Winsen C. Zouzal et al.

Patent Trials and Appeals Board

Sep 6, 2019

14423121 - (D) (P.T.A.B. Sep. 6, 2019)

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.”
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Application 14/423,121

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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

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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.
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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.
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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
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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