Ex Parte Lee et al

Patent Trial and Appeal BoardSep 14, 2018

13437407 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/437,407 04/02/2012 28866 7590 09/18/2018 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 Yun Shin Lee 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. 83218521 2954 EXAMINER BLADES, JOHN A ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 09/18/2018 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): docketing@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUN SHIN LEE and JOHN W. JOHNSTON Appeal2017-009768 Application 13/437,407 Technology Center 1700 Before WESLEY B. DERRICK, A VEL YN M. ROSS, and BRIAND. RANGE, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1 and 4--14. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 In our Decision we refer to the Specification filed April 2, 2012, as amended ("Spec."), the Final Office Action appealed from dated January 26, 2017 ("Final Act."), the Appeal Brief filed May 1, 2017 ("Appeal Br."), the Examiner's Answer dated June 15, 2017 ("Ans.") and the Reply Brief filed July 13, 2017 ("Reply Br."). 2 Appellants identify Ford Global Technologies, LLC as the real party in interest. Appeal Br. 1. Appeal2017-009768 Application 13/437,407 STATEMENT OF THE CASE The subject matter on appeal relates to an in-mold grain skin lamination for interior trim panel with decorative applique and attaching the applique during the skin forming process. Spec. 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for forming a composite trim panel for a vehicle interior, comprising the steps of: loading a sheet-like applique onto a female negative- vacuum molding tool, wherein the applique has a Class A surface facing the female negative-vacuum molding tool and a Class B surface carrying a heat-activated adhesive; heating a skin-forming sheet; negative-vacuum forming the heated skin-forming sheet into a trim panel skin in the female negative-vacuum molding tool surrounding and atop of the applique, wherein the trim panel skin surrounding the applique is formed with an in-mold grain and, during negative-vacuum forming, the heated skin-forming sheet activates the adhesive on the applique to bond the applique to the trim panel skin, wherein the sheet-like applique includes a perimeter flange on the Class A surface that creates a space between the sheet-like applique and the female negative-vacuum molding tool, and wherein the skin-forming sheet enters the space during the negative-vacuum forming step; and while the trim panel skin remains pliable from the heating and remains in the female negative-vacuum molding tool, pressing a pre-molded rigid substrate against the trim panel skin to adhere them together, wherein the substrate carries a second heat-activated adhesive which is activated by heat from the trim panel skin, whereby the trim panel skin is bonded on one side to the substrate and on the other side to the Class B surface of the sheet-like applique, and whereby the skin-forming sheet that enters the space covers only the flange on the Class A surface to provide added retention of the sheet-like applique on the composite trim panel. Appeal Br. 7 (Claims App'x). 2 Appeal2017-009768 Application 13/437,407 REJECTIONS The Examiner maintains the following rejections: A. Claims 1, 4, 6-10, 12, and 14 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Spengler3 in view of Applicants' Admitted Prior Art ("AAP A") and further in view of Hijikata. 4 Final Act. 3. B. Claim 5 stands rejected under 35 U.S.C Â§ I03(a) as unpatentable over Spengler in view of AAP A, and further in view of Shon. 5 Id. at 6. C. Claim 11 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Spengler in view of AAP A and further in view of Kunthady. 6 Id. D. Claim 13 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Spengler in view of AAP A and further in view of Casteel. 7 Id. at 7. Appellants seek our review of Rejections A-D. See generally Appeal Br. Appellants present argument for claim 1 (Rejection A), but do not separately argue any remaining claim or rejection. See id. Therefore, consistent with the provisions of 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other claims stand or fall together with claim 1. 3 Spengler et al., US 4,923,539, issued May 8, 1990 ("Spengler"). 4 Hijikata et al., JP 61-193830, published August 28, 1986 ("Hijikata"). 5 Inn-Tae Shon, US 6,171,428 Bl, issued January 9, 2001 ("Shon"). 6 Kunthady et al., US 8,106,320 B2, issued January 31, 2012 ("Kunthady"). 7 Casteel et al., US 6,174,396 Bl, issued January 16, 2001 ("Casteel"). 3 Appeal2017-009768 Application 13/437,407 OPINION The Examiner rejects claim 1, among others, as obvious over the combination of Spengler in view of AAPA and further in view of Hijikata. Final Act. 3. The Examiner finds that Spengler teaches most of the recited elements of claim 1 except that Spengler does not disclose: (1) "whether the portions of the skin-forming sheet being formed against the lower molding surface also undergo in-mold graining i.e. a textured mold"; (2) "providing these appliques such that their peripheral flanges overhang the mold surface so that the skin enters the spaces formed between the appliques and the mold, capturing the applique and covering only the flange of the Class A/front surface"; and (3) "whether said adhesive is to be carried on the substrate itself." Id. at 3--4 ( emphasis omitted). The Examiner concludes that using an in-mold graining, a widespread embossing technique as shown in the AAPA, would have been obvious "in order to provide the conventional attractive/tactile patterning on the exposed surfaces of the plastic skin product." Id. at 3. The Examiner finds that Hijikata teaches that it is well- known and conventional to enhance an adhesive bond by "sucking said skin beneath the periphery of the article as taught for example by Hijikata," and concludes that one skilled in the art would have reason to include these teachings of Hijikata "in order to provide for improved encapsulation of an applique ... within a skin material and better prevent delamination." Id. at 3--4. Lastly, the Examiner finds that while Spengler does not teach the adhesive provided by the carrier, it "would have been obvious to try from the 4 Appeal2017-009768 Application 13/437,407 limited options for bonding these two surfaces together with adhesive between them." Id. at 4. Appellants contend that Hijikata teaches adhering a skin to a substrate, not attaching an applique to the substrate, and that, therefore, Hijikata fails to describe "how its skin-covered substrate is fastened to anything else." Appeal Br. 3. Appellants explain that "even though appliques are disclosed in Spengler, it remains an unsupported leap of logic to apply the technique of attaching the edge of the skin to the substrate in Hijikata to the attachment of an applique on the front side of the skin in Spengler away from the skin edges." Id. at 3--4. Appellants assert that, "[i]n the invention, an intermediate, visible portion of the skin ends up being pulled forward away from the substrate in order to cover the flange of the applique without otherwise covering the applique" and because Hijikata does not describe any technique that would have caused the skilled artisan to have practices the invention as claimed. Reply Br. 2. Appellants' arguments do not persuade us of reversible error by the Examiner. Appellants' only argument is that the prior art does not accomplish the same task as claimed, therefore, it cannot suggest the claimed invention. In particular, Appellants explain that "[i]n Hijikata, the skin is being attached to the substrate, and the skin is not being used to attach anything else to the structure." Appeal Br. 3. But, that is not the standard for obviousness. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). One of 5 Appeal2017-009768 Application 13/437,407 ordinary skill can use his or her skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). Here, the Examiner determines that the skilled artisan would have reason to make the proposed modification to "improve encapsulation" and to "better prevent delamination." Final Act. 4; Ans. 3 ("it would have been obvious to further enhance this attachment by wrapping the skin around the edges of said applique"). Appellants do not explain why the ordinarily skilled artisan would not have utilized the Hijikata vacuum molding technique of pulling the skin into a gap, and then also apply his or her skill, creativity, and common sense to pull the skin around the peripheral edge of the applique of Spengler in order to improve Spengler in the manner, and for the reasons, set forth by the Examiner. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421. Accordingly, on this record, we sustain the Examiner's rejection of claims 1 and 4--14. CONCLUSION Appellants failed to identify a reversible error in the Examiner's rejection of claims 1, 4, 6-10, 12, and 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Spengler in view of AAP A and further in view of Hijikata. 6 Appeal2017-009768 Application 13/437,407 Appellants failed to identify a reversible error in the Examiner's rejection of claim 5 under 35 U.S.C Â§ 103(a) as unpatentable over Spengler in view of AAP A, and further in view of Shon. Appellants failed to identify a reversible error in the Examiner's rejection of claim 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Spengler in view of AAP A and further in view of Kunthady. Appellants failed to identify a reversible error in the Examiner's rejection of claim 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Spengler in view of AAP A and further in view of Casteel. DECISION For the above reasons, the Examiner's rejection of claims 1, and 4--14 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7