Yoshikiyo Tamai et al.

Patent Trials and Appeals Board

Sep 11, 2019

14004348 - (D) (P.T.A.B. Sep. 11, 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.
14/004,348 09/10/2013 Yoshikiyo Tamai 8059-1010 1289
23122 7590 09/11/2019
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOSHIKIYO TAMAI, TAKESHI FUJITA,
YASUSHI KITANI, and HIROYUKI TAKEBE
____________________

Appeal 2017-009621
Application 14/004,348
Technology Center 3600
____________________

Before JILL D. HILL, JEREMY M. PLENZLER, and
SCOTT C. MOORE, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1 and 2. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2017-009621
Application 14/004,348

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CLAIMED SUBJECT MATTER
Claim 1 is independent. Claim 2 depends from claim 1. Claim 1 is
reproduced below:
1. An automobile frame component made of thin
steel sheets, comprising:
a closed section including:
a frame component having a substantially hat sectional
shape, the frame component including a flange portion, a
vertical wall portion, and an arc portion connecting an inner end
of the flange portion and the vertical wall portion;
another frame component or a panel part disposed facing
the flange portion of the frame component; and
a welded portion connecting the arc portion of the frame
component and the other frame component or panel part, the
welded portion extending along the other frame component or
panel part in a direction parallel to the flange portion of the
frame component, the welded portion continuously welded
using a one-side welding method to improve stiffness of the
automobile frame component, wherein
a radius of curvature of the arc portion is denoted as R
mm,
an inter-sheet gap amount between the flange portion and
the other frame component or panel part is denoted as a mm,
a distance between the inner end of the flange portion
and the welded portion in a direction parallel to a surface of the
flange portion is denoted as X mm, and
only those values of R, a, and X that satisfy all of the
following formulas are selected:
X > 1.5 mm;
R ≥ 2mm;
1 mm ≥ a > 0 mm;
+ √ (2Ra - a2) mm > 1.5 mm; and
+ √ (2Ra - a2) mm ≥ X.
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REJECTIONS
1. Claims 1 and 2 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
2. Claims 1 and 2 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the best mode requirement.
3. Claims 1 and 2 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
4. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being
unpatentable over AAPA1, Musselman (EP 1454702 A1, published Sept. 8,
2004), and Diguet (WO 2010/061138 A1, published June 3, 2010)2.
OPINION
Enablement
The claimed invention must be enabled so that any person skilled in
the art can make and use the invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). When rejecting a claim for lack
of enablement, the Examiner bears the initial burden of setting forth a
reasonable explanation as to why the scope of protection provided by the
claim is not enabled adequately. In re Wright, 999 F.2d 1557, 1561–62
(Fed. Cir. 1993).

1 The Examiner references JP 2010-253545 (referred to as “Kobayashi” by
Appellants) as part of Applicant’s Admitted Prior Art (“AAPA”), which also
includes the discussion from Applicant’s Specification.
2 The Examiner explains that the Office Action references “US
2012/0048836 which serves as an English translation of the Diguet WO
2010/061138 document.” Final Act. 7. For consistency, we cite to that
English language version when citing to Diguet.
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The basis for the enablement rejection is that “X>1.5mm is claimed
without explanation of how such was attained without creating blowholes.”
Final Act. 2. The Examiner explains that “Applicant’s disclosure (p. 4)
refers to patent literature JP 2010-253545 and states that the state of the art
at the time of invention was such that X was kept below 1.5mm in order to
avoid creating blow holes.” Id.
Appellants respond that the scope of protection provided by the claim
does not preclude blowholes. See Appeal Br. 5 (“Appellants have not
claimed an automobile frame component that is manufactured ‘without
creating blowholes.’ Likewise, the concept of ‘preventing blowholes’ is
mentioned nowhere in the [S]pecification except as part of a discussion of a
prior art reference.”). We agree.
Moreover, the Examiner does not persuasively explain why it would
require undue experimentation for one of ordinary skill in the art to make
and/or use the invention. Final Act. 2–3. For example, the Examiner does
not address any of the Wands factors. See Wands, 858 F.2d at 737.
For at least these reasons, the Examiner has failed to establish
sufficiently that the arrangement recited in claims 1 and 2 is not enabled.
Best Mode
“Compliance with best mode is a question of fact composed of two
subsidiary factual inquiries. ‘First, the factfinder must determine whether, at
the time of filing the application, the inventor possessed a best mode for
practicing the invention.’” Bayer AG v. Schein Pharms., Inc., 301 F.3d
1306, 1320 (Fed. Cir. 2002) (internal citations omitted). “Second, if the
inventor subjectively considered one mode to be preferred over all others,
then ‘[t]he second inquiry is whether the inventor’s disclosure is adequate to
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enable one of ordinary skill in the art to practice the best mode of the
invention.’” Id. (internal citations omitted).
The basis for the best mode rejection is, again, that “applicant’s
claimed invention recites X>1.5mm without any disclosure of how applicant
avoided the blow hole problem prone to values of X exceeding 1.5mm.”
Final Act. 3. The Examiner explains that “[e]vidence of concealment of the
best mode is based upon applicant’s disclosure (pp. 2 and 4) wherein
applicant states that the prior art must keep X 0 mm.” The
relationship between plate separation and the other variables recited in the
claim is defined by the subsequent equations in the claim. The Examiner
fails to identify anything unclear about the plate separation recited in the
claim that would make the claim indefinite.

3 The Examiner withdrew the “plate thickness” issue in the Answer. Ans.
24.
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As explained by Appellants, the claim does not require that the frame
be free of blowholes. The Examiner has failed to establish sufficiently that
the failure of the claims to reference blowholes or blow through renders the
claims indefinite.
For at least these reasons, the Examiner has failed to establish
sufficiently that the claims are indefinite.
Obviousness
The Examiner finds that “AAPA . . . discloses the claimed invention
. . . except that applicant’s weld location values ‘X’ are chosen to exceed
1.5mm without being so large as to necessitate a welding gap ‘a’ greater
than 1mm above which welding failure occurs.” Final Act. 6. The
Examiner explains that “this increase of X above 1.5mm without increasing
‘a’ to the point of weld failure (1mm) was known to be desirable/obvious”
based on the teachings of Musselman and Diguet. Id. at 6–7. The Examiner
finds that Musselman “discloses a value of X1 of 1.6mm and 1.7mm . . . and
further teaches the importance of not making the weld gap too large so as to
avoid weld failure.” Id. at 6 (citing Musselman, Table 1, ¶ 22). The
Examiner also finds that “Diguet teaches that the weld location ‘X’ should
be modified to adapt for different design criteria such as plate thickness, and
by way of example expressly discloses a weld location ‘X’ of 1.72mm.” Id.
at 6–7 (citing Diguet ¶¶ 42–43).
The Examiner determines that “[i]ncreasing the value of X to only
those values that do not result in the welding gap ‘a’ being too large to
support a good weld simply requires trial and error well within the skill of
any competent welder.” Final Act. 7. The Examiner reasons that “it would
have been obvious . . . to modify AAPA/JP 2010-253545 to change the weld
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location ‘X’ to be greater than 1.5mm but not so large as to result in failed
welds for the purpose of adapting to different plate thicknesses (e.g., thicker
plates being stronger).” Id.
Appellants respond that “the Examiner’s proposed modification of
AAPA is improper because Kobayashi expressly teaches away from the
exact modification proposed by the Examiner” because “Kobayashi
expressly teaches that the position of 1.5 mm and greater results in strength
reduction.” Appeal Br. 11 (citing Kobayashi ¶¶ 34–37); see also Reply Br.
5. The Examiner does not respond to Appellants’ “teaching away”
argument, other than asserting that “the evidence that X>1.5mm on the
curved portion is obvious far outweighs the preferences of the base reference
AAPA/Kobayashi.” Ans. 25. Appellants have the better position.
A teaching away requires “criticiz[ing], discredit[ing], or otherwise
discourag[ing] the solution claimed.” In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). The Examiner proposes only “to modify
AAPA/[Kobayashi] to change the weld location ‘X’ to be greater than
1.5mm but not so large as to result in failed welds for the purpose of
adapting to different plate thicknesses (e.g., thicker plates being stronger).”
Final Act. 7. There is no dispute that AAPA/Kobayashi discourages values
of X that are greater than 1.5 mm in its particular arrangement. That other
references (e.g., Musselman and Diguet) may discuss values of “X” greater
than 1.5 mm in the specific arrangements discussed in those references does
not mean that one skilled in the art would have modified Kobayashi’s
teachings to have “X” less than 1.5 mm, particularly when Kobayashi
specifically counsels against such a modification.
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The Examiner also asserts that “applicant has gone to great pains to
argue repeatedly that the claimed invention does not forbid the undesirable
burn/blow through/holes implied to exist in X>1 of AAPA/Kobayashi” and
“if this is true then applicant’s invention would be nothing more than a
reproduction of AAPA to include the weak failure prone defects implied by
AAPA to exists at X>1.” Ans. 26. That assertion, by itself, however, does
not establish obviousness of the claimed arrangement.
For at least the reasons set forth above, the Examiner has failed to
establish that the claim arrangement would have been obvious.

DECISION
We REVERSE the Examiner’s decision to reject claims 1 and 2.

REVERSED