Freis, Amanda Kay. et al.Download PDFPatent Trials and Appeals BoardJul 15, 20202019001732 (P.T.A.B. Jul. 15, 2020) Copy Citation 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. Appeal 2019-001732 Application 14/520,488 2 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. Appeal 2019-001732 Application 14/520,488 3 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. Appeal 2019-001732 Application 14/520,488 4 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.” Appeal 2019-001732 Application 14/520,488 5 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 Appeal 2019-001732 Application 14/520,488 6 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. Appeal 2019-001732 Application 14/520,488 7 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 Copy with citationCopy as parenthetical citation