Ex Parte 7290831 et al

Patent Trial and Appeal Board

Dec 31, 2013

95001859 (P.T.A.B. Dec. 31, 2013)

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.
95/001,859 12/20/2011 7290831 103816-20 7382
7590 01/02/2014
LAURA C. HARGITT
GENERAL MOTORS CORPORATION, LEGAL STAFF
MAIL CODE 482-C23-B21
P.O. BOX 300
DETROIT, MI 48265-3000
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/02/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

FORD GLOBAL TECHNOLOGIES LLC
Respondent, Requestor

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC
Appellant, Patent Owner
________________

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Patent No. US 7,290,831 B2
1

Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1
Issued November 6, 2007 to Michael G. Poss, Anthony V. Minatel,
Bryan F. Lake, James J. Janick, Mark J. McGuire, Raymond F. Roantree and
Michael D. Regiec (the “′831 patent”). The ′831 patent issued from Appl.
11/399,252, filed April 6, 2006.
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STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals from a final rejection of claims 1 2
and 5-13. Claims 2-4 were not subject to reexamination. (See RAN 12).
2
3
No claims were added or amended during the course of the reexamination. 4
Counsel for both the Patent Owner and the Requester participated in an oral 5
hearing held on October 2, 2013, the transcript of which having been added 6
to the electronic record on December 18, 2013. We have jurisdiction under 7
35 U.S.C. § 134(b) (2011) and 35 U.S.C. § 315(a) (2011). 8
We REVERSE. 9
The decision of the Examiner is set forth in a Right of Appeal Notice 10
(“RAN”) mailed August 23, 2012.
3
The Patent Owner relies on a Patent 11
Owner’s Brief on Appeal dated December 21, 2012 (“Appeal Brief” or 12
“App. Br. PO”) and a Patent Owner’s Rebuttal Brief dated April 11, 2013 13
(“Rebuttal Brief” or “Reb. Br. PO”). The Respondent/Requester relies on 14
Respondent’s Brief on Appeal dated January 18, 2013 (“Respondent’s 15
Brief” or “Resp. Br.”). Two declarations are of record: a “Declaration of 16
Shawn M. Morgans to Accompany the Request for Inter Partes 17

2
The Requester proposed a rejection of claims 2-4 under 35 U.S.C.
§ 103(a) (2011). (See Request for Inter Partes Reexamination dated
December 20, 2011 at 5). The Examiner concluded on behalf of the Director
that the Requester lacked a reasonable likelihood of prevailing on the merits
of the rejection and denied reexamination of claims 2-4. (See Order
Granting/Denying Request for Inter Partes Reexamination mailed Jan. 27,
2012 at 4-5). A petition by the Requester dated February 27, 2012 to review
the Examiner’s decision denying reexamination of claims 2-4 was itself
denied in an order mailed April 30, 2012.

3
The Examiner’s Answer mailed March 11, 2013 merely incorporates
the RAN by reference.
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Reexamination in Accordance with M.P.E.P. § 2258(I)(E)” dated December 1
15, 2011 (“Morgans Declaration” or “Morgans Decl.”); and a “Declaration 2
of Louis J. Conrad to Accompany Amendment and Response in Inter Parties 3
[sic] Reexamination” dated March 26, 2012 (“Conrad Declaration” or 4
“Conrad Decl.”).
4
5
The sole issue raised in the briefs in this appeal is whether Endo (JP 6
P2000-247259 A, publ. Sep. 12, 2000)
5
inherently describes the subject 7
matter of independent claim 1, the only independent claim on appeal. This 8
opinion is limited to that issue. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In 9
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 10
1072, 1075-76 (BPAI 2010). (Compare App. Br. PO 15-16; Reb. Br. PO 11
13-15 with Resp. Br. 10-11; see also RAN 5-6). 12
13
THE SUBJECT MATTER OF THE ′831 PATENT 14
The claims on appeal relate to a body structure for an automobile. As 15
depicted in Figure 7, such a body structure 10 includes a body side frame 12 16
and a roof panel 14. (′831 patent, col. 3, ll. 30-32). The body side frame 12 17
includes an outer body side panel 28 having an attachment flange 32. (′831 18
patent, col. 3, ll. 44-50 and 61-62). As depicted in Figure 5, the attachment 19
flange 32 includes a glass mounting portion 34 for mounting a windshield 20

4
The Examiner declined to enter an untimely second Declaration of
Louis J. Conrad under 37 CFR § 1.132, which was filed on June 22, 2012.
(See RAN 2).

5
All references to “Endo” in this opinion will be to an English-
language translation certified by Jessica Harvey of Transperfect on March 6,
2012. A copy this translation is in the reexamination file.
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glass 16 (shown in Figure 1); a roof mounting portion 40 for mounting the 1
roof panel 14; and a transition area 46 between the glass mounting portion 2
34 and the roof mounting portion 40. (′831 patent, col. 3, ll. 64-66; col. 4, ll. 3
11-15; and col. 4, ll. 30-32). 4
As depicted in Figure 4, the roof mounting portion 40 includes a roof 5
mounting surface 38 and a lower portion 42. (′831 patent, col. 4, ll. 11-15). 6
The roof mounting surface 38 is oriented at an angle B of approximately 45° 7
from horizontal. This angle B allows the roof panel 14 to mount tightly 8
against the two body side frames 12 on the opposite sides of the roof panel 9
regardless of small variations in the spacing between the two body side 10
panels. (See ′831 patent, col. 4, ll. 15-23). The glass mounting portion 34 11
(shown in Figure 4) is oriented at an angle A of approximately 83° from 12
horizontal to properly mount and secure the windshield glass 16. (′831 13
patent, col. 3, l. 66 – col. 4, l. 2). The lower portion 42 of the roof mounting 14
portion 40 also is oriented at the angle A from the horizontal. An upper 15
portion of the roof is oriented at an angle C, which preferably equals the 16
angle A. (′831 patent, col. 4, ll. 26-29). 17
As depicted in Figure 5, the ‘831 patent teaches that: 18
The transition area 46 at its first end (adjacent to 19
the roof mounting portion 40) matches the profile 20
of the roof mounting portion 40, with a first 21
portion 48 oriented at the angle B, and second and 22
third portions 50, 52 located below and above the 23
first portion 48, respectively, and oriented at the 24
angles A, C respectively. The transition area 46 at 25
its second end (adjacent to the glass mounting 26
portion 34) matches the profile of the glass 27
mounting portion 34 at the angle A. This creates a 28
tapered region 54 where a width of the first portion 29
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48, which extends parallel to the roof mounting 1
surface 38, tapers from the first end—where it is 2
the width of the roof mounting surface 38—down 3
to zero as it reaches the glass mounting portion 34 4
at the second end—where the entire width is at the 5
angle needed for mounting the glass 16. 6
Accordingly, the multiple angle roof mounting 7
portion 40, along with the transition area 46, 8
allows for a smooth transition between the two 9
mounting portions 34, 40 without creating 10
discontinuities, holes or other unsightly 11
irregularities that would need to be filled or 12
covered with a molding. 13
(′831, col. 4, ll. 32-51). 14
15
INDEPENDENT CLAIM 1 16
1. A body structure for a vehicle comprising: 17
a roof panel having a main section and a side 18
mounting flange extending from and angled 19
greater than 90 degrees downward relative 20
to the main section; and 21
a side frame including an outer body side panel 22
having an attachment flange with a roof 23
mounting portion, a transition area, and a 24
glass mounting portion; 25
wherein the glass mounting portion is 26
oriented at a first angle, 27
the roof mounting portion has 28
a roof mounting surface oriented at a 29
second angle that is less than 30
the first angle and 31
an adjacent lower portion oriented at 32
the first angle, 33
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with the side mounting flange 1
attached to the roof mounting 2
surface, and 3
the transition area has 4
a first end adjacent to the roof 5
mounting portion having a first 6
portion oriented at the second 7
angle and a lower portion 8
adjacent the first portion and 9
oriented at the first angle, 10
a second end adjacent to the glass 11
mounting portion and oriented 12
at the first angle, and 13
a tapered region wherein a width of 14
the first portion tapers down to 15
zero from the first end to the 16
second end. 17
(App. Br. PO at 19 (Claims App’x); see also ′831 patent, col. 5, l. 33 – col. 18
6, l. 9). 19
20
THE REJECTIONS ON APPEAL 21
The Examiner adopts, or adopts with modification, two grounds of 22
rejection of claims 1 and 5-13 proposed by the Requester: 23
1. claims 1, 5-11 and 13 under 35 U.S.C. § 102(b) 24
(2011) as being anticipated by Endo (RAN 3); and 25
2. claim 12 under 35 U.S.C. § 103(a) (2011) as being 26
unpatentable over Endo and Miyazaki (US 4,883,310, issued 27
Nov. 28, 1989) (RAN 11). 28
The Examiner also proposes and adopts an additional ground of rejection: 29
3. claims 9 and 10 under § 103(a) as being 30
unpatentable over Endo (id.). 31
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PRINCIPLES OF LAW 1
“[A] prior art reference may anticipate without disclosing a feature of 2
the claimed invention if that missing characteristic is necessarily present, or 3
inherent, in the single anticipating reference.” Schering Corp. v. Geneva 4
Pharmas., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)(citations omitted).
6
5
The inherent disclosure of a prior art reference is an issue of fact for which 6
expert testimony may be introduced. AstraZeneca, 633 F.3d at 1055 (Fed. 7
Cir. 2011); Schering, 339 F.3d at 1377-78. A party taking a position adverse 8
to the patentability of a claim generally bears the burden of proving a factual 9
underpinning for a rejection of the claim. See Rambus Inc. v. Rea, 731 F.3d 10
1248, 1255 (Fed Cir. 2013). 11
12
FINDINGS OF FACT REGARDING THE DISCLOSURE OF ENDO 13
We find the following facts by a preponderance of the evidence. 14
Endo describes a body structure for a vehicle which does not require 15
moldings between the roof panel 12 and the roof side rails 14 of the side 16
frame. (See Endo, paras. 0006, 0014 and 0016). Endo’s body structure is 17

6
Our reviewing court stated in Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268-69, that if “the disclosure is sufficient to show that the
natural result flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient.” As used in this context, the
term “natural result flowing from the operation as taught” implies that the
operation as taught necessarily would result in the performance of the
questioned function.
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depicted in Figures 1-3 of Endo, which are reproduced below in edited 1
form
7
: 2
3
Figure 1 (reproduced above on the left) is a cross-sectional view of the roof 4
panel 12 engaging the roof side rail 14, taken transversely along a line 5
between the windshield and the B-pillar. Figure 3 (reproduced above on the 6
right) is a cross-section view of the front or A-pillar 32, the windshield glass 7
30 and the windshield molding 34, taken along a line immediately forward 8
of the roof panel 12. (See Endo, Brief Description of the Drawings and fig. 9
4). 10

7
The drawing figures as reproduced below are taken from a copy of the
Japanese-language original of publication JP P200-247259 A. Figure 1 has
been edited to remove a schematic representation of a laser welder 25 which
forms no part of the body structure. In addition, the figure numbers for
Figures 1-3 have been moved relative to the respective drawing figures as
reproduced in the Japanese original. Lists of reference numerals and
corresponding part names have been removed from adjacent Figures 1 and 2.
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1
Figure 2 is a perspective view showing a forward portion of the left side 2
surface of the roof panel 12. Figure 2 also includes a perspective, sectional 3
view of the roof side rail 14 engaging the left side surface of the roof panel, 4
taken along approximately the same vertical line as the sectional view of 5
Figure 1. (See id.)

6
We adopt the following findings of the Examiner: 7
[Endo] discloses a vehicle body structure 10 8
comprising a roof panel 12 having a main section 9
(see Figs. 2 and 4) and a side mounting flange 12A 10
extending from and angled greater than 90 degrees 11
downward (see Fig. 1) relative to the main section. 12
See paragraphs 0016 and 0020. The body 13
structure 10 also includes a pair of side frames (see 14
Fig. 4), each side frame including a roof side rail 15
14. See paragraph 0016. Each side rail 14 16
includes an outer side panel 16 having a lower 17
portion 16B oriented at a first angle of about 90 18
degrees to horizontal as illustrated in Fig. 1, and an 19
inclined roof mounting surface 16C adjacent to the 20
lower portion 16B, the roof mounting surface 16C 21
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oriented at a second angle of about 45 degrees to 1
horizontal as illustrated in Fig. 1. See paragraphs 2
0017, 0018 and 0020. Thus, the second angle of 3
the roof mounting surface 16C is less than the first 4
angle of the lower portion 16B. The roof 5
mounting surface 16C and the lower portion 16B 6
constitute an attachment flange with a roof 7
mounting portion, as claimed. The side mounting 8
flange 12A is angled such that line contact is 9
created between the flange 12A and the roof 10
mounting surface 16C of the outer panel 16. See 11
paragraph 0026. A laser welder 25 [omitted from 12
Figure 1 as reproduced above] is used to produce a 13
brazed joint between the flange 12A and the roof 14
mounting surface 16C. See paragraph 0020. The 15
outer side panel 16 also includes an inner flange 16
16A adjacent to the lower portion 16B, the inner 17
flange 16A being approximately horizontal as 18
illustrated in Fig. 1. See paragraph 0018. 19
(RAN 3-4). 20
In other words, the left side of Endo’s roof panel 12 next to the roof 21
mounting portion (near the right end of Figure 2) includes an inclined part or 22
side mounting flange 12A, and a flange 12B. (See Endo, para. 0020). As 23
depicted in Figure 1 of Endo, the inclined part 12A is beveled downwardly 24
and inwardly toward the interior of the vehicle at an angle greater than 90° 25
from horizontally outward. The flange 12B depends downwardly in an 26
approximately vertical direction from the lower edge of the inclined part 27
12A. 28
Figure 2 depicts a windshield glass 30 mounted in part on a glass 29
attachment part 12C of the roof panel 12. The attachment part 12C includes 30
a mountain-shaped (that is, ridge-shaped) reinforcement part 12D along its 31
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left side. (See Endo, paras. 0022 and 0023). The glass mounting portion of 1
the roof side rail outer panel 16 is next to the reinforcement part 12D. 2
As depicted in Figure 2 of Endo, both the vertical width of the 3
inclined part or side mounting flange 12A of Endo’s roof panel 12, and the 4
vertical width of the flange 12B, decrease as one moves forwardly from the 5
first end of the transition area toward the second end. Although the Patent 6
Owner denies that the vertical width of the inclined part 12A of the roof 7
panel 12 tapers to zero as recited in claim 1 (see App. Br. PO 16), we find 8
that the vertical width of the inclined part 12A does taper to zero at a point 9
intermediate the roof mounting portion and the glass mounting portion of the 10
roof side rail outer panel 16 as shown in Figure 2. See In re Mraz, 455 F.2d 11
1069, 1072 (CCPA 1972)(Drawings can be relied upon for what they 12
reasonably disclose and suggest to one of ordinary skill in the art.). 13
As depicted in Figures 1 and 2 of Endo, the roof side rail outer panel 14
16 near the roof mounting portion includes an inclined part 16C and a 15
vertical wall part or lower portion 16B. (See Endo, para. 0018). The vertical 16
wall part 16B, like the flange 12B of the roof panel 12, is oriented at a first 17
angle which is approximately vertical. The inclined part 16C defines a roof 18
mounting surface oriented at a second angle β less than 90° from 19
horizontally outward. Although the second angle β is less than the angle α 20
of the inclined part 12A of the roof panel 12 (see Endo, para. 0020), the two 21
angles are depicted as being generally corresponding to one another in 22
Figure 1. Therefore, as the Examiner finds at page 4 of the RAN, the 23
contours of the inclined part 12A and the flange 12B of the roof panel 12 24
provide some basis for predicting the contours of the parts 16B, 16C of the 25
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roof side rail outer panel 16 adjacent the inclined part 12A and the flange 1
12B depicted near the roof mounting portion at the right side of Figure 2. 2
On the other hand, the contours of the inclined part 12A and the flange 3
12B of the roof panel 12 fail to provide any basis for predicting the contours 4
of the parts 16B, 16C of the roof side rail outer panel 16 forward of the point 5
where the inclined part 12A and the flange 12B tapers to zero. It is to be 6
emphasized that the contour of the part of the roof side rail outer panel 16 7
forward of the point where the inclined part 12A and the flange 12B tapers to 8
zero is not a continuation of the contour of the approximately vertical flange 9
12B. Since the inclined part 12A and the flange 12B are the only portions of 10
the roof panel 12 facing the roof side rail outer panel 16 described by the 11
written description of Endo, including its drawings, it is unclear what 12
contour the left side of the roof panel 12 assumes between the glass 13
mounting portion and the point at which the inclined part 12A tapers to zero. 14
15
ANALYSIS 16
Even if the inclined part 16C itself tapers to zero (which the Patent 17
Owner disputes), the most that either the Examiner or the Requester has 18
proven by a preponderance of the evidence is that the inclined part 16C 19
tapers to zero at a point somewhere intermediate the roof mounting portion 20
positioned at the rightmost part of Figure 2 and the glass mounting portion 21
next to the reinforcement part 12D. Neither the Examiner nor the Requester 22
identifies persuasive evidence or technical reasoning which might prove that 23
the inclined part 16C of the roof side rail outer panel 16 necessarily tapers to 24
zero at an end (i.e., "to the second end") adjacent the glass mounting portion 25
(that is, immediately behind the reinforcement part 12D). 26
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Claim 1 recites a body structure comprising a roof panel and a side 1
frame. The side frame includes an outer body side panel having an 2
attachment flange with a roof mounting portion, a transition area, and a glass 3
mounting portion. Claim 1 also recites that “the transition area has a first 4
end adjacent to the roof mounting portion [and] a second end adjacent to the 5
glass mounting portion.” Finally, claim 1 recites that the transition area 6
includes “a tapered region wherein a width of the first portion tapers down to 7
zero from the first end to the second end.” 8
Both the Examiner and the Requester appear to read the term 9
“transition area” as used in claim 1 onto the portion of the roof side rail outer 10
panel 16 directly engaging the portion of the roof panel 12 indicated by a 11
bracket in the marked up copy of Endo’s Figure 2 reproduced below: 12
13
(See RAN 5-6; Resp. Br. 4). In this marked-up perspective view, the 14
transition area is indicated to extend between first and second ends. The 15
first end of the transition area is located at approximately the rearmost extent 16
of the portion of the roof panel 12 depicted in Figure 2, adjacent the roof 17
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mounting portion of the roof side rail outer panel 16. The second end is 1
located immediately behind the rearmost extent of the reinforcement part 2
12D, adjacent the glass mounting portion. 3
The Patent Owner reads the claim language reciting “a tapered region 4
wherein a width of the first portion tapers down to zero from the first end to 5
the second end” as limiting the tapered region such that the first portion 6
tapers down to zero at the second end of the transition area. (See App. Br. 7
PO 16; Reb. Br. PO 14-15). The Requester argues that “[c]laim 1 requires 8
that ‘a tapered region,’ within ‘a transition area’ of ‘a side frame,’ have a 9
first portion that tapers down to zero” (Resp. Br. 10-11) and apparently 10
nothing more. As the Patent Owner points out, however, the Requester does 11
not correctly interpret the limitation “a tapered region wherein a width of the 12
first portion tapers down to zero from the first end to the second end.” (See 13
Reb. Br. PO 14-15). 14
The Requester points out that claim 1 recites the tapered region as 15
being included in the transition area, thereby indicating that the tapered 16
region is not the same as the transition area. (See Requester Comments in 17
Response to Owner’s Amendment, dated April 27, 2012 at 4-5). The 18
Requester further argues that the first and second ends of the tapered region 19
need not be the same as the first and second ends of the transition area. 20
From these premises, the Requester concludes that the recitation “wherein 21
the width of the first portion tapers down to zero from the first end to the 22
second end” limits the taper so as to extend from a first end of the tapered 23
region to a second end of the tapered region. The Requester argues that the 24
taper need not extend to the second end of the transition area, adjacent the 25
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glass mounting portion. (See Transcript of Oral Hearing, October 2, 2013 at 1
27, ll. 1-14). 2
Nevertheless, in the limitation “wherein a width of the first portion 3
tapers down to zero from the first end to the second end,” the use of the 4
article “the” implies that the terms “the first end” and “the second end” refer 5
back to the first end and the second end of the transition area. Hence, the 6
limitation recites that the width of the first portion tapers down to zero from 7
the first end of the transition area to the second end of the transition area. 8
This recitation does not, as the Requester suggests, conflate the tapered 9
region with the transition area. The separate term “tapered region” refers to 10
a specific portion of the “transition area,” since the transition area includes 11
not only the tapered region but also the first and second ends. As found 12
earlier, neither the Examiner nor the Requester identifies persuasive 13
evidence or technical reasoning which proves that the inclined part 16C of 14
the roof side rail outer panel 16 tapers to zero at a second end (i.e., "to the 15
second end") adjacent the glass mounting portion (that is, next to the 16
reinforcement part 12D). 17
As the Examiner correctly finds, the front pillar outer panel 32 as 18
depicted in Figure 3 of Endo has a vertical wall part 32A facing the 19
reinforcement part 12D. (See RAN 4). Endo describes the front pillar outer 20
panel 32 as “part of the side panel.” (Endo, para. 0023). Nevertheless, as 21
pointed out by the Requester, the section of the side panel depicted in Figure 22
3 is outside the region of the side panel corresponding to the “transition 23
area” recited in claim 1. (See Resp. Br. 5). As the Patent Owner points out, 24
the presence of the vertical wall part 32A as depicted in Figure 3 does not 25
prove that “a width of the first portion tapers down to zero from the first end 26
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to the second end.” (See, e.g., Reb. Br. PO 7-8). In particular, the presence 1
of the vertical wall portion 32A at the point along the length of the side panel 2
depicted in Figure 3 does not prove that the roof side rail outer panel 16 has 3
a vertical wall portion behind the reinforcement part 12D, at the second end 4
adjacent the glass mounting portion. Because side panel has different 5
contours at the reinforcement part 12D, as depicted in Figure 3, and at the 6
and at the second end of the transition area, which is behind the 7
reinforcement part 12D, one cannot extrapolate from Figure 3 that the width 8
of the first portion tapers down to zero at the second end. 9
The Morgans Declaration states that 10
a technician working in the industry would readily 11
recognize that the angled surfaces of the roof and 12
windshield mounting portions of the side frame 13
described in [Endo] would require a tapered 14
transition region. Thus, such a region would of 15
necessity need to be there and would be inherently 16
disclosed. Otherwise, [Endo] would have 17
mentioned how the transition could be fabricated 18
without buckling or puncturing the metal of the 19
components. 20
(Morgans Decl., para. 9). Even if we assume for purposes of this appeal that 21
this statement is correct, it does not prove that the taper must extend to a 22
second end of a transition area adjacent a glass mounting portion. 23
Since neither the Examiner nor the Requester has proven by a 24
preponderance of the evidence that Endo describes a body structure 25
satisfying all limitations of independent claim 1, we do not sustain the 26
rejection of claims 1, 5-11 and 13 under § 102(b) as being anticipated by 27
Endo. Since the Examiner’s reasoning in support of the rejection of claims 9 28
and 10 under § 103(a) is dependent on the finding that Endo anticipates 29
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parent claim 1 (see RAN 11), we do not sustain the rejection of claims 9 and 1
10 under § 103(a) as being unpatentable over Endo. Since the Examiner’s 2
reasoning in support of the rejection of claim 12 under § 103(a) also is 3
dependent on the finding that Endo anticipates parent claim 1 (see RAN 11-4
12), we do not sustain the rejection of claim 12 under 5
§ 103(a) as being unpatentable over Endo and Miyazaki. 6
7
DECISION 8
We REVERSE the Examiner’s decision rejecting claims 1 and 5-13. 9
Requests for extensions of time in this inter partes reexamination 10
proceeding are governed by 37 C.F.R. § 1.956 (2011). 11
12
REVERSED 13

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Patent Owner:
1
Laura C. Hargitt 2
General Motors Corporation, Legal Staff 3
Mail Code 482-C23-B21 4
P.O. Box 300 5
Detroit, MI 48265-3000 6
7
8
9
Third Party Requester: 10
11
Winston and Strawn LLP 12
Patent Department 13
1700 K Street, N.W. 14
Washington, DC 20006 15