Winsen C. Zouzal et al.Download PDFPatent Trials and Appeals BoardSep 6, 201914423121 - (D) (P.T.A.B. Sep. 6, 2019) 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. 14/423,121 02/21/2015 Winsen C. Zouzal LEAR51582PUSA 2344 34007 7590 09/06/2019 BROOKS KUSHMAN P.C. / LEAR CORPORATION 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER CHEN, JOSE V ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte WINSEN C. ZOUZAL, ASHFORD ALLEN GALBREATH, ASAD S. ALI, TERRY O’BANNON, GERALD STEVEN LOCKE, JENNIFER BADGLEY, THOMAS S. HICKS, and WALTER T. CICHOCKI1 __________ Appeal 2019-001190 Application 14/423,121 Technology Center 3600 __________ Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an Appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. App. Br., Title Page. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we affirm the Examiner’s rejections of claims 1–20. We affirm. 1 “The real party in interest is Lear Corporation.” App. Br. 1. We refer to the appealing party as “Appellant.” Appeal 2019-001190 Application 14/423,121 2 CLAIMED SUBJECT MATTER The disclosed subject matter “is directed to a thoracic region support system for a seatback.” Spec. ¶ 2. Claims 1, 8, and 13 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A seatback assembly comprising: a thoracic support structure adapted to be secured to a seatback, the support structure including: a center portion extending in an upright direction and adapted to be positioned adjacent the seatback to align adjacent a thoracic region a user’s spine, the center portion having a first hardness; a pair of side portions each disposed adjacent to and connected with the center portion, the side portions having a second hardness, wherein the first hardness is greater than the second hardness for providing support to the user’s spine, wherein the side portions and center portion define a smooth convex profile in a transverse direction from a first edge to a second edge of the support, wherein an apex of the smooth convex profile is defined along the center portion; and an adjustment mechanism connected to the thoracic support structure for positioning the support structure along the seatback so that the center portion provides support to at least a portion of the thoracic region of the user’s spine. REFERENCE Proctor US 4,834,455 May 30, 1989 Appeal 2019-001190 Application 14/423,121 3 THE REJECTIONS ON APPEAL Claims 1–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 9,826,840. Claims 1, 2, and 4–16 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Proctor.2 ANALYSIS The nonstatutory double patenting rejection of claims 1–20 over the claims of U.S. Patent No. 9,826,840 A terminal disclaimer was filed on July 17, 2017 with respect to co- pending U.S. Application No. 14/423,120 (now U.S. Patent Registration No. 9,826,840 B2, issued November 28, 2017). This terminal disclaimer disowned “the statutory term of any patent granted on the instant application [(i.e., the ’120 application)] which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number(s) 14423121 filed on 02/21/2015” (i.e., the presently pending application). Hence, while the file of the issued patent contains a terminal disclaimer referencing the pending application, the reverse is not also the case. See Ans. 3. We are instructed that the submission of a terminal disclaimer to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all 2 “The rejections of claims 3[ and] 17-20 are withdrawn as claims 3[ and] 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” Ans. 3. Appeal 2019-001190 Application 14/423,121 4 those patents or sells them as a group. See In re Van Ornum, 686 F.2d 937, 944–45 (CCPA 1982); MPEP § 804; see also Final Act. 2 (“and to prevent possible harassment by multiple assignees”). Perhaps even more applicable to the present situation, MPEP § 706.02(l)(3)(III) states: In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR [§] 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. Emphasis added. Here, the “term of the later patent” would be that of any patent issuing on the present ’121 application, whereas “the application or patent which formed the basis for the rejection” would be the above noted U.S. Patent Registration No. 9,826,840. See also Final Act. 3; Ans. 3. Accordingly, one way to resolve the Examiner’s double patenting rejection that has been issued with respect to the present application (see Final Act. 3–4) is to file a terminal disclaimer in the present application. See MPEP § 804.02(VI) (“it is necessary to require that the terminal disclaimer be filed in each application and/or patent that is subject to the common ownership requirement”), 37 C.F.R. § 1.321(c)(3). Appellant has not filed such a document. See also Ans. 3 (“Appellant did not argue this rejection.”). In view of the above, we affirm the Examiner’s double-patenting rejection of claims 1–20. Appeal 2019-001190 Application 14/423,121 5 The rejection of claims 1, 2, and 4–16 as unpatentable over Proctor Each independent claim on appeal (i.e., claims 1, 8, and 13) recites “positioning the support structure along the seatback” (emphasis added). The Examiner finds this teaching disclosed in Proctor. See Final Act. 5; Ans. 4. Appellant disagrees and contends, “the mechanism disclosed by Proctor adjusts the entire seat back and does not adjust just the position of the thoracic support structure along the seat back, as required by independent claims 1, 8 and 13.” App. Br. 6 (emphasis added); see also Reply Br. 2 (“Proctor’s disclosure of moving the whole seat back”). The Examiner seeks to explain that “[t]he claim language does not limit the movement of the thoracic support structure relative to the seatback as [A]ppellant appears to be arguing.” Ans. 5. Appellant differs stating, “the claim language is describing the positioning of the thoracic support structure relative to the seatback.” Reply Br. 3. First, we agree with Appellant’s characterization that Proctor discloses moving the seatback relative to the seat, not moving the thoracic support with respect to the seatback. See, e.g., Proctor 4:45–65, 5:16–20, Figs. 5–7. Second, we disagree with the Examiner’s interpretation of the claim language. This is because each independent claim specifically recites “an adjustment mechanism. . .for positioning the [thoracic] support structure along the seatback” (emphasis added). The Examiner’s selected definition of “along” (i.e., “in a line matching the length or direction of” (Ans. 5 (citing https://www.merriam-webster.com/dictionary/along))) can be indicative of position or relative movability depending on the thing described. The cited definition refers to a walk along a road and a house along a river. As here, the term “along” is used to describe how “an Appeal 2019-001190 Application 14/423,121 6 adjustment mechanism . . . for positioning” operates, and we agree with Appellant that in this context “along” implies relative movability. Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claims 1, 2, and 4–16 as unpatentable over Proctor. DECISION The Examiner’s double-patenting rejection of claims 1–20 in view of the claims of U.S. Patent No. 9,826,840 is affirmed. The Examiner’s rejection of claims 1, 2, and 4–16 as being unpatentable over Proctor is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation