Ex Parte Tooker et alDownload PDFPatent Trials and Appeals BoardApr 24, 201914107623 - (D) (P.T.A.B. Apr. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/107,623 12/16/2013 Troy F. Tooker 153508 7590 04/26/2019 Honigman LLP/Magna 650 Trade Centre Way Suite 200 KALAMAZOO, MI 49002-0402 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. D0N02 P-2199 8804 EXAMINER FIGG, LAURA B ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 04/26/2019 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): patent@honigman.com tflory@honigman.com asytsma@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TROY F. TOOKER, DAVID K. JOHNSON, and WLIE L. QUINONES Appeal2018-004220 Application 14/107,623 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and SHELDON M. McGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-004220 Application 14/107,623 Appellants 1 appeal under 35 U.S.C. § 134(a) the final rejection of claims 1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). We REVERSE. Appellants' invention is directed to window assemblies for vehicles including side or rear fixed window assemblies for a vehicle. (Spec. ,r 2; claim 1 ). Claims 1 and 13 are illustrative of the issues on appeal: 1. A window assembly for a vehicle, said window assembly compnsmg: a plurality of window panels arranged with at least one pair of adjacent window panels; wherein adjacent edge portions of said adjacent window panels are fixedly joined by a respective molded joining element, and wherein said molded joining element is at least partially overmolded and joined at the respective edge portions of said adjacent window panels; wherein said adjacent edge portions joined by the respective molded joining element are offset or non-coplanar; and wherein said molded joining element is at least partially overmolded at each of the respective adjacent edge portions of said adjacent window panels and is fixedly attached at each of the respective adjacent edge portions of said adjacent window panels. 13. A window assembly for a vehicle, said window assembly comprising: first and second window panels arranged with at least one pair of adjacent window panels; wherein adjacent edge portions of said adjacent window panels are joined by a molded joining element; 1 The Appeal Brief on page 1 indicates that "Magna Mirrors of America, Inc." is the assignee of record. 2 Appeal2018-004220 Application 14/107,623 wherein said adjacent edge portions joined by said molded joining element are offset or non-coplanar; wherein said molded joining element comprises an encapsulation that at least partially receives and attaches at a first perimeter edge portion of said first window panel and does not overlap an outer surface of said first window panel and wherein said molded joining element at least partially receives and attaches at a second perimeter edge portion of said second window panel; a perimeter encapsulation established about a periphery of said window panels; and wherein said molded joining element joins said first perimeter edge portion with said second perimeter edge portion so that said first window panel does not slide or pivot relative to said second window panel and does not disengage one of said perimeter edge portions from said molded joining element. Appellants appeal the following rejections: 1. Claims 1---6 are rejected under 35 U.S.C. § 103 as unpatentable over Buening (US 5,542,214, issued Aug. 6, 1996) in view of Oxford English Dictionary definition of "fixedly" (i.e., Fixedly) (www.oed.com/view/Entry/70825?redirectedFrom=fixedly#eid) and Nakano (JP 2001-071752 A, published March 21, 2001). 2. Claims 1-7 are rejected under 35 U.S.C. § 103 as unpatentable over Buening in view of Fixedly and Leconte (US 2004/0035066 Al, published February 26, 2004). 3. Claims 7-11, 13-15, and 17-20 are rejected under 35 U.S.C. § 103 as unpatentable over Buening in view of Hill et al. (US 5,154,028, issued October 13, 1992). 3 Appeal2018-004220 Application 14/107,623 4. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Buening in view of Freimark et al. (US 5,799,444, issued September 1, 1998). 5. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over Buening in view of Freimark. FINDINGS OF FACT & ANALYSIS CLAIMS 1 and 1 7 The dispositive issue raised regarding the rejections involving independent claims 1 and 17 concerns the Examiner's claim interpretation of the claim phrases "fixedly joined" and "fixedly attached." The Examiner finds that the phrases are not defined in the Specification and should be given their plain meaning (Ans. 8). The Examiner finds that the disputed phrases do not require "non-moving, non-movable securement of the window panes" as argued by Appellants (Ans. 9). The Examiner construes fixed as meaning "securely placed or fastened." (Ans. 9). The Examiner finds this definition of fixed supports the claim construction of that term which includes Buening's slidable window when in the closed position (Ans. 9). The Examiner finds that Buening's window panes are fixed together in sequence when the window is in the closed position (Ans. 9). The Examiner's additional findings and conclusions regarding Buening, Fixedly and Nakano, and Buening in view of Hill are located on pages 4 and 6 to 7 of the Final Action. Appellants argue that the proper claim construction of the phrases "fixedly joined" and "fixedly attached" as set forth in the claims requires the adjacent edge portions of the window panels to be non-moveable, non- 4 Appeal2018-004220 Application 14/107,623 openable, non-sliding, and non-pivoting which are fixedly joined by the molded joining element (App. Br. 14). Appellants contend that a person of ordinary skill in the art would have understood the terms fixed or fixedly joined or attached as requiring that the panels be unmovable or stationary windows (App. Br. 17-18). Appellants argue that Buening, Leconte, and Nakano teach that the non-moveable panes are fixed or in a fixed-position (App. Br. 18). Appellants contend that even though Buening's window may be closed and in contact with the seal, the sliding window does not become joined or physically united with the channel or frame and the fixed window panel (App. Br. 19). Appellants argue that when the moveable window pane is in the closed position it cannot be considered fixedly attached to the flanges of the molded member and fixedly joined to the stationary window panel via the flanges (App. Br. 21 ). The Examiner is correct that Appellants provide no explicit formal definition of "fixedly joined" or "fixedly attached" in the Specification. However, the Examiner's reliance on the plain meaning of the adverb fixedly and the definition of the words joined or attached fails to account for the meaning of term fixed as understood by one of skill in the art. Specifically, Buening, for example, describes the stationary window panel as a "fixed-position pane" and the moveable window panel as "a sliding pane" (Buening col. 1, 11. 8-10). Moreover, the Examiner relies on US Patent 7,003,916, which Appellants incorporate-by-reference on page 8 of the Specification, to show that the window panels would not be broken by 5 Appeal2018-004220 Application 14/107,623 providing a moveable window panel2 (Final Act. 11). US Patent 7,003,916, like Buening, however, differentiates between stationary fixed panes and a sliding pane. See, e.g., US 7,003,916, 1:54--56, 2:57---61. In other words, the term "fixed" as used in the art relates to stationary, non-moveable window panes. Although the claim uses the phrases "fixedly joined" and "fixedly attached", the Oxford English Dictionary definition of the adverb "fixedly" is defined in relation to the verb "fix" (i.e., "in a fixed manner"). Accordingly, in the context of the art we construe "fixedly joined" and "fixedly attached" as requiring a stationary or non-moveable window pane arrangement. In light of our claim construction, we find that the Examiner reversibly erred in finding that the Buening' s slidable window pane, when closed, has a window pane that is fixedly joined with the molded joint element and fixedly attached at the adjacent edge portions of the window panes. Neither Nakano nor Leconte remedy this error. Rather, Buening's sliding window pane merely contacts the molded joint element but it is not fixedly attached to the molded joint element and the adjacent window panes are not fixedly joined within the meaning of claims 1 and 17. We reverse the Examiner's § 103 rejections of independent claims 1 and 17 and the claims that depend from them. 2 Appellants' incorporation by reference of US Patent 7,003,916 includes aspects of the patented disclosure but does not require the sliding window pane be one of the aspects. 6 Appeal2018-004220 Application 14/107,623 CLAIM 13 Claim 13 requires, inter alia, a first and a second window panel which are attached to one another at the edge portion. Claim 13 requires that the molded joining element joins the first perimeter edge portion with the second perimeter edge portion so that the first window panel does not slide or pivot relative to said second window panel and does not disengage one of said perimeter edge portions from said molded joining element. Claim 13 does not use the "fixedly attached" or "fixedly joined" phrases as does claim 1. The Examiner relies on Buening for all of the limitations of claim 13, except for the molded element receiving a rear portion of a first panel while simultaneously not overlapping the outer surface of the first window panel and the non-overlapping molded element also receiving a front perimeter portion of a second window panel (Final Act. 6-7). The Examiner finds that Hill teaches the missing feature and then concludes that it would have been obvious to modify Buening's molding by replacing it with the molding of Hill because moldings of Hill provides the benefits of the panes being flush with the automotive skin which improves aerodynamics and aesthetics (Final Act. 7). Regarding Buening's teachings, the Examiner finds that Buening teaches that edges of the panes are joined (attached) to each other with a molded element citing Figures 2, 4, 6, and reference numbers 42 and 48 (Final Act. 6-7). The Examiner finds that Buening's central, slidable window meets the claim requirements when the slidable window is in the closed position (Final Act. 7). Appellants argue that claim 13 requires that the joining element attach at each side of the adjacent perimeter edges of both the first and second 7 Appeal2018-004220 Application 14/107,623 panels (App. Br. 38). Appellants contend that Buening's and Hill's sliding lip seal do not attach to both panels but at most attaches at one of the panels and slidably contacts or engages the other panel (App. Br. 38). Appellants argue that claim 13 requires that the moldingjoining element joins the first perimeter edge portion with the second perimeter edge portion so that the first window panel does not slide or pivot relative to the second window panel and does not disengage one of the perimeter edge portions from the molded joining element (App. Br. 39). Appellants contend that this requirement that the first panel is not slidable or pivotable relative to the second window pane means that the window panels are fixedly joined (App. Br. 39). Appellants argue that none of the elements disclosed in the applied prior art at least partially receive and attach at both perimeter edge portions of adjacent window panels (App. Br. 39). The Examiner appears to give the terms join and attach the same meaning (Final Act. 6). The Examiner defines join as "to put together, to unite one thing to another" (Ans. 9). The Specification describes that the frame portions and encapsulations may be molded around the perimeter edges of the glass panels (Spec. ,r 23). The Specification describes that adhesive bonding of the glass panels to the molded frame may be used as an alternative to molding the frame portions around the peripheries of the glass panels (Spec. ,r 23). In other words, in the context of the Specification, the meaning of joining the molded frame portions to the glass panels includes a physical adherence between the periphery of the glass panel and the molded frame. Accordingly, we construe the term "attach" in claim 13 to require a physical adherence of the molded joining element and the first and second perimeter edges of the adjacent first and second glass panels. Our 8 Appeal2018-004220 Application 14/107,623 construction is supported further by the claim requirement that the molded joining element joins the first perimeter edge portion of the first window panel with the second perimeter edge portion of the second window panel so that the first window panel does not slide or pivot relative to said second window panel and does not disengage one of said perimeter edge portions from said molded joining element ( claim 13). This claim 13 limitation further underscores that first and second window panels do not slide or pivot relative to each other (i.e., the first and second window panels are adhered to one another via the molded joining element. In light of our claim construction, the Examiner erred in finding that Buening's slidable glass panel's contact with the seal constitutes attaching the glass panels to a molded joining element. Beuning's contact does not attach the glass panels to the molded joining element so that the panels cannot slide or pivot one relative to the other. Rather, Buening's sliding panel simply contacts the seal, but does not attach to the seal as the term "attach" is properly construed in light of the Specification. On this record, we reverse the Examiner's § 103 rejection of claims 13 and the rejection of all claims dependent upon claim 13. DECISION The Examiner's decision is reversed. ORDER REVERSED 9 Copy with citationCopy as parenthetical citation