Ex Parte Tooker et al

Patent Trials and Appeals Board

Apr 24, 2019

14107623 - (D) (P.T.A.B. Apr. 24, 2019)

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.
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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).
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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-
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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
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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.
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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
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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
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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
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