Ex Parte Barreiro Garcia

Patent Trial and Appeal Board

Aug 27, 2018

14676946 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/676,946 04/02/2015 Luis Walter Barreiro Garcia
26294 7590 08/29/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TRW(DME)024350-0RD 1150
EXAMINER
VERAA, CHRISTOPHER
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS WALTER BARREIRO GARCIA
Appeal2017-010450
Application 14/676,946
Technology Center 3600
Before DANIEL S. SONG, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
Opinion for the Board filed by CAPP, Administrative Patent Judge
Opinion Dissenting-in-part filed by SONG, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 4--8, 10-13, and 16-21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Dalphi Metal Espana S.A. is identified as the Applicant and the real party
in interest. Appeal Br. 2.
Appeal2017-010450
Application 14/676,946
THE INVENTION
Appellant's invention relates to vehicle air bags. Spec. 1. Claim 16,
reproduced below, is illustrative of the subject matter on appeal.
16. A steering wheel assembly comprising:
a steering wheel;
an airbag module mounted on the steering wheel, the airbag
module including an airbag and a cover for covering the airbag;
a badge assembly including a badge and a retaining plate,
the badge and the retaining plate being connected to each other
and to the cover by a clip connection,
the retaining plate having at least one material weakening
that forms a defined breaking line along which the retaining
plate breaks into at least two parts upon opening of the cover,
the badge being breakable jointly with the retaining plate, the
badge and the retaining plate being configured to break in a
splinter-proof manner.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Rose
Sauer
Dominguez Aparicio
Maertens
us 6,161,865
US 7,533,899 B2
US 7,775,550 B2
US 7,780,186 B2
Dec. 19, 2000
May 19, 2009
Aug. 17, 2010
Aug.24,2010
The following rejections are before us for review: 2
1. Claims 16, 4--6, 10-13, 17, 18, 20, and 21 are rejected under 35
U.S.C. § 103 as unpatentable over Sauer and Dominguez Aparicio.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as unpatentable
over Sauer, Dominguez Aparicio, and Rose.
2 A rejection under the indefiniteness provisions of Section 112 has been
withdrawn by the Examiner. Final Action 2, Ans. 9.
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3. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable
over Sauer, Dominguez Aparicio, and Maertens.
OPINION
Unpatentability of Claims 16, 4-6, 10-13, 17, 18, 20, and 21
over Sauer and Dominguez Aparicio
Claim 16
The Examiner finds that Sauer discloses the invention substantially as
claimed except for the retaining plate and clip connection for which the
Examiner relies on Dominquez Aparicio. Final Action 3--4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Sauer with a snap-fit retaining plate
as taught by Dominquez Aparicio. Id. at 4. According to the Examiner, a
person of ordinary skill in the art would have done this to ensure that the
badge and plate rupture in a predictable manner during airbag deployment.
Id.
Appellant traverses the Examiner's rejection by arguing that the
proposed combination lacks a retaining plate as claimed. Appeal Br. 5.
According to Appellant, Dominquez Aparicio' s snap-fitting plate does not
have at least one material weakening that forms a defined breaking line
along which the snap-fitting plate breaks into at least two parts in a splinter-
proof manner. Id. at 5---6. Appellant argues that snap-fitting plate 17 of
Dominquez Aparicio merely bends along an intermediate area 33 of less
thickness. Id. at 6. "There is absolutely nothing in the '550 patent that
teaches or suggest that the snap-fitting plate 1 7 breaks, or is meant to break,
into at least two parts." Id.
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Application 14/676,946
In response, the Examiner points out that Sauer teaches a breaking
line. Ans. 9. The Examiner finds that including a breaking line in an airbag
cover is an old and well established technique for reducing the chance of
flying debris during a crash. Id. Thus, according to the Examiner, the issue
is not whether to include a breaking line, but where. Id. The Examiner
further explains that Sauer contemplates an attachment of the emblem that is
"conventional" and that it is obvious to employ various conventional
techniques, including the snap-fit means of attachment in Dominquez
Aparicio that is known in the art for the same purpose. Id.
The Examiner acknowledges that the rejection contemplates further
modification, but maintains that the rejection provides explicit reasoning for
such further modification.
One of ordinary skill would recognize that if a retaining plate is
used on a larger emblem, a bending line alone in the plate may
not be sufficient, as the breaking line, in order to be effective,
may need to be located through the emblem. In this case[,]
forming a breaking line in the retaining plate as well is an
obvious solution relying only on known techniques for known
reasons. There is nothing unexpected achieved by this as the
motivation is the same as any breaking line in an airbag cover,
i.e. for reducing the chance of flying debris during a crash.
Id. at 10. Appellant takes issue with the Examiner's above stated position in
the Reply Brief.
On pages 9 and 10 of the Examiner's Answer, the Examiner
attempts to provide an explicit reason for modifying the '899
patent in view of the teachings of the '550 patent. However,
this discussion does not address the arguments relating to the
combination of the '899 patent and the '550 patent failing to
expressly or impliedly suggesting the features of claim 16, nor
does the discussion address the arguments relating to the
Examiner impermissibly using hindsight.
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Reply Br. 3. Appellant repeats the earlier argument that Dominquez
Aparicio's snap-fitting plate bends but does not break. Id. at 6.
The Examiner finds that Sauer's decorative ring is fastened to the
airbag cover in a "conventional" manner. Final Action 4; Sauer, col. 2,
11. 17-22. The Examiner considers that Dominquez Aparicio's snap-fit
fastening means falls within the ambit of "conventional" fastening means
contemplated by Sauer. Ans. 9. Appellant takes exception to these findings
in the Reply Brief. Reply Br. 4. "[T]here is nothing in the '899 patent that
teaches the discussed 'conventional means' relate to a retaining plate. Thus,
the '899 patent does not expressly or impliedly suggest a retaining plate as
recited in claim 16." Id.
Sauer discloses a decorative element for cover caps of an airbag
module. Sauer, Abstract. The Examiner finds, and we agree, that the
"decorative element" corresponds to Appellant's claimed "badge." Final
Action 3. The decorative element includes pre-determined breaking points.
Sauer, Abstract. The decorative element tears, together with the underlying
cover cap, when the airbag is deployed. Id. The decorative element (badge)
is fastened to airbag cover cap 1 in a "conventional" manner. Sauer, col. 2,
11. 17-19.
Dominquez Aparicio discloses an airbag cover with an emblem.
Dominquez Aparicio, Abstract. The emblem 13 is formed by two
independent parts 21, 23. Dominquez Aparicio col. 3, 11. 8-13, Figs. 2, 3.
Parts 21, 23 are substantially flat and 2-dimensional, but also comprise
rods 41 that protrude substantially perpendicularly from the otherwise flat
surface. Id. col. 3, 11. 14--17. The rods snap-fit into snap-fit plate 17 via
elastic bodies 51 that receive the rods through central holes 61, 63. Id.
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col. 3, 11. 18-21. Snap-fit plate 17 is subdivided into three areas, namely,
first area 31, second area 35, and third area 33. Id. col. 3, 11. 30-37. Area 33
is an intermediate area that divides area 31 from area 35. Id. Area 33 has a
central part 39 with reduced thickness. Id. The disclosed configuration
allows emblem 13, cover 11, and snap-fit plate assembly 17 to bend to
facilitate airbag deployment. Id. col. 3, 11. 38--42.
Appellant makes much of the fact the Sauer lacks a retaining plate
with a snap-fit feature and Dominquez Aparicio bends but does not break.
Appeal Br. 5---6. We view this as individual attacks on the references,
however, it is well settled that non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981).
The point to the rejection is that the references, taken in combination,
provide the necessary teaching. In that regard, the obviousness inquiry does
not ask whether the references could be physically combined but whether the
claimed invention is rendered obvious by the teachings of the prior art as a
whole. See In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane).
We also find unpersuasive Appellant's argument that Dominquez
Aparicio' s snap-fitting means falls outside of the ambit of "conventional"
fastening means contemplated by Sauer. Reply Br. 3--4. We discern nothing
"unconventional" about using snap-fit connectors. Appellant's position to
the contrary is mere unsubstantiated attorney argument. See Estee Lauder,
Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.Cir. 1997) (explaining that
attorney argument cannot take the place of evidence in the record).
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Appellant next argues that the Examiner fails to provide a convincing
line of reasoning for the combinability of the references. Appeal Br. 6.
In the present case, the Examiner's obviousness statement does
not provide the articulated reasoning with some rational
underpinning required by the Supreme Court to support a
conclusion that it would have been obvious to modify the snap-
fitting plate 17 of the '550 patent to break into two parts.
Id. at 8. We disagree. The techniques of weakening a structure through
scoring, perforating, and the like are well known across a wide spectrum of
mechanical disciples to control and direct the bending and/or frangible
breaking of various components. A person of ordinary skill in the art would
have been familiar with each of these techniques and would have readily and
immediately understood the ramifications, benefits, and drawbacks of
substituting a bending line for a breaking line and vice versa. We consider
the passage from page 10 of the Examiner's Answer quoted above as
persuasive on this point. See Ans. 10. We also find that the Examiner's
statement in the Final Rejection provides sufficient articulated reasoning
with rational underpinning to support the proposed combination and
conclusion of obviousness. In re Kahn, 441 F.3d 977,988 (Fed. Cir.
2006)(requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); Final Action 4. 3
The prior art expressly recognized the problem and danger posed by
uncontrolled breaking of an airbag badge. Sauer, col. 1, 11. 22-28. Sauer
3 "It would have been obvious to one of ordinary skill in the art to connect
the badge taught by Sauer with a snap-fitting plate as taught by [Dominquez
Aparicio] and to form a predetermined breaking line as taught by Sauer in
the retaining plate in order to ... ensure the badge and plate rupture
predictably when the airbag deploys." Id.
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expressly addresses this known problem by providing pre-determined
breaking points in the decorative element (badge) for the airbag cover cap.
Id. col. 1, 11. 42-50. This provides ample motivation for modifying the
intermediate area 33 of Dominquez Aparicio's badge assembly with a
breaking line, particularly when the teaching of Dominquez Aparicio' s snap-
fit fasteners is incorporated into the breakable decorative element/cover cap
feature of Sauer.
Appellant repeatedly insists that the Examiner's prior art references
do not "expressly or impliedly suggest" the claimed subject matter. Appeal
Br. 5, 6; Reply Br. 2, 3, 4, 6. However, we find that the Examiner's findings
of fact are supported by a preponderance of the evidence. Furthermore, we
note that the Examiner candidly acknowledges that the prior art requires
modification and provides a cogent rationale for doing so. Ans. 10.
Contrary to Appellant's espoused position, it is well-settled that a
claim can be obvious even where all of the claimed features are not found in
specific prior art references, where there is a showing of a reason to modify
the teachings of the prior art to achieve the claimed invention. See Randall
Mfg. v. Rea, 733 F.3d 1355, 1361---62 (Fed. Cir. 2013); see also Broadcom
Corp. v. Emulex Corp. 732 F.3d 1325, 1334 (Fed. Cir. 2013). For this
reason, "we do not ignore the modifications that one skilled in the art would
make to a device borrowed from the prior art." In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). A reason to modify a
prior art reference may be found explicitly or implicitly in market forces;
design incentives; the "interrelated teachings of multiple patents"; "any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent"; and the background knowledge, creativity, and
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common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR, 550
U.S. at 418-21)).
The Examiner's determination that a person of ordinary skill in the art
would have been motivated "to ensure the badge and plate rupture
predictably when the airbag deploys," is an adequate rationale to support the
rejection. The Supreme Court, in KSR, rejected an overly formalistic
approach to the obviousness analysis.
The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,
or by overemphasis on the importance of published articles and
the explicit content of issued patents. The diversity of inventive
pursuits and of modem technology counsels against limiting the
analysis in this way. In many fields it may be that there is little
discussion of obvious techniques or combinations, and it often
may be the case that market demand, rather than scientific
literature, will drive design trends.
KSR, 550 U.S. at 419. In the instant case, the principle thrust of Appellant's
argument is that a person of ordinary skill in the art would not be inclined to
combine features of a badge assembly designed to break with a badge
assembly designed to bend. This position cannot be reconciled with Sauer's
express teaching of bending lines as an alternative to breaking lines and vice
versa. Sauer, Abstract. "Common sense teaches, however, that familiar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle." Id. at 420. In our opinion, a person
of ordinary skill in the art would have readily seen the benefit of using the
retaining plate and snap-fit techniques on Sauer's decorative element and
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would have considered it obvious to combine the teachings of Sauer and
Dominquez Aparicio to accomplish this result.
We note that Appellant has raised a "hindsight" argument, but find
that it is of no moment where, as here, the Examiner provided a sufficient,
non-hindsight reason to combine the references. See In re Cree, 818 F.3d
694, 702, n.3 (Fed. Cir. 2016).
The Examiner's position is supported by a preponderance of the
evidence and the Examiner's conclusion ofunpatentability is well-founded.
We sustain the Examiner's unpatentability rejection of claims 16.
Claims 4-6, 10-13, 18, 20, and 21
Appellant does not argue for the separate patentability of claims 4---6,
10-13, 18, 20, and 21, which depend from claim 16. Claims App. These
claims fall with claim 16. See 37 C.F.R. § 4I.37(c)(iv) (failure to separately
argue claims).
Claim 17
Claim 17 is an independent claim that is substantially similar in scope
to claim 16 except for having a "bending" line instead of a "breaking" line.
Claims App.
Appellant argues that Sauer's decorative ring breaks, but does not
bend. Appeal Br. 14. In response, the Examiner directs our attention to the
following passage in Sauer. Ans. 10.
In the embodiment of FIG. 2, as in the embodiment of FIG. 1,
predetermined breaking points are provided on the decorative
element 2 at the locations of the tear-open edges 3-7. In
addition, however, further predetermined breaking points or
bending points 12-19 are provided on the decorative element 2
at locations where there are no tear-open edges. As a result,
any deformations of the cover cap 1, such as occur when the
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airbag is triggered, can be copied by the decorative element 2,
the consequence of this being that an uncontrolled breaking of
the decorative element 2 can be avoided with a greater degree
of probability.
Sauer, col. 2, 11. 33--43. In reply, Appellant argues that the Figure 2
embodiment of Sauer has both breaking and bending lines and that a person
of ordinary skill in the art would understand decorative element 2 would
break "due to the presence of the breaking lines." Reply Br. 9.
Claim 17 has a "comprising" transition and, therefore, does not
preclude the presence of breaking lines in addition to bending lines.
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997)
( comprising transition means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim). Claim 17 recites that the badge bends upon airbag deployment
"without being broken." Claims App. However, a broad, but reasonable
construction of the claim language would allow for some local and isolated
breakage of portions of the decorative element (badge) as long as it remains
in one piece. In other words, a broad, but reasonable construction of the
claim language "without being broken" refers to the badge not breaking or
shattering into a plurality of separate pieces. Sauer satisfies this element by
protecting against "uncontrolled breaking." See Sauer, col. 2, 11. 33--43.
Furthermore, although we consider it unnecessary to sustain the Examiner's
rejection, any such deficiency in Sauer is cured by the retaining plate in
Dominquez Aparicio being bendable. See Dominquez Aparicio, Abstract
(area 33 is a bending area).
Next, Appellant argues that the Examiner fails to provide a
convincing reason as to why the invention of claim 17 is obvious. Appeal
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Br. 15.4 Appellant's arguments, however, merely repeat the same arguments
that we previously considered in connection with claim 16 and found
unpersuasive. Id. 15-18. Those arguments are equally unpersuasive here
for essentially the same reasons expressed above.
In view of the foregoing, we sustain the rejection of claim 17.
Unpatentability of Claims 7 and 8
over Sauer, Dominguez Aparicio, and Rose.
Claims 7 and 8 are not separately argued. The Examiner's rejection
of these claims is, therefore, sustained. 37 C.F.R. § 4I.37(c)(iv).
Unpatentability of Claim 19
over Sauer, Dominguez Aparicio, and Maertens.
Claim 19 is not separately argued. The Examiner's rejection of
claim 19 is, therefore, sustained. 37 C.F.R. § 4I.37(c)(iv).
DECISION
The decision of the Examiner to reject claims 4--8, 10-13, and 16-21
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)(l )(iv).
AFFIRMED
4 The subheading on page 15 of the Appeal Brief recites that it is directed to
"Claim 16." In the overall context of the brief, we view this as an
inadvertent typographical error and that, instead, the sub-section of the
Appeal Brief beginning on page 15 is intended to relate to claim 1 7.
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SONG, Administrative Patent Judge, dissenting-in-part.
I concur with the majority's decision in all respects except with
respect to the Examiner's rejection of independent claim 17, which I would
have reversed. I do not agree that the broadest reasonable interpretation of
claim 17 and its limitation "the retaining plate and the badge bending
without being broken" allows for "some local and isolated breakage of
portions of the decorative element (badge) as long as it remains in one
piece" as interpreted by the majority. The language of the claim is clear that
the badge does not break. Related thereto, I also do not agree that Sauer
satisfies this limitation by protecting against "uncontrolled breaking."
Controlled breaking disclosed in Sauer is still "breaking."
I do agree that this deficiency in Sauer is generally remedied by the
teachings in Dominquez Aparicio that discloses the retaining plate being
bendable. However, that does not appear to have been the basis of the
Examiner's rejection, and thus, was not the basis for the majority's
affirmance.
Accordingly, I respectfully dissent-in-part.
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