Ex Parte Wood et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10631474 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS S. WOOD and ROGER D. WARREN
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Appeal 2008-5879
Application 10/631,474
Technology Center 1700
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Decided: January 29, 2009
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Before CHARLES F. WARREN, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12 and 21-25. Claims 13-20, which are all of the other
pending claims, stand withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an apparatus for molding a lofted material, and
disclose that the molded lofted material can be a garment or an upholstery
item (Spec. 5:20-23). Claim 1 is illustrative:
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1. An apparatus for molding a lofted material, comprising:

a first mold having a surface with a projecting element and a first
level portion;

a second mold having a surface with a recessed element and a second
level portion; and

means for moving said first and second molds towards and away from
each other,

wherein said projecting element of said first mold and said recessed
element of said second mold are positioned so that a uniform preset gap is
defined between said projecting element and said recessed element when
said first level portion of said first mold and said second level portion of said
second mold are brought into relatively close relation.

The Reference
Silverman 3,597,800 Aug. 10, 1971
The Rejections
The claims stand rejected over Silverman as follows: claims 1, 3, 4, 6-
10, 12, 21, and 23-25 under 35 U.S.C. § 102(b), and claims 2, 5, 11 and 22
under 35 U.S.C. § 103.
OPINION
We affirm the Examiner’s rejections.
Rejection under 35 U.S.C. § 102(b)
The Appellants argue the claims in two groups: 1) claims 1, 3, 4, 6, 8-
10, and 12, and 2) claims 7 and 21 (Br. 4-6). We therefore limit our
discussion to one claim in each group, i.e., claims 1 and 7. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).

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Claim 1
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Silverman discloses, expressly or inherently, a lofted
material molding apparatus comprising a projecting element of a first mold
and a recessed element of a second mold positioned to form a uniform preset
gap between them when level portions of the first and second molds are
brought into relatively close relation?
Findings of Fact
Silverman discloses an apparatus for making molded seamless
brassiere pads or cups from bonded nonwoven fibrous batting (col. 1, ll. 5-
12). The apparatus comprises a female mold member (30) having therein a
female mold cavity (31), and a generally conically shaped male mold
member (32) having an apex portion (34) in which a plurality of sharp
pointed needlelike piercing elements (35) are mounted (col. 2, ll. 48-54;
Fig. 8). Either or both of mold members 30 and 32 may be heated, such as
by, respectively, electric heating elements 44 and 45 (col. 3, ll. 1-5).
In operation, as female mold member 30 is brought down onto fibrous
nonwoven bonded batting material (23) to form from it a molded seamless
brassiere pad (20), one or both of mold members 30 and 32 may be heated as
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desired, and blank 23 is shaped and molded between male mold member 32
and cavity 31 of female mold member 30 (col. 3, ll. 41-45).
During this operation the central portion (24) of blank 23, which has
been sprayed with coolant (36) on its external surface corresponding to the
male mold member’s apex 34, is partially held against stretching and
thinning by the engagement of piercing elements 35 (col. 3, ll. 45-50). The
molding forms a skinlike glaze crust on the entire outer surface of brassiere
pad 20 except for its inner central apex portion 24 which was sprayed with
coolant and, consequently, remains partially unencrusted (col. 3, ll. 51-60).
That apex portion also does not become molded because, due to the cooling
action of the coolant, the thermoplastic adhesive bond of batting material 23
is not softened by the heat and pressure to which batting material 23 is
subjected during the molding operation (col. 3, ll. 60-68; col. 4, ll. 1-10).
Consequently the cone shaped apex portion 22 of brassiere pad 20 is not
thinned, stretched or otherwise weakened relative to the remaining portions
of brassiere pad 20 (col. 1, ll. 42-44; col. 3, ll. 69-73).
The disclosed thicknesses of brassiere pad 20 after the molding
operation are about 1/8 inch to about 5/8 inch (col. 5, ll. 1-12).
Analysis
The Appellants argue that “any space formed by the device of
Silverman when the two mold members come together is not uniform due to
the presence of the piercing elements at the apex of the male mold member”
(Br. 5).
As indicated by the Appellants’ claim 9, which depends from claim 1,
one or both of the Appellants’ first and second molds can have one or more
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surface elements, the Appellants’ exemplified surface elements being nodes,
dimples and/or teeth (Spec. 6:4-7). Hence, the Appellants’ claim 1 term
“uniform preset gap” does not exclude a gap formed from mold members
having surface elements thereon such as Silverman’s piercing elements.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Silverman discloses, expressly or inherently, a lofted
material molding apparatus comprising a projecting element of a first mold
and a recessed element of a second mold positioned to form a uniform preset
gap between them when level portions of the first and second molds are
brought into relatively close relation.
Claim 7
Claim 7, which depends from claim 1, requires that “said first level
portion and said second level portion are independently and selectively
heatable.”
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Silverman discloses, expressly or inherently, a lofted
material molding apparatus comprising first and second molds having,
respectively, first and second level portions that are independently and
selectively heatable?
Analysis
The Appellants argue: “Silverman discloses only that each or both
mold members may be heated. Silverman fails to disclose or suggest the
independent and selective heating of the individual level portions” (Br. 6).
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The Appellants’ claim 7 does not require that the first and second
level portions are independently and selectively heatable such that when
they are heated, no other part of the mold member is heated. Silverman’s
heating of either or both of first and second mole members 30 and 32 (col. 3,
ll. 1-2, 42-43) independently and selectively heats their level portions
(Fig. 9) as required by the Appellants’ claim 7.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Silverman discloses, expressly or inherently, a lofted
material molding apparatus comprising first and second molds having,
respectively, first and second level portions that are independently and
selectively heatable.

Rejection under 35 U.S.C. § 103
Claim 2
Claim 2, which depends from claim 1, requires that “said uniform
preset gap is about 0.1 inches.”
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Silverman would have rendered prima facie obvious, to
one of ordinary skill in the art, a lofted material molding apparatus
comprising a uniform preset gap of about 0.1 inches?
Analysis
The Appellants argue that “Silverman discloses a lower bound for a
finished molded pad of 1/8 or .125 inches” (Br. 7), and argues that the
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Examiner has failed to provide a pertinent reference demonstrating that a
finished thickness of 0.1 inches was well known in the art. See id.
Silverman does not disclose that 1/8 or 0.125 inch is a lower bound.
What Silverman discloses is that when making contour molded seamless
brassiere pads, the preferred brassiere pad thickness after the molding
operation is “in or about one-eighth inch to about one-fourth inch” (col. 5,
ll. 5-12). Silverman’s term “about one-eighth” encompasses values above
and below one-eighth to some extent, and would have indicated to one of
ordinary skill in the art that thicknesses somewhat above and below that
value may be desirable. Silverman’s disclosure of a thickness of about 1/8
(0.125) inch would have led one of ordinary skill in the art, through no more
than ordinary creativity, to vary the gap to provide thicknesses above or
below 0.125 inch, such as 0.1 inch, depending upon the desired degree of
padding. See KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
(In making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Silverman would have rendered prima facie obvious, to
one of ordinary skill in the art, a lofted material molding apparatus
comprising a uniform preset gap of about 0.1 inches.

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Claims 5 and 22
Claim 5, which depends from claim 1, and independent claim 22,
require that “said uniform preset gap is adjustable to accommodate a variety
of different materials.”
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Silverman would have rendered prima facie obvious, to
one of ordinary skill in the art, a lofted material molding apparatus
comprising an adjustable uniform preset gap to accommodate a variety of
different materials?
Analysis
The Appellants argue that the Examiner has not established a prima
facie case of obviousness of an adjustable gap (Br. 8).
The Appellants can adjust the gap by changing the mold members
(Br. 9:5-10). Silverman’s disclosure that the apparatus can mold blanks that
are initially about five-eighths to about 1 inch thick to make pads having a
range of thicknesses, preferably about one-eighth inch to about five-eighths
inch (col. 5, ll. 1-12), would have led one of ordinary skill in the art, through
no more than ordinary creativity, to use interchangeable mold members in
Silverman’s apparatus to accommodate the various blank material
thicknesses and to provide the gap between the mold members, when they
are brought into close relation, that produces the desired pad thickness. See
KSR, 127 S. Ct. at 1741.

Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Silverman would have rendered prima facie obvious, to
one of ordinary skill in the art, a lofted material molding apparatus
comprising an adjustable uniform preset gap to accommodate a variety of
different materials.
Claim 11
The Appellants do not provide a substantive argument for the separate
patentability of claim 11 (Br. 9). Hence, claim 11 falls for the reasons given
regarding the argued claim from which it depends, i.e., claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
DECISION/ORDER
The rejections over Silverman of claims 1, 3, 4, 6-10, 12, 21, and 23-
25 under 35 U.S.C. § 102(b), and claims 2, 5, 11, and 22 under
35 U.S.C. § 103 are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

PL Initial:
sld

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