Ex parte BACINA et al.

Board of Patent Appeals and Interferences

Sep 30, 1997

08122970 (B.P.A.I. Sep. 30, 1997)

Application for patent filed September 17, 1993.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL R. BACINA and JOHN J. FUSCO
____________
Appeal No. 96-1201
Application 08/122,9701
____________
ON BRIEF
____________
Before COHEN, ABRAMS and PATE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner's refusal to allow
claims 1-13 as amended after final rejection. Claim 14 has been
canceled. These are all the claims in the application.
Appeal No. 96-1201
Application 08/122,970
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The claimed invention relates to a reinforcement for
automotive body panels. More specifically, the tooling holes are
configured so that paint draining from the tooling hole
reinforcement points does not engender a drip or run.
Claim 1 reproduced below is further illustrative of
the claimed subject matter.
1. A reinforcement for an automotive body panel
positioned in vertically extending orientation for receiving a
liquid surface coating thereon, the body panel including a
generally vertically extending exterior surface, the
reinforcement comprising;
means defining a depression on the surface, said
depression having a portion parallel to said body panel and
imperforate canted portions extending between said parallel
portion and said exterior surface; and
means defining a nonfunneling surface proximate the
lower terminus of said depression for collecting excess liquid
surface coating applied to the panel and for preventing the
liquid surface coating from running onto surfaces directly
beneath said reinforcement.
The reference relied upon as evidence in a 35 U.S.C. §
103 obviousness rejection is:
DeRees 4,848,835 July 18, 1989
THE REJECTION
The examiner has rejected claims 1-13 under 35 U.S.C.
§ 103 as unpatentable over appellants' admitted prior art in view
of DeRees. According to the examiner, figures 1 and 2 of
appellants’ drawings illustrate, and the accompanying portion of
Appeal No. 96-1201
Application 08/122,970
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appellants’ specification states, that it is old and well known
to reinforce a tooling hole in an automotive body panel with a
surrounding circular depression. The examiner further states,
that DeRees teaches the formation of a depression in a body panel
which may be noncircular. The examiner specifically refers to
DeRees’ depressions 120 or 112 which have bases parallel to the
main panel and canted side portions 122 extending between the
parallel portion and the panel surface. The examiner concludes
that it would have been obvious to provide, in the prior art as
admitted by appellants, a reinforcing depression of the shape
taught by DeRees with a nonfunneling bottom surface. The
examiner states as motivation the argument that a larger size
depression of the shape suggested by DeRees would add additional
strength to the body panel.
We have carefully reviewed the rejection on appeal in
light of the arguments of the examiner and the appellants. As a
result of this review, we have determined that the applied prior
art does not establish a prima facie case of obviousness with
respect to the claims on appeal. Therefore, the rejection of
these claims is reversed. Our reasons follow.
Appellants’ first argument is that the examiner has
failed to state what constitutes the scope and content of the
Appeal No. 96-1201
Application 08/122,970
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admitted prior art. We disagree with this argument of the
appellants. The examiner has clearly referred to figures 1 and 2
of appellants’ drawing and appellants’ specification pertaining
thereto. This portion of appellants’ disclosure clearly conveys
that frusto-conical depressions are known as reinforcement around
tooling holes in an automotive body panel.
The appellants' second argument is that there is no
teaching or suggestion that would have motivated one of ordinary
skill to combine the collective teachings of DeRees and the
admitted prior art. We are in agreement with this argument of
appellants. The examiner has argued that the motivation for
combining the teaching of DeRees with admitted prior art is that
the larger depressions shown at 120 or 112 in DeRees would add
additional strength when used around the tooling hole 14 of
appellants’ admitted prior art. The examiner considers that such
shapes as 120 and 112 in DeRees would inherently not funnel paint
and therefore eliminate runs or drips. The examiners states that
nonfunneling comes along with the larger depression added for
strength as "free for the ride". We disagree with the examiner's
rationale for three reasons.
First of all, the examiner has offered no evidence or
reasonable basis for the assumption that a larger depression
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Application 08/122,970
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would necessarily add additional strength. This assumption is
not supported by any evidence adduced by the examiner. It is an
additional assumption on the examiner's part that added strength
is desirable or necessary. Furthermore, it might be expected
that a larger depression would have other adverse consequences.
Secondly, the disclosure of DeRees is actually related
to fabricating beams or rails out of sheet metal, and the
combined teachings of the admitted prior art and DeRees do not
suggest using the configurations disclosed in DeRees on vehicle
body panels as opposed to beams.
Thirdly, we are of the view that the examiner's
combination of references is based on hindsight, particularly,
inasmuch as the examiner has picked depression shapes 112 and 120
of DeRees while disregarding DeRees’ other disclosure of
additional reinforcement shapes. We note that the configuration
shown at 112 in DeRees would prevent funneling in only half of
the occurrences, for when the point of the configuration 112 is
facing downwardly, the configuration actually increases
funneling.
Since DeRees is completely silent with respect to any
teaching or suggestion regarding eliminating paint drips or runs,
and the examiner has chosen from all the reinforcement shapes of
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Application 08/122,970
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DeRees, only the shapes that would eliminate funneling, we must
conclude that the examiner’s selection of the shapes in DeRees
results only from a hindsight review of appellants’ own
disclosure. It is impermissible to use the claimed invention as
an instruction manual or "template" to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious. In re Gorman, 933 F.2d 982, 987, 18 USPQ
1885, 1988 (Fed. Cir. 1991). Our reviewing court has previously
stated that one cannot use hindsight reconstruction to pick and
choose among isolated disclosures in the prior art to deprecate
the claimed invention. In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992).
The rejection of claims on appeal is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 96-1201
Application 08/122,970
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WILLIAM F. PATE, III )
Administrative Patent Judge )
Daniel M. Stock
Ford Motor Company
Suite 911, Parklane Towers East
Dearborn, MI 48126
Appeal No. 96-1201
Application 08/122,970
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