BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE DAVID E. KIFER Appeal No. 86-1637

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 86-1637

July 31, 1987



 Application for Patent filed May 2, 1984, Serial No. 606,194; which is a Division of Serial No. 257,936 filed April 27, 1981. Method Of Making A Roof Flashing.



Donald L. Otto et al. for Appellant



Supervisory Primary Examiner--Donald Czaja



Examiner--M. Fertig



Before Calvert



Vice Chairman



Seidleck and Goolkasian














 This is an appeal from the examiner's final rejection of claims 27, 29 through 31, 33, 35 and 37 through 39, all the claims remaining in the application.



 Claim 27 is illustrative of the invention and reads as follows:

   27. A method of making a roof flashing consisting of a base member adapted to be secured to a roof and a collar for establishing a weather-proof seal with an upstanding pipe passing through an opening in such roof, both such base member and collar being made of an elastomeric material, comprising the steps of molding the base member in a first molding operation, such base member being molded with an opening surrounded by a stepped flange, such stepped flange being molded to form a radially inwardly extending annular lip portion having a plurality of circumferentially spaced slots molded therein, and an external cylindrical surface extending axially inwardly from the radial outer edge of such annular lip portion, and subsequently molding the collar directly onto such base member during a second molding operation in which a series of closed loops on such collar are formed through such slots in the annular lip portion of such base member to provide a positive mechanical lock between such collar and base member, and the material of such collar is molded to extend along the top surface of the annular lip portion and is wrapped around such external cylindrical surface to aid in the formation of a fluid-tight joint between such collar and base member.



 The references relied on by the examiner are:




Morin              2,791,807   May 14, 1957

Logsdon            4,265,058   May 05, 1981

McDonald           1,355,517  June 05, 1974

(British Patent)                           


 Appellant's invention is directed to a method for making a roof flashing of the type used on a stack pipe passing through the roof of a house. Appellant's flashing is composed of two parts, a base member adapted to be secured to the roof and a collar which fits around a stack pipe passing through the roof and establishes a weather-proof seal therewith.



 Appellant's flashing is novel and is, itself, the subject matter of U.S. Patent No. 4,526,407. The claims of the instant application are before us as a divisional of U.S. Patent Application Serial No. 257,936, filed April 27, 1981 and now the '407 patent.



  *2 Appellant's process for making the roof flashing is a molding process which has only two steps: a first step of molding the base member which has a particular shape at its upper end and a second step of molding the collar directly onto the base member so that the collar is attached to the upper end of the base member by a positive mechanical lock between the collar and the base member and by any thermal bonding which occurs as a result of the heated plastic of the collar causing a similar plastic of the base member to melt and become attached chemically.



 Appellant's claims contain considerable verbiage descriptive of the finished article and the examiner has admitted that at least one descriptive feature of the article, which is set forth in the claims, is not described or made obvious by the art. Specifically, the examiner notes that the feature wherein the opening at the upper end of the base member is surrounded by a stepped flange is not disclosed by the art of record.



 It is the examiner's position that appellant's invention is directed to a manipulative process (two-step molding) which would have been obvious over the manipulative processes set forth in the prior art. The examiner notes that the Logsdon reference depicts a process for making a very similar two-component roof flashing having a somewhat different connection between the base member and the collar. Logsdon's process is the same as that claimed insofar as it involves molding the base member of rigid plastic material and, thereafter, molding the collar of flexible elastomeric material directly onto the base member so as to provide both mechanical interlock and/or thermal bonding. Similarly, the McDonald patent teaches that the collar of a flashing may be molded onto the base structure. Indeed, Figure 9 thereof depicts mechanical interlocks very similar to the mechanical interlocks employed by appellant.



 The examiner has taken the position that the claims before us are process claims and that from a process viewpoint, i.e., molding the collar directly onto a premolded base, appellant's invention would have been obvious in view of the cited art. The examiner relies on In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985).



 Appellant urges that the structural limitations in the claims are controlling and that In re Durden, supra is limited to the issue of whether a chemical process, otherwise obvious, is patentable simply because either or both the specific starting material employed and the product obtained are novel and unobvious.



 We have carefully considered appellant's arguments but are unpersuaded thereby and are of the opinion that, in this instance, In re Durden compels affirmance of the examiner's rejection.



 As stated in Durden:

   "A process, after all, is a manipulation according to an algorithm, as we have learned in recent years--doing something to or with something according to a schema." (Emphasis added.)

*3 The only manipulation accomplished by appellant is the two-step process of molding the base member and molding the collar onto the base member. Appellant's specification is in accord. See page 5, lines 7 through 10 which read as follows:

   "The roof flashing 1 is preferably made in a two-step molding process, with the base member 2 of the flashing being molded first in the configuration previously described, followed by a subsequent molding operation in which the collar 4 is molded directly onto the upper end of the base member."

These steps of appellant's process are old and obvious.



 Appellant's process contains no changes or variations in molding procedures or conditions when considered in relationship to the prior art. The only difference between the claims before us and the disclosure of the prior art is that the article produced by appellant differs somewhat in design from that of the prior art.



 Appellant's flashing is made of an injection molding technique wherein hot plastic is forced through a small opening into a die having the desired shape (specification, page 5, line 11). We recognize that the differences in design between appellant's flashing and prior art flashings would necessitate a difference in the shape of the molding dies. Appellant has not indicated that the difference in design requires any die making or molding skill over and above that possessed by those skilled in the molding art. Nor has appellant shown that the particular shape of appellant's structure presents any considerations to one of ordinary skill in the art, evident from the structure, that would lead him to believe that the conventional molding techniques would not operate to form the desired product.



 Appellant urges that Durden is applicable only to chemical cases. Appellant's attention is directed to footnote 4 of Durden at 226 USPQ 360. The footnote indicates that the Board majority opinion in Ex parte Durden concluded with the statement:

   "To the extent that this decision is in any way inconsistent with the published Board of Appeals decisions in Ex parte MacAdams, 206 USPQ 445, and Ex parte Klioze, 220 USPQ 91 (1983), those decisions are hereby overruled."

Ex parte MacAdams was also a molding case and involved rotational molding under conventional rotational molding conditions of a novel and unobvious polymer.



 Appellant's attention is also directed to In re Neugebauer, 330 F.2d 353, 141 USPQ 205 (CCPA 1964) wherein a claim directed to a method of making an electrophotographic material comprising coating an electrically conductive support layer with a novel photoconductive insulating layer was held to be unpatentable because the sole manipulative step "coating" was conventional and, therefore, obvious. As the court indicated, "[t]he fact that the final product is novel is not controlling of obviousness of the method" (141 USPQ at 209).



  *4 The examiner's rejection of claims 27, 29 through 31, 33, 35 and 37 through 39 is affirmed.









Ian A. Calvert



Vice Chairman



James A. Seidleck






John T. Goolkasian





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