Ex Parte Sato et al

Patent Trial and Appeal Board

Feb 25, 2019

12733308 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/733,308 03/30/2010
32628 7590 02/27/2019
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Hiroji Sato
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.
NIF-180 7094
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
02/27/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROJI SATO and NOBUYUKI OIKA WA
Appeal2018-004158
Application 12/733,308
Technology Center 1700
Before WESLEY B. DERRICK, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 2, 8, 10, and 12-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed February 23, 2010
("Spec."); the Non-Final Office Action dated August 7, 2017 ("Final Act.");
the Appeal Brief filed November 6, 2017 ("Br."); and the Examiner's
Answer dated January 9, 2018 ("Ans."). Appellants did not file a Reply
Brief.
2 Appellants identify NIFCO Inc. as the real party in interest. Br. 2.
Appeal2018-004158
Application 12/733,308
The claims are directed to fuel filter bodies comprising two or more
sheets overlaid together to have a bag form and having a welding portion
and a non-welding portion. Spec. 1, 11. 8-14. According to Applicants,
when two or more sheets of one or more kinds of thermally weldable
materials are press-welded between a pair of welding jigs, molten resin
produced is pressed out irregularly as burrs toward a side of the formed
welded part and remain on the surface unless removed. Spec. 1, 11. 16-22 ..
Claim 2, reproduced below from the Claims Appendix of the Appeal Brief
with key limitations italicized, illustrates the claimed subject matter:
2. A fuel filter body, comprising:
two or more sheets selected from at least one of
thermally weldable synthetic resin mesh, woven fabric, knitted
fabric, and non-woven cloth as a filter material;
said sheets including a mesh or woven fabric, and a non-
woven cloth, and being overlaid together to have a bag-form;
a welding portion of the sheets having an edge portion
cut within a width of the welding portion and overlaid together
to have the bag-form;
a first non-welding portion of the sheets extending from
an end of the welding portion; and
a protuberance of molten resin formed at one side of the
welding portion and produced when press-welding the sheets
by a welding jig, said protuberance extending from the end of
the welding portion toward an inner side of the bag-form along
a top surface of the first non-welding portion,
wherein the welding jig includes a first face, a second
face spaced away from the first face, and a step face connecting
the first and second faces, the first and second faces facing the
welding portion when press-welding the sheets,
the welding jig includes a step part formed from the step
face and the second face, and
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Application 12/733,308
said protuberance is a part of the sheets pressed out by
the welding jig to the step part and hardened in a shape of the
step part to have a flat top surface without forming an irregular
burr.
Figures 3 and 4 of the '308 Application, reproduced below with
annotations, illustrate the step part, protuberance, and irregular burrs
recited in claim 2:
Fig. 3
Fig. 4
Figure 3 is a drawing in sectional view of a pair of welding jigs
53 in the claimed invention. Spec. 4, 11. 11, 25-26. Figure 4 is a
drawing in sectional view of the main parts of the welded structure.
Spec. 4, 11. 12-13. Welded part 2 is positioned lower than non-welded
part 4 by simultaneously pressing and heating using a pair of welding
jigs 5. Spec. 5, 11. 12-15. Molten resin may be pressed out from the
3 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 12/733,308
welded part 2 during such press-welding, but in such welded structure,
because a prescribed protuberance 3 is formed toward a side of the
welded part 2 by this molten resin, the molten resin does not appear
irregularly as so-called burrs 3' on the surface of the product created
by such welding in this place where the protuberance 3 is formed.
Spec. 5, 11. 18-23.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Nelson et al.
("Nelson")
Kimisawa et al.
("Kimisa wa")
US 6,811,632 B2 Nov. 2, 2004
US 2005/0029180 Al Feb. 10, 2005
REJECTI0NS 4
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § I03(a) 5: (1) claims 2, 8, 10, and 12-15 over
Kimisawa in view of Applicants' Admitted Prior Art (AAPA) and Nelson;
and (2) claims 2, 8, 10, and 12-15 over Kimisawa in view of Nelson. Non-
Final Act. 3-7; Br. 6-9.
4 The Examiner mistakenly includes claim 19, canceled prior to the Non-
Final Office Action, in the rejections.
5 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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Application 12/733,308
OPINION
Rejection 1 of all pending claims as obvious over Kimisawa, AAP A,
and Nelson
Appellants argue claims 2, 8, 10, and 12-15 as a group. Br. 6-8. We
select claim 2 as representative of the group. Claims 8, 10, and 12-15 will
stand or fall with claim 2. 37 C.F.R § 4I.37(c)(l)(iv).
The Examiner finds that Kimisawa teaches most of the limitations of
claim 2, but notes that Kimisawa is silent as to the exact welding method or
structure of the weld seam. Non-Final Act. 3. The Examiner finds that
AAPA teaches a welded portion and a non-welded portion of sheets
extending from each side of the welding portion, with a protuberance of
molten resins extending from the welding portion to a top surface of the non-
welding portion. Id. The Examiner determines that it would have been
obvious to one of ordinary skill in the art at the time of the invention to use
the weld method taught by AAP A to weld Kimisawa' s seam of two
composites because the welding method was known, successful, and
predictable. Id. at 4.
The Examiner finds that Kimisawa and AAP A do not teach that the
protuberance has a flat top surface and the press-welding does not form an
irregular burr. Id. The Examiner finds that Nelson teaches a method for
welding thermoplastic materials wherein a welding tool having square
notches is used. Id. (citing Nelson Fig. 27D-4). The Examiner finds that the
notches are part of a constraining surface that contains softened or melted
plastic and inhibits its expulsion from the weld forming zone during the
welding process. Id. The Examiner finds that using a tool as disclosed in
Nelson will provide a final product with the same shape of protuberance as
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Application 12/733,308
claimed. Id. The Examiner determines that the skilled artisan would have
found it obvious to use Nelson's square notched welding tool in the product
of Kimisawa as modified by AAP A in order to improve the strength of the
weld joint and prevent voids. Id. The Examiner finds that the limitations
claiming the welding jig shape and pressing process are product-by-process
limitations which do not confer patentability on the product claimed. Id. at
4--5.
Appellants argue that Kimisawa discloses a strainer device for a fuel
tank maintaining a stretched state while standing a pressure of fuel in a fuel
tank without a complex structure. Br. 6. Appellants contend that AAP A
discloses a pair of welding jigs to press-weld two or more sheets made from
weldable synthetic resin. Id. Nelson discloses, according to Appellants, a
method of friction stir welding for thermoplastic materials wherein a
rotational element which produces frictional energy required to fuse the
thermoplastic materials, and a constraining surface which moves
independently from the rotating element to produce additional friction
energy, are formed in a too 1. Id. at 7.
Appellants contend that the Examiner errs in finding that using a tool
designed as Nelson's Fig. 27D-4 will produce the same shape of
protuberance as claimed. Id. Specifically, Appellants contend that the tool
shown in Nelson's Fig. 27D-4 does not produce a protuberance at the step
portions of the tool because the constraining surface merely applies the
consolidation pressure and does not contribute to expulsion of the
thermoplastic material. Id. at 7-8.
According to Appellants, the tools disclosed in Nelson's Fig. 27 are
designed to change an amount of consolidation pressure, and are not
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Application 12/733,308
designed to change the shape of a protuberance. Br. 8. Appellants argue
that even if the tool disclosed in Nelson is applied to the strainer device
disclosed in Kimisawa, the shape of the protuberance claimed in claim 2 is
not produced. Id.
Appellants fail to persuade us that the Examiner reversibly erresin
determining that claim 2 is obvious over Kimisawa in view of AAP A and
Nelson. Appellants focus their argument on Nelson's disclosure. See Br. 7-
8.
A copy of Appellants' annotated version of Nelson's Fig. 27D-4 is
reproduced below:
Step portion Step portion
I
Fig. 27D·4
The annotated figure identifies what Appellants identify as the "step
portion" of the tool in Nelson's Fig. 27D-4. Br. 8.
Fig. 27D-4 is one of a series of schematic diagrams showing
constructions of suitable constraining surface in Nelson. Nelson col. 12,
11. 4--5. According to Nelson, a constraining surface, such as a non-rotating
shoe, bears on the surface of the thermoplastic material to contain softened
or melted plastic and inhibit its expulsion from the weld forming zone from
the rotational motion of the element, as well as provide a forging pressure.
Nelson col. 9, 1. 66-col. 10, 1. 4. Nelson teaches that special geometries of
constraining surfaces are developed to affect the compression of the plastic
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Application 12/733,308
and hence the final properties of the weld, such as the finish of the weld.
Nelson col. 10, 11. 23-26.
Given Nelson's disclosure that the constraining surface operates to
"contain" softened or melted plastic, provide a forging pressure, and affect
compression of the plastic, we agree with the Examiner that the teachings of
Kimisawa, AAPA, and Nelson in combination would have resulted in a
protuberance with the same shape as that claimed in claim 2. To the extent
that Appellants rely on product-by-process limitations regarding the
manufacture of the fuel filter body and associated protuberance, we note that
such limitations do not add a patentable distinction when the claimed
product is the same as the cited art's product. 6 In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985).
We disagree with Appellants' contention that the claimed
protuberance is not disclosed in the applied references. See Br. 8.
Appellants acknowledge in the Background Art that molten resin is pressed
out into burrs when press-welding two or more sheets. Spec. ,r 2. Nelson
teaches that the constraining surface constrains and does not expel softened
or melted plastic from the weld forming zone. Nelson col. 9, 1. 66-col. 10, 1.
7. Nelson's Figs. 27D provide multiple different geometries that affect the
final properties of the weld. Id. col. 10, 11. 23-26. Although Nelson does
not identify the final shape resulting from the different geometries shown in
Figs. 27D as "protuberances," one of ordinary skill in the art at the time of
the invention would have understood Nelson's disclosure to describe the
6 We also note that Appellants fail to direct us to any sound basis for a
Nelson's constraining surface not being considered a "welding jig," but
instead argues that the shape of the protuberance is not achieved. Br. 8.
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protuberance claimed. "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
We sustain the rejection of claim 2 as obvious over Kimisawa, AAP A,
and Nelson. We also sustain the rejection of claims 8, 10, and 12-15.
Rejection 2 of all pending claims as obvious over Kimisawa and
Nelson
The Examiner rejects claims 2, 8, 10, and 12-15 over Kimisawa in
view ofNelson. Non-Final Act. 5-7.
Appellants contend that the arguments relating to Rejection 1 apply to
this rejection. Br. 9. Appellants argue that neither Kimisawa nor Nelson
disclose the claimed protuberance. Id.
For the reasons provided above with respect to Rejection 1, we find
Appellants' arguments unpersuasive of reversible error by the Examiner.
We sustain the rejection of claims 2, 8, 10, and 12-15 as obvious over
Kimisawa in view of Nelson.
DECISION
The rejection of claims 2, 8, 10, and 12-15 as obvious is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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