Ex Parte Watson et al

Patent Trial and Appeal BoardNov 19, 2012

11620482 (P.T.A.B. Nov. 19, 2012)

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. 11/620,482 01/05/2007 Joseph Watson 81154407 9332 28395 7590 11/19/2012 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER MITCHELL, KATHERINE W ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 11/19/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOSEPH WATSON and ZBIGNIEW J. ORZELSKI ____________________ Appeal 2010-005566 Application 11/620,482 Technology Center 3600 ____________________ Before: STEVEN D.A. MCCARTHY, WILLIAM V. SAINDON, and JAMES P. CALVE, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005566 Application 11/620,482 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-14, 16, 17, and 21-24. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM but designate the affirmance as a NEW GROUND of REJECTION. The Claimed Subject Matter Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter. 1. An insert for a head restraint for a vehicle seat comprising a body formed from a structural material, the body being sized to be inserted within a foam layer of a head restraint bun, the body being adapted to be mounted to a seat back of a vehicle seat, the body having a head contact surface for receiving a head of an occupant, and the body having a central depression formed in the head contact surface for providing an increased contact area to the head of the occupant. References The Examiner relies upon the following prior art references: Wray Ishihara Rus US 5,129,705 US 5,328,244 US 5,906,414 Jul. 14, 1992 Jul. 12, 1994 May 25, 1999 Embach Miyahara US 2006/0273650 A1 US 2007/0057559 A1 Dec. 7, 2006 Mar. 15, 2007 Appeal 2010-005566 Application 11/620,482 3 Rejections The Examiner makes the following obviousness rejections under 35 U.S.C. § 103(a): I. Claims 1, 4-6, 9-14, and 21-24 over Rus, Appellants’ Admitted Prior Art1 (AAPA), and Miyahara. II. Claims 2 and 16 over Rus, AAPA, Miyahara, and Ishihara. III. Claim 3 over Rus, AAPA, Miyahara, and Wray. IV. Claims 7 and 8 over Rus, AAPA, Miyahara, and Embach. V. Claim 17 over Rus, AAPA, Miyahara, Ishihara, and Embach. The Examiner withdrew a rejection of claims 2 and 17 under 35 U.S.C. § 112, second paragraph. Ans. 4. OPINION Each of the independent claims requires a body of a head restraint insert to have a “central depression formed in the head contact surface” of the body. The Examiner found that Rus describes a head restraint as claimed but without the central depression. Ans. 5. The Examiner found that Miyahara describes a “central depression (303, 303A).” Id. The Examiner concluded that it would have been obvious to “apply Miyahara[’s] teaching to Rus’s device … to prevent an occupant’s head from moving laterally.” Id. (citing Miyahara, para. [0100]). Appellants argue that the central depression in Miyahara is on the exterior of the head restraint, not an insert. App. Br. 11. Appellants argue that the Examiner has not explained why it would have been obvious to take 1 “[A] soft foam layer of a head restraint bun, wherein a body of the head restraint is inserted into the soft foam layer, is old and well-known in the art, per page 1, lines 16-28 of Appellants’ Specification.” Ans. 4. Appeal 2010-005566 Application 11/620,482 4 a feature from the exterior of a head restraint to modify a head restraint insert. App. Br. 10. In particular, Appellants argue, “[o]nce [an] insert is covered with foam, it will not prevent an occupant’s head from moving laterally, thereby obviating the motivation relied upon by the Examiner.” App. Br. 11. Appellants’ arguments are persuasive. Notably, modifying the insert of Rus to have a central depression does not prevent an occupant’s head from moving laterally. As Appellants allude, it is the shape of the exterior portion of the head restraint, not the insert, that would prevent the lateral movement. In Miyahara, it is the outside portion of the headrest that serves to prevent an occupant’s head from moving laterally, whereas the internal supporting structure in Miyahara is a relatively flat frame. Miyahara, para. [0100], figs. 5, 10. In view of the above, the Examiner’s particular reason for modifying Rus lacks a rational underpinning. Notwithstanding the above, it would have been apparent to a person of ordinary skill in the art that, for an insert-type head restraint such as Rus, the shape of the insert can dictate the final shape of the head restraint. See Rus, col. 3, ll. 26-28 (“body 12 is adapted to support a foam cushion”). In Rus, a convex insert is described (fig. 6) for a flat or convex head restraint (col. 1, ll. 21-24). However, Miyahara shows that a concave head restraint provides the additional benefit of addressing lateral head motion. Miyahara, para. [0100]. Accordingly, one of ordinary skill would have had a reason to provide similar features to an insert-type head restraint, such as Rus. In this light, it would have been obvious to that person to make the insert of Rus concave in order to achieve the Miyahara shape and benefit for an insert- type head restraint. This would provide the additional benefit of allowing a simple, uniformly thick foam covering to be specified. Appeal 2010-005566 Application 11/620,482 5 The rational underpinning set forth above obviates each of Appellants’ arguments for each of the rejections but was not expressed by the Examiner. We enter a new ground of rejection for claims 1-14, 16, 17, and 21-24 by modifying the Examiner’s existing rejections to include the rational underpinning set forth above. DECISION We affirm the Examiner’s decision regarding claims 1-14, 16, 17, and 21-24 but designate the affirmance as a new ground of rejection, pursuant to our authority under 37 C.F.R. § 41.50(b). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also 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 grounds 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.… Appeal 2010-005566 Application 11/620,482 6 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)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) mls