Ex Parte Zekavica et al

Patent Trial and Appeal Board

Aug 28, 2017

13387269 (P.T.A.B. Aug. 28, 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.
13/387,269 07/10/2012 Omela Zekavica 113601-0579 7799
50659 7590
BUTZEL LONG, P.C.
IP DEPARTMENT
41000 Woodward Avenue
Stoneridge West
Bloomfield Hills, MI 48304
EXAMINER
MCPARTLIN, SARAH BURNHAM
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
patent @ butzel. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMELA ZEKAVICA,
DANIEL JAMES SAKKINEN, YOUZHI XIONG,
JOHN DAVID KOTRE, ANTHONY KESTIAN,
ROBERT J. HICKS, NICHOLAS LEONARD PETOUHOFF,
ANTOINE A. KMEID, PHILLIP WAYNE WILSON,
DAVID HAYES, MIODRAG M. PETROVICH,
ELIZABETH ANN ALLEN, CATHERINE M. AMODEO,
ANDREW J. ERARD, MARK S. WILLIAMSON,
FOREST HILLS, and JOSEPH F. PROSNIEWSKI
Appeal 2015-006959
Application 13/387,269
Technology Center 3600
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
GORDON D. KINDER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006959
Application 13/387,269
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—9. Claims 10—15 were cancelled during prosecution.
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claims are directed “generally to vehicle seats and more
particularly, seat structures for use in a seat frame and processes for forming
same.” Spec. 12. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A one-piece seat back frame for use in a vehicle seat
assembly, the one-piece seat back frame comprising:
a first side portion and a second side portion spaced apart
and parallel to one another, the first side portion having a first
and second end and the second side portion having a first and
second end;
an upper cross portion having a first end and a second end,
the first end coupled to the first end of the first side portion and
the second end coupled to the first end of the second side portion;
a lower cross portion having a first end and a second end,
the first end coupled to the second end of the first side portion
and the second end coupled to the second end of the second side
portion; and
an inner wall extending from a front surface and an inner
edge of the back frame, and an outer wall extending from the
front surface and an outer edge of the back frame, thereby
forming a U-shaped channel on the front surface wherein the
back frame is formed from a monolithic blank material having
uniform material grade and thickness.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Becker US 6,607,247 Aug. 19,2003
Yoshida US 2004/0227389 A1 Nov. 18, 2004
REJECTIONS
The Examiner made the following rejections:
Claim 1—7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Becker. Final Act. 2.
Claims 8 and 9 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Becker and Yoshida. Final Act. 4.
ANALYSIS
Anticipation
The Examiner finds that Becker teaches each and every limitation
found in claim 1. Final Act.2—3. According to the Examiner, the inner wall
that resides around the cut-outs 32, 34 meets the limitations found in claim 1
(this inner wall is unidentified in Becker, but the Examiner provides an
annotated version of Becker’s Fig. 1 at Ans. 3). While it is abundantly clear
from this figure 1 that the “inner wall” of Becker is spaced from the top and
bottom edges of the cut-outs, Becker’s drawings are less clear as to the exact
placement of the inner wall along the side edges of the cut-outs. The
Examiner finds that “[t]he inner edge of the back frame is coincident with
the line at which the blank material changes direction and extends
substantially perpendicularly away from the main region (20).” Ans. 4.
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Appellants argue that “Figure 1 of Becker is ambiguous as to whether
the vertically extending (longer) portions of the alleged inner wall extends
upwardly from an edge of the seat back frame.” App. Br. 8. Appellants
further argue that “Figure 3 indicates that the alleged ‘inner wall’ is spaced
from the inner edges of the seat back frame cutouts 32 and 34, showing that
the alleged ‘inner wall’ does not extend from ‘an inner edge of the back
frame.’” Id. The Examiner “agrees that Becker’s Figure 3 is depicting the
same back frame as shown in Figure 1,” but “maintains her position that the
line of intersection between the main region (20) and the inner wall
constitutes ‘an inner edge of the back frame.’” Ans. 4.
While we are skeptical that Becker’s inner wall ever extends from the
edge on the sides of the cutout, the Examiner, despite Appellants arguments
to the contrary, maintains that Becker meets the claim language. The
Examiner seems to agree with Appellants that Figure 3 shows that the inner
wall is spaced outwardly around, or away from, the entirety of the cut-outs,
but still maintains the rejection. At most we find it difficult to determine
exactly where the inner wall begins, at least along the sides of the cut-outs.
What is absolutely clear is that Becker’s inner wall is spaced a
significant distance from the inner edge of the back frame at the top and
bottom of the cut-outs. The Examiner also alleges that “one of ordinary skill
in the art would immediately envisage the back frame, including the main
region and border, being formed from a single monolithic blank of material,
wherein the contours of the frame, including the inner and outer walls, are
formed by means of a plastic forming process.” Ans. 5. The claims require
that this inner wall be formed from a monolithic blank that is of uniform
material grade and thickness. We not only do not immediately envisage how
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such a spaced apart inner wall would be formed as claimed, but we fail to
see how it is even possible to do so.
The Examiner goes on to assert that “[njothing in the specification
suggests that the inner wall is likely, or at least could be, formed separately
of the main part (20).” Id. It is actually the Examiner’s burden to present
evidence supporting the rejection, not merely assert that there is no evidence
to the contrary. Absent any clear disclosure in Becker as to both the
placement of the undescribed “inner wall” and the exact manufacturing
process used, the Examiner essentially relies upon inherency in determining
that Becker teaches these limitations.
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection
reversed because alleged inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art);
see also, In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). “To establish
inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotations omitted). In relying upon the
theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
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applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Inter. 1990).
In response to Appellants’ pointing out that Becker is silent on these
various points and likely does not support the Examiner’s assertions, the
Examiner alleges that “[s]uch a consideration is merely speculation and
would be counter to what one of ordinary skill in the art would immediately
envisage in view of the Becker disclosure and Figures.” Ans. 5. The fact
that the Examiner relies on the knowledge of one of skill in the art to fill in
the blanks with Becker suggests weakness in the use of anticipation in
rejecting the claims and shows that it is the Examiner who is providing mere
speculation. Furthermore, we agree with Appellants that “the structure of
Becker, including the alleged inner wall, cannot be made from a monolithic
blank.” Reply Br. 2.
The Examiner states only that one would “immediately envisage” how
Becker’s seat could be formed as claimed, but provides no technical
explanation as to how this would be done. We do not see how an inner wall
that is spaced away from an edge could be formed from a uniform,
monolithic blank. If the Examiner is somehow suggesting that the blank
could be forced into a mold to produce the inner wall, such would require
extra material at the location of the wall and thus would not be a uniform
blank. So, not only is it at best merely a possibility and thus contrary to the
principles of inherency that Becker’s inner wall could be formed as claimed,
we find it more likely that it actually is impossible to form the portions of
the inner wall that are clearly spaced from the cut-outs from the type of
blank that is claimed.
It is the Examiner’s burden in anticipation to show that each and every
limitation is taught in the prior art. The Examiner first errs in not providing
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sufficient evidence that the part shown in Becker could or would be formed
as claimed. Additionally, we agree with Appellants that, absent some clear
teaching of how such an element in Becker could be formed from a
monolithic and uniform blank as claimed, it would not only not be
“immediately envisage[d],” it would actually be impossible to form Becker’s
inner wall as claimed.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—7
as anticipated by Becker. Because each of the obviousness rejections relies
upon this same flawed interpretation of Becker, we likewise do not sustain
the obviousness rejection over Becker and Yoshida.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—9.
REVERSED
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