Ex parte Steinmetz

Board of Patent Appeals and Interferences

Sep 9, 1998

08023592 (B.P.A.I. Sep. 9, 1998)

Application for patent filed February 26, 1993. According to1
applicant, this application is a division of Application 07/642,522,
filed January 17, 1991, now Patent No. 5,201,635 issued April 13, 1993.
1
Paper No. 18
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MICHAEL STEINMETZ
______________
Appeal No. 95-4846
Application 08/023,5921
_______________
ON BRIEF
_______________
Before JOHN D. SMITH, WEIFFENBACH and WALTZ, Administrative
Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
refusal to allow claims 14 through 16, as amended after the final
rejection. The amendment after final rejection dated March 27,
1995 (Paper No. 10) was refused entry by the examiner while the
Appeal No. 95-4846
Application 08/023,592
2
amendment dated April 10, 1995 (Paper No. 11) was entered by the
examiner and obviates the final rejection of claims 14 through 16
under 35 U.S.C. § 112, second paragraph (see the Examiner
Interview Summary Record dated May 30, 1995 (Paper No. 15) and
the Advisory Action dated May 30, 1995 (Paper No. 16)).
According to appellant, the invention is directed to a
method of manufacturing a mixing impeller by introducing
polyurethane resin into a mold at different times to form an
impeller that has a soft outer portion chemically bonded to a
stiffer inner portion (brief, pages 2-3). Claim 14 is
illustrative of the subject matter on appeal and is reproduced
below:
14. A method of making an impeller having inner and outer
portions of polyurethane resin having different flexibilities,
the outer portion being bonded to the inner portion, the outer
portion having greater flexibility than the inner portion,
comprising the steps of:
(a) rotating a centrifugal casting mold containing at an
outer portion of the mold a first polyurethane resin forming
material of predetermined composition,
(b) introducing into an inner portion of said mold a second
polyurethane resin forming material of different composition than
the first polyurethane resin forming material at said outer
portion,
(c) centrifugally casting the first and second polyurethane
resin forming materials respectively to form inner and outer
portions of said impeller, and
Appeal No. 95-4846
Application 08/023,592
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(d) curing the formed inner and outer portions under
conditions of temperature and time to form an impeller disk
having inner and outer portions of polyurethane resin having
different flexibilities, the outer portion being bonded to the
inner portion and having greater flexibility than the inner
portion.
The examiner relies upon the following references as
evidence of obviousness:
Hoppe et al. (Hoppe) 3,052,927 Sep. 11, 1962
Roberts 3,949,125 Apr. 6, 1976
Trowbridge et al. (Trowbridge)4,171,166 Oct. 16, 1979
Probst 4,768,574 Sep. 6, 1988
Claims 14 through 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hoppe in view of Probst, Roberts and Trowbridge
(answer, page 4). We reverse this rejection for reasons which
follow.
OPINION
The examiner concedes that Hoppe “forms a different
composite article thus requiring that the polyurethane materials
be cast in a different order” but this difference in the order
in which the two polyurethanes were cast “was a mere obvious
matter of material and article design choices which were of no
patentable consequence” since the claimed method must be
distinguished manipulatively (answer, pages 8-9). In fact,
Hoppe discloses a specific embodiment in Figure 14 of a propeller
having high and low density regions similar to the article
described in Figure 4 of Hoppe (see column 7, lines 30-41, and
Appeal No. 95-4846
Application 08/023,592
The examiner has not addressed the correlation of density with2
flexibility and hardness but presumably the density of the polyurethane
correlates with the hardness and inversely correlates with the flexibility.
See appellant’s specification, page 5, second full paragraph.
4
column 8, lines 9-15). In other words, the ends 14 of the
propeller in Figure 14 of Hoppe have a high density while the
inner portion 15 has a low density.2
“[E]very limitation positively recited in a claim must be
given effect in order to determine what subject matter that claim
defines.” See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970). The order of casting the polyurethane resins to
form an inner and outer portion of the impeller having different
flexibilities is a limitation recited in appealed claim 14 and
must be given effect. As conceded by the examiner, Hoppe
discloses and teaches an order of casting directly the opposite
of the claimed order. However, the examiner additionally cites
Probst and Roberts to show “the formation of composite articles
of multiple layers having different physical and chemical
characteristics from each other ... was generally well known and
conventional in the art” (answer, page 5).
Roberts is directed to a rigid decorative article that has a
pliable outer plastics layer and an essentially rigid interior
(abstract, column 1, lines 27-41, and claim 1). The product of
Appeal No. 95-4846
Application 08/023,592
5
Roberts is said to have only two required components whereas the
prior art requires four components (column 3, lines 2-5).
Probst is drawn to a valve for vehicle tires having a
hardness at the inside surfaces that is higher than at the base
portion (abstract, column 1, lines 36-44). According to Probst,
this stepless transition between the softer and harder regions
provides a desired simplification in manufacture and a high level
of operational reliability (column 1, line 60-column 2, line 6,
and column 2, lines 31-34).
The examiner has failed to establish why Probst and Roberts
would have suggested to the artisan the desirability of modifying
the order to casting the polyurethane in the Hoppe process. See
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)(“The mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art
suggested the desirability of the modification [citations
omitted].”)
Appellant argues that nothing in this record suggests
combining this art (brief, page 3). “It is well established that
before a conclusion of obviousness may be made based on a
combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those
Appeal No. 95-4846
Application 08/023,592
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).3
77 F.3d 422, 425-26, 37 USPQ2d 1663, 1665-66 (Fed. Cir. 1996).4
6
references.” See Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
We find that the examiner has not provided any reason,
suggestion, or motivation, and we perceive none, as to why
the artisan would modify the centrifugal casting method of
Hoppe in view of the methods disclosed by Probst and Roberts.
Furthermore, the claimed subject matter, in general terms,
is a method of making an impeller having specific polyurethane
inner and outer portions with different flexibilities. On this
record, the composite impeller having two portions with differing
flexibilities and hardnesses has not been asserted to lack
novelty. Indeed, the impeller comprising a disk having inner and
outer portions of polyurethane resin having different flexibi-
lities, the outer portion being bonded to the inner portion and
having greater flexibility than the inner portion, has been
patented in U.S. Patent 5,201,635, of which appellant states this
application is a division. In view of In re Ochiai and In re3
Brouwer , the language in a process claim which recites making 4
Appeal No. 95-4846
Application 08/023,592
7
or using a nonobvious product must be treated as a material
limitation, and a motivation to make or use the nonobvious
product must be present in the prior art for a § 103 rejection
to be affirmed. See “Guidance on Treatment of Product and
Process Claims in light of In re Ochiai, In re Brouwer and
35 U.S.C. § 103(b)”, published at 1184 Off. Gaz. 86 on March 26,
1996.
We find no motivation presented in the prior art as applied
by the examiner. Hoppe teaches a propeller with the high
density, presumably less flexible polyurethane at the tips while
the inner portion contains the lower density, presumably more
flexible polyurethane (see Figure 14 and its description in
column 8). Trowbridge discloses an impeller of a single type of
polyethylene (column 1, lines 53-54, and column 3, lines 25-32).
Probst and Roberts do disclose molding one piece articles by use
of two compositions to provide varying properties but the
examiner has not pointed out, and we do not perceive, any reasons
or motivation for using the molding technique of Probst or
Roberts in the process of casting the propeller of Hoppe.
For the foregoing reasons, we find that the examiner has
failed to meet the initial burden of establishing a prima facie
case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445,
Appeal No. 95-4846
Application 08/023,592
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24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Grabiak, 769 F.2d
729, 733, 226 USPQ 870, 873 (Fed. Cir. 1985). Accordingly, the
Appeal No. 95-4846
Application 08/023,592
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decision of the examiner rejecting claims 14 through 16 under
35 U.S.C. § 103 as unpatentable over Hoppe in view of Probst,
Roberts, and Trowbridge is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )

Appeal No. 95-4846
Application 08/023,592
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Appeal No. 95-4846
Application 08/023,592
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