Ex Parte Reighard

Patent Trials and Appeals Board

Jun 18, 2019

14574552 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/574,552 12/18/2014 Robert P. Reighard
29318 7590 06/20/2019
JAMES D. STEVENS
REISING ETHINGTON P.C.
755 W. BIG BEA VER RD.
SUITE 1850
TROY, MI 48084
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.
8031-3068-1 1715
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
stevens@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT P. REIGHARD
Appeal2018-007154 1
Application 14/574,552
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9 and 16-24.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant's invention is generally directed to a method of making a
vehicle interior panel comprising the step of cold-forming a sheet of
1 Appellant is the Applicant, Faurecia Interior Systems, Inc., which is also
identified as the real party in interest. Appeal Br. 3.
2 Claims 10 and 11 are withdrawn from consideration. Final Act. 1.
Appeal2018-007154
Application 14/574,552
decorative material into a three-dimensional sheet. According to the
Specification, the invention obtains the three-dimensional sheet by
simultaneously pressing the sheet of decorative material onto the cold-
forming tool surface, and pressing the curable adhesive against the
decorative material with the rigid substrate before the adhesive cures. Spec.
,i 4. The Specification discloses that a combination of forces provided on
the substrate and the curable adhesive forms the shape of the decorative
material. Spec. ,i 48 and see Fig. 6. Independent claims 1 and 21 illustrate
Appellant's appealed invention. Claim 21 is reproduced below from the
appendix to the Appeal Brief (italics added identifying key disputed claim
language):
21. A method of making a vehicle interior panel, comprising
the steps of:
(a) providing a rigid substrate and a cold-forming tool
surface facing toward the substrate;
(b) supporting a generally flat sheet of decorative
material between the substrate and the cold-forming tool
surface, said sheet of decorative material having a
decorative side facing toward the cold-forming tool
surface;
( c) pouring a curable adhesive onto the generally flat
sheet of decorative material;
( d) cold-forming the sheet of decorative material into a
three-dimensional sheet by simultaneously:
1) pressing the sheet of decorative material onto the
cold-forming tool surface, and
2) pressing the curable adhesive against the
decorative material with the rigid substrate before the
adhesive cures; and
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Application 14/574,552
( e) moving the cold-forming tool surface and substrate
away from each other after the adhesive is sufficiently
cured,
wherein the cured adhesive forms an intermediate
layer that bonds the substrate and the decorative
material together and holds the three-dimensional
sheet in a shape that is complimentary to a contour of
the cold-forming tool surface.
Appellant requests review of the following prior art rejections
from the Examiner's Final Office Action:
I. Claims 1-9 and 16 rejected under U.S.C. § 103 as
unpatentable over the combination of Setoguchi (EP-
2441578 A2, published April 18, 2012), Aichner (US
6,231,940 Bl, published May 15, 2001), Tsujiku (JP-
57193330 A, published November 27, 1982), and Sanson
(US 4,046,611, published September 6, 1977).
II. Claims 17 and 18 rejected under U.S.C. § 103 as
unpatentable over the combination of Setoguchi,
Aichner, Tsujiku, Sanson, and further in view of
Grimmer (EP-0639440 A2, published February 22,
1995).
III. Claims 19 and 20 rejected under U.S.C. § 103 as
unpatentable over the combination of Setoguchi,
Aichner, Tsujiku, Sanson, and further in view of Fox (US
2009/0255625 Al, published October 15, 2009).
IV. Claims 21 and 22 rejected under U.S.C. § 103 as
unpatentable over the combination of Setoguchi,
Aichner, and Tsujiku.
V. Claims 23 and 24 rejected under U.S.C. § 103 as
unpatentable over the combination of the combination of
Setoguchi, Aichner, Tsujiku, and Sanson.
We refer to the Examiner's Final Action for a statement of the
rejections. Final Act. 4-13.
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Appeal2018-007154
Application 14/574,552
OPINI0N3
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejections of claims 1-9
and 16-24 under 35 U.S.C. § 103 for the reasons presented by Appellant in
the Appeal and Reply Briefs. We add the following for emphasis.
Appellant argues the Examiner has not identified where Setoguchi or
Tsujiku describe "forming the sheet of material into a three dimensional
sheet by pressing the sheet of material onto the forming tool surface ... and
pressing the curable material against the sheet of material before the
adhesive cures" as required by the claimed invention. Appeal Br. 12.
Appellant argues Setoguchi discloses a method of making a vehicle part
wherein the vehicle cover sheet member (30) is shaped by vacuum forming
the sheet into and against the surface of the forming recess. Appeal Br. 7-8;
Setoguchi Fig. 4. Appellant argues Tsujiku describes a molding apparatus
that utilizes foam introduced inside the mold to expand and shape a metal
foil over the lower surface of a mold. Appeal Br. 9-1 O; Tsujiku Figs 2a, 2b.
We cannot sustain the appealed rejections.
The dispositive issue for this appeal is:
Did the Examiner err in determining that the combination
of Setoguchi and Tsujiku describes or suggests a method of
making a vehicle interior part comprising cold-forming the
sheet of decorative material into a three-dimensional sheet by
simultaneously (1) pressing the sheet of decorative material
onto the cold-forming tool surface, and (2) pressing the curable
3 Appellant presents the same arguments for independent claims 1 and 21.
See Appeal Br. 10-14 and 24-25. We limit our discussion to claim 21
which we select as representative of the subject matter claimed. Claims 1-9,
16-20, and 22-24 stand or fall with claim 21.
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Appeal2018-007154
Application 14/574,552
adhesive against the decorative material with the rigid substrate
before the adhesive cures as required by independent claims 1
and 21?
The Examiner has the burden of establishing a prima facie case of
obviousness with respect to the subject matter recited in the claims on
appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The][patent]
examiner bears the initial burden, on review of the prior art or any other
ground, of presenting a prima facie case ofunpatentability."); see also In re
Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while "the
applicant must identify to the Board what the examiner did wrong ... the
examiner retains the burden to show invalidity").
The Examiner has not directed us to any portion of Setoguchi or
Tsujiku that describes a method of forming a three-dimensional sheet by
simultaneously pressing the sheet of decorative material onto the cold-
forming tool surface, and pressing the curable adhesive against the
decorative material with the rigid substrate before the adhesive cures as
required by the independent claims. As Appellant argues, Setoguchi
discloses that the sheet is shaped prior to any contact with the base member
( 10) upper die (7 6) using a suction device (vacuum) attached to the lower die
to shape the sheet to the forming surface of the lower die. Appeal Br. 7 and
11; Setoguchi ,i 23 and Figure 4. The Examiner contends the claim language
"pressing the sheet" includes Setoguchi's disclosure of applying a vacuum,
as the vacuum causes atmospheric pressure to press against the sheet
forming it to the mold. Final Act. 3; Setoguchi ,i 23 and Fig. 4; Ans. 4. The
Examiner has not adequately explained how Setoguchi's use of a suction
device to pre-form the shape of the sheet prior to the application of the
adhesive is the same as the simultaneous process required by the claimed
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Application 14/574,552
invention. Tsujiku does not remedy the Setoguchi's deficiency. Tsujiku
forms the shape of the sheet 1 using pressure from the foam expansion in
between molds 9 and 10 to form the foil substrate. Appeal Br 12; Tsujiku
see Fig. 2. The Examiner has not established that Tsujiku discloses forces
that are simultaneously provided to shape the substrate and the curable
adhesive before the adhesive cures. Thus, the Examiner's proposed prior art
combination does not describe simultaneously pressing the curable adhesive
against the decorative material onto a cold-forming tool surface as required
by independent claims.
Accordingly, we reverse the Examiner's prior art rejection of
independent claims 1 and 21 under 35 U.S.C. § 103 for the reasons the
Appellant presents and we give above. We likewise reverse the Examiner's
obviousness rejections of dependent claims 2-9, 16-20, and 22-24 because
the premise of these rejections are based on the Examiner's unsupported
determination that the combination of Setoguchi and Tsujiku describes the
simultaneously pressing the curable adhesive against a decorative material
onto a cold-forming tool surface as required by independent claims. We
need not reach the additional references relied upon by the Examiner for
these rejections because the Examiner did not rely on them to address the
deficiencies of the combination of Setoguchi and Tsuj iku noted above.
Accordingly, we REVERSE the Examiner's prior art rejections of
claims 1-9 and 16-24 under 35 U.S.C. § 103 for the reasons the Appellant
presents and we give above.
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Application 14/574,552
ORDER
The Examiner's prior art rejections (Rejections I-V) of claims 1-9
and 16-24 under 35 U.S.C. § 103 are reversed.
REVERSED
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