Britax Childcare Pty Ltd

Patent Trials and Appeals Board

Jul 2, 2020

2019006274 (P.T.A.B. Jul. 2, 2020)

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.
15/851,862 12/22/2017 Wieslaw Maciejczyk 743051/00039 9374
148433 7590 07/02/2020
Burr Forman LLP
dba Burr Forman McNair
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WIESLAW MACIEJCZYK
____________

Appeal 2019-006274
Application 15/851,862
Technology Center 3600
____________

Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Final Office Action dated November 26, 2018,
and as further explained in the Advisory Action dated February 8, 2019,
rejecting claims 8–14. Claims 1–7 have been allowed. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Britax Childcare Pty Ltd as the real
party in interest. Appeal Br. 1.
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BACKGROUND
The disclosed subject matter “relates to an impact energy dissipating
device.” Spec. ¶ 1. Claim 8, the sole independent claim on appeal, is
reproduced below:
8. An impact energy absorbing device for a
child safety seat comprising a shell with a pair of
opposing surfaces, wherein one of the surfaces
comprises at least one energy absorbing element in
the form of a recess extending into the shell toward
the other surface, wherein the at least one energy
absorbing element comprises a hollow, gas, liquid,
gel, or foam material and is configured to absorb
energy in response to plastically or elastically
deforming, cushioning, crushing, rupturing,
deflating or bursting as a result of an impact.

REJECTIONS
1. Claims 8, 9, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Buehrig (US 3,171,691, issued Mar. 2, 1965).
2. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over Buehrig and Gale (US 3,441,310, issued April 29, 1969).
3. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable
over Buehrig.

DISCUSSION
Rejection 1
Appellant argues the patentability of claim 8 and does not separately
argue claims 9, 11, 13, and 14, which depend from claim 8. Appeal Br. 2–6.
Thus, we address claim 8, with claims 9, 11, 13, and 14 standing or falling
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Application 15/851,862
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with claim 8. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). In the Final Office
Action, the Examiner found that Buehrig anticipated claim 8:
Note the impact energy absorbing device capable of use
with a child safety seat comprising a shell (11) with a pair (17
and 18) of opposing surfaces, wherein one (17) of the surfaces
comprises at least one energy absorbing element in the form of a
recess (21) extending into the shell toward the other (18) surface,
wherein the at least one energy absorbing element comprises a
hollow (see Figures 2-4), gas, liquid, gel, or foam material and is
capable of absorbing energy in response to plastically or
elastically deforming (see Figures 3 and 4), cushioning, crushing
(see Figures 3 and 4), rupturing, deflating or bursting as a result
of an impact.
Final Act. 3.
First, Appellant argues that “Buehrig relates to a seat cushion for
bucket seats of a vehicle” and that “seat cushion 11 is disposed in a seat
shell 12 of a vehicle.” Appeal Br. 4, 5. Thus, according to Appellant, “seat
cushion 11 of Buehrig is not an energy absorbing device for a child safety
seat” as recited at the beginning of claim 8. Id. at 5.
In response, the Examiner states that the disclosure at column 1,
lines 9–11 of Buehrig “supports Buehrig’s device as being an impact energy
absorbing device.” Ans. 5. The Examiner also states that claim 8 “does not
positively claim a child safety seat” and that, “[a]s can be seen in the
preamble of independent claim 8, a child safety seat is set forth merely as an
article that the invention (an energy absorbing device) is intended to be used
with.” Id. Appellant does not respond to these positions. See Reply Br.
The beginning of claim 8 recites: “[a]n impact energy absorbing
device for a child safety seat.” Appeal Br. 8 (Claims App.). We agree with
the Examiner that “for a child safety seat” merely sets forth an intended use
of the claimed “impact energy absorbing device,” and does not limit the
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scope of the claim. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952
(Fed. Cir. 2006) (“Preamble language that merely states the purpose or
intended use of an invention is generally not treated as limiting the scope of
the claim.”). Appellant does not direct us to, nor do we find, evidence
suggesting that the preamble is limiting. For example, “child safety seat” is
not recited anywhere else in the claim language. Cf. Eaton Corp. v.
Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.”). Thus, that Buehrig does not explicitly disclose the
use of the relied-upon structure in “a child safety seat” does not apprise us of
error. Moreover, the record supports the Examiner’s finding that element 11
in Buehrig is an “impact energy absorbing device.” See Buehrig 1:9–11
(“This invention relates to seat cushions and more particularly to seat
cushions in which the resistance to deflection under load increases as the
load is increased.”), cited at Ans. 5.
Second, Appellant presents several arguments as to why “seat
shell 12” in Buehrig does not satisfy certain requirements of the “shell”
recited in claim 8. Appeal Br. 5. For example, Appellant contends that “the
alleged energy absorbing elements (i.e., pockets 21) of the seat cushion 11
do not extend into the seat shell 12 at all.” Id.
With these arguments, Appellant does not address the rejection as
articulated. As made clear in the Final Office Action, the Examiner
identified element 11 in Buehrig—not element 12—as the “shell” recited in
claim 8. See Final Act. 3 (discussing “shell (11)”). Element 12 of Buehrig
has never been identified for any aspect of claim 8. See, e.g., Ans. 6 (“The
seat cushion of Buehrig is a shell (11) having a pair (17 and 18) of opposing
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surfaces, as described in the rejection, and as shown in Figures 2, 3 and 4.
The seat shell 12 provides no part of the impact energy absorbing device of
Buehrig, as described in the above rejection.”).
Third, in the Reply Brief, Appellant argues that one of ordinary skill
in the art would not consider element 11 in Buehrig to fall within the scope
of the broadest reasonable construction of the term “shell.” See Reply Br. 3–
5. We first address whether this argument is timely. Appellant alleges that,
in the Appeal Brief, “Appellant disagree[d] that the seat cushion 11 of
Buehrig is analogous to the claimed shell.” Id. at 4. With this, Appellant
appears to refer to this statement in the Appeal Brief:
As an initial matter, the only possible construction of the
disclosure of Buehrig as including “a shell with a pair of
opposing surfaces” would necessitate that the top and bottom
surfaces of the seat shell 12 be considered as opposing surfaces.
Appeal Br. 5. This statement, however, does not explain why element 11 is
not a “shell” under the broadest reasonable construction; it only states the
conclusion that element 12 is the “only possible” “shell.” Id. Thus, we do
not agree that the scope of “shell” was raised in the Appeal Brief.
Moreover, the Examiner did not discuss the scope of the term “shell” for the
first time in the Answer, thereby “opening the door” to a response in the
Reply Brief. Instead, the claim construction argument in the Reply Brief as
to the scope of the term “shell”—i.e., that “shell” does not include
element 11 in Buehrig—should have been made in the Appeal Brief,
immediately following the Examiner’s clear identification of element 11 as
the “shell” in claim 8. See Final Act. 3; see also 37 C.F.R. § 41.41(b)(2)
(“Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
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the Board for purposes of the present appeal, unless good cause is shown.”);
In re Durance, 891 F.3d 991, 1002 (Fed. Cir. 2018) (stating that “an
applicant’s reply may not respond to grounds or arguments raised in the
examiner’s answer if they were part of the Final Office Action and the
applicant did not address them in the initial appeal brief”). Although this
argument is untimely, in order to develop a complete record on this issue, we
address the merits below.
Appellant contends that “one of ordinary skill in the art, having the
specification as a guide, would give the ordinary and customary meaning to
the term ‘shell’” to construe that term “as a ‘hard protective outer case’ (see
Oxford Dictionary definition of ‘shell’).” Reply Br. 4. According to
Appellant, “seat cushion 11 [in Buehrig] is not a ‘hard protective outer
case’” because it “has a soft outer layer to serve its fundamental purpose of
being placed over a hard surface to provide comfort.” Id. (citing Buehrig
2:11–18; discussing Buehrig 1:18–22 (disclosing how “[s]uch a cushion has
to be comfortable to sit on for relatively long periods of time”)).
The record does not support the proposed requirement that the recited
“shell” must be “hard.” As an initial matter, we note that Appellant
identifies only one piece of evidence in support of the proposed
requirement—specifically, one dictionary definition. See Reply Br. 4.
Appellant does not identify any intrinsic evidence to support the proposed
requirement. See id. And, although we do not have the Examiner’s
perspective on these issues, which were raised for the first time on Reply,
having reviewed the intrinsic evidence, we identify no support for the
proposed requirement that the “shell” must be “hard.” See Phillips v. AWH
Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (“[W]hile extrinsic
evidence ‘can shed useful light on the relevant art,’ we have explained that it
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is ‘less significant than the intrinsic record in determining “the legally
operative meaning of claim language.”’”) (quoting C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
Turning to extrinsic evidence, definitions of “shell” in other
dictionary sources do not include the requirement proposed by Appellant
(relying on an unidentified edition of the “Oxford Dictionary” (Reply
Br. 4)). For example, the online version of the Oxford English Dictionary
defines “shell” as “[a]n exterior or enclosing cover or case” and as “[a] mere
exterior or framework.” See Appendix A at 11 (Section III), 13 (Section
IV). And the online version of the Merriam-Webster Dictionary defines
“shell” as “a framework or exterior structure” and “an external case or
outside covering.” See Appendix B at 1 (definitions 4(a) and 4(b)(1)).
Considering the intrinsic and extrinsic evidence together, we
determine that the broadest reasonable interpretation of “shell” as recited in
claim 8 does not include a requirement that the structure be “hard.” See In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(construing a claim term under the broadest reasonable interpretation in
accordance with the broader of certain dictionary definitions). Because the
identified “shell” in Buehrig need not be “hard,” we are not apprised of error
based on this argument by Appellant.
For the reasons above, we sustain the rejection of independent
claim 8. Claims 9, 11, 13, and 14 fall with claim 8.
Rejections 2 and 3
Claims 10 and 12 depend from claim 8. See Appeal Br. 8 (Claims
App.). For these rejections, Appellant argues that claims 10 and 12 are
allowable based on their dependence from claim 8. See id. at 6. Appellant
does not provide additional arguments for claims 10 and 12. For the reasons
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above, we are not apprised of error in the rejection of claim 8. See supra
Rejection 1. As such, we sustain the rejection of claims 10 and 12.

CONCLUSION
We affirm the Examiner’s rejection of claims 8–14.
More specifically, we (1) affirm the decision to reject claims 8, 9, 11,
13, and 14 under 35 U.S.C. § 102(a)(1), and (2) affirm the decision to reject
claims 10 and 12 under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9, 11, 13,
14
102(a)(1) Buehrig 8, 9, 11,
13, 14

10 103 Buehrig, Gale 10
12 103 Buehrig 12
Overall
Outcome
8–14

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED