11001772 (B.P.A.I. Jan. 31, 2011)

Ex Parte Berger et al

Board of Patent Appeals and InterferencesJan 31, 2011

11001772 (B.P.A.I. Jan. 31, 2011)

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. 11/001,772 12/02/2004 Johann Berger 8358-000014/CO 5828 27572 7590 01/31/2011 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 EXAMINER AFTERGUT, JEFF H ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 01/31/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHANN BERGER, HOLGER SAINT-DENIS, NORBERT HUBER, and JONG RUSCHULTE ____________ Appeal 2010-002189 Application 11/001,772 Technology Center 1700 ___________ Before CHARLES F. WARREN, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 8-12, 14-16, 19, 22-24, 27-31, and 34-38. An 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002189 Application 11/001,772 2 oral hearing was held January 12, 2011. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 8 is illustrative of the subject matter on appeal: 8. A method of producing an airbag comprising the steps of: (a) weaving air bag fabric in a loose density manner on a weaving machine controlled particularly by a Jacquard device while weaving two plies facing each other to substantially enclose at least one chamber operably filled with gas, the plies having outwardly facing surfaces, such that the plies define outer and inner highly permeable structure of the airbag; and (b) hot rolling at least one thermoplastic material comprising: a film, a coating, a laminate, and a covering layer, on the surfaces for strengthening the fabric airbag, while the hot rolling flattens keying points in the fabric by pressure in forming a larger contact area and smoother surface for the material. Independent claims 12 and 28 contain subject matter similar to that in dispute as in claim 8, namely, hot rolling a thermoplastic material on the airbag surfaces and flattening portions of the airbag (e.g., “keying points 2” as described in Spec. para. [0016]). Each of claims 12 and 28 also explicitly claim a “one-piece woven airbag” and a fluorinating step. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a)2: 2 The Examiner clarified the grounds of rejection with respect to claims 16, 17, and 36 (Ans. 2-3) which Appellants do not dispute (see generally Reply Br.). Appeal 2010-002189 Application 11/001,772 3 1) claims 8, 10, 29, 30, and 34 as unpatentable over the combined prior art of Keshavaraj3, with either of Nishimura4, or Thornton5; 2) claim 9 as unpatentable over the combined prior art of Keshavaraj, with either of Nishimura or Thornton, and either one of Shigeta6 or JP 0897; 3) claim 31 as unpatentable over the combined prior art of Keshavaraj, with either of Nishimura or Thornton, and any one of JP 7218, JP 9329, or JP 16010; 4) claim 35 as unpatentable over the combined prior art Sollars, Keshavaraj, with either of Nishimura or Thornton, either one of Shigeta or JP 089, and any one of Boultinghouse11, Brant12, or Bieschenk13; 5) claim 36 as unpatentable over the combined prior art of Keshavaraj, with either of Nishimura or Thornton, and Sollars14; 6) claims 11, 12, 14 ,15, 19, 22-24 and 28 as unpatentable over the combined prior art of Sollars, Keshavaraj, with either of Nishimura or Thornton, Takahashi15, and JP 83016; 3 US 6,294,487 B1, issued Sep. 25, 2001. 4 US 5,296,278 issued Mar. 22, 1994. 5 US 4,977,016 issued Dec. 11, 1990. 6 US 5,302,432 issued Apr. 12, 1994. 7 JP H06-305089 published Nov. 1, 1994. 8 JP H08-134721 published May 28, 1996. 9 JP H8-176932 published Jul. 9, 1996. 10 JP 08-158160 published Jun. 18, 1996. 11 US 4,296,151 issued Oct. 20, 1981. 12 US 5,225,257 issued Jul. 6, 1993. 13 US 4,743,419 issued May 10, 1988. 14 US 6,220,309 B1 issued Apr. 24, 2001. 15 US 5,240,765 issued Aug. 31, 1993. 16 JP S59-218830 published Dec. 10, 1984. Appeal 2010-002189 Application 11/001,772 4 7) claims 16 and 27 as unpatentable over the combined prior art Sollars, Keshavaraj, either one of Nishimura or Thornton, Takahashi, and JP 830, with either one of JP 721, JP 932, or JP 160; 8) claims 37 and 38 as unpatentable over the combined prior art of Sollars, Keshavaraj, either one of Nishimura or Thornton, Takahashi, and JP 830 and Kreuzer17. MAIN ISSUES ON APPEAL Did the Examiner reversibly err in determining that the claimed methods of producing an airbag of independent claims 1, 8, and 28 would have been obvious over the applied combined prior art, because, as alleged by Appellants, a) there is no reason to combine the teachings of either Nishimura or Thornton with Keshavaraj (App. Br. 13-15; this argument applies to all of claims 8, 12, and 28); b) Keshavaraj does not explicitly teach applying the material to multiple surfaces of an airbag (Ans. 13); c) JP 830 as applied to claims 8 and 28 is nonanalogous art (App. Br. 15); d) Sollars, as applied to claims 12 and 28, is not combinable with Keshavaraj, and either of Nishimura or Thornton (App. Br. 16)? We answer all of these questions in the negative. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the 17 US 7,007,974 B2 issued Mar. 7, 2006. Appeal 2010-002189 Application 11/001,772 5 improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) ANALYSIS with Factual Findings We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellants’ arguments that Keshavaraj does not teach applying thermoplastic material to multiple outward facing surfaces and that there is no apparent reason to combine this reference with either of Nishimura or Thornton (App. Br. 13-15) are unavailing for all of the reasons aptly pointed out by the Examiner (Ans. 22-32). Specifically, we agree with the Examiner that Keshavaraj exemplifies the known use and benefits of applying a thermoplastic laminate coating to an airbag via a heated nip roll (Ans. 24- 25), while each of Nishimura and Thornton teaches the known use of a Appeal 2010-002189 Application 11/001,772 6 heated pressurized roller nip to reduce the permeability of an airbag fabric. (id.). The Examiner’s position that an ordinary artisan would have appreciated that an air bag may have two outwardly facing surfaces as formed and thus it would have been obvious to apply the film to both outwardly facing surfaces is also reasonable (e.g., Ans. 5). The ordinary artisan would have also appreciated the need to use sufficient pressure in the heated roll nip of Keshavaraj to provide a secure laminate structure. It is axiomatic that during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 8 only recites functional language, that is, that the hot rolling “flattens keying points” (see Fig. 1 of Appellants’ Specification, which depicts keying points 2). Notably, neither Appellants’ claims nor Specification provides any specific examples or ranges of either pressure or temperature (see generally Spec.). Thus, this functional language must be viewed in its broadest reasonable light. The Examiner’s position that the ordinary artisan would have appreciated that the heated roll nip of Keshavaraj necessarily will apply some pressure is reasonable. Indeed, Appellants do not dispute this point (App. Br.; Reply Br. generally). Furthermore, the plain meaning of “nip” means to “compress tightly between two surfaces or points; pinch; bite”.18 Accordingly, the Examiner’s position that the use of sufficient pressure in Keshavaraj to flatten keying points would have been obvious in light of the known use of sufficient pressure to reduce air permeability and smooth airbag fabrics, such as exemplified in either of Nishimura or Thornton, is also reasonable. 18 Webster’s College Dictionary, Random House, 1999 Appeal 2010-002189 Application 11/001,772 7 Appellants’ argument that Thornton teaches away because it is drawn to an uncoated fabric (App. Br. 14-15; Reply Br. 10) is unpersuasive. As pointed out by the Examiner, it would have been obvious for the artisan to have used two known techniques (the pressure nip technique of Thornton to reduce fabric permeability with the pressure nip of Keshavaraj to laminate the film to the airbag) to improve air bag properties (e.g., Ans. 17). The Examiner’s position that the use of “a one-piece woven airbag” as required in claims 12 and 28 would have been prima facie obvious is also reasonable in light of Sollars’ explicit teaching of applying “any standard coating” in “any standard method and in any standard amount on the fabric surface” of a one piece woven airbag (Sollars, col. 5, ll. 60-65; Ans. 11). Appellants’ argument that JP 830 is non-analogous art is not persuasive for the reason as articulated by the Examiner (Ans. 19-21)19. It is well established that “‘[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “In other words, ‘familiar items may have obvious uses beyond their primary purposes.”’ In re ICON Health and Fitness, Inc, 496 F.3d 1375, 1380-1 (Fed. Cir. 2007) (quoting KSR Int'l Co., 550 U.S. at 402). We therefore fully agree with the Examiner that Takahashi provides evidence that the artisan recognized that stickiness of a 19 “The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection." In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Appeal 2010-002189 Application 11/001,772 8 folded airbag was a problem, and in light of this problem recognition, it would have been obvious to use a known solution of fluorinating the silicon rubber as exemplified in JP 830 and apply that solution to the silicone rubber of an airbag (Ans. 12-13). Furthermore, Appellants have not provided any persuasive technical reasoning or evidence to refute the Examiner’s determination that the ordinary artisan would have appreciated that the known use of high pressure for air bag fabric treatment, as taught in Nishimura or Thornton, would also predictably function as in the heated nip roll of Keshavaraj as applied to a conventional one-piece woven airbag. Under these circumstances, Appellants have not shown reversible error in the Examiner’s determination that the subject matter of independent claims 8, 12, and 28 would have been prima facie obvious over the combined teachings of the applied prior art references. Appellants’ conclusory argument that applying six references to reject dependent claims 16 and 27 “strains logic” (Reply Br. 13; App. Br. 21) is unpersuasive, since reliance on a large number of references in a rejection, does not per se weigh against the obviousness of a claimed invention. In re Gorman, 933 F. 2d 982 (Fed. Cir. 1991). Appellants’ arguments regarding other claims presented in the Brief, (App. Br. 17-28) are unavailing for the reasons provided by the Examiner (Ans. 21-28).20 20 Further, Appellants’ argument that Kreuzer is not available as prior art in the rejection of dependent claims 37 and 38 is unpersuasive (see, e.g. App. Br. 8; Ans. 27-28) since the foreign priority date of the instant application was not perfected in a timely fashion. We have not considered Appellants’ proffer (after the Answer) of the certified English translation of Appellants’ Appeal 2010-002189 Application 11/001,772 9 For the reasons stated above and in the Answer, we sustain all of the § 103 rejections of the appealed claims21. The decision of the Examiner is affirmed. 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). AFFIRMED sld HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 priority document since the Examiner has not had an opportunity to evaluate this untimely submission. 21 Only those arguments actually made on the record by Appellants have been considered in this decision. Arguments which could have been made but that Appellants chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).