2020003348 (P.T.A.B. May. 25, 2021)

HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals BoardMay 25, 2021

2020003348 (P.T.A.B. May. 25, 2021)

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. 15/021,487 03/11/2016 CHUNG-HUNG HUANG 84466678 9549 22879 7590 05/25/2021 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER SHAFI, LEITH S ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 05/25/2021 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): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHUNG-HUNG HUANG and KUAN-TING WU ____________ Appeal 2020-003348 Application 15/021,487 Technology Center 1700 ____________ Before JEFFREY T. SMITH, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–12, and 16–18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett- Packard Development Company, LP. Appeal Br. 3. Appeal 2020-003348 Application 15/021,487 2 The invention generally relates to forming textured films in a molded product. Spec. ¶¶ 1, 15. Claim 1 illustrates the subject matter claimed and is reproduced below from the Claim Appendix of the Appeal Brief: 1. A method of molding comprising: positioning a film and a substrate between first and second mold parts, wherein the substrate comprises metal; heating the film and subsequently connecting the film to the substrate; compressing the first mold part against the film, wherein the first mold part includes a textured form having a thickness that is shorter than a thickness of the film; compressing the second mold part against the substrate having the film connected to the substrate, wherein the compressing of the substrate forms a texture in a surface of the film independent of a reshaping of the substrate; forming the film and the substrate into a molded product; and trimming, using computer numerical control (CNC) process, the molded product. Appeal Br. 22. Independent claim 12 is directed to a method of molding including a continuous feed system and the method steps and limitations of claim 1. Appellant requests review of the following rejections from the Examiner’s Final Office Action dated October 8, 2019 (Appeal Br. 9; Final Act. 3–13): I. Claims 1, 2, 5–8, 10, and 11 rejected under 35 U.S.C. § 103 as unpatentable over Hashiba (US 2009/0324901 A1, published Dec. 31, 2009) in view of Rearick (US 2004/0191496 A1, published Sept. 30, 2004), and Yu (US 2014/0272292 A1, published Sept. 18, 2014). Appeal 2020-003348 Application 15/021,487 3 II. Claims 3, 9, and 16 rejected under 35 U.S.C. § 103 as unpatentable over Hashiba, Rearick, Yu, and Mascia (US 6,309,499 B1, issued Oct. 30, 2001). III. Claims 1, 12, 17, and 18 rejected under 35 U.S.C. § 103 as unpatentable over Mascia, Rearick, Hashiba, and Yu. OPINION After review of the respective positions that Appellant presents in the Appeal and Reply Briefs and Examiner presents in the Final Office Action and the Answer, we reverse the Examiner’s prior art rejection of claims 1–3, 5–12, and 16–18 under 35 U.S.C. § 103. The dispositive issue of this case is: Did the Examiner err in determining that the respective combinations of Hashiba and Rearick or Mascia and Rearick describe a method of molding comprising positioning a film and a substrate between first and second mold parts, wherein the substrate comprises metal, as required in independent claims 1 and 12? The Examiner finds both Hashiba and Mascia teach a method of molding comprising positioning a film and a substrate between first and second mold parts, but that neither reference teaches a substrate comprising metal as required by the claimed invention. Final Act. 3–4, 8–9. The Examiner relies upon Rearick to teach it is known to use substrates comprising metal to form molded articles. The Examiner specifically states: Rearick teaches a substrate (10) comprising metal ([0024, 0030- 0032] [by teaching] the sheet 10 comprising filler materials such as titanium oxide, zinc oxide, antimony oxide, zirconia, magnesia, Appeal 2020-003348 Application 15/021,487 4 alumina, zinc sulfide, barium sulfate, strontium sulfate, calcium carbonate, magnesium carbonate, magnesium hydroxide. The filler materials comprise metals such as titanium, zinc, antimony, zinc, magnesium, aluminum, barium, strontium, and calcium). Id. at 4; see also id. at 9. The Examiner determines it would have been obvious for one skilled in the art to modify the substrate of Hashiba or Mascia by incorporating metal into the substrate, as taught by Rearick, for coloring, absorbing UV radiation, and stabilizing against light and/or heat.2 Id. at 4; see also id. at 9. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We do not sustain the Examiner’s rejections. Independent claims 1 and 12 require the substrate to comprise metal. According to the Specification, “[t]he substrate may be formed of a variety of different materials. For example, the substrate may include metal, plastic, carbon fibers, ceramics or composites, combinations thereof or otherwise.” Spec. ¶37. It is evident from this description in the Specification that metals are distinct from ceramic compositions (metal oxides) and other metal- 2 A discussion of Yu is unnecessary for disposition of this appeal. The Examiner relies on Yu as teaching trimming of a molded product using a computer numerical (CNC) process, a feature unrelated to the dispositive issue. Final Act. 4–5. Appeal 2020-003348 Application 15/021,487 5 containing compositions.3 The Examiner relies upon Rearick to use metal in the substrate of Hashiba or Mascia. Rearick ¶¶30–32; Final Act. 4, 9; Ans. 16. However, the compounds relied upon and described in Rearick are not metals, and are instead ceramic or composite compositions, which are distinct from metals required for the substrate of the claimed invention when the claims are read in light of the Specification. Therefore, the Examiner has not provided adequate evidence to support an obviousness determination. “Where the legal conclusion [of obviousness] is not supported by facts it cannot stand” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we REVERSE the Examiner’s prior art rejections of claims 1–3, 5–12, and 16–18 under 35 U.S.C. § 103. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–8, 10, 11 103 Hashiba, Rearick, Yu 1, 2, 5–8, 10, 11 3, 9, 16 103 Hashiba, Rearick Yu, Mascia 3, 9, 16 1, 12, 17, 18 103 Masicia, Rearick, Hashiba, Yu 1, 12, 17, 18 Overall Outcome 1–3, 5– 12, 16–18 REVERSED 3 We consider the claimed requirement for metal to be elemental metal.