Ex Parte Cowelchuk et al

Patent Trial and Appeal Board

Sep 19, 2012

11423981 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GLENN A. COWELCHUK,
TODD L. DEPUE, and ROBERT J. ADAMS
____________

Appeal 2010-005416
Application 11/423,981
Technology Center 3600
____________

Before KEN B. BARRETT, GAY ANN SPAHN, and
JAMES P. CALVE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/423,981

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STATEMENT OF THE CASE
Glenn A. Cowelchuk et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejections of claims 8, 9, 13, and 16-18. The
Examiner withdrew claims 1-7, 10-12, 14, and 15 from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

The Claimed Subject Matter
The claimed subject matter relates to “automotive interior trim
components that provide improved aesthetic appearance by eliminating
visible gaps between adjacent interior components.” Spec. 1, para. [0001].
Claim 8 (the sole independent claim), reproduced below, with emphasis
added, is representative of the subject matter on appeal.

8. An automotive interior trim assembly,
comprising:
a rigid substrate member defining the
general shape of the trim assembly and having an
edge portion defining a boundary of the trim
assembly proximate an adjacent automotive
component;
a pliable cover layer on said substrate;
said cover layer including a resilient, non-
corrugate, free end extending outwardly from said
edge portion of said substrate member to define a
flexible flange cantilevered from said substrate
member and contacting the adjacent automotive
component such that no visible gaps are apparent
between the trim assembly and the adjacent
component.
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Application 11/423,981

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THE REJECTIONS
The following Examiner’s rejections are before us for review.
(1). Claims 8, 9, 13, 16, and 17 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Peck (US 6,945,579 B2, issued Sep. 20, 2005).
(2). Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Peck and Preisler (US 2003/0020263 A1, published Jan. 20, 2003).

OPINION
Rejection (1) – Anticipation based on Peck
The Examiner finds that Peck discloses each and every limitation in
order to anticipate independent claim 8. Ans. 3. In particular, the Examiner
finds that Peck’s door body 22 satisfies claim 8’s limitation of “a pliable
cover layer.” Id. The Examiner sets forth three reasons why Peck supports
that the door body 22 is pliable. First, the Examiner interprets the difference
between Peck’s Figure 7 (depicting the glove box door assembly 20 in the
fully open position (col. 1, ll. 60-62)) and Figure 6 (depicting the glove box
door assembly 20 in the closed position (col. 1, ll. 57-59)) as support that the
door body 22 is pliable, because the rounded shape of the upper edge of the
door body 22 as illustrated in Figure 7 is “substantially flatter when the
glove box is closed” as illustrated in Figure 6. Ans. 4-5. The Examiner
interprets the “change in shape of the upper edge of the cover (22)” as
demonstrating that the upper edge of the door body 22 is compressed in
Figure 6 and thus, that door body 22 is pliable. Ans. 5. Second, the
Examiner notes that “the cross-hatching of the cover depicts a plastic
material.” Id. Third, the Examiner notes that “the glove box requires a
substrate (32) formed of a substantially rigid material such as steel to act as a
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reinforcement for the door” and “[t]he rigid substrate would not be needed if
the material of cover (22) was rigid.” Ans. 5 (citing to Peck, col. 2, ll. 41-
46).
Appellants argue that Peck “contains no express disclosure or
suggestion that door body 22 is pliable.” App. Br. 6. With respect to the
Examiner’s interpretation that the upper edge of the door body 22
compresses in the closed position of the glove box door assembly 20,
Appellants note that a close inspection of Peck’s Figures 6 and 7 “reveals
that door body 22 is not compressed,” but “[r]ather, the top edge of door
body 22 merely extends between a space between the top edge of the bin 28
and a lower edge of instrument panel 10.” App. Br. 6-7. Thus, Appellants
state that “[b]ecause door body 22 need not necessarily be pliable,” the
Examiner has failed to establish inherency. App. Br. 7. With respect to the
Examiner’s interpretation that the door body 22 must be pliable because
otherwise it would not need the substrate 32 to be of a substantially rigid
material such as steel, Appellants note that Peck only indicates that a
substantially rigid material for the substrate 32 is preferred. Reply Br. 4.
Appellants have the better argument here. Peck simply offers no
indication that the door body 22 is made of a pliable material. Although the
Examiner points to the cross-hatching used for the door body 22 in Figures
2, 6, and 7, we note that the Manual of Patent Examining Procedure (MPEP)
§ 608.02 IX, entitled “DRAWING SYMBOLS,” merely indicates that
alternating thick and thin diagonal lines used in cross-section show a
synthetic resin or plastic. However, synthetic resin and plastic need not be
pliable and may be substantially rigid. Further, the Examiner has not
explained how such material is necessarily pliable. Thus, Peck’s cross-
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hatching does not indicate that the material of the door body 22 is pliable.
We also are not persuaded that the door body 22 is made of a pliable
material because of the Examiner’s interpretation that the rounded upper
edge of Peck’s door body 22 as shown in Figure 7 is compressed in Figure 6.
It appears that, as argued by Appellants, the edge of the door body 22 merely
rests in the space at the end of the instrument panel 10 without any
compression taking place. Finally, we note that Peck specifically states that
“steel is not required” for the reinforcement panel 32. Peck, col. 2, l. 46.
However, even if Peck’s reinforcement panel 36 is substantially rigid and is
made of steel, it simply does not follow that the door body 22 must be made
of a pliable material. Thus, we agree with Appellants that the Examiner has
not established that it is inherent that Peck’s door body 22 is pliable. See
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)
(holding that under principles of inherency, when a reference is silent about
an asserted inherent characteristic, it must be clear that the missing
descriptive matter is necessarily present in the thing described in the
reference).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 8, and claims 9, 13, 16, and 17 dependent thereon, under
35 U.S.C. § 102(e) as anticipated by Peck.
Rejection (2) - Obviousness based on Peck and Priesler
Appellants contend that Priesler “fails to cure the deficiencies of
Peck.” App. Br. 7. In particular, Appellants contend that Priesler “is
directed to an air bag cover for an automobile, but also fails to disclose a
pliable cover layer including ‘a resilient, non-corrugated, free end extending
outwardly from said edge portion of said substrate member to define a
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flexible flange.’” Id. Thus, Appellants also contend that “even if a person
skilled in the art were motivated to combine these references, the
combination would not result in the invention set forth in claim 18.” App.
Br. 7-8.
We do not agree with Appellants that Priesler fails to cure the
deficiencies of Peck. Claim 18 is dependent upon claim 13 which is
dependent upon claim 9 which is dependent upon claim 8 and thus, claim 18
contains all the limitations of claims 8, 9, and 13. The elements of
independent claim 8 are set forth supra. Claim 9 calls for one of the trim
assembly and the adjacent component to be movable relative to the other.
Claim 13 calls for the trim assembly to be a door of a glove box in an
instrument panel of an automobile, wherein the flexible flange if the cover
layer contacts a surface of the instrument panel. Claim 18 calls for the door
to comprise material from a first shot of a two-shot molding process and for
the cover layer to comprise material from a second shot of the two-shot
molding process.
We generally adopt the Examiner’s findings beginning at page 3, line
12, of the Answer, i.e., starting with “Peck, Jr. et al. discloses an automotive
interior trim assembly (20) . . .” and continuing through page 4, line 4, of the
Answer, i.e., ending with “the instrument panel.” However, with respect to
the Examiner’s finding of “a pliable cover (22)” on page 3, line 13, we find
that Peck only discloses a cover layer 22, not a pliable cover layer. With
respect to the Examiner’s finding on page 3, lines 15-16, of the Answer, that
Peck’s “pliable cover layer (22) is placed on the substrate,” we find Peck
discloses only that the cover layer 22 is placed on the substrate, not a pliable
cover layer. With respect to the Examiner’s finding on page 3, lines 16-18,
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of the Answer, that Peck’s “cover layer has a resilient, non-corrugated, free
end that extends outwardly from the edge portion of the substrate member,”
we find that Peck discloses only that the cover layer 22 has a non-corrugate,
free end extending outwardly from the edge portion of the substrate member
to define a flange, not a resilient free end and not a flexible flange. With
respect to the Examiner’s finding on page 3, lines 23-23, of the Answer, that
“[t]he flexible flange contacts a surface of the instrument panel,” we find
that Peck only discloses that the flange contacts a surface of the instrument
panel. With respect to the Examiner’s finding on page 4, lines 1-4, of the
Answer, that “the cavity (16) includes a peripheral edge (18) that is
contacted by the flexible flange when the door is in the closed position such
that no visible gaps are apparent between the door and the instrument panel,”
we find that Peck only discloses that the cavity 16 includes a peripheral edge
18 that is contacted by the flange when the door is in the closed position
such that no visible gaps are apparent between the door and the instrument
panel, not the flexible flange.
We also generally adopt the Examiner’s findings with respect to claim
18 on page 4, line 14, beginning with “Peck, Jr. et al. do not disclose
forming the door in a two-shot molding process,” through line 21, ending
with “provid[ing] a sufficiently rigid yet soft to the touch glove box door.”
In addition to the above findings of the Examiner that we adopt, we
also find that Peck does not disclose that the cover layer 22 is pliable, that
the free end of the cover layer 22 is resilient, and that the flange formed by
the free end is flexible. However, we find that Priesler cures the deficiencies
of Peck by disclosing a unitary composite cover and a method of making the
same. Priesler, para. [0001]. Priesler’s cover 10 includes an outer layer 30
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of a plastic material that is relatively soft, including TES or vinyl, and a
front panel or body 20 of thermoplastic elastomer that is relatively stiff,
including TES or polyester. Priesler, paras. [0031] and [0032]. The
durometer of the outer layer 30 is in the range of about 35 Shore A to 55
Shore A. Priesler, para. [0032]. It is known in the art that the A scale is for
softer plastics and that the durometers of various common materials includes
a rubber band having an approximately 30 Shore A hardness and a door seal
having an approximately 55 Shore A hardness.1 Since rubber bands and
door seals are known to be pliable, we determine that Priesler discloses a
pliable outer layer 30. We conclude that in addition to modifying Peck “to
form the substrate . . . of a plastic material in a first shot and form the cover
layer on the substrate in a second shot of a molding process, as taught by
Priesler,” it would also have been obvious to one of ordinary skill in the art
to modify the door body 22 of Peck to be made from the pliable material of
the outer layer 30 as taught by Priesler in order to provide a “soft to the
touch glove box door.” Ans. 4. The trim assembly resulting from the
combination of Peck and Priesler would have a pliable cover layer (Peck’s
door body 22 comprised of the material of Priesler’s outer layer 30)
including a non-corrugate free end (the free end of Peck’s door body as
shown in Figure 7) that is resilient and extends outwardly from the edge
portion of the substrate member (Peck’s reinforcement panel 32) in order to
define a flexible flange cantilevered from the substrate member.
Accordingly, we sustain the Examiner’s rejection of claim 18 under
35 U.S.C. § 103(a) as unpatentable over Peck and Priesler. However,

1 See Material Hardness, pp. 14 and 16, accessed at http://www.calce.umd.
edu/TSFA/Hardness_ad_.htm (last visited Sept. 10, 2012).
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because our reasoning differs from that of the Examiner, we denominate the
rejection a new ground of rejection. In rejecting claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Peck and Priesler, we also enter a new ground
of rejection against claims 8, 9, and 13, on which claim 18 either directly or
indirectly depends, under 35 U.S.C. § 103(a) as unpatentable over Peck and
Priesler. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir.
2007) (when a dependent claim is “found to have been obvious, the broader
claims . . . must also have been obvious”). Finally, in adopting the
Examiner’s findings with respect to claims 16 and 17, we also enter a new
ground of rejection against claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Peck and Priesler.

DECISION
We reverse the Examiner’s rejection of claims 8, 9, 13, 16, and 17
under 35 U.S.C. § 102(e) as anticipated by Peck.
We affirm the Examiner’s rejection of claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Peck and Priesler and denominate the rejection
a new ground of rejection.
We enter a new ground of rejection of claims 8, 9, 13, 16, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Peck and Priesler.

FINALITY OF THE DECISION
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner’s rejection of one of more claims, this decision contains new
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grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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-IN-PART; 37 C.F.R. § 41.50(b)

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