied if, at the time that
10 the barrier skin assumes its independent form or shape, the barrier layer is
11 integral with the outer layer of foam, is consistent with the teachings of the
12 Specification. The Specification indicates that the words "integrally
13 formed" exclude embodiments having fabric coverings sewn over foam
14 polymer bodies, see In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148-
15 50 (Fed. Cir. 2012) (where the specification disparages the prior art and
16 teaches that the claimed invention is an improvement over that art, the claim
17 likely excludes that art); and also indicates that those words include
18 embodiments having barrier skins formed by resin sprayed onto interior
19 surfaces of the mold in which the outer layer of foam is molded, see Hoechst
20 Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996)
21 ( claims should be interpreted, where possible, to encompass at least one
22 preferred embodiment described in the specification).
23 In order for a fabric covering to be sewn over a foam body, the fabric
24 covering must have assumed its form or shape prior to being affixed to the
25 body. Thus, our reading of the words "integrally formed," which excludes
26 such embodiments, is consistent with the teachings of the Specification. On
5
Appeal 2016-003402
Application 14/320,603
1 the other hand, the resin sprayed onto the interior of the mold does not take a
2 form or shape independent of the shape of the interior of the mold until the
3 prepolymer used to form the outer layer of foam is injected into the mold;
4 and the resin and prepolymer are solidified into an integral whole. Our
5 reading of the words "integrally formed," which includes such embodiments,
6 is likewise consistent with the teachings of the Specification.
7 Therefore, we interpret the recitation "wherein the barrier skin is
8 integrally formed with the outer layer of foam" as satisfied if, and only if, at
9 the time that the barrier skin assumes its independent form or shape, the
10 barrier layer is integral with the outer layer of foam. As explained below,
11 this interpretation excludes preformed polymeric sheets heat laminated onto
12 foam bodies.
13
14 DISCUSSION
15 The Examiner finds that the embodiment depicted in Figure 2 of
16 Glydon anticipates claims 1 and 9. The embodiment depicted in Figure 2 of
17 Glydon fails to anticipate claim 1 or claim 9 because the Examiner has not
18 shown that embodiment to include a barrier skin "integrally formed with the
19 outer layer of foam."
20 Glydon describes a sports board 20 possessing a low-friction surface
21 for gliding over surfaces such as water, snow, grass or ice. (See Glydon, col.
22 1, 11. 6-9; col. 5, 11. 5-16; & Fig. 3). As depicted in Figure 2, Glydon's
23 sports board 20 includes: an inner core 30 of low density, closed-cell foam
24 material; an outer core 32 of higher density, closed-cell foam material; and a
25 thin layer 28 of low-friction, thermoplastic material. (See Glydon, col. 5, 11.
26 5-10). The closed-cell foam material of the inner core 30 has a lower
6
Appeal 2016-003402
Application 14/320,603
1 density than that of the foam of the outer core 32. (See Glydon, col. 5, 11.
2 35--40). As described in Glydon, the inner and outer cores 30, 32 are heat-
3 laminated together. Likewise, the thin layer 28 is heat laminated over lower
4 surfaces of the outer core 32, with a thin layer of ethylene vinyl acetate
5 ("EV A") between the thin layer and the outer core to improve adhesion.
6 (See Glydon, col. 5, 11. 42-55; & Figs. 2 & 4).
7 Glydon teaches that the "preshaped, preformed inner core of low
8 density closed-cell foam material 30 has ... upper and lower foam boards 32
9 heat laminated thereto." (Glydon, col. 5, 11. 31-35; see also id., Fig. 4). The
10 upper and lower foam boards together constitute the outer layer 3 2, which
11 includes the side rails 22. (See Glydon, Fig. 2). Glydon also teaches that the
12 "heat-laminating and compression [of forming] the outer foam core 32
13 further provides a top surface 24 for the top of the sports board 20, and the
14 top portion of the side rails 22 and front 36 and back 34 of the board."
15 (Glydon, col. 5, 11. 37--41 & Fig. 2). According to Glydon, the "top surface
16 24 of the sports board 20 is shown [in Figure 2] without the low-frictional
17 film material 28 thereon, an outer layer of heat-pressurized closed cell foam
18 providing a top surface 24 of the board 20." (Glydon, col. 5, 11. 12-16).
19 The Examiner finds that the top surface 24 of Glydon's sports board
20 10 is, or has a structure identical to, a barrier skin integrally formed with the
21 outer foam core 32. (See Final Act. 2; Examiner's Answer, mailed Dec. 15,
22 2015 ("Ans."), at 2). The Examiner provides no further evidence or
23 technical reasoning in support of this finding. The Appellant correctly
24 points out that Glydon's description is consistent with a finding that the top
25 surface 24 is merely a surface; and that no skin necessarily is formed
26 because the region of the outer core 32 near the top surface 24 might be
7
Appeal 2016-003402
Application 14/320,603
1 homogenous in composition with the remainder of the outer core. (See App.
2 Br. 9 & 10; Reply Brief, dated Feb. 16, 2016 ("Reply Br."), at 6 & 7).
3 Therefore, we do not sustain the rejection of claims 1, 7 and 9 under
4 § 102(a)(l) as being anticipated by Glydon.
5 Alternatively, the Examiner concludes that the subject matter of
6 claims 1 and 9 would have been obvious from a prior art embodiment
7 depicted in Figure 1 of Glydon. Figure 1 of Glydon depicts a sports board
8 10 including: an inner core 14; a layer 16 of foam surrounding the inner
9 core; and a low-friction, polymer film material 12 heat-laminated over the
10 layer 16. (See Glydon, col. 4, 1. 62 - col. 5, 1. 4 ). Although the Examiner
11 finds that the film material 12 serves as a barrier skin for the board 10, the
12 Examiner does not find that the film material is integrally formed with the
13 outer layer of foam. (See Final Act. 3 & 10). This finding is consistent with
14 our interpretation of the limitation "wherein the barrier skin is integrally
15 formed with the outer layer of foam" as excluding heat lamination of
16 preformed plastic sheets onto foam bodies.
17 Instead, the Examiner cites Howard v. Detroit Stove Works, 150 U.S.
18 164, 170 (1893) for the per se rule that "forming in one piece an article
19 which has formerly been formed in two pieces and put together involves
20 only routine skill in the art." (Final Act. 4 & 5). In Detroit Stove Works,
21 the Court held that it would have been obvious to cast a one-piece grate for a
22 circular stove having the shape of a prior art grate that was cast in two pieces
23 for use for burning coal. Id. at 169 & 170. Molding a foam plastic part so as
24 to form a skin layer having desired properties different from those of the
25 foam body beneath is both more complicated, and less predictable, than
26 casting a metal grate as a unitary body. In view of this added complication
8
Appeal 2016-003402
Application 14/320,603
1 and loss of predictability, we are not persuaded that the prior art practice of
2 laminating a low-friction, polymeric film onto a foam body of a sports board
3 would have suggested, per se, attempting to mold the outer foam layer in
4 such a manner as to form a comparable skin layer. Although the Examiner
5 represents in the "Response to Arguments" section of the Final Action that
6 "forming the two pieces [ the outer foam layer and the film] of the prior art
7 into one piece [ would have been] obvious to get predictable and expected
8 results as set forth in the rejection" (see Final Act. 10), the Examiner does
9 not direct us to where those predictable and expected results might be
10 articulated. Given the reasoning articulated by the Examiner in the Final
11 Action and the Answer, we do not sustain the rejection of claims 1, 7 and 9
12 under§ 103 as being unpatentable over Glydon.
13 The secondary references cited by the Examiner in support of the
14 remaining rejections do not remedy the deficiencies in the teachings of
15 Glydon. (See generally Final Act. 5-9). In particular, Figure 3 of Lehr,
16 which is cited as a secondary reference in the Examiner's rejection of claim
17 4 (see Final Act. 8), depicts a sports board 10 including a body 12 consisting
18 of first and second vertically stacked, foam core section 26, 28, overlaid with
19 a "foam sheet top skin" 32. (Lehr, col. 3, 11. 4--7). Lehr teaches laminating
2 0 the foam top skin 3 2 to a top surface of the body 12; and then "heeling" ( that
21 is, heating and pressing) the top skin over the sides of the body. (See Lehr,
22 col. 5, 11. 7-20; & Figs. 9 & 10). The Examiner does not find that the foam
23 sheet top skin 32 is "integrally formed with" the body 12 (see Ans. 3 & 4).
24 Our interpretation of the words "integrally formed" as incorporated by
25 reference into claim 4 would exclude such a finding. The Examiner
26 provides no reasoning to indicate that the teachings of Lehr might suggest
9
Appeal 2016-003402
Application 14/320,603
1 modifying the combined teachings of Glydon and Lehr so as to integrally
2 form a barrier skin of a sports board with an underlying outer layer of foam.
3 We do not sustain the rejection under§ 103 of claim 2 as being unpatentable
4 over Glydon, Mommer and Switlik; the rejection of claims 3, 5, 6, 8, 10-12,
5 15 and 16 being unpatentable over Glydon and Wahrmund; the rejection of
6 claim 4 as being unpatentable over Glydon and Lehr; or the rejection of
7 claims 13 and 14 as being unpatentable over Glydon and Greer.
8
9 DECISION
10 We do not sustain any ground of rejection entered by the Examiner.
11 We REVERSE the Examiner's decision rejecting claims 1-16.
12
13 REVERSED
10