Ex Parte Valentine et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10960880 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SETH VALENTINE,
RONALD L. JAMES,
JOHN P. HEALY, and
BALSU LAKSHMANAN
____________

Appeal 2008-5364
Application 10/960,880
Technology Center 1700
____________

Decided: January 23, 2009
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Application 10/960,880

STATEMENT OF THE CASE
The invention relates to a process that uses screen printing to
accurately apply adhesive to a gas diffusion medium (GDM) and light
pressure to properly align and attach the GDM to a membrane electrode
assembly (MEA) for improved tolerances and performance. (Spec. ¶ 8).
Claims 1, 8, 17, and 18 are illustrative of the subject matter on appeal:
1. A process comprising:

providing a gas diffusion medium, a membrane electrode assembly,
and a first fixture of a silkscreen printer;

the first fixture being constructed and arranged to properly locate the
gas diffusion medium for precise application of an adhesive on the gas
diffusion medium;

placing the gas diffusion medium in the first fixture;

printing an adhesive on said gas diffusion medium while the gas
diffusion medium is in the first fixture;

removing the gas diffusion medium from the first fixture;

placing the gas diffusion medium on a first vacuum support; and
applying a vacuum through the first vacuum support to hold the gas
diffusion medium in place;

aligning said gas diffusion medium relative to said membrane
electrode assembly; and

pressing said gas diffusion medium and said adhesive against said
membrane electrode assembly.

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8. The process of claim 1 wherein said pressing said gas diffusion
medium and said adhesive against said membrane electrode assembly
comprises pressing said gas diffusion medium and said adhesive against said
membrane electrode assembly without inducing a permanent compression
set in the diffusion medium.

17. A process comprising:

providing a gas diffusion medium membrane electrode assembly and
a first fixture;

cutting said gas diffusion medium so that gas diffusion medium may
be placed in the first fixture and so that the gas diffusion medium may be
properly located in a printer;

placing the gas diffusion medium in the first fixture so that the first
fixture abuts the gas diffusion medium along at least two edges thereof;

removing the gas diffusion medium from the first fixture;

placing the gas diffusion medium on a first vacuum support, and
applying a vacuum through the first vacuum support to hold the gas
diffusion or [sic] medium in place;

printing an adhesive in a controlled pattern on said gas diffusion
medium while the gas diffusion medium is in the first fixture to a thickness
that is think enough to prevent voids yet less than 25 µm thick;

locating said gas diffusion medium relative to said membrane
electrode assembly; and

pressing said gas diffusion medium and said adhesive against said
membrane electrode assembly.

18. The method of claim 17 wherein said process is carried out at a
temperature of from about 19 to about 23 degrees C and a relative humidity
of from about 37 to about 50 percent.

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The Examiner relies on the following prior art references to show
unpatentability:
Knickerbocker et al. US 5,857,883 Jan. 12, 1999
Suzuki US 2003/0082430 A1 May 1, 2003
Zelenay et al. US 6,696,382 B1 Feb. 24, 2004
Mitsuta et al. US 2005/0181267 A1 Aug. 18, 2005
Puffer, Jr. US 2006/0022081 A1 Feb. 2, 2006
Kohler et al. US 7,147,959 B2 Dec. 12, 2006
Morita et al. JP 2002-343377 Nov. 29, 20021

The Examiner maintains the following rejections:
1. Claims 8, 16, and 20 rejected under 35 U.S.C. § 112, first
paragraph as lacking enablement;
2. Claims 8, 16, and 20 rejected under 35 U.S.C. § 112, second
paragraph being indefinite;
3. Claims 1, 2, 3, and 7 rejected under 35 U.S.C. § 103(a) as obvious
over Suzuki in view of Puffer, Jr. (“Puffer”);
4. Claims 1-4, 7, and 8 rejected under 35 U.S.C. § 103(a) as obvious
over Kohler et al. (“Kohler”) in view of Puffer;
5. Claim 5 rejected under 35 U.S.C. § 103(a) as obvious over Suzuki
in view of Puffer and Knickerbocker et al. (“Knickerbocker”);
6. Claim 6 rejected under 35 U.S.C. § 103(a) as obvious over Suzuki
in view of Puffer and Zelenay et al. (“Zelenay”);

1 The computer translation of Morita et al. prepared via the Japanese Patent
Office Website was made of record in the Appellants’ Information
Disclosure Statement mailed February 20, 2007. The translation of Morita
et al. prepared for the USPTO by The McElroy Translation Company (PTO
08-1010 November5 2007) is made of record in the Office Communication
mailed December 5, 2007.
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7. Claims 9-11, and 15 rejected under 35 U.S.C. § 103(a) as obvious
over Suzuki in view of Puffer and Morita et al. (“Morita”);
8. Claims 9-12, 15, and 16 rejected under 35 U.S.C. § 103(a) as
obvious over Kohler in view of Puffer and Morita;
9. Claim 13 rejected under 35 U.S.C. § 103(a) as obvious over Suzuki
in view of Puffer, Morita, and Knickerbocker;
10. Claim 14 rejected under 35 U.S.C. § 103(a) as obvious over
Suzuki in view of Puffer, Morita, and Zelenay;
11. Claims 17, and 20-23 rejected under 35 U.S.C. § 103(a) as
obvious over Suzuki in view of Puffer, Morita, and Kohler;
12. Claim 18 rejected under 35 U.S.C. § 103(a) as obvious over
Suzuki in view of Puffer, Morita, Kohler, and Mitsuta; and
13. Claim 19 rejected under 35 U.S.C. § 103(a) as obvious over
Suzuki in view of Puffer, Morita, Kohler and Zelenay.
I. REJECTION OF CLAIMS 8, 16, AND 20 UNDER 35 U.S.C. 112,
FIRST PARAGRAPH
A. ISSUE ON APPEAL
The Examiner contends that Appellants’ Specification would not
enable one of ordinary skill in the art to execute the claimed “pressing” step
“without inducing a permanent compression set in the gas diffusion media,”
because the Specification does not disclose how to achieve this compression
set (Ans. 3) or what level of pressure should be applied. (Ans. 12-13).
Appellants contend that paragraph 23 of Appellants’ Specification is
sufficiently enabling for the recited limitation. (App. Br. 7-8).
Thus, the first issue on appeal arising from the contentions of
Appellants and the Examiner is: has the Examiner provided sufficient
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reasoning to support a conclusion that Appellants’ Specification does not
enable the full scope of the process of claims 8, 16, and 20? We answer this
question in the negative.
Since Appellants argue no claims separately from the others, we
decide this issue on the basis of representative claim 8. See 37 C.F.R.
§ 41.37(c)(1)(vii).
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are directed to the above
identified issue on appeal:
1. Appellants’ Specification states
the magnitude of pressure used to press the
adhesive-coated GDM 18 to the MEA 12 must be
tightly controlled. If too little pressure is used, the
attachment bond will not be sufficiently robust to
survive handling of the assembled UEA 10 during
subsequent fabrication of a fuel cell. If excessive
pressure is used, on the other hand, a permanent
compression set will be induced in the GDM 18.
This will compromise the functional capacity of
the GDM 18 in the assembled fuel cell. The target
pressure used to press the adhesive-coated GDM
18 to the MEA 12 is dependent on the type of
GDM used.
(Spec. ¶ 23).
C. PRINCIPLES OF LAW
“A threshold issue is whether the PTO met its burden of proof in
calling into question the enablement of appellant’s disclosure. This burden
required that the PTO advance acceptable reasoning inconsistent with
enablement. Thereupon, the burden would shift to appellant to show that
one of ordinary skill in the art could have practiced the claimed invention
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without undue experimentation.” In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). The inventor need not include in the specification that which
is already known and available to one of ordinary skill in the art. See In re
Howarth, 654 F.2d 103, 105 (CCPA 1981) (“An inventor need not, however,
explain every detail since he is speaking to those skilled in the art.”) “The
first paragraph of § 112 requires nothing more than objective enablement.
How such a teaching is set forth, either by the use of illustrative examples or
by broad terminology, is of no importance.” In re Marzocchi, 439 F.2d 220,
223 (CCPA 1971).
D. ANALYSIS
Paragraph 23 of Appellants’ Specification clearly indicates that the
desired pressure at which to attach the GDM to the MEA is a pressure great
enough to provide a sufficiently robust attachment bond to survive handling
of the assembled unitized electrode assembly (UEA), but small enough to
avoid a permanent compression set. (FF 1). The way in which the term
“permanent compression set” is used in the Specification provides some
evidence that those of ordinary skill in the art understood the meaning of this
terminology, and the Examiner has failed to provide any evidence that, in
fact, the meaning of “permanent compression set” was not known in the art.
Paragraph 23 of Appellants’ Specification also makes clear that the
amount of pressure desired “is dependent on the type of GDM used.” (FF 1).
If the pressure used to attach the selected GDM to the MEA causes a
“permanent compression set,” then one skilled in the art need only use a
lower pressure. This type of experimentation involving varying the pressure
level for the selected GDM would appear to be routine in the absence of
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evidence to the contrary. The Examiner has not provided any evidence to
the contrary.
The Examiner has not provided sufficient reasoning to support a
conclusion that Appellants’ Specification does not enable the full scope of
the process of claims 8, 16, and 20.
Therefore, we cannot sustain the Examiner’s rejection of claims 8, 16,
and 20 under 35 U.S.C. § 112, first paragraph.
II. REJECTION OF CLAIMS 8, 16, AND 20 UNDER 35 U.S.C.
112, SECOND PARAGRAPH
A. ISSUES ON APPEAL
The Examiner contends that the phrase “without inducing a permanent
compression set in the gas diffusion media” is indefinite, since it is not clear
as to what pressure would achieve this function. (Ans. 4 and 13). However,
Appellants’ arguments are directed to claims 8-23 and address a rejection no
longer maintained by the Examiner. (App. Br. 8). This error was not
corrected in Appellants’ Reply Brief. (See generally Reply Br.).
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: is the phrase “without inducing a permanent
compression set in the gas diffusion media” indefinite under the meaning of
35 U.S.C. § 112, second paragraph? We answer this question in the
negative.
Since Appellants argue no claims separately from the others, we
decide this issue on the basis of representative claim 8. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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B. FACTUAL FINDINGS
The factual finding (FF 1) in section I is also directed to the present
issue on appeal.
C. PRINCIPLES OF LAW
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification. If
the claims read in light of the specification reasonably apprise those skilled
in the art of the scope of the invention, § 112 demands no more.” Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citations
omitted); see also In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (the
indefiniteness inquiry asks whether the claims “circumscribe a particular
area with a reasonable degree of precision and particularity. It is here where
the definiteness of the language employed must be analyzed not in a
vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.”). “A claim is indefinite if its
legal scope is not clear enough that a person of ordinary skill in the art could
determine whether a particular [product or method] infringes or not.”
Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed.
Cir. 2003).
There is nothing intrinsically wrong with defining something by what
it does rather than by what it is (as evidenced by specific structure or
material, for example) when drafting patent claims. In re Swinehart,
439 F.2d 210, 212 (CCPA 1971). The patent law does not require that all
possible measurements for all interchangeable components corresponding to
functional limitations be listed in the patent, let alone that they be listed in
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the claims. Orthokinetics Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986)(“[a]s long as those of ordinary skill in the art realized
that the [claimed features] could be easily obtained, §112, 2d ¶ requires
nothing more”).
D. ANALYSIS
Appellants may choose to use functional language to describe the
pressure with which the GDM is pressed to the MEA in claim 1. Swinehart,
439 F.2d at 212. The claims are not indefinite under 35 U.S.C. § 112,
second paragraph, just because a suitable pressure used to apply a GDM to
the MEA may be varied by the type of GMD used (FF 1). Orthokinetics,
806 F.2d at 1576. As evidenced by Appellants’ Specification, correct
pressure to be applied is within the purview of one of ordinary skill in the
art. (FF 1). Thus, one of ordinary skill in the art would have been able to
determine an adequate pressure to avoid inducing a permanent compression
set, as referenced in the claims, in accordance with the requirements of
35 U.S.C. 112, second paragraph. Miles, 997 F.2d at 875. In addition, for a
particular GDM, one of ordinary skill in the art would have been able to
determine whether or not a particular pressure would meet the limitations of
the claimed step in light of the relationship between the amount of pressure
and the robustness of the bond or the induction of a compression set.
Geneva, 349 F.3d at 1384. Therefore, the claims sufficiently comply with
35 U.S.C. 112, second paragraph. We cannot sustain the Examiner’s
rejection under 35 U.S.C. § 112, second paragraph.

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III. REJECTIONS OF CLAIMS 1-3, 5-7, 9-11, AND 13-15
BASED ON SUZUKI
A. ISSUE ON APPEAL
Independent claims 1 and 9 each recite, among other things, a step of
providing “a first fixture” and a step of “printing an adhesive [. . .] on said
gas diffusion medium while the gas diffusion medium is in the first fixture.”
The Examiner contends that the fact that Suzuki teaches printing an adhesive
by silkscreen printing inherently teaches “any and all fixtures for the screen
printing process” or at least that the first fixture and printing step constitute
common sense to one of ordinary skill in the art based on the teachings of
Suzuki. (Ans. 4-5, and 14).
Appellants contend that the Examiner has not made a sufficient
showing of inherency based on the limited disclosure in Suzuki and the
Examiner has ignored the specific detailed language of the claim. (App. Br.
9-10).
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: does the teaching of silkscreen printing in Suzuki inherently
teach or make obvious “a first fixture” and the step of “printing an adhesive
[…] on said gas diffusion medium while the gas diffusion medium is in the
first fixture”? We answer this question in the affirmative.
Each of claims 1-3, 5-7, 9-11, and 13-15 stand rejected based on
Suzuki in view of Puffer, either alone or in combination with another
reference. Despite the fact that the claims are rejected under multiple
rejections, Appellants arguments are directed to the Examiner’s application
of Suzuki. Thus, we can address the multiple rejections based on Suzuki by
determination of this single issue.
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With respect to the rejection of claims 1, 2, 3, and 7, Appellants argue
no claims separately from the others. Likewise, with respect to the rejection
of claims 9-11, and 15, Appellants argue no claims separately from the
others. Further, although claims 5, 6, 13, 14 are rejected separately, no
sufficiently distinct argument is made over and above the arguments made
for the rejections of independent claims 1 and 9. Thus, we decide this issue
on the basis of representative independent claims 1 and 9. See 37 C.F.R.
§ 41.37(c)(1)(vii).
B. FACTUAL FINDINGS
The following additional Findings of Fact are directed to the above
identified issue on appeal:
2. Appellants’ Specification states that
the GDM 18 is next placed in a fixture 26 of a
silkscreen printer, for example. The fixture 26
properly locates the GDM 18 in the printer for
precise application of adhesive 19 to the GDM 18.
Next, the silkscreen printer applies a thin layer of
the adhesive 19 to the GDM 18 (step 3) in a
precisely-controlled pattern, typically along the
edges of the GDM 18.
(Spec. ¶ 17).
3. Suzuki teaches that “[t]he adhesive 46 is preferably a pressure
sensitive adhesive that is screen printed to the gasket 38.” (Suzuki, ¶ 24).
C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR, 127 S. Ct. at 1742. An obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 1741.
Instead, we “consider what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art.” In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). An improvement in the art is
obvious if “it is likely the product not of innovation but of ordinary skill and
common sense.” KSR, 127 S. Ct. at 1742.
D. ANALYSIS
We note that Appellants’ Specification does not provide a clear
definition of the term “fixture.” (FF 2). In any event, we find that one of
ordinary skill in the art would understand this term to be any type of
apparatus or support capable of holding an object during a screen printing
process.
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Suzuki teaches screen printing an adhesive (FF 3). One of ordinary
skill in the art having the teachings of Suzuki and understanding the
equipment2 and steps needed to perform screen printing would have
understood the need to provide an apparatus to hold the GDM while
applying the adhesive via screen printing. The use of such a fixture would
have required no more than ordinary skill and common sense by one of
ordinary skill in the art. KSR, 127 S. Ct. at 1742. Providing a fixture to hold
the GDM would have taken no particular creativity by and would have been
within the general knowledge of one of ordinary skill in the art. KSR, 127 S.
Ct. at 1742; Kahn, 441 F.3d at 987-88. Thus, it would have been obvious to
one of ordinary skill in the art to use a fixture on which to place the GDM
during the screen printing process taught by Suzuki.
Therefore, the teaching of silkscreen printing in Suzuki makes
obvious “a first fixture” and the step of “printing an adhesive [. . .] on said
gas diffusion medium while the gas diffusion medium is in the first fixture.”
Accordingly, we sustain the Examiner’s rejections of claims 1-3, 5-7, 9-11,
and 13-15 under 35 U.S.C. § 103.
IV. REJECTIONS OF CLAIMS 1-4, 7-12, 15, AND 16
BASED ON KOHLER
A. ISSUE ON APPEAL
As with the issue above, the Examiner contends that the fact that
Kohler teaches printing an adhesive by silkscreen printing inherently teaches
“any and all fixtures for the screen printing process” or at least that the first
fixture and printing step constitute common sense to one of ordinary skill in
the art based on Kohler. (Ans. 6 and 14).

2 See, for example, Mitsuta ¶ 121.
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Appellants contend that the Examiner has not made a sufficient
showing of inherency based on the limited disclosure in Kohler and the
Examiner has ignored the specific detailed language of the claim. (App. Br.
9-10).
A fourth issue on appeal arising from the contentions of Appellants
and the Examiner is: does the teaching of silkscreen printing in Kohler
inherently teach or make obvious “a first fixture” and the step of “printing an
adhesive [. . .] on said gas diffusion medium while the gas diffusion medium
is in the first fixture”? We answer this question in the affirmative.
Each of claims 1-4, 7-12, 15, and 16 stand rejected based on Kohler in
view of Puffer, either alone or in combination with another reference.
Despite the fact that the claims are rejected under multiple rejections,
Appellants arguments are directed to the Examiner’s application of Kohler.
Thus, we can address the multiple rejections based on Kohler by
determination of this single issue.
With respect to the rejection of claims 1-4, 7, and 8, Appellants argue
no claims separately from the others. Likewise, with respect to the rejection
of claims 9-12, 15, and 16, Appellants argue no claims separately from the
others. Thus, we decide this issue on the basis of representative independent
claims 1 and 9. See 37 C.F.R. § 41.37(c)(1)(vii).
B. FACTUAL FINDINGS
The following additional Findings of Fact are directed to the above
identified issue on appeal:
4. Kohler states that “[t]he application of the adhesive component
is conducted by any convenient method known in the art. Examples include
but are not limited to spraying, dispensing, screen printing, stencil printing,
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stamping, doctor blading or, in the case of a hot-melt adhesive, with a heated
needle or a heated dispenser unit.” (Kohler, col. 5, l. 65 to col. 6, l. 3).
5. Kohler also states that “[t]he carbon black-containing adhesive
paste was selectively screen printed onto the microlayer-coated side of the
anode and the cathode GDLs.” (Kohler, col. 7, ll. 48-50 and Example 3).
C. PRINCIPLES OF LAW
The same Principles of Law recited above in Section III are equally
applicable to our determination regarding the present issue.
D. ANALYSIS
Kohler teaches screen printing an adhesive. (FF 4 and 5). Kohler
provides additional evidence that screen printing, and thus the equipment
used therewith, was a “convenient method known in the art.” (FF 4). One
of ordinary skill in the art having the teachings of Kohler and understanding
the equipment and steps needed to perform screen printing would have
understood the need to provide an apparatus to hold the GDM while
applying the adhesive via screen printing. The use of such a fixture would
have required no more than ordinary skill and common sense by one of
ordinary skill in the art. KSR, 127 S. Ct. at 1742. Providing a fixture to hold
the GDM would have taken no particular creativity by, and would be within
the general knowledge of, one of ordinary skill in the art. KSR, 127 S. Ct. at
1742; Kahn, 441 F.3d at 987-88. Thus, it would have been obvious to one
of ordinary skill in the art to use a fixture on which to place the GDM during
the screen printing process taught by Kohler.
Therefore, the teaching of silkscreen printing in Kohler makes
obvious “a first fixture” and the step of “printing an adhesive […] on said
gas diffusion medium while the gas diffusion medium is in the first fixture.”
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Accordingly, we sustain the Examiner’s rejections of claims 1-4, 7-12, 15,
and 16 under 35 U.S.C. § 103.
V. REJECTION OF CLAIMS 17 AND 20-23
A. ISSUES ON APPEAL
Independent claim 17 also has a limitation calling for, among other
things, a step of providing “a first fixture” and a step of “printing an
adhesive . . . on said gas diffusion medium while the gas diffusion medium
is in the first fixture.” Thus, the Examiner and Appellants make the same
arguments addressed in section III above with respect to claims 17 and 20-
23 and of the Examiner’s application of Suzuki. (App. Br. 15; Ans. 4-5, and
14). For the same reasons discussed above, we determine that the teaching
of silkscreen printing in Suzuki makes obvious “a first fixture” and the step
of “printing an adhesive . . . on said gas diffusion medium while the gas
diffusion medium is in the first fixture.”
However, claim 17 also requires that “the first fixture abuts the gas
diffusion medium along at least two edges thereof.” Appellants further
contend that the broad inherency argument regarding the screen printing of
Suzuki ignores this additional limitation. (Reply Br. 4). The Examiner’s
rejection does not address this specific limitation, except for the general
contention that the fact that Suzuki teaches printing an adhesive by
silkscreen printing inherently teaches “any and all fixtures for the screen
printing process” or at the least that the first fixture and printing step
constitute common sense to one of ordinary skill in the art based on Suzuki.
(Ans. 4-5, and 14).
Thus, a fifth issue on appeal arising from the contentions of
Appellants and the Examiner is: has the Examiner reasonably established
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that Suzuki inherently teaches “the first fixture abuts the gas diffusion
medium along at least two edges thereof” or that such a limitation would
have been obvious over the teachings of Suzuki? We answer this question in
the negative.
Appellants do not argue any of claims 17 and 20-23 separately from
any other, thus we decide these issues on the basis of representative
independent claim 17. See 37 C.F.R. § 41.37(c)(1)(vii).
B. FACTUAL FINDINGS
The following additional Findings of Fact are directed to the above
identified issues on appeal:
6. Neither Suzuki nor Kohler specifically indicates a type of
fixture that may be used for screen printing, nor how a GDM may fit within
such a fixture. (See Suzuki and Kohler generally).
C. PRINCIPLES OF LAW
The same Principles of Law recited above in Section III are equally
applicable to our determination regarding these issues.
D. ANALYSIS.
Above, we determined that it would have been obvious to use a
fixture for screen printing an adhesive from the disclosure in Suzuki. While
we consider that the teachings of Suzuki extend to include a structure, the
teachings of Suzuki do not extend to the specifics of such a structure or to
“any and all fixtures for the screen printing process,” as suggested by the
Examiner. Neither Suzuki nor Kohler describes a fixture for use in the
screen printing process. (FF 6).3 In general, a fixture for a screen printing

3 Even the teaching of Mitsuta, which at least teaches “a screen printing
machine,” does not teach how the GDM fits within the machine used for
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process need not have two edges which abut a GDM. Alternative supports
for a GDM, for example, may have only a single alignment edge or may
support the GDM from above or below without any edges. Thus, the
Examiner has not established sufficient factual findings to show that the
structure of the fixture claimed in claim 17 would necessarily be inherent or
obvious to one of ordinary skill in the art based on the teachings of Suzuki or
Kohler.
Accordingly, we cannot sustain the Examiner’s rejection of claims 17
and 20-23 under 35 U.S.C. § 103.
VI. REJECTION OF CLAIMS 18 AND 19
Claims 18 and 19 depend from and incorporate all the limitations of
independent claim 17. The Examiner has not explained how Mitsuta or
Zelenay cure the deficiencies of Suzuki and Kohler identified above. Thus,
for the same reasons that we cannot sustain the Examiner’s rejection of
claim 17, we cannot sustain the Examiner’s rejections of claim 18 and 19
under 35 U.S.C. § 103.
VII. CONCLUSION
In Summary:
1. We do not sustain the Examiner’s rejection of claims 8, 16, and 20
under 35 U.S.C. § 112, first paragraph as lacking enablement;
2. We do not sustain the Examiner’s rejection of claims 8, 16, and 20
under 35 U.S.C. § 112, second paragraph being indefinite;
3. We sustain the Examiner’s rejection of claims 1, 2, 3, and 7 under
35 U.S.C. § 103(a) as obvious over Suzuki in view of Puffer;
screen printing sufficient for one of ordinary skill in the art to arrive at the
structure claimed. (See Mitsuta, ¶ 121).
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Appeal 2008-5364
Application 10/960,880

4. We sustain the Examiner’s rejection of claims 1-4, 7, and 8 under
35 U.S.C. § 103(a) as obvious over Kohler in view of Puffer;
5. We sustain the Examiner’s rejection of claim 5 under 35 U.S.C.
§ 103(a) as obvious over Suzuki in view of Puffer and Knickerbocker;
6. We sustain the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as obvious over Suzuki in view of Puffer and Zelenay;
7. We sustain the Examiner’s rejection of claims 9-11, and 15 under
35 U.S.C. § 103(a) as obvious over Suzuki in view of Puffer and Morita;
8. We sustain the Examiner’s rejection of claims 9-12, 15, and 16
under 35 U.S.C. § 103(a) as obvious over Kohler in view of Puffer and
Morita;
9. We sustain the Examiner’s rejection of claim 13 under 35 U.S.C.
§ 103(a) as obvious over Suzuki in view of Puffer, Morita, and
Knickerbocker;
10. We sustain the Examiner’s rejection of claim 14 under 35 U.S.C.
§ 103(a) as obvious over Suzuki in view of Puffer, Morita, and Zelenay;
11. We do not sustain the Examiner’s rejection of claims 17, and
20-23 under 35 U.S.C. § 103(a) as obvious over Suzuki in view of Puffer,
Morita, and Kohler;
12. We do not sustain the Examiner’s rejection of claim 18 under
35 U.S.C. § 103(a) as obvious over Suzuki in view of Puffer, Morita,
Kohler, and Mitsuta; and
13. We do not sustain the Examiner’s rejection of claim 19 rejected
under 35 U.S.C. § 103(a) as obvious over Suzuki in view of Puffer, Morita,
Kohler and Zelenay.

20
Appeal 2008-5364
Application 10/960,880

VIII. DECISION
The Examiner’s decision is affirmed-in-part.
IX. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

cam

CARY W. BROOKS
GENERAL MOTORS CORPORATION
LEGAL STAFF, MAIL CODE 482-C23-B21
P.O. BOX 300
DETROIT MI 48265-3000
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