Ex Parte ROBERTS et al

Patent Trials and Appeals Board

Jan 24, 2019

13469347 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/469,347 05/11/2012
151860 7590 01/28/2019
The Small Patent Law Group, LLC
225 S. Meramec Ave.
Suite 725
St. Louis, MO 63105
FIRST NAMED INVENTOR
Christopher D. ROBERTS
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.
60702-US (500-0435US1) 1047
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER D. ROBERTS, DOUGLAS A. MARCINIAK,
JOEL R. LEE, TODD HENNEIKE, DOUGLAS P. WENDLING,
DAVID J. BONADONA, and TODD I. CALLISTER
Appeal 2018-002 716
Application 13/469,347
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
LINDA M. GAUDETTE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
filed May 11, 2012 ("Spec."); Final Office Action dated Dec. 27, 2016
("Final"); Appeal Brief filed July 27, 2017 ("Appeal Br."); Examiner's
Answer dated Nov. 27, 2017 ("Ans."); and Reply Brief filed Jan. 17, 2018
("Reply Br.").
Appeal2018-002716
Application 13/469,347
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 4, 5, 7-16, 21-39, 43--46, and 49-55. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a new ground of rejection.
The invention relates to plastic parts having decorated surfaces, such
as an automotive door handle assembly, and to processes for providing a
desired surface finish on such parts. Spec. ,r 2. At the time of the invention, it
was known in the art to provide a skin or covering on outer surfaces of
plastic parts to provide simulated chrome, simulated wood grain, color, or
other surface finishes. Id. ,r 5. According to the Specification, a drawback of
known processes for applying such skin or covering is that the edges of the
parts remain uncovered. Id. Further, in cases where two, separate, covered
parts are joined to form a component, the base material can be visible along
abutting adjacent surfaces due to the absence of the skin or covering along
the edges. Id.
The inventors are said to have discovered a method that results in
complete coverage of the edges of parts, such that the base material of the
part is not visible. Id. ,r 6. In the inventive method, a film is vacuum
thermoformed to form a skin having the exterior shape of the part, including
a complete wrap at edges that will be visible in the completed assembly. Id.
,r 26. After the skin is formed and re-hardened, it is removed from the
thermoforming mold, trimmed, and loaded into an injection molding
machine. Id. ,r,r 30, 32. The body of the part is formed by injection molding
into, on, and/or against the pre-formed skin. Id. ,r 25. According to the
2 Appellants identify Illinois Tool Works Inc. as the real party in interest.
Appeal Br. 2.
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Specification, the inventive, in-mold, decorating process eliminates the need
for secondary operations such as painting, plating, or other graphic
application techniques. Id. ,r 35.
The Examiner maintains the following grounds of rejection on appeal:
1. claims 50-52 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as indefinite;
2. claims 1, 5, 7, 8, 28, 3 29, 32, 34, 36, 38, 49 and 52 under 35
U.S.C. § I02(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ I03(a) as obvious over Yamamoto (US 5,599,608, iss. Feb. 4, 1997);
3. claims 21-25, 30-33, 37, and 39 under 35 U.S.C. § I02(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as obvious
over Yamamoto;
4. claim 4 under 35 U.S.C. § I03(a) as obvious over Yamamoto in
view of Ohlinger (US 2008/0290683 Al, iss. Nov. 27, 2008);
5. claims 9-16, 26, 27, 35, 51, 53, and 54 under 35 U.S.C.
§ 103 (a) as obvious over Yamamoto in view of Smith (US 2008/0073 813
Al, iss. Mar. 27, 2008);
6. claim 43 under 35 U.S.C. § I03(a) as obvious over Yamamoto;
7. claim 44 under 35 U.S.C. § I03(a) as obvious over Yamamoto
in view of Song (US 2004/0094974 Al, iss. May 20, 2004);
3 The Examiner's failure to include claim 28 in the list of claims subject to
this ground of rejection (see Final 4; Ans. 6) is considered harmless error.
Claim 28 is discussed in the body of the rejection (see Final 6) and
Appellants' arguments in support of patentability of claim 28 (see Appeal
Br. 50-53) evidence that they are aware claim 28 is subject to this ground of
rejection.
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8. claim 45 under 35 U.S.C. § 103(a) as obvious over Yamamoto
in view of Smith and Song;
9. claim 46 under 35 U.S.C. § 103(a) as obvious over Yamamoto
in view of Nagano (US 5,715,966, iss. Feb. 10, 1998); and
10. claims 50 and 55 under 35 U.S.C. § 103(a) as obvious over
Yamamoto in view of Nagano.
Alleged Procedural Violations
Appellants argue the Examiner has not met the burden to show that
the claims are drafted in product-by-process format, and that the Examiner
fails to provide an analysis to support findings that the claimed and prior art
structures are the same despite differences in the processes. See Appeal Br.
99--103; see generally id. at 31-98 (arguing the Examiner has never shown
Yamamoto' s decorative element and the claimed decorative element are
indistinguishable).
[W]hen the prior art discloses a product which reasonably
appears to be either identical with or only slightly different than
a product claimed in a product-by-process claim, a rejection
based alternatively on either section 102 or section 103 of the
statute is eminently fair and acceptable. As a practical matter,
the Patent Office is not equipped to manufacture products by
the myriad of processes put before it and then obtain prior art
products and make physical comparisons therewith.
In re Brown, 459 F.2d 531, 535 (CCPA 1972).
We find the Examiner has identified a disclosure or suggestion in the
prior art of a decorated part and an assembly of decorated parts having the
claimed structural features and, therefore, has met the requisite burden to
show that the claimed and prior art products appear to be identical or only
slightly different. See, e.g., Final 4, 8, 12-13.
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Appellants argue the rejections rely on improper official notice.
Appeal Br. 105-108. We agree with the Examiner that the rejections are
based on a determination that the claims are drafted in product-by-process
format, not on official notice of any facts. See Ans. 41.
Any additional arguments regarding alleged procedural violations or
alleged error in the Examiner's rejections are addressed below and/or have
been fully addressed by the Examiner and are found unpersuasive for the
reasons explained in the Final Office Action and the Answer.
Rejection Of Claims 50-52 Under 35 U.S.C. § 112(b) Or 35 U.S.C. § 112
(Pre-AIA), Second Paragraph
Appellants do not address, and, therefore, we summarily sustain this
ground of rejection.
The Examiner determined claims 50-52 are indefinite due to
insufficient antecedent bases. Final 3. The Examiner also determined claim
51 is indefinite because the limitation "the portion extending from the center
to a location of extension back towards the center" is unclear. Id. The
Examiner, however, made a reasonable interpretation of this claim language
(see id.) that is not contested by Appellants (see Appeal Br. 80-83) and that
we find adequate for purposes of resolving the prior art rejection of claim
51.
Rejection Of Claims 1, 5, 7, 8, 28, 29, 32, 34, 36, 38, 49, And 52 Under 35
U.S.C. § 102(b) As Anticipated By Or, In The Alternative, Under 35 U.S.C.
§ 103(a) As Obvious Over Yamamoto
Of the claims subject to this ground of rejection, claim 1 is the only
independent claim. Claim 1 is reproduced below:
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1. A decorated part for an assembly including the
part; said decorated part comprising:
a pre-formed hardened skin made from a film having a
desired decorative appearance, said skin formed independently
of an injection molding tool, said preformed hardened skin
having a predetermined defined final shape in the form of a
desired visible surface of the assembly; and
a body of the part formed by molding against said pre-
formed hardened skin.
Appeal Br. 115.
Yamamoto discloses a method of making injection-molded parts
comprising a paint film laminate fused to a plastic substrate for use, e.g., as
automobile body and trim parts. Yamamoto 1:24--25, 3 :20-21. The outer
surface of the paint film laminate has a desirable color and finish. Id. at
3 :21-22. Yamamoto' s method of making the parts includes preforming the
film laminate to a desired shape that includes re-entrant edge portions,
positioning the preformed film laminate in a mold cavity, closing the mold,
and injecting molten resin into the mold cavity against the film laminate. Id.
at [57]. Yamamoto discloses that "[t]he force of the closing of the mold and
the injection of the resin causes the re-entrant edge portions to curl up under
the solidifying resin to ensure complete coverage of the longitudinal edges
of the plastic substrate by the film laminate." Id. Yamamoto discloses that
the step of preforming the film laminate involves shaping an unformed film
on a pattern block and trimming the shaped film. Id. at 3 :32-34. More
specifically, the film is unwound from a roll, heated until easily deformable,
and laid over a form. Id. at 3 :65--4: 1. Suction is applied to the film through
vacuum ports. Id. at 4:2-5. The film is then allowed to cool and harden over
the form. Id. at 4:5.
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Claims 1 and 34
Claim 1 requires that the skin is "formed independently of an injection
molding tool" and that the preformed hardened skin has "a predetermined
defined final shape." Appeal Br. 115. Claim 34 depends from claim 1 and
requires that the skin is "formed entirely independently of an injection
molding tool" and that the preformed hardened skin has the same
predetermined defined final shape both before and after forming the body of
the part. Id. at 119 ( emphasis added). Appellants argue these processing
requirements are neither explicitly disclosed nor inherent in Yamamoto' s
method, and that, as a result, Yamamoto' s final product differs from the
claimed product. See generally id. at 32--49. Appellants argue the ordinary
artisan would recognize from Yamamoto Figures 5 and 6 that Yamamoto' s
skin is not formed independently of an injection molding tool because it
undergoes some deformation, i.e., the ends are bent, during the injection
molding process. Id. at 35-37. Appellants argue the ordinary artisan would
recognize that the edges of the preformed hardened skin were rounded when
placed in the injection molding tool, but sharp after the molding operation.
Id. at 42. According to Appellants, "[ s ]tretch sections and compression
sections from when the upwardly bent ends were deformed downward
would be present in the material" after the injection molding process. Id. at
35-36; see also id. at 38-39 (identifying tests that would evidence
deformation of the skin). Appellants argue the ordinary artisan would see
trace residue from Yamamoto's injection molding process on the surface of
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Yamamoto's final product, and provide a photograph as evidence thereof. Id.
at 39-40.
As indicated by the Examiner, Appellants' arguments are not
persuasive because they are not commensurate in scope with the claims.
Ans. 23-24. Because claim 34 depends from claim 1, and specifies that the
skin is formed entirely independently of an injection molding tool, there is a
presumption that claim 1 encompasses skin formed in part by an injection
molding machine. 35 U.S.C. § 112, ,r 4 ("[A] claim in dependent form shall
contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed." (emphasis added)); In re Tanaka,
640 F.3d 1246, 1250 (Fed. Cir. 2011) ("Claims of narrower scope can be
useful to clarify the meaning of broader, independent claims under the
doctrine of claim differentiation."). Therefore, Appellants' argument that the
edges ofYamamoto's skin are modified further in the injection molding
machine does not persuade us of error in the Examiner's finding that
Yamamoto' s decorated part would not differ from the decorated part in
claim 1.
Appellants' argument also is unpersuasive as to both claims 1 and 34
because, as explained by the Examiner, the claims recite only that initial
formation of the skin is independent of an injection molding tool. Ans. 23-
24. The claims do not specify, with any degree of particularity, the features
of the preformed hardened skin and do not preclude additional modification
to the skin once combined with the body. Further, Appellants' arguments
that the claimed product differs from Yamamoto' s product (see, e.g., Appeal
Br. 110, 113) are not convincing because they are not supported by
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persuasive evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
( explaining that argument by counsel cannot take the place of evidence).
Claims 5, 8, and 3 6
Claim 5 depends directly from claim 1. Appeal Br. 115. Claims 8 and
36 depend indirectly from claim 1. Id. at 115, 119. Each of claims 5, 8, and
36 requires that the body is bonded to the skin. Id. Appellants argue the
Examiner reversibly erred in finding Yamamoto discloses this feature
because Yamamoto fuses the skin to the substrate (body) which is not the
same as bonding. See id. at 67---68. Appellants' arguments present an issue as
to the scope and meaning of the claim term "bonded." More specifically, we
consider whether the broadest reasonable interpretation of "said body being
bonded to said skin" ( claims 5, 8, and 3 6) encompasses Yamamoto' s paint
film laminate fused to an elongated plastic substrate. See Vivid Techs., Inc. v.
American Science & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
("[O]nly those terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.").
Appellants argue that a definition of "fused" is "to stitch by applying
heat or pressure," and a definition of "stitch" is to "unite by means of
staples." Id. at 67 ( emphasis omitted). Appellants thus maintain "Yamamoto
essentially staples the alleged outer skin about the alleged inner body." Id. at
68. Appellants do not identify the source of their proposed definition of
fused. The American Heritage Dictionary defines "fused" as "to become
physically joined together, as by melting." Fused Definition, The American
Heritage dictionary,
https://www.ahdictionary.com/word/search.html?q=fused (last visited Dec.
21, 2018). We determine the American Heritage Dictionary definition is
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consistent with the manner in which the term "fused" is used in Yamamoto.
See Yamamoto 4:51-5:23 (describing a method of producing a fused film-
plastic part by flowing a resin into a mold cavity containing a film laminate
and allowing the resin to flow into cutouts in the film laminate and solidify).
Turning to the claim phrase "said body being bonded to said skin," we
note that the present claims do not specify how bonding is effected. See
generally, Appeal Br. 115-121. The Specification discloses that when
substrate material is injected into a mold containing a pre-formed skin, the
substrate material bonds to the inner surface of the skin. Spec. ,r 33. The
Specification discloses that "[ s ]uitably compatible films and plastic-based
materials are used to achieve permanent chemical bonding between the film
and the molded part." Id. ,r 34. However, there is no indication in the
Specification that the inventors intended to limit the invention to chemical
bonding and/ or permanent bonding. See, e.g., id. ,r 3 7. A dictionary
definition of "bond" is "[t]o join securely, as with glue or cement." Bond
Definition, The American Heritage Dictionary,
https://www.ahdictionary.com/word/search.html?q=bond (last visited Dec.
21, 2018).
Based on our analysis, we determine the broadest reasonable
interpretation of the claim phrase "said body being bonded to said skin"
requires that the body is joined securely to the skin, and that the scope of this
phrase encompasses Yamamoto' s paint film laminate that is physically
joined to an elongated plastic substrate in either the manner explicitly
described in Yamamoto (see Yamamoto 4:51-5:23) or via stapling.
Accordingly, we are not convinced of error in the Examiner's rejections of
claims 5, 8, and 26.
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Claims 28 and 32
Claim 2 8 depends from claim 1 and recites "wherein the skin has a
bend of about 90 degrees established entirely by vacuum forming." Appeal
Br. 118. Claim 32 depends from claim 1 and recites "wherein the skin wraps
towards itself beginning at respective bends of the skin, the bends being
formed entirely due to a vacuum flow path." Id. at 119. Appellants argue the
skin in Yamamoto is bent by vacuum forming, but the bends are then further
bent by injection molding, resulting in tight radii/sharp bends that do not
occur when bending is effected by vacuum forming alone. See id. at 50-53.
As indicated by the Examiner, Appellants' argument is not persuasive
because it is not commensurate in scope with the claims. See Ans. 29.
Appellants' argument is based on an alleged absence of a 90 degree bend at
either end ofYamamoto's skin. See Appeal Br. 51. Claims 28 and 32,
however, do not specify the location of the 90 degree bends. Appellants do
not refute the Examiner's finding that Yamamoto' s skin includes a bend of
about 90 degrees in at least one location between the ends. Ans. 29 ( citing
Yamamoto Figures 4, 6). Therefore, we are not persuaded of error in the
Examiner's rejections of claims 28 and 32.
Claim 29
Claim 29 depends from claim 1 and recites that the skin has a concave
side and a convex side, "wherein the skin is formed entirely without the
convex side contacting a mold." Appeal Br. 118. Appellants contend
Yamamoto Figures 5 and 6 illustrate that the mold presses on the convex
side of the skin and that the ordinary artisan would have recognized "that the
ends of the skin were pressed downward to establish their final
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configuration, which could happen only with a component at the outside."
Id. at 76.
The Examiner has explained why this argument is unpersuasive. See
Ans. 34. We add that Appellants' argument amounts to nothing more than
attorney argument, and is not persuasive for this additional reason. See
Geisler, 116 F.3d at 1471.
Claim 38
Claim 3 8 depends from claim 1 and recites "wherein said skin is a cut
vacuum formed inlay from the film having the desired decorative
appearance and hardened to form the pre-formed skin of the desired shape
and cut from a vacuum formed mold after the vacuum forming." Appeal Br.
119--120. Appellants argue that in the claimed decorative part the cuts would
be visible, but the cuts in Yamamoto' s decorative part would disappear,
citing the Examiner's finding that in Yamamoto the skin is at least partially
melted such that sharp edges and unevenness go away. Appeal Br. 69-70.
Appellants' argument is not persuasive for the reasons explained in the
Answer (see Ans. 33), and because Appellants have not identified evidence
to support their contention that cuts made during manufacturing would be
present in the claimed product, but not in Yamamoto's product. See Geisler,
116 F.3d at 1471.
Claims 4 9 and 5 2
Claim 49 depends from claim 1 and recites "wherein the skin has end
faces facing towards each other, and the body is directly against the end
faces." Appeal Br. 120. Appellants provide an annotated copy of Yamamoto
Figure 2 to illustrate that Yamamoto' s body is positioned away from the end
faces, and argue the Examiner's rejection is based on an overly-broad
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interpretation of "end faces." Appeal Br. 62---63; Reply Br. 5-7. We
disagree. The term "end faces" is not explicitly defined, nor does it appear in
the written description. The Examiner's finding that Yamamoto' s Figure 2
describes the feature recited in claim 49 (see Final 8) is consistent with the
illustration of the positioning of end body part 122 against end part skin 124
in Appellants' Figure 5 (compare Yamamoto Figure 2, with Appellants'
Figure 5).
Claim 52 depends from claim 1 and recites that the bends are "formed
so as to have a curved outer profile at the respective bends." Appeal Br. 121.
Appellants provide an annotated copy of Yamamoto Figure 6 to illustrate
that Yamamoto's bends are sharp. Appeal Br. 63---64. This argument is not
persuasive for the reasons explained by the Examiner. See Ans. 31-32.
Summary
For the reasons stated above, in the Final Office Action, and in the
Answer, we are not convinced of reversible error in the Examiner's rejection
of claims 1, 5, 7, 8, 28, 29, 32, 34, 36, 38, 49, and 52 as anticipated by
Yamamoto. Accordingly, we sustain the rejection of these claims under 3 5
U.S.C. § 102(b ). Appellants rely on the same arguments in traversing the
alternative ground of rejection based on obviousness, and do not present
evidence of secondary considerations of non-obviousness. Accordingly, we
also sustain the rejection of these claims under 35 U.S.C. § 103(a).
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Rejection Of Claims 21-25, 30-33, 37, And 39 Under 35 U.S.C. § 102(b)
As Anticipated By Or, In The Alternative, Under 35 U.S.C. § 103(a) As
Obvious Over Yamamoto
Of the claims subject to this ground of rejection, claim 21 is the only
independent claim. Claim 21 is reproduced below:
21. A decorated part for an assembly including the
part, said decorated part comprising:
a pre-formed hardened skin made from a film having a
decorative appearance, said pre-formed hardened skin having a
predetermined defined final shape in the form of a visible
surface of the assembly, said pre-formed hardened skin being
concave on a side opposite from the visible surface of the
assembly, said concavity being entirely formed by at least one
of vacuum molding or by forming against a male mold
component; and
a body of the part formed by molding against said pre-
formed hardened skin, wherein said body has an edge, and said
pre-formed hardened skin encompasses at least a portion of said
edge, and wherein said pre-formed hardened skin has the same
predetermined defined final shape after said body is formed
there against as said pre-formed hardened skin had prior to said
body being formed there against.
Appeal Br. 11 7.
Claim 21
Similar to the arguments made in support of patentability of the
claims subject to the first prior art ground of rejection, Appellants argue
Yamamoto fails to teach or suggest that the pre-formed hardened skin has
the same, predetermined, defined, final shape before and after the body is
formed. Appeal Br. 58. Appellants' arguments are based on the structure of
an intermediate product formed during the process of making the final,
claimed product. Appellants have failed to demonstrate persuasively that the
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final, claimed product of claim 21 differs from that of Yamamoto. See
Geisler, 116 F.3d at 1471.
Claims 22 and 33
Claim 22 depends from claim 21 and requires that "the concavity is
established without press forming." Appeal Br. 117. Claim 33 depends from
claim 21 and recites that the "pre-formed hardened skin [is] being made
entirely independently from press molding." Id. at 119. Appellants rely on
Yamamoto Figures 5 and 6 as evidence that Yamamoto uses the force of the
mold to establish the concavity of the skin. Id. at 64--65. Appellants argue
the ordinary artisan would have recognized that press forming was used to
make Yamamoto's cavity. Id. at 65.
As explained by the Examiner, Appellants' arguments are directed to
process limitations. See Ans. 11, 32. Appellants have failed to demonstrate
persuasively that the products of claims 22 and 33 differ from that of
Yamamoto. See Geisler, 116 F.3d at 1471.
Claims 2 3 and 3 9
Claim 23 depends from claim 21 and recites that the "ends of the skin
are cut edges." Appeal Br. 117. Claim 39 is identical to claim 38, discussed
above, with the exception that claim 39 depends from claim 21. Id. at 120.
Appellants contend claims 23 and 39 are patentable for the same reasons
discussed in support of patentability of claim 3 8. Id. at 71, 7 5.
These arguments have been addressed by the Examiner and are
unpersuasive for the reasons explained in the Answer. Ans. 33.
Claim 25
Claim 21 recites "said concavity being entirely formed by at least one
of vacuum molding or by forming against a male mold component." Appeal
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Br. 117. Claim 25 depends from claim 21 and requires that the "concavity is
entirely formed by forming the skin against the male mold component." Id.
Appellants contend the ordinary artisan would have recognized the
concavity ofYamamoto's skin was produced using more than a male mold
component because "the ends of the skin were pressed downward to
establish their final configuration, which could happen only with a
component at the outside." Id. at 73.
As indicated by the Examiner, Appellants' arguments are not
commensurate in scope with the claim language. See Ans. 33. The process
limitation recited in claim 25 relates to the formation of the cavity portion of
the pre-formed hardened skin. Appellants' arguments relate to the structure
of the ends of the skin, and fail to explain how the structure of the cavity of
Yamamoto' s skin differs from the structure of the cavity of the claimed pre-
formed hardened skin.
Claim 30
Claim 30 depends from claim 21 and recites that all surfaces of the
skin's concave side are formed by a mold pressing against the concave side.
Appeal Br. 118. Appellants contend Yamamoto Figures 5 and 6 "clearly
show that the skin is deformed without a mold pressing against the concave
side." Id. at 78. Appellants argue the ordinary artisan would have recognized
that "the ends of the skin were pressed downward to establish their final
configuration, and would [have been] able to analyze how those ends were
bent to determine that there was nothing on the inside of the concavity that
reacted against the bending." Id.
As explained by the Examiner, Appellants' arguments are directed to
process limitations. See Ans. 34--35. Appellants have failed to demonstrate
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persuasively that the product of claim 30 differs from that of Yamamoto. See
Geisler, 116 F.3d at 1471.
Claims 31, 33, 37, and 39
Appellants contend claims 31, 33, 37, and 39 are patentable for the
same reasons discussed in support of patentability of claims 32, 22, 5, and
38, respectively. Appeal Br. 60-61, 68-69, 75. Appellants' arguments have
been addressed above and likewise are considered unpersuasive as to claims
31, 33, 37, and 39.
Summary
For the reasons stated above, in the Final Office Action, and in the
Answer, we are not convinced of reversible error in the Examiner's rejection
of claims 21-25, 30-33, 37, and 39 as anticipated by Yamamoto.
Accordingly, we sustain the rejection of these claims under 35 U.S.C.
§ 102(b ). Appellants rely on the same arguments in traversing the alternative
ground of rejection based on obviousness, and do not present evidence of
secondary considerations of non-obviousness. Accordingly, we also sustain
the rejection of these claims under 35 U.S.C. § 103(a).
Rejection of Claim 4 Under 35 U.S.C. § 103(a) As Obvious Over Yamamoto
In View Of Ohlinger
Claim 4 depends from claim 1 and requires that the film include an
electrically conductive layer. Appeal Br. 115. The Examiner finds one of
ordinary skill in the art would have modified Yamamoto' s decorated part to
include an electrically conductive layer based on Ohlinger's teaching that an
electrically conductive layer in a vehicle trim is useful for switching, sensor,
or transmission elements. Final 12 (citing Ohlinger ,r,r 4, 13-22). Appellants
argue Yamamoto' s disclosure does not relate to electronic components and,
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therefore, the Examiner's rejection is based on improper hindsight
reasoning. Appeal Br. 86. Appellants' argument is not persuasive because
Appellants have not identified error in the Examiner's finding that
Yamamoto' s invention relates to automotive parts and Ohlinger' s invention
is said to provide a benefit to automotive parts. See, e.g., Ohlinger ,r,r 18, 23
(noting the electrically conductive layer is useful in the dashboard of a car);
Yamamoto 1 :24--27 ("[I]njection molded parts have been made and used for
... dashboards .... ").
The rejection of claim 4 is sustained.
Rejection Of Claims 9--16, 26, 27, 35, 51, 53, And 54 Under 35 U.S.C.
§ 103(a) As Obvious Over Yamamoto In View Of Smith
Of the claims subject to this ground of rejection, claim 9 is the only
independent claim. Claim 9 is reproduced below:
9. An assembly of decorated parts; comprising:
at least a first part and a second part, each said part
having a skin and a body;
each said skin being a vacuum formed inlay from a film
having a desired decorative appearance and hardened to form a
pre-formed skin of a desired shape;
each said body formed by molding plastic onto one of the
pre-formed hardened skins;
said parts having adjacent edges; and
said pre-formed hardened skins encompassing at least
portions of said adjacent edges.
Appeal Br. 115-116.
Claim 9
The Examiner finds Yamamoto fails to teach a second part as required
by claim 9. Final 13. The Examiner finds, however, that Smith teaches first
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and second decorated parts for a vehicle wherein the parts have adjacent
edges and the skins encompass at least portions of the adjacent edges. Id. at
14 ( citing Smith ,r,r 30, 39-40, Figs. 2, 8). The Examiner finds Smith teaches
that in forming vehicle components, it can be beneficial to employ a molded
article having two or more areas or portions of different decorative elements.
Id. (citing Smith ,r 26). The Examiner finds, based on Smith's teaching, that
one of ordinary skill in the art would have formed a second decorated part
having the structural elements of Yamamoto' s first decorated part wherein
each skin has a different desired decorative appearance, and wherein the
parts have adjacent edges. Id. The Examiner concludes the invention as
recited in claim 9 would have been obvious. Id.
Appellants argue Smith discloses a single part having two portions,
and, therefore, the Examiner erred in finding Smith discloses first and
second decorated parts. Appeal Br. 95.
We have reviewed the claim language in light of the Specification and
agree with the Examiner's interpretation of the first and second parts as
broadly encompassing Smith's elements 18 and 2 0 which, though formed in
the same coverstock and substrate, are distinct parts because they are
"separated ... by a first recess 30" (Smith ,r 30). See Ans. 38. The claims do
not require that the first and second parts are physically separated. Compare
claim 9 ("at least a first part and a second part"), with Spec. ,r 22 ("Fig. 1
shows an automobile door handle assembly 100 that includes three separate
parts, a main outer part 110, an end part 120 and an inside grip part 130 that
are manufactured individually and then joined to form door handle assembly
100." (emphasis added)).
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Claims 11, 12, 14, 26, and 35
Appellants contend claims 11, 12, and 14 are patentable for the same
reasons discussed in support of patentability of claim 5. Appeal Br. 69.
Appellants contend claims 26 and 35 are patentable for the same reasons
discussed in support of patentability of claims 22 and 33, respectively. Id. at
7 5. Appellants' arguments have been addressed above and likewise are
considered unpersuasive as to claims 11, 12, 14, 26, and 35.
Claims 51, 53, and 54
The Examiner has addressed Appellants' arguments with respect to
claims 51, 53, and 54 and explained why they are unpersuasive. See Ans. 35.
We add that Appellants' arguments also are unpersuasive because they are
not supported by evidence. See Geisler, 116 F.3d at 1471. As to claim 54,
we note that the additional arguments advanced in the Reply Brief are based
on a misunderstanding of the Examiner's rejection. See Reply Br. 4. The
rejection of claim 54 is not based on physically combining features of
Yamamoto and Smith, as suggested by Appellants. See id. Rather, the
rejection is based on modifications to Yamamoto as suggested by the
teachings of Smith. See Final 14 (i1i1 50-51 ), 18 (i-f 66).
Summary
For the reasons stated above, in the Final Office Action, and in the
Answer, we are not convinced of reversible error in the Examiner's rejection
of claims 9--16, 26, 27, 35, 51, 53, and 54 as obvious over Yamamoto and
Smith. Accordingly, we sustain the rejection of these claims under 35 U.S.C.
§ 103(a).
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Rejections Of Claims 43--45 Under 35 U.S.C. § 103(a)
Claims 43 and 44 depend from claim 21 and recite that the decorated
part is part of an automobile door handle. Appeal Br. 120. Claim 45 depends
from claim 27 and recites that the assembly is part of an automobile door
handle. Id. Appellants argue the Examiner's rejections of claims 43--45 are
based on a finding that Yamamoto' s parts are capable of being used as a
door handle. Appeal Br. 87-92. Appellants cite In re Giannelli, 735 F.3d
1375 (Fed. Cir. 2014), in support a contention that the proper inquiry under
35 U.S.C. § 103(a) is not whether Yamamoto's device is capable of being
utilized as a door handle, but "whether it would have been obvious to
modify Yamamoto to arrive at the claimed door handle." Appeal Br. 90.
The Examiner argues the claim recitations relating to the automobile
door handle are an intended use of the decorated part/assembly. See Ans. 37.
The Examiner thus maintains a prima facie case of obviousness has been
established because Yamamoto discloses that its parts may be used in
making automobile body or trim parts (id.) such as "bumpers, body panels,
doors, filler panels, wheel covers, dashboards, arm rests ... , body side
moldings, beltline moldings, roof moldings and window moldings"
(Yamamoto 1 :26-30).
The respective positions of the Examiner and Appellants are based on
an underlying disagreement over the scope of claims 43--45. We conclude
that it is not reasonably possible to interpret these claims with sufficient
clarity to satisfy 35 U.S.C. § 112, ,r 2. See In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014) (per curiam). In particular, we are unable to ascertain
whether the claims are intended to encompass an automobile door handle or
whether the door handle is recited as an intended use for the decorated part
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or assembly. We find that either interpretation is consistent with the
Specification, which indicates that the invention is not only directed to parts
for use in an automobile door handle or other automobile body or trim parts,
but also to the automobile door handle assembly. See, e.g., Spec. ,r 23.
"If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious-the claim becomes
indefinite." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Accordingly,
we do not sustain the rejections of claims 43--45 under 35 U.S.C. § 103(a),
but enter a new ground of rejection of claims 43--45 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. See
In re Zietz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) ("[D]uring patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed ....
[T]his way ... uncertainties of claim scope [can] be removed, as much as
possible, during the administrative process."); In re Steele, 305 F.2d 859,
862 (CCPA 1962) (reversing obviousness rejection because it was based on
speculation as to the meaning of claim terms and assumptions as to claim
scope).
Rejections Of Claim 46 And Of Claims 50 And 55 Under 35 U.S.C.
§ 103(a) As Obvious Over Yamamoto In View Of Nagano
Claim 50 depends from claim 1 and requires that the body is against
all portions forming the concave inside portion of the skin and against any
transition regions between the concave portion and the convex outside
portion of the skin. Appeal Br. 120-121.
The Examiner finds Yamamoto discloses the body is positioned
against the concave portion of the skin, but is silent regarding positioning of
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the body against any transition regions between concave and convex
portions. The Examiner finds one of ordinary skill in the art would have
modified Yamamoto to position the body against the transition regions to fix
the skin in place as taught by Nagano. Final 21 ( citing Nagano Fig. 1, 4:29-
34, 54---60).
Appellants argue Yamamoto already fixes the skin in place and the
Examiner's finding that the ordinary artisan would have had a reason to
modify the transition regions is based on improper hindsight reasoning.
Appeal Br. 84.
Appellants' argument is not persuasive because it fails to address the
Examiner's finding that the ordinary artisan would have modified
Yamamoto in the manner taught by Nagano to fix Yamamoto' s skin in place
more firmly. Ans. 3 6.
Appellants argue claim 46, which depends from claim 21, is
patentable for the same reasons discussed in support of patentability of claim
50. Appeal Br. 93. We have considered these arguments to the extent
applicable to the limitations in claim 46, but do not find them persuasive
because they do not identify reversible error in the Examiner's finding that
the ordinary artisan would have modified Yamamoto in the manner claimed
based on the advantage taught by Nagano. See Final 20-21.
Appellants do not present separate arguments in support of
patentability of claim 55. See generally Appeal Br. 27-113.
Summary
For the reasons stated above, in the Final Office Action, and in the
Answer, we are not convinced of reversible error in the Examiner's
rejections of claims 46, 50, and 55 as obvious over Yamamoto and Smith.
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Accordingly, we sustain the rejections of these claims under 35 U.S.C.
§ 103(a).
ORDER
We AFFIRM the following rejections:
claims 50-52 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite;
claims 1, 5, 7, 8, 28, 29, 32, 34, 36, 38, 49 and 52 under 35 U.S.C.
§ 102(b) as anticipated by Yamamoto, and under 35 U.S.C. § 103(a) as
obvious over Yamamoto;
claims 21-25, 30-33, 37, and 39 under 35 U.S.C. § 102(b) as
anticipated by Yamamoto, and under 35 U.S.C. § 103(a) as obvious over
Yamamoto;
claim 4 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view
of Ohlinger;
claims 9-16, 26, 27, 35, 51, 53, and 54 under 35 U.S.C. § 103(a) as
obvious over Yamamoto in view of Smith
claim 46 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view
of Nagano; and
claims 50 and 55 under 35 U.S.C. § 103(a) as obvious over
Yamamoto in view of Nagano.
We REVERSE the following rejections:
claim 43 under 35 U.S.C. § 103(a) as obvious over Yamamoto;
claim 44 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view
of Song; and
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claim 45 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view
of Smith and Song.
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection
of claims 43--45 under pre-AIA 35 U.S.C. § 112, second paragraph, or
35 U.S.C. § 112(b ), as indefinite.
37 C.F.R. § 4I.50(b) provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 maybe extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED-IN-PART;
37 C.F.R. § 4I.50(b)
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