Freis, Amanda Kay. et al.

Patent Trials and Appeals Board

Jul 15, 2020

2019001732 (P.T.A.B. Jul. 15, 2020)

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.
14/520,488 10/22/2014 Amanda Kay Freis 48259.2455/83450657 8910
67318 7590 07/15/2020
Dykema Gossett PLLC
39577 Woodward Avenue
Suite 300
Bloomfield Hills, MI 48304
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
ipmail@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMANDA KAY FREIS and
AINDREA MCKELVEY CAMPBELL
Appeal 2019-001732
Application 14/520,488
Technology Center 3600
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
BRANDON J. WARNER, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s November 10, 2016 Final Action rejecting claims 1–3, 5–7, 21,
and 22. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined by 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Ford Global Technologies,
LLC. Appeal Br. 2.
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Application 14/520,488

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CLAIMED SUBJECT MATTER
The claims are directed to a system for riveting from opposite sides of
a multi-layered work piece. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system for attaching layers of material together comprising:
a material stack-up comprising an upper layer, an
intermediate layer and a lower layer;
a first self piercing rivet inserted from a first side through
said upper layer and said intermediate layer, thereby securing
said upper layer to said intermediate layer;
a second self piercing rivet inserted from a second side
through said lower and said intermediate layer, thereby securing
said lower layer to said intermediate layer.
REFERENCES
Name Reference Date
Villares US 8,500,068 B2 Aug. 6, 2013
Molinier US 2014/0064877 A1 Mar. 6, 2014
REJECTIONS
Claims 1–3, 5, 6, 21, and 22 are rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Villares.
Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Villares and Molinier.
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OPINION
Claims 1–3, 5, 6, 21, and 22—Rejected as Anticipated by Villares
Appellant treats claim 1 as representative of claims 1, 2, 5, 6, 21, and
22, and argues claim 3 separately. Appeal Br. 3.2 We select claim 1 as
representative of the grouped claims, and consider claim 3 separately.
37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
The Examiner finds that Villares discloses claim 1 substantially as
claimed. Final Act. 2–3; Ans. 3 (citing Villares, Abstract, 3:2–3, 32–35,
Fig. 4). According to the Examiner:
Villares discloses a system of attaching layers of material
together including a first upper layer (41), one or more
intermediate layers (21, 29) and a second bottom layer (11)
comprising rivets (12). Any one of the rivets reads as a first rivet
inserted from a first side to traverse the layers which secures the
first upper layer to the intermediate layer and any adjacent rivet
reads as a second rivet inserted from a second side to traverse the
layers which secures the second bottom layer to the intermediate
layer. The first and second rivets alternatively inserted from first
and second sides is a product-by-process limitation wherein it is
only the final product which is considered. MPEP 2113.
Final Act. 2–3.
In response, Appellant asserts that Villares relates to “a coupling
element manufactured in composite material that requires a diagonal
overlapping joint,” whereas claim 1 “only requires the ‘material stack-up
comprising an upper layer, an intermediate layer and a lower layer’ and does

2 Although Appellant does not expressly argue claim 3 separately, Appellant
does so implicitly by discussing a limitation that is included in claim 3 but
not in claim 1. Appeal Br. 4.
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not require the overlapping joint.” Appeal Br. 4. This argument is not
persuasive of Examiner error. As the Examiner notes, claim 1’s “use of
‘comprising’ does not preclude the inclusion of an overlapping joint,” and
Appellant does not dispute that “Villares disclose[s] the limitation of the
‘material stack-up comprising an upper layer, an intermediate layer and a
lower layer’ as the upper layer is shown at 41, the intermediate layer is
shown at 21 and[] the lower layer is shown at 11 where the layers are
stacked as shown in Fig. 4.” Ans. 3.
Claim 3
Claim 3 depends from claim 1 and additionally recites:
[W]herein said first rivet self piercing [sic] includes a first rivet
tail and said second self piercing rivet includes a second rivet tail
and wherein said rivets are alternatingly positioned such that said
first tail of said first self piercing rivet [is] adjacent said second
rivet tail of said second self piercing rivet when said layers of
material are attached by said self piercing rivets.
Appeal Br. 8 (Claims App.). The Examiner relies on Villares’ rivets 12 as
corresponding to the claimed rivets, and notes that Villares teaches that they
are “arranged in rows,” and thus are “alternating positioned adjacent each
other.” Final Act. 3; Ans. 3 (citing Villares, 3:2–3, 32–35, Fig. 4). The
Examiner determines that:
[E]ach of the rivets ([] 12) would have a “tail” at an end of the
shaft which would denote a placement of the tail and which
would be on a surface of the structural elements forming the
layers (41, 21, 11) in order for the layers to be joined.
Ans. 3.
Appellant argues that “Villares fails to provide any teaching or
motivation to arrange the rivets in [the claimed] alternating arrangement.”
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Reply Br. 4. This is incorrect. As the Examiner notes, Villares describes
and depicts rivets 12 arranged in rows through layers 41, 21, 11, and thus are
in the claimed alternating arrangement. Villares, 3:2–3, 32–35, Fig. 4.
Appellant further argues that “Villares fails to teach on which end of the
rivet the tail is located and, thus, it is impossible to conclude that the tails are
alternating.” Reply Br. 4. We disagree. As is clear from Figure 4 of
Villares, regardless of which end of rivets 12 is deemed to be the tail, the
tails would be “adjacent” to other rivet tails, as the claim recites.
Claim 7—Rejected as Unpatentable over Villares and Molinier
Claim 7 depends from claim 1 and additionally recites “an adhesive
between at least two of said layers.” Appeal Br. 9 (Claims App.). The
Examiner finds that “[Molinier] discloses a system of attaching layers with
rivets similar to Villares but, [Molinier] further discloses an adhesive
between the layers.” Final Act. 3 (citing Molinier ¶ 42). The Examiner
determines that it would have been obvious to “provide an adhesive between
the layers of Villares as disclosed [in] [Molinier] . . . to improve the
attachment enabling it to withstand greater forces.” Id. at 3–4.
Appellant responds that “none of the cited references teaches or
suggests the limitation of ‘further including adhesive between at least two of
said layers.’” Appeal Br. 6. This is incorrect. Paragraph 42 of Molinier, on
which the Examiner relies, teaches that an intermediate adhesive layer can
be provided between two parts “to enhance the adhesion.”
Appellant acknowledges this teaching in its Reply Brief, but asserts
that “it would not be obvious for one to rely upon the adhesion taught in
Molinier in the invention taught in Villares due the different purpose for
which the adhesive is used in Molinier.” Reply Br. 5–6. Appellant notes
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that “Molinier teaches hammering the fastener into the parts to be attached
and, thus, allowing the transmission of forces by the parts.” Id. (citing
Molinier ¶ 17). Thus, according to Appellant, “the adhesion property on the
part surfaces is used to ensure the transmission of forces during hammering
of the fastener, not merely for securing two parts together during riveting,”
but “Villares does not address this similar issue.” Id. at 6.
We will not consider this argument because it has not been
accompanied by a showing of good cause explaining why the argument was
not presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473,
1476–77 (BPAI 2010) (informative).3 Further, were we to consider it, we
would not find it persuasive. Appellant does not appear to dispute that one
of ordinary skill in the art would have known from Molinier that adding an
adhesive layer between two layers of the stack-up would improve adhesion
of the layers together. That adding an adhesive layer would have resulted in
an additional advantage—ensuring the transmission of hammering forces—
does not take away from the advantage on which the Examiner determines
would have motivated one of ordinary skill in the art to combine Molinier
with Villares.
CONCLUSION
The Examiner’s rejections are affirmed, as follows:

3 Appellant also separately argues the patentability of dependent claim 2 for
the first time in the Reply Brief, without showing good cause for not doing
so in the Appeal Brief. Therefore, we also will not consider this argument.
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 21,
22
102(a)(1) Villares 1–3, 5, 6,
21, 22

7 103 Villares, Molinier 7
Overall
Outcome:
1–3, 5–7,
21, 22

TIME PERIOD FOR RESPONSE
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