Ex Parte Voss et al

Patent Trial and Appeal BoardMar 13, 2017

13270306 (P.T.A.B. Mar. 13, 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. 13/270,306 10/11/2011 Mark A. Voss P013796-GMVE-LCH 3552 81466 7590 03/15/2017 MacMillan, Sobanski & Todd, LLC - GM One Maritime Plaza 720 Water Street 5 th Floor Toledo, OH 43604 EXAMINER GUTMAN, HILARY L ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 03/15/2017 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 @ mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK A. VOSS, LEONARD J. BROHL JR., ANIL A. MASIH, CARL B. CORMAN, and WILLIAM C. BLISS Appeal 2015-004621 Application 13/270,306 Technology Center 3600 Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and BRENT M. DOUGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 7, 9 and 10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2015-004621 Application 13/270,306 CLAIMED SUBJECT MATTER The claims are directed to a vehicle impact reduction structure. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A vehicle structure comprising: a body including a wheel house; a hood having a hood side edge extending in a fore-and- aft direction; a fender having an upper outer skin portion having an exposed A-side surface and an opposed B-side surface, the fender including a laterally inner edge extending in the fore-and- aft direction adjacent to the hood side edge, the laterally inner edge defining a portion of a hood opening within which the hood is mounted, the B-side surface adjacent to the laterally inner edge spaced from the wheel house in a vertical direction to define a crush gap, the fender also having a hood support extending from the upper outer skin portion laterally inboard under the hood and configured to continuously support the hood side edge in the vertical direction under vehicle operating conditions including during a pedestrian impact event on top of the hood and when there is no pedestrian impact event; at least one elastomeric support located under and contacting the hood and located above and contacting the hood support wherein the hood support supports the hood side edge via the at least one elastomeric support in the vertical direction under the vehicle operating conditions including during the pedestrian impact event and when there is no impact pedestrian event; and an energy absorption member located in the crush gap between the wheel house and the fender, the energy absorption member having a fender attachment flange secured to the B-side surface of the fender adjacent to the laterally inner edge, a body attachment flange secured to the wheel house, and an energy absorbing portion extending between the fender attachment flange and the body attachment flange, the energy absorbing portion being curved in the vertical direction and being a single, monolithic piece that extends longitudinally along an entire 2 Appeal 2015-004621 Application 13/270,306 length of a wheel house to fender upper outer skin portion interface. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kubota US 6,767,052 B2 July 27, 2004 Weik US 2004/0007901 A1 Jan. 15,2004 Marijnissen US 2006/0131931 A1 Jun. 22, 2006 Feeser US 2009/0206633 A1 Aug. 20, 2009 REJECTIONS Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weik and either Feeser or Kubota. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weik, Feeser or Kubota, and Haupt.1 Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Weik, Feeser or Kubota, Haupt and Marijnissen. OPINION Independent claim 9 is directed to the embodiment depicted in Figures 1 and 2, employing an “S-shaped” energy absorption member. Independent claim 10 is directed to the embodiment depicted in Figures 3 and 4, employing a “C-shaped” energy absorption member. Independent claim 1 is 1 The Examiner frames the rejection as being based on “well known prior art” and “official notice” but includes Haupt in both the rejection statement and discussion. Non-Final Act. 7—10. As Appellants had adequate notice regarding the Examiner’s position concerning Haupt, we regard the rejection to be based on Haupt as opposed to “official notice,” which relates to factual determinations made without citing any particular documentary evidence. See MPEP § 2144.03. 3 Appeal 2015-004621 Application 13/270,306 generic to these two embodiments. All three independent claims include limitations relating to a “hood support.” Claim 1 contains the most specificity regarding the “hood support.” As the Examiner correctly points out, the issues raised by Appellants in the Appeal Brief concerning Fesser are not germane to the Examiner’s rejection of claim 9. See Ans. 12—14. Arguments presented in an appeal must address the grounds of rejection set forth by the Examiner. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner has consistently relied on Weik concerning the recited “S-shape[]” and has consistently identified inboard to mean any direction toward the center of the vehicle, and outboard as any direction away from the center of the vehicle. See Non-Final Act. 4; Ans. 4, 13. In the Appeal Brief Appellant makes only a passing remark that “Weik has both of the flanges extending in the opposite direction from that recited in claim 9.” App. Br. 9. Appellants first address the Examiner’s construction of inboard and outboard in the Reply Brief. Reply Br. 2—3. This argument is both untimely (37 C.F.R. § 41.41(b)(2)) and not commensurate with the scope of claim 9. Although the Specification uses the terms inboard and outboard, the Specification clearly falls short of providing an express definition or otherwise disavowing any meaning other than laterally inboard or outboard. We will not now import limitations from the Specification into the claim when Appellants had both the language and opportunity available to include them. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”). Appellants’ remarks concerning airflow (App. Br. 9, 10-11) may demonstrate a purpose and/or benefit of the claimed arrangement. Nevertheless, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion 4 Appeal 2015-004621 Application 13/270,306 that the claimed subject matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); see also KSRInt’l. v. Teleflex, 550 U.S. 398, 419 (2007) (“[Njeither the particular motivation nor the avowed purpose of the [Appellants] controls” in an obviousness analysis.) “The invention disclosed in [Appellant’s] written description may be outstanding in its field, but the name of the game is the claim.” In re Hiniker Co., 150 F. 3d 1362, 1369 (Fed. Cir. 1998). The Examiner relies on either of Fesser or Kubota concerning the “hood support” of claims 1 and 9. The Examiner cites both the Figures and portions of the prior-art disclosures, specifically acknowledging that support is not expressly depicted in Kubota’s figures. Non-Final Act. 5 (citing Fesser Fig. 3, para. 8; Kubota Figs. 2 and 4, col. 2,11. 28—32. Appellants’ argument that the figures of the cited references depict a gap (App. Br. 10 (claim 9)) discusses neither the express language of the claims nor the cited portions of the prior art. This argument again fails to address the grounds of rejection set forth by the Examiner. Appellants make essentially the same argument concerning claim 1 (App. Br. 13), but additionally note that claim 1 includes additional language requiring support “where there is no pedestrian impact event.” App. Br. 13. Appellants focus on the “impact” language in the Reply Brief. Reply Br. 3—4, 6—7. However, this language is absent from claim 9. Claim 1 does specifically recite that support is provided “when there is no pedestrian impact event.” Reply Br. 6—7. As Appellants’ acknowledge, regardless of whether support is provided in the absence of any impact, a point of debate, it is undisputed that both Fesser and Kubota provide support during impacts generally. See Reply Br. 3—4, 6—7. This is sufficient to satisfy the limitations relating to the hood support in both claims 1 and 9. Claim 9 does not contain any language precluding support from occurring during 5 Appeal 2015-004621 Application 13/270,306 impact generally and claim 1 does not contain any language precluding support from occurring during impacts other than those involving pedestrians. Just as a device or process that sometimes infringes nonetheless infringes (Bell Commc’n Research, Inc. v. Vitalink Commc’n Corp., 55 F.3d 615, 622—23 (Fed. Cir. 1995); accord In reMullin, 481 F.2d 1333, 1335-6, (CCPA 1973)), when obvious subject matter sometimes satisfies the limitations of a claim, that claim is properly rejected under 35 U.S.C. § 103(a). “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is [unpatentable] under § 103.” KSR Int’l. v. Teleflex 127 S. Ct. 1727, 1742 (2007). Appellants’ further arguments concerning the hood support relate only to claim 1 which requires an “elastomeric support located under and contacting the hood and located above and contacting the hood support.” App. Br. 7—8. Appellants argue Haupt is not concerned with impacts.2 However, “familiar items may have obvious uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1732, 167 L.Ed.2d 705 (2007). The Examiner’s uncontroverted rationale for making the proposed combination relates not to vehicle impacts but using a rubber bumper or “elastomeric support” to provide separation between the hood and fender (Non-Final Act. 10)—a feature Appellants have repeatedly argued is present or indicated to be desirable in Fesser or Kubota. 2 We assume, for argument’s sake, Appellants are referring to impacts resulting from objects colliding with the vehicle as opposed to impacts between particular components of the vehicle itself, because the term “bumper” used by Haupt refers to a device for absorbing impacts. See bumper in The American Heritage® Dictionary of the English Language retrieved from https://ahdictionary.com/word/search.html?q=bumper (last visited Mar. 2, 2017). 6 Appeal 2015-004621 Application 13/270,306 For the foregoing reasons we sustain the Examiner’s rejections of claims 1, 2 (App. Br. 15 (arguing claim 2 for the same reasons as claim 9)), 7 (App. Br. 16 (arguing claim 7 based on dependency from claim 1)), and 9, and of claims 4—6 which depend from claim 1 and are not separately argued. The Examiner treats Appellants’ statement that “Weik figure 1 has an S-shaped energy absorbing member” as indirectly arguing the absence of a “generally C-shaped” absorbing member as required by claim 10. Claim 10 requires “the energy absorption member having ... a body attachment flange” (emphasis added). This indicates that the “body attachment flange” is a component of the energy absorbing member, meaning the body attachment flange must form part of the C-shape. The only C-shape identified by the Examiner (Ans. 15) does not include the structure the Examiner regards as the “body attachment flange,” connection section 15 (see Non-Final Act. 6). Thus, Appellants are correct in that the C-shape identified by the Examiner is only attributable to a portion of the structure the Examiner regards as the “energy absorption member” as opposed to the energy absorption member itself. See Reply Br. 5. Thus, the Examiner’s interpretation is clearly inconsistent with the express language of claim 10 and the Examiner does not otherwise account for this distinction. Accordingly, the Examiner’s rejection of claims 10 and 3 (App. Br. 15) cannot be sustained. DECISION The Examiner’s rejections of claims 1, 2, 4—7, and 9 are affirmed. The Examiner’s rejection of claims 3 and 10 are reversed. 7 Appeal 2015-004621 Application 13/270,306 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 8