Ex Parte HAIN et al

Patent Trial and Appeal BoardSep 21, 2018

14174962 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/174,962 02/07/2014 23911 7590 09/25/2018 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Roland HAIN 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. 080437.66218US 9094 EXAMINER MASINICK, JONATHAN PETER ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): edocket@crowell.com tche@crowell.com apomeroy@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLAND HAIN, FRANZ BRANDL, and FERENC KELEMEN Appeal2016-007239 Application 14/174,962 Technology Center 3600 Before BRANDON J. WARNER, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-19. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 Appellant, Bayerische Motoren W erke Aktiengesellschaft, is the Applicant and is identified as the real party in interest. Appeal Br. 1. Appeal2016-007239 Application 14/174,962 THE CLAIMED SUBJECT MATTER Appellant's "invention relates to a fastening of a blow-molded component to a carrier component." Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A fastening connection, comprising: a blow-molded component having at least one integrally molded tab configured for the fastening connection, the tab having an oblong recess; and a carrier component having a detent hook, the detent hook being configured to extend behind the tab when passed through the recess, the detent hook being more rigid than the tab. REJECTIONS 1) Claims 1-7 and 12-14 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Paragraph 5 of Appellant's Specification, which the Examiner deems Applicant's Admitted Prior Art ("AAP A") and Tsuya (US 7,360,964 B2, issued Apr. 22, 2008). 2) Claims 8-11 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over AAPA, Tsuya, and Roossien (US 5,848,855, issued Dec. 15, 1998). 3) Claims 15-17 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over AAPA, Tsuya, and Ishigami (US 2002/0130239 Al, published Sept. 19, 2002). 4) Claims 18 and 19 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over AAP A and Ishigami. 2 Appeal2016-007239 Application 14/174,962 DISCUSSION Rejection 1 Claims 1-5 and 13 Appellant argues claims 1-5 and 13 as a group. Appeal Br. 7-16. We select claim 1 as representative and claims 2-5 and 13 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that AAP A "discloses, as customary in the art, a fastening connection comprising a blow-molded component having at least one integrally molded tab ... configured for the fastening connection." Final Act. 2 ( citing Spec. ,r 5). The Examiner also finds that "AAP A discloses that fastening the tab to another component via a screw connection." Id. The Examiner finds that Tsuya discloses "a fastening connection between a component (50) with a tab (51) having an oblong recess (52) and a carrier component (30) having a detent hook (41) being configured to extend behind the tab when passed through the recess." Id. at 3. The Examiner also finds that Tsuya's "detent hook is more rigid than the tab" and "the support ribs of the detent hook do not deform and that ... recess 52 of the tab is elastically deformed during installation of the detent hook." Id. The Examiner concludes that it would have been obvious to replace the screw connection in the AAP A with the tab and detent hook of Tsuya "for the purpose of inhibiting shaking as possible disconnect between the components." Id. i. Appellant's Principle of Operation Contention Appellant contends that the Examiner's modifications of AAPA with the teachings of Tsuya "would be in fact improper as it changes Paragraph 5 's principle of operation and requires substantial reconstruction." Reply 3 Appeal2016-007239 Application 14/174,962 Br. 8; see Appeal Br. 11-12. Appellant argues that one of ordinary skill in the art "would readily ascertain the differences" in the principles of operation of "a fastening mechanism operating under the principle of complementary geometric fitting between two components as opposed to using a screw to fasten two components." Appeal Br. at 11. Appellant also argues that the rejection does "not stay true to the primary reference's principle of operation" because AAP A does not rely on different rigidity of materials as required in claim 1 to couple the parts. Id. The Examiner responds that the rejection is the replacement of "one known connection method with another known connection method." Ans. 4. The Examiner further notes that such a replacement "would not change the principle [ofJ operation (i.e., connecting a component to a carrier component) nor would it substantially need to be reconstructed." Id. at 5. Appellant's contention is not persuasive for the following reasons. We agree with the Examiner's findings and reasoning set forth in the Answer concerning the principle of operation and alleged required reconstruction. Appellant does not dispute that AAP A and Tsuya both disclose a means to connect a component to a carrier component. The fact that AAP A relies on a screw connection while Tsuya relies on a complementary geometric fitting between two components of different rigidities does not mean that incorporating the teachings of Tsuya to connect components in AAP A changes the principle of operation of these components. See In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (replacing optical circuitry of one prior art reference with electrical circuitry "would not destroy its principle of operation"). In the absence of sufficient evidence of any unexpected results of a geometric fitting between 4 Appeal2016-007239 Application 14/174,962 components of different rigidities, Appellant's contention is not persuasive. See KSR Int'! Co. v Teleflex Inc., 550 U.S. 398,416 (2007) ("[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results"). ii. Appellant's Hindsight and Reason to Combine Contentions Appellant contends that the rejection is based on impermissible hindsight based reasoning by the Examiner. Appeal Br. 7-10. Appellant argues that the Examiner "used Applicant['s] specification as a list of parts to piece together the claimed subject matter" and "relies expressly on 'knowledge gleaned only from the applicant's disclosure' as its primary reference." Id. at 9 (internal citation omitted). Appellant, however, does not dispute the Examiner's finding that Paragraph 5 of the Specification constitutes Admitted Prior Art, nor does Appellant direct us to any authority to support the proposition that it is impermissible to base a rejection on prior art knowledge disclosed in an applicant's specification. Id. at 7-10. Further, Appellant does not dispute any of the Examiner's findings based on Tsuya or that the Examiner's stated reason for combining the teachings of AAPA and Tsuya is based on Tsuya, not Appellant's Specification. Id. at 8; see Final Act. 3 (citing Tsuya 1:39-41). In addition to arguing impermissible hindsight, Appellant also contends that one of ordinary skill in the art would not have been motivated to modify AAPA with the teachings of Tsuya because "coupling two components with a screw, as taught in the reference discussed in Paragraph 5, in and of itself inhibits shaking of the two components and prevents a possible detachment of the components." Appeal Br. 10. The Examiner responds that "replacing the 5 Appeal2016-007239 Application 14/174,962 screw connection with the lugged connection of Tsuya ... would eliminate a loosening screw connection." Ans. 4. Appellant's hindsight and motivation to combine arguments do not apprise us of Examiner error for the following reasons. The Examiner's reason to combine references "to inhibit shaking of the connecting members" and thereby prevent loosening of a screw connection is based on Tsuya, and Appellant does not persuasively explain why a screw connection would not be subject to loosening due to shaking of components as stated by the Examiner in the Final Office Action. 2 Further, Appellant's hindsight argument is of no import because the Examiner states a reason for the modification of AAP A with the teachings of Tsuya that we determine is reasonable and supported adequately by sufficient facts. See In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016). iii. Conclusion - Claim 1 We have considered all of Appellant's arguments for the patentability of claim 1 and, for the reasons stated above, we sustain the rejection of claim 1. Claims 2-5 and 13 fall with claim 1. Claims 6 and 7 Claim 6 depends indirectly from claim 1 and recites, inter alia, "wherein edge areas of the tab surrounding the recess are elastically yieldable." Appeal Br. 20 (Claims App.). The Examiner finds that Tsuya discloses this limitation. Final Act. 4 ( citing Tsuya 7:36-50). 2 Appellant contends that the Examiner's Answer contains an undesignated new ground of rejection. Reply Br. 7. Appellant's remedy for failure of the Examiner to designate a new ground of rejection in the Answer would have been by way of a petition to the Director. 37 C.F.R. Â§ 41.40(a). 6 Appeal2016-007239 Application 14/174,962 Appellant contends that Tsuya "teaches that only one portion 55 on the distal end of an inner wall 52A of the lock hole 52 deforms upon insertion of the lock arm 41, not the 'edge areas of the tab."' Appeal Br. 13 ( citing Tsuya 7: 12-24, Fig. 6). The Examiner responds that "the claim language does not specify at what part of the tab the 'edge areas' are located." Ans. 5. The Examiner submits an annotated version of Tsuya's Figure 6 which, according to the Examiner, identifies the edge areas of Tsuya. Id. In the Reply Brief, Appellant argues that Tsuya's chamfered edge 56 surrounds the recess and edge 56, unlike edge 55, "does not yield 'when the detent hook with the detent lug is pressed through the recess."' Reply Br. 10. For the following reasons, we sustain the rejection of claim 6. The Examiner correctly notes that claim 6 does not specify a specific location of the recited "edge areas." The Examiner specifically identified edge areas of tab 51 in Tsuya's Figure 6 that are elastically deformable. Ans. 5; see also Tsuya 7:35-50. Appellant admits that tab 51, in the area of low stiffness portion 55, is deformable. Appeal Br. 13 (citing Tsuya, 7:12- 24). Appellant does not provide persuasive argument or technical reasoning why the edge areas identified by the Examiner in Figure 6 of Tsuya do not correspond to the "edge areas" recited in claim 6. Appeal Br. 12-13. Appellant's argument that Tsuya does not specifically disclose that edge 56 is deformable is not persuasive because it is not responsive to the rejection. We, therefore, sustain the rejection of claim 6. Appellant does not offer separate arguments for the patentability of claim 7, which, thus, falls with claim 6. See id. 7 Appeal2016-007239 Application 14/174,962 Claim 12 Claim 12 depends from claim 1 and recites, "wherein an exterior edge ... of the tab has ... greater wall thickness than a central area of the tab in which the recess is located." Appeal Br. 21 (Claims App.). The Examiner finds that Tsuya discloses "that the exterior edge, where extension 55 is located, has a greater thickness than any other wall section of the tab." Final Act. 4; Ans. 7. Appellant contends that Tsuya does not suggest the limitation recited in claim 12 because "all regions of Tsuya's resin panel 50, except for low stiffness portion 55, have substantially the same thickness." Appeal Br. 15 ( citing Tsuya Fig. 6). Appellant also argues that "Tsuya[,] in fact teaches the ... [opposite]- i.e., a low-stiffness portion 55 positioned at a central area of the tab's recess having a greater wall thickness than an exterior ... area." Id. at 16. We sustain the rejection of claim 12 because Appellant does not dispute the Examiner's finding that the wall thickness of Tsuya's tab 51 in the area of low stiffness portion 55 has a larger wall thickness than the central area of the tab 51. Appellant's remaining arguments do not address the Examiner's rejection. Claim 14 Claim 14 depends from claim 1 and recites, "wherein the tab has a planar shape." Appeal Br. 22 (Claims App.). The Examiner finds that Tsuya discloses this limitation. Final Act. 5 (citing Tsuya Figs. 2, 3, 6). Appellant contends that Tsuya "teaches away from the use of a planar tab by disclosing a resin panel 50 from which 'receiving portions 51 protrude from an outer side surface."' Appeal Br. 16 ( citing Tsuya 8 Appeal2016-007239 Application 14/174,962 6:15-16). Appellant further contends that modifying "Tsuya to arrive at a planar tab would practically eviscerate Tsuya's principles of operation, as it would eliminate the protruded receiving portions 51 upon which Tsuya's entire fastening mechanism is predicated." Id. at 16-17. The Examiner responds that Figures 2-8 of Tsuya "clearly show the tab ( 51) generally having a planar shape." Ans. 8 (internal quotations omitted). We sustain the rejection of claim 14 for the following reasons. First, a prior art reference does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed. See Croes, Inc. v. US. Int 'l Trade Comm 'n, 598 F.3d 1294, 1308 (Fed. Cir. 2010) (Prior art taught away by specifically discouraging use of foam straps); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant's teaching away contention is not persuasive because Appellant does not direct us to any disclosure in Tsuya that criticizes, discredits, or otherwise discourages a planar surface. Second, the Examiner correctly found that Tsuya discloses a planar tab. Final Act. 5 ( citing Tsuya, Figs. 2, 3, 6). The rejection does not propose modifying Tsuya to incorporate a planar surface as Appellant asserts. Appellant's second contention is not persuasive because it is not responsive to the rejection. We, thus, sustain the rejection of claim 14. Rejection 2 Claims 8-11 depend directly or indirectly from claim 1. Appeal Br. 21 (Claims App.). The Examiner finds that Roossien discloses the use of a nipple . . . formed in one piece with the tab that projects from a longitudinal side of the recess into the recess in a center area when viewed in a longitudinal direction of the recess 9 Appeal2016-007239 Application 14/174,962 ... and arranged on a side of the detent hook (28) that faces away from the detent lug. . . . This is taught for the purpose of positioning the inserted detent body and lug appropriately to assume a desired connection force between the lug and the recess/tab. Final Act. 5. Appellant contends that, "Tsuya specifically teaches away from using any pressure tabs or nipples that project from a longitudinal side of the recess into the recess in a center area." Appeal Br. 14 (citing Tsuya Fig. 4b). Appellant also contends that the modification of Tsuya "to use the pressure tabs 27 of Roossien ... would in fact change Tsuya's principle of operation and require further unnecessary reconstruction and redesign." Id. The Examiner responds that providing nipples that project into the recess "would not change the principle of operation of latching components together, but rather [ would] provide the advantage of positioning the inserted detent body and lug appropriately to assume a desired connection force between the lug and the recess/tab." Ans. 6 (citing Roossien 4:40, 5:18). Appellant does not address the Examiner's clarification from the Answer in the Reply Brief. See Reply Br. passim. Appellant's teaching away argument is not persuasive because Appellant does not direct us to any disclosure in Tsuya that criticizes, discredits, or discourages the use of nipples as taught by Roossien. Appellant's contention that combining the teachings of AAPA with Tsuya and Roossien would change Tsuya's principle of operation is not persuasive for the reasons stated by the Examiner in the Answer, which we find to be reasonable. We, thus, sustain the rejection of claims 8-11. 10 Appeal2016-007239 Application 14/174,962 Rejection 3 Claims 15-17 depend directly or indirectly from claim 1. Appeal Br. 22 (Claims App.). The Examiner relies on Ishigami to disclose "a plurality of ribs (160) are positioned below ... the detent hook and that extend along a width direction of the recess ... for the purpose of preventing loosening of the hook/recess connection." Final Act. 6 (citing Ishigami ,r 123, Figs. 14, 15, 16). Appellant argues that claims 15 and 16 are patentable based on "their dependencies" from claim 1. Appeal Br. 17. We, thus, sustain the rejection of claims 15 and 16 for the same reasons discussed above in connection with claim 1. Appellant contends that claim 1 7 is patentable because Ishigami does not disclose ribs that "extend in opposite directions, relative to one another, along the width ... of the recess." Id. Appellant argues that Ishigami's ribs "run ... parallel to one another." Id. The Examiner responds that, "Ishigami discloses ribs that have a lateral extension, extending laterally away from the recess in opposite directions." Ans. 8. The Examiner submits an annotated version of Ishigami's Figure 16 in support of the rejection. Id. For the following reasons, we do not sustain the rejection of claim 17. The Examiner finds that Ishigami' s regulating pieces 160 correspond to the recited ribs. Final Act. 6. Ishigami discloses that, "regulating pieces 160 are provided at the periphery of the anchor pair pieces 140 at the inner side of the visor rim 128." Ishigami ,r 123. Figure 14 of Ishigami discloses that regulating pieces 160 extend perpendicularly from "recessed region 130 ... formed in the bottom outer surface of the visor rim 128." Id. ,r 112, Fig. 11 Appeal2016-007239 Application 14/174,962 14. The Examiner does not direct us to any disclosure in Ishigami that regulating pieces 160 extend in any direction other than perpendicularly from recessed region 130. The "lateral extensions" identified by the Examiner as constituting part of regulating pieces 160 (Ans. 8) are, in fact, the recessed region 130 of visor rim 128. Thus, the Examiner's assertion that regulating pieces 160 "ribs that have a lateral extension, extending laterally away from the recess in opposite directions" (Ans. 8) is not supported by a preponderance of the evidence. As the rejection is based on an erroneous factual finding, the conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand"). Therefore, we do not sustain the rejection of claim 17. Rejection 4 In connection with independent claim 18, the Examiner finds that AAP A discloses "a fastening connection connecting a blow-molded component to a carrier component" and "fastening the tab to another ... [connector] via ... screw connection." Final Act. 8. The Examiner finds that Ishigami discloses, "a male connector ( 140a) formed on the carrier component (128); and a female connector (122) that is formed on the other component (120), where the female connector defines a recess therein." Id. The Examiner also finds that Ishigami' s "male connector includes a detent hook ... and plurality of ribs (160) that are located between the detent hook and the carrier and that extend in a direction away from the longitudinal axis of the male connector." Id. The Examiner concludes that it would have 12 Appeal2016-007239 Application 14/174,962 been obvious to one of ordinary skill in the art "to have replaced the well- known screw type fastening connection between the tab of the blow-molded component to the carrier component with" Ishigami's "male/female fastening connection between a male connector with a detent hook and a plurality of ribs and female connector defining a recess ... for the purpose of preventing loosening of the hook/recess connection." Id. at 8-9. Appellant contends that Ishigami's regulating pieces 160 do not "extend in a direction away from a longitudinal axis of the male connector" for the same reasons argued in connection with claim 17. Appeal Br. 18. The Examiner responds by relying on the same findings for the ribs as for claim 17. Ans. 10. We, thus, do not sustain the rejection of claim 18 and claim 19, which depends from claim 18, because, as discussed above with respect to the rejection of claim 17, Ishigami's regulating pieces 160 do not extend in a direction away from a longitudinal axis of the male connector but are parallel thereto. See Appeal Br. 17. DECISION The Examiner's decision rejecting claims 1-16 is affirmed. The Examiner's decision rejecting claims 17-19 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 13