Ex Parte Alesso et al

Patent Trial and Appeal Board

Mar 24, 2017

13002841 (P.T.A.B. Mar. 24, 2017)

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.
13/002,841 01/06/2011 Guido Sebastiano Alesso 716227.00003 4700
27305 7590 03/28/2017
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
BECK, KAREN
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
IPDocket@HowardandHoward.com
dtrost @ HowardandHoward. com
tmorris @ Howardandhoward. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUIDO SEBASTIANO ALESSO, MASSIMO TRINCHERA,
LORENZO CASTAGNO, ANDREA SANTINI, and PIERO MONCHIERO
Appeal 2014-006141
Application 13/002,841
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 9—19. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a cross-member for a twist-beam
axle suspension for a motor vehicle (Spec. 1).
Claim 9 is illustrative:
9. A cross-member for a motor-vehicle twist-beam axle
Appeal 2014-006141
Application 13/002,841
suspension, said cross-member comprising:
a single piece of steel that defines a closed cross-section
and integrally forms:
a middle section having a center axis extending
along a curvilinear path lying in a first plane and a squashed
portion extending in a second plane inclined to said first plane,
said middle section having a cross-section that is symmetrical
with respect to an axis of symmetry lying in said second plane;
a pair of end sections adapted to be securely
connected to respective trailing arms of said twist-beam axle
suspension; and
a pair of arched joining sections each of which is
interposed between said middle section and respective said end
section and defines an opposite concavity with respect to said
middle section such that said cross-member defines a generally
curved outline with a double change of concavity in respective
zones between said arched joining sections and middle section.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Langa US 5,520,376 May 28, 1996
Christophliemke US 6,616,157 B2 Sept. 9, 2003
Copeland US 2006/0197372 A1 Sept. 7,2006
Appellants appeal the following rejections:
Claims 9, 10 and 12—19 under 35 U.S.C. § 103(a) as anticipated by
Christophliemke and Copeland.
Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Christophliemke, Copeland, and Langa.
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Application 13/002,841
ISSUE
Did the Examiner err in rejecting claim 9 because the rejection is
improperly based on hindsight, and because the Examiner did not give a
reason to combine the relied on references?
Did the Examiner err in rejecting claim 9 because the references do
not address the problem addressed by the present inventors?
Did the Examiner err in rejecting claim 9 because the individual
teachings of the prior art references do not teach the claimed invention?
FACTUAL FINDINGS
We adopt the Examiner’s findings regarding the teachings of the prior
art as our own. Final Act. 2—3. Additional findings of fact may appear in
the Analysis that follows.
ANALYSIS
We are not persuaded of error on the part of the Examiner by
Appellants’ arguments that the rejection of claim 1 is improperly founded
upon hindsight and that the Examiner has not explained the reason why one
of ordinary skill in the art would have been motivated to select the
references and combine them to reach the claimed invention of claim 9. The
Examiner, relying on paragraph 5 of Copeland, explained the reason for
combining the references on page 3 of the Final Action, i.e., to provide a
raised center axle for use in heavy duty vehicles. The Examiner expanded
on the motivation for the combination in the Answer at page 3 by
additionally relying on the teachings in paragraph 7 of Copeland that the
curved structure disclosed has the added benefits that load-induced stresses
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Application 13/002,841
are more evenly distributed and not concentrated on the apex of the hump.
As such, we do not agree that the rejection was based on hindsight. We note
that while the Appellants argue that the rejection is based on hindsight and
that there is no reason to combine the references, the Appellants have not
addressed the reason given by the Examiner for the combination. As such,
the Appellants have not provided a sufficient rebuttal to the reasoning of the
Examiner.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the references are improperly combined because
the problem addressed in the present application and the solution proposed
by the inventor cannot be found anywhere in the prior art. We note that in
order to render an invention obvious, the prior art: does not have to address
the same problem addressed by a patent applicant. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007); see also In re Beattie, 91A F.2d 1309, 1312
(Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”).
We are not persuaded of error on the part of the Examiner by
Appellants’ arguments that are directed to the individual teachings of the
reference including (1) that none of the references are directed toward a
cross-member 12 that forms a middle section having a center axis extending
along a curved linear path lying in a first plane and a squashed portion
extending in a second plane, (2) that the MLE plane of Christophliemke has
nothing to do with a first plane that extends along a curved linear path of the
middle section, and (3) neither reference discloses a cross-member having an
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Application 13/002,841
arched joining section interposed between a middle section and respective
end section. We note that each of these arguments relates to the individual
teachings of one of the references. Therefore, Appellants’ argument
improperly attacks the references separately, but the rejection is based on the
combined teachings of the references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Furthermore, “[t]he test for obviousness is
not. . . that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). In this regard, it
is the teaching in Christophliemke of a cross bar with center axis extending
along a straight path combined with the teaching in Copeland of a center
axis extending along a curvilinear path that the Examiner relies on for
teaching a cross-member 12 that forms a middle section having a center axis
extending along a curved linear path lying in a first plane and a squashed
portion extending in a second plane. In addition, while the Appellants may
be correct that the MLE plane of Christophliemke has nothing to do with a
first plane that extends along a curved linear path of the middle section, it is
Copeland that the Examiner relies on for teaching a curved linear path of the
middle section. Still further, it is Christophliemke that is relied on for
teaching a cross member while Copeland is relied on for teaching a center
axis having an arched joining section interposed between a middle section
and respective end section.
In addition to the above, we agree with the Examiner that the portions
of Copeland’s bar that are formed by blocks 28 are arched joining sections
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as broadly claimed and as such, Appellants’ argument that the prior art does
not disclose arched joining sections is unpersuasive.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9. We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate patentability of
the remaining claims.
DECISION
We affirm the decision of the Examiner.
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) (2009).
AFFIRMED
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