Ex Parte Shen et al

Patent Trial and Appeal Board

Sep 28, 2017

14024000 (P.T.A.B. Sep. 28, 2017)

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.
14/024,000 09/11/2013 Qingya Shen 11PLAS0067-US-DIV 6711
95329 7590 10/02/2017
CANTOR COLBURN LLP - SABIC EXATEC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINGYA SHEN, XIN KONG, SHIPU CAO, NARONG AN,
JONG-MIN CHOI, and SHENGPING PAN
Appeal 2017-000858
Application 14/024,000
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 10-15, and 25—29 of
Application 14/024,000 under 35 U.S.C. § 103(a) as obvious. Final Act.
(June 19, 2015) 3—11. Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 SABIC Global Technologies B.V. is identified as the real party in interest.
Appeal Br. 2.
Appeal 2017-000858
Application 14/024,000
BACKGROUND
The present application generally relates to molding processes to
produce articles having enhanced aesthetic effect, and to articles produced
by such methods. Spec. 12. The application teaches that it further relates to
molding processes to produce parts for electronic devices having enhanced
aesthetic effect, such as multi-color thermoplastic parts for electronic
devices. Id.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A molded article, comprising:
an insert comprising metal, glass, and combinations comprising
at least one of the foregoing;
a composition injection molded in a first shot on at least a
portion of the insert forming a part, the composition
comprising:
a) an aromatic polycarbonate (PC) and poly(l,4-
cyclohexane dimethylene 1,4-cyclohexanedicarboxylate)
(PCCD), a weight ratio of PC to PCCD being in the range of 30
to 90 PC to 70 to 10 PCCD,
b) a glass fiber greater than or equal to 0.75 mm in length
and a quantity of the glass fiber from 1 to 50 wt.% of the
composition, and
c) a refractive index of the aromatic polycarbonate and
PCCD closely matching a refractive index of the glass fiber and
being in the range of from 1.540 to 1.570; and
a thermoplastic material injection molded on at least a
portion of the part in a second shot of a double shot process,
wherein the thermoplastic material of the second shot adheres
to at least a portion of the composition of the first shot; and the
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Application 14/024,000
molded article is configured to be attached to an electronic
device,
wherein the insert has a first coefficient of thermal
expansion and the composition of the first shot has a second
coefficient of thermal expansion, the first coefficient of thermal
expansion and the second coefficient of thermal expansion is
within a range of 5 ppm/°C to 80 ppm/°C of each other.
Appeal Br. 12 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3, 10-13, 15, and 25—29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thelemann et al. (US 2009/0218725Al,
pub. Sept. 3, 2009) (hereinafter “Thelemann”) in view of Hsu et al. (US
2009/0009942 Al, pub. Jan. 8, 2009) (hereinafter “Hsu”), Honigfort et al.
(US 6,458,913 Bl, iss. Oct. 1, 2002) (hereinafter “Honigfort”), and Gaggar
et al. (US 2006/0287429 Al, pub. Dec. 21, 2006) (hereinafter “Gaggar”).
Final Act. 4—10.
2. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thelemann in view of Hsu, Honigfort, Gaggar and
Cutherell et al. (US 2006/0017706 Al, pub. Jan. 26, 2006) (hereinafter
“Cutherell”). Id. at 10-11.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—3, 10-13, 15, and 25—
29 as obvious over Thelemann in view of Hsu, Honigfort, and Gaggar. Id. at
4—10. In support of such rejection, the Examiner finds that Thelemann
teaches a glass display panel 520 that corresponds to the “insert” limitation
of claim 1 and a mobile device enclosure 510 that corresponds to the “part”
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Application 14/024,000
that is formed from “a composition injection molded in a first shot.” Id. at
4—5 111. The Examiner further finds that Thelemann teaches that the
enclosure 510 may be formed of a plastic material and can be injection
molded with a preformed panel 520. Id. The Examiner additionally finds
that Thelemann does not teach a specific type of plastic material for the
enclosure body 510, id. 113, but that Hsu teaches to form a supporting
frame 20 made of polycarbonate plastic material as a component of a highly
air-tight, water-resistant and dustproof seal, id. 114.
The Examiner finds that it “would have been obvious to one of
ordinary skill in the art to use housing comprising a supporting frame made
of polycarbonate adhered/attached to the display unit... as enclosure body
in Thelemann et al., in order to obtain a highly air-tight, water-resistant and
dustproof seal.” Id. at 6 115. The Examiner concludes that “Thelemann et
al. in view of Hsu et al. disclose a molded article comprising a glass panel
insert (display panel), a supporting frame made of polycarbonate material
adhered/attached to the glass panel insert.” Id. at 6 116.
The Examiner makes several additional findings to the effect that the
cited references teach a composition to be injection molded in a first shot
comprising the ratio of polycarbonate to PCCD as claimed, the type and
amount of glass fiber claimed, and having the claimed refractive index. Id.
at 6-9 1118-24.
The Examiner then acknowledges that the cited references do not
explicitly teach that the insert and the first composition have similar
coefficients of thermal expansion as claimed. Id. at 9 125. The Examiner
further finds as follows:
given that the insert and the composition disclosed by
Thelemann et al. in view of Hsu et al. and Honigfort et al. and
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Application 14/024,000
Gaggar et al. is identical to presently claimed insert and
presently claimed composition, it is obvious or inherent that the
insert has a first coefficient of thermal expansion and the
composition of the first shot has a second coefficient of thermal
expansion, the first coefficient of thermal expansion and the
second coefficient of thermal expansion is being within a range
of 5 ppm/-C to 80 ppm/-C.
That is, the Examiner reasons that, because the references teach the insert
and composition as claimed, these components must have similar
coefficients of thermal expansion as claimed.
Appellants argue that “[i]n order to arrive at the present claims, a
person of skill in the art would have to select a particular insert material,
namely one that has a particular CTE relationship with a composition
portion.” Appeal Br. 5—6. Appellants further cite to Thelemann which
provides that there are “a nearly limitless number” of materials that may be
used as the insert. Id. at 6 (citing Thelemann 123).
The Examiner relies upon a theory of inherency. An examiner may
rely upon the doctrine of inherency to supply a missing claim limitation in
an obviousness analysis where such limitation is necessarily present but
inherency may not be established by mere probabilities:
Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from
a given set of circumstances is not sufficient. If, however, the
disclosure is sufficient to show that the natural result flowing
from the operation as taught would result in the performance of
the questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient.
In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) (citations and quotation
marks omitted). “The mere fact that a certain thing may result from a given
set of circumstances is not sufficient [to establish inherency].” In re
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Application 14/024,000
Rijckaert, 9 F.3d 1531, 1533—34 (Fed. Cir. 1993) (internal quotation
omitted).
Here, the claim requires an insert “comprising metal, glass, and
combinations comprising at least one of the foregoing.” The Examiner
relies upon the glass of Thelemann as having the same thermal expansion
properties as that claimed, but does not adequately support such finding.
The Specification describes a number of types of glass. Spec. 34, 56.
Similarly, the Final Rejection states that the panel (insert) of Thelemann
may include “display panels and touch sensitive panels.” Final Act. 5^12
(citing Thelemann, Abstract). The Examiner has not provided evidence
establishing that all types of glass have similar thermal expansion
characteristics. Nor does the Examiner address the thermal expansion
characteristics of the metal component of the insert.
Similarly, the “composition” taught by the combined references
embraces a range of ratios of polycarbonate to PCCD, Final Act. 8 121, a
range of sizes of glass fibers, id., and a range of quantity of glass fibers, id.
The Examiner supplies no reason why the various compositions falling
within such ranges would have thermal expansion properties similar to each
other or similar to any glass taught by Thelemann.2
Accordingly, we do not adopt the Examiner’s finding that,
given that the insert and the composition disclosed by
Thelemann et al. in view of Hsu et al. and Honigfort et al. and
Gaggar et al. is identical to presently claimed insert and
presently claimed composition, it is obvious or inherent that the
insert has a first coefficient of thermal expansion and the
2 The Examiner also does not provide evidence of, or rely upon, any reason
why one of ordinary skill in the art would have provided closely matching
coefficients of expansion as recited in the claim.
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Application 14/024,000
composition of the first shot has a second coefficient of thermal
expansion . . . within a range of 5 ppm/-C to 80 ppm/-C ... of
each other.
Id. at 9-10 125.
Rejection 2. The Examiner rejected claim 14, which depends from
claim 1, as obvious over Thelemann in view of Hsu, Honigfort, Gaggar, and
Cutherell. Final Act. 10—11. The rejection of claim 14 is reversed on the
same basis as the rejections of claims 1—3, 10-13, 15, and 25—29.
CONCLUSION
The rejections of claims 1—3, 10—15, and 25—29 under 35 U.S.C. §
103(a) as obvious are reversed.
REVERSED
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