Ex Parte Preisler et al

Patent Trial and Appeal Board

Jun 21, 2017

14603413 (P.T.A.B. Jun. 21, 2017)

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.
14/603,413 01/23/2015 Darius J. Preisler GIPH0146PUS2 5958
22045 7590 06/23/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER AD AMOS, THEODORE V
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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 @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARIUS J. PREISLER and
CHRISTOPHER A. HEIKKILA
(Applicant: Global IP Holdings, LLC)
Appeal 2016-0059811
Application 14/603,413
Technology Center 3600
Before HUNG H. BUI, AMBER L. HAGY, and SHARON FENICK,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—13 and 15—20, which are all of the pending
claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify co-pending Appeal No. 2016-002291 as a related
appeal, and state the present application is a continuation-in-part of the
application that is the subject of that appeal. (App. Br. 2.)
2 Claim 14 has been canceled. (Final Act. 2.)
Appeal 2016-005981
Application 14/603,413
STATEMENT OF THE CASE
Introduction
According to Appellants, “[t]his invention generally relates to
assemblies including compression-molded composite components having
sandwich structures with a cellulose-based core and, in particular, to such
assemblies which have fastener components mounted in the composite
components.” (Spec. 12.)
Exemplary Claim
Claims 1,16, and 19 are independent. Independent claim 1,
reproduced below, is exemplary of the claimed subject matter:
1. A vehicle panel assembly comprising:
a compression-molded composite component having a
sandwich structure, the composite component including:
a first outer layer of fiber-reinforced thermoplastic
material;
a first sheet of thermoplastic adhesive;
a second outer layer of fiber-reinforced
thermoplastic material;
a second sheet of thermoplastic adhesive; and
a core of a cellulose-based material and positioned
between the outer layers and having a plurality of cavities
wherein the outer layers are bonded to the core by the
first and second sheets by press molding; and
at least one fastener component, each fastener component
including:
a fastener part having a length and width; and
a mounting part mounting the fastener part to the
first outer layer, the mounting part having a pair of
holding faces that oppose each other and define a space
2
Appeal 2016-005981
Application 14/603,413
therebetween, a portion of the first outer layer being
positioned in the space in engagement with the faces to
prevent the fastener part from moving along its length
relative to the first outer layer; and wherein the
composite component further includes an opening which
extends completely through the first outer layer and at
least partially extends through the core towards the
second outer layer wherein the opening terminates so as
to leave the second outer layer impervious at the opening,
wherein the mounting part mounts the fastener
component in the opening and wherein each fastener
component provides an attachment mechanism to secure
cargo m a cargo area at least partially defined by the first
outer layer.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Volkmann
Shackelford
Fell
Neri
US 3,651,563
US 4,717,612
US 5,316,604
US 2008/0193256 A1
Mar. 28, 1972
Jan. 5, 1988
May 31, 1994
Aug. 14, 2008
Rejection
Claims 1—13 and 15—17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shackelford, Fell, and Volkmann.
(Final Act. 4—12.)3
3 Appellants argue independent claims 16 and 19 collectively with claim 1.
(App. Br. 10-12.) Separate patentability is not argued for dependent claims
2—13, 15, 17, 18, or 20. (App. Br. 13.) Therefore, based on Appellants’
arguments, we decide the appeal of claims 1—13 and 15—20 based on claim 1
alone. See 37 C.F.R. § 41.37(c)(l)(iv).
3
Appeal 2016-005981
Application 14/603,413
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shackelford, Fell, Volkmann, and Neri. (Final Act. 12—
13.)
Appellants ’ Contentions
1. Appellants argue:
[N]one of the four prior art references combined for the
obviousness rejections of independent claims 1, 16 and 19
recognizes the problems facing the inventors. Shackelford
requires a bore through the entire panel structure, which defeats
the need for the panel to remain impervious to moisture and
entry of contaminants. Fell is cited only for the preparation of
thermoplastic sandwich structures; there is no fastener in Fell.
Volkmann functions in the context of a yieldable foam body
core, not a cellulose-based core with a plurality of cavities.
Neri is cited for the use of knurls on the surfaces of parts to
resist rotational displacement under loading, but nothing more.
(App. Br. 11.)
2. Appellants argue “the combination of Shackelford with Fell and
Volkmann is based on hindsight, and improper.” (App. Br. 12; see also
App. Br. 6.)
3. Appellants argue “the Examiner has chained Shackelford with
Fell and Volkmann without any explanation of why a person of skill in the
art would have motivation to combine them, only conclusory
generalizations. See Office Action, 6/2/2015, pp. 6 and 7.” (App. Br. 11.)4
4. Appellants argue:
4 Appellants’ reference to an Office Action dated “6/2/15” appears to be a
typographical error, as the Office Action appealed from in this case is dated
September 23, 2015. Asa possible source of this error, we note that the
Office Action appealed from in co-pending Appeal No. 2016-002291, which
contains many similar arguments, is dated June 2, 2015.
4
Appeal 2016-005981
Application 14/603,413
In rejecting independent claims 1, 16 and 19[,] the
Examiner combined four prior art references whose issuance (or
publication) dates span 36 years, from 1972 to 2008. Add to
that the present application was filed in 2012. Objective
evidence of nonobviousness includes long felt but unsolved
need. In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The
fact that the four references applied by the Examiner pre-date
the 2012 filing date in a time range of 4-40 years is evidence of
a long felt but unsolved need for the invention of the present
application.
(App. Br. 12.)
5. Appellants argue “[t]he Edwards publication (cited but not
applied on page 6 of the Office Action)” teaches away because it
“discourages the use of balsa (a cellulose-based material) for the core as
‘expensive, has environmental concerns and is prone to rotting if it becomes
wet....’” (App. Br. 12.)
6. Appellants argue the Examiner’s Answer has “changed the
grounds of the obviousness rejection by adding Edwards as a fourth
reference to the combination.” (Reply Br. 2.)
7. Appellants assert “[o]n page 13 of the Answer, the Examiner
rewords claims 1,16 and 19 to reduce them into a simplified description of
the invention,” and argue “it was reversible error for the Examiner to
conduct the obviousness analysis with a simplified description of claims 1,
16, and 19, in lieu of the actual limitations as arranged in the claims.”
(Reply Br. 4.)
8. Appellants assert, “[o]n page 16 of the Answer[,] the Examiner
admits the use of hindsight in rejecting all claims as obvious.” (Reply Br.
5.)
5
Appeal 2016-005981
Application 14/603,413
9. Appellants assert the Examiner improperly relies on In re
Keller, 642 F.2d 413 (CCPA 1981) “to fend off arguments challenging the
pertinence of the individual references, and their adaptability for
combination in an obviousness rejection.” (Reply Br. 7.)
10. Appellants argue the Examiner has relied on “general
knowledge” as “the basis for modifying and combining disparate
references.” (Reply Br. 9.)
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We disagree with Appellants’
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 4—
13,18—19) and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. (Ans. 2—25.) We concur
with the conclusions reached by the Examiner, and we highlight the
following for emphasis.5
As an initial matter, we note Appellants present little discussion
regarding the substance of the Examiner’s findings or the teachings of the
prior art. Instead, in a section titled “Discussion of the Four References
Applied in the Obviousness Rejection,” Appellants present arguments that
5 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
6
Appeal 2016-005981
Application 14/603,413
amount to conclusory statements regarding the teachings of the prior art,
followed by unsupported assertions that the prior art fails to teach the
limitations. (See App. Br. 6—8.) We are not persuaded of Examiner error by
such unsupported argument, which is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
In that same section, Appellants also suggest the Volkmann reference
is “not analogous art” by offering the conclusory assertion that the fastener it
discloses is “structurally dissimilar” and “used in [a] dissimilar
environment.” (App. Br. 10.) We disagree. As the Examiner finds, and we
agree:
Volkmann reference is not only within the field of Appellants’]
endeavor, i.e. installing and using an insert fastener within a
sandwich panel, it also solves the particular problem [with]
which Appellants were] concerned, i.e. maintaining the
imperviousness and strength of the sandwich panel by installing
the insert such that it does not extend entirely through the panel
and thus does not require a hole extending through a second
outer layer of the sandwich panel.
(Ans. 20.) See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellants also challenge the references individually without
addressing the Examiner’s findings regarding the combined teachings of the
cited references. (E.g., App. Br. 8—11.) It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir.
1986). (See Ans. 17.)
7
Appeal 2016-005981
Application 14/603,413
Turning next to Appellants’ above contention 1, we disagree.
Appellants’ conclusory argument—which is premised primarily on an
alleged lack of express recognition of certain problems faced by the inventor
in the references themselves—is contrary to the Supreme Court’s holding in
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As the Court
explained in KSR, the problem purportedly addressed by a claimed invention
need not be expressly recognized in the prior art. Rather, “[ujnder the
correct [obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
As to Appellants’ contentions 2 and 3, we disagree that the Examiner
has engaged in improper hindsight reconstruction or has erred in combining
the teachings of the cited references. We recognize the Examiner must
articulate “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
However, the Examiner’s reasoning need not appear in, or be suggested by,
one or more of the references on which the Examiner relies. (Cf. App. Br. 9
(arguing “there is no teaching or discussion in Fell of how the features of fell
could be combined with the teachings of Shackelford to obtain the present
invention”).) Instead, a reason to combine teachings from the prior art “may
be found in explicit or implicit teachings within the references themselves,
from the ordinary knowledge of those skilled in the art, or from the nature of
the problem to be solved.” IVMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed.
Cir. 1998)).
8
Appeal 2016-005981
Application 14/603,413
We further point out that Appellants are essentially arguing that the
Examiner has a burden to provide some precise teaching, suggestion, or
motivation to combine the references under 35 U.S.C. § 103. We disagree.
Although Appellants acknowledge, indirectly, the Court’s KSR decision
(App. Br. 12, Reply Br. 10), Appellants overlook that the Court repudiated
any special requirement for such a showing to establish obviousness. KSR,
550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of
Appeals.”). Rather, the requirement is only that the Examiner show ‘“the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.’” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103)
(emphasis added); id. at 418 (“[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
We conclude, in the instant appeal, the Examiner has provided
rationales supporting motivation by a person of ordinary skill in the art to
achieve the claimed subject matter by combining the cited references. (Final
Act. 6—8, 13; Ans. 20-22.) As noted above, Appellants do not address the
substance of those findings.
As to Appellants’ contention 4, we disagree. As the Examiner
correctly notes, the mere span of many years between the oldest and the
newest cited references does not, alone, suggest a “long felt but unsolved
need for the claimed invention.” (Ans. 22 (citing App. Br. 12).) As the
Examiner finds, and we agree, Appellants have made no showing that the
cited prior art references “have tried and failed at solving the problems
9
Appeal 2016-005981
Application 14/603,413
recognized by Appellants].” (Ans. 23; see also Ans. 22 (citing In re
Wright, 569 F.2d 1124 (CCPA 1977).)
As to Appellants’ contention 5, we disagree. As the Examiner finds,
and we agree:
Though Edwards does disclose the preferred material used to
construct the core of sandwich panel of the preferred invention
is a thermoplastic foam core, 1 20 specifically states that the
core material and the composite matrix of the skin material may
be incompatible materials which are bonded by the addition of
an intermediate layer of thermoplastic or adhesive between the
two,[] which does not teach away from use of a cellulose based
material, as Appellant suggests, but rather teaches that when
materials other than a thermoplastic foamed polymer are used
for the core material, such an incompatible material can be
bonded to the thermoplastic outer layers using a thermoplastic
layer of a layer of adhesive.
(Ans. 24.) Thus, as the Examiner further finds, and we agree:
[T]he nonpreferred prior art embodiments of Edwards which
disclose use of paper or balsa as a cellulose based material for
constructing the cores of the composite panel do not provide a
teaching away from such use but rather disclose an excellent
compressive strength option which can be chosen at the
expense of cost of construction.
(Id.)
Appellants do not address this finding regarding Edwards, but argue,
in contention 6, that the Examiner’s rejection should be reversed because the
Examiner has changed the rejection to add Edwards as a fourth reference to
the combination. (Reply Br. 2—4.) In essence, Appellants assert that the
Examiner raises a new ground of rejection in the Answer. We do not
address this argument because such issues are reviewable by petition under
37 C.F.R. § 1.181, and are, therefore, not within the jurisdiction of the
Board. Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential).
10
Appeal 2016-005981
Application 14/603,413
With regard to Appellants’ contentions 7—9, presented in Appellants’
Reply Brief, we find each of these contentions is premised on a
mischaracterization of the Examiner’s Answer, and is, therefore,
unpersuasive of Examiner error. In particular, the Examiner has not, as
Appellants urge in contention 7, premised the obviousness rejections on
paraphrased claims. (Reply Br. 4.) The “simplified description” referenced
by Appellants is part of the Examiner’s discussion in the Answer. (Ans. 13—
14.) Appellants overlook the Examiner’s detailed findings in the Final
Action (Final Act. 4—13), which are repeated in the Answer. (Ans. 2—11.)
The Examiner has not, as Appellants assert in contention 8, “admitted” to
impermissible use of hindsight, but in fact rebuts such a contention. (Ans.
16.) We do not find an admission of impermissible use of hindsight to be
present in the Examiner’s quotation of case law holding that “any judgment
on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning,” and that “so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was filed, and does not include knowledge gleaned only
from the Appellants’ disclosure, such a reconstruction is proper.” {Id.
(citing In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)).) As noted
above, we conclude the Examiner did not use impermissible hindsight
because the rejection is based on the references and what they would have
taught or suggested to a person of ordinary skill in the art. See In re Cree,
818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Appellant’s hindsight argument is
of no moment where the Examiner provides a sufficient, non-hindsight
reason to combine the references). The Examiner also has not, as Appellants
assert in contention 9, misapplied In re Keller, but has properly applied the
11
Appeal 2016-005981
Application 14/603,413
teachings of that case against Appellants’ piecemeal arguments, which fail to
address the substance of the Examiner’s findings regarding the cited
combination of references. (See Ans. 17.)
Finally, with regard to Appellants’ contention 10, this contention is
also premised on a mischaracterization of the Examiner’s findings and is,
thus, unpersuasive of Examiner error. The Examiner does not, as alleged by
Appellants (Reply Br. 9-10) rely on “general knowledge” as the basis for
combining the teachings of the cited references. Rather, as noted above, the
Examiner has articulated reasoning with some rational underpinning
supporting motivation by a person of ordinary skill in the art to achieve the
claimed subject matter by combining the cited references. (Final Act. 6—8,
13; Ans. 20—22.) As also noted above, Appellants do not address the
substance of those findings.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, or of
claims 2—13 and 15—20, which are not separately argued.
CONCLUSION
The Examiner did not err in rejecting claims 1—13 and 15—20 as being
unpatentable under 35 U.S.C. § 103(a).
12
Appeal 2016-005981
Application 14/603,413
DECISION
The Examiner’s rejection of claims 1—13 and 15—20 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
13