Ex Parte Bobba et alDownload PDFPatent Trial and Appeal BoardNov 9, 201713288298 (P.T.A.B. Nov. 9, 2017) Copy Citation 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. 13/288,298 11/03/2011 SOMASEKHAR VENKAT BOBBA 11PLAS0180-US-NP 2332 23413 7590 11/14/2017 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street CHENEVERT, PAUL A 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 11/14/2017 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOMASEKHAR VENKAT BOBBA, DHANENDRA KUMAR NAGWANSHI, and MATTHEW D. MARKS Appeal 2016-001645 Application 13/288,2981 Technology Center 3600 Before CARL W. WHITEHEAD JR., HUNG H. BUI, and NABEEL U. KHAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action rejecting claims 1—8, 13—18, 20, 22, and 23, all of which are pending on appeal. Claims 9—12, 19, and 21 have been allowed. See Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.2 1 According to Appellants, the real party in interest is SABIC Global Technologies B.V. App. Br. 2. 2 Our Decision refers to Appellants’ Appeal Brief filed May 13, 2015 (“App. Br.”); Examiner’s Answer mailed September 3, 2015 (“Ans.”); Final Office Action mailed January 15, 2015 (“Final Act.”); and original Specification filed November 3, 2011 (“Spec.”). Appeal 2016-001645 Application 13/288,298 STATEMENT OF THE CASE Appellants’ invention relates to “[multi-stage] motor vehicle bumper [energy absorber] systems [shown in Figures IB—1C] capable of absorbing impact energy at different levels.” Spec. 11; Abstract. Figure IB shows a top view of a multi-stage energy absorber (EA) system 10 including a flanged frame 16 and a plurality of crush lobes 18, as reproduced below with additional markings for illustration. As shown in Figure IB, the multi-stage energy absorber (EA) system 10 includes a flanged frame 16 and a plurality of crush lobes 18 protruding therefrom with tunable energy absorption characteristics (e.g., by changing the thickness, employing slots, choice of materials, as well as length of the side and front walls). Spec. 140. Each crush lobe 18 comprises a central slab 12 and slap pairs 14 such that the crush lobe 18 comprises a total of 2i+i slabs. Id. 2 Appeal 2016-001645 Application 13/288,298 Figure 1C shows a cross-sectional side view of the multi-stage energy absorber (EA) system 10 including each crush lobe 18, as reproduced below with additional markings for illustration. As shown in Figure 1C, each crush lobe 18 of the multi-stage energy absorber (EA) system 10 is provided with a second stage, nested slabs 14 arranged in a stepped manner around a first stage, center slab 12. Spec. 140. Claims 1, 20, and 22 are independent. Claim 1 is illustrative of Appellants’ invention, as reproduced below with disputed limitations in italics: 1. A multi-stage energy absorbing system comprising: a thermoplastic flanged frame; and a crush lobe having a proximal base aligned with the flanged frame and a distal end protruding from the flanged frame, wherein the crush lobe comprises a central slab and slab 3 Appeal 2016-001645 Application 13/288,298 pairs such that the crush lobe comprises a total of 2i+1 slabs, wherein i is the number of slab pairs and is greater than or equal to 1; and wherein the central slab has load walls that extend from the base; wherein the slab pairs are disposed on opposite sides of the central slab; and wherein the slabs are disposed in a stepped arrangement and configured to absorb impact energy by collapsing in a telescopic manner with increasing energy level. App. Br. 23 (Claims App.). Examiner’s Rejections3and References (1) Claim 8 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3^4; Ans. 4. (2) Claim 20 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Zander et al. (US 2005/0087997 Al; published Apr. 28, 2005). Id. at 4—5; Ans. 4—5. 3 The Examiner has withdrawn the original rejections of (1) claim 21 under 35 U.S.C. § 102(b)/§ 103(a) as being anticipated or unpatentable over Zander; and (2) claims 9—12 and 19 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zander. Ans. 3. As such, these rejections are now moot, and claims 9—12, 19, and 21 are considered allowable over the cited prior art of record. Separately, the Examiner’s objection to the drawings under 37 C.F.R. § 1.83(a), as correctly identified by the Examiner, is a petitionable issue, and not an appealable issue. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973); In reMindick, 371 F.2d 892, 894 (CCPA 1967); see also Manual of Patent Examining Procedure (“MPEP”) (8th Ed., August 2001) § 1002.02(c), item 3(g) and § 1201. Thus, the relief sought by Appellants would have been properly presented by a petition to the Director under 37 C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, we have not considered Appellants’ arguments regarding the outstanding objection of the drawings. App. Br. 6—7. 4 Appeal 2016-001645 Application 13/288,298 (3) Claims 1—4, 6, 7, 13—16, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zander and Evans et al. (US 7,494,165 B2; issued Feb. 24, 2009). Id. at 5—6; Ans. 5—6. (4) Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zander and Official Notice of “common knowledge.” Id. at 6; Ans. 7. (5) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zander. Id. at 7; Ans. 7. (6) Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zander and Shuler et al. (US 6,994,384 B2; issued Feb. 7, 2006). Id. at 8—9; Ans. 8. ANAFYSIS §112 Rejection of Claim 8 Claim 8 recites: “wherein the system meets 49 C.F.R. Part 581, meets IIHS bumper like barrier impact standard, or meets both 49 C.F.R. Part 581 and IIHS bumper like barrier impact standards, and is rated as pedestrian safe.” The Examiner finds the term “impact standards of 49 C.F.R. Part 581 and IIHS bumper like barrier” is a relative term and, as such, is indefinite because “that locality safety standards change over time and are not proper claim limitations.” Final Act. 3^4. Appellants argue “the impact standards of 49 C.F.R. Part 581 and IIHS bumper like barrier are specific standards which are well known and recognized in the industry” and, as such, “one of ordinary skill in the 5 Appeal 2016-001645 Application 13/288,298 relevant art would understand what is claimed and recognize these standards as definite as of the filing date of the application.” App. Br. 7—8. We agree with Appellants. The standard for indefiniteness is set forth in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986): “A decision on whether a claim is invalid under § 112, 2d % requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” The Specification describes the “disclosed system of energy absorbers for pedestrian safety is capable of meeting pedestrian-safety impact requirements (EEVC, ACEA (Phase II) and GTR), along with the other low- speed vehicle damageability requirements (C.F.R. Part 581, ECE42, IIHS and RCAR) when assembled over the automobile bumper beam.” Spec. 1 50. We agree with Appellants that a skilled artisan would understand the standards and the claim as of the filing date of the application. As such, we do not sustain the Examiner’s § 112, Tf 2, rejection of claim 8. § 102(b) Rejection of Claim 20 based on Zander Claim 20 recites a multi-stage energy absorbing system provide with features shown in Figure 1C, comprising: a thermoplastic base; a first stage extending from the base and defined by a first stage top load wall, a first stage bottom load wall, and a front wall that extends between the first stage top load wall and the first stage bottom load wall; and a second stage extending from the base and defined by a pair of second slabs located adjacent to the first stage, wherein 6 Appeal 2016-001645 Application 13/288,298 one of the second slabs is defined by a portion of the first stage top load wall, a second stage top load wall, and a second stage front wall that extends between the portion of the first stage top load wall and the second stage top load wall, and wherein the other second slab is defined by a portion of the first stage bottom load wall, a second stage bottom load wall, and another second stage front wall that extends between the portion of the first stage bottom load wall and the second stage bottom load wall; wherein the first stage extends from the base a greater distance than the second stage; and wherein the second stage is configured to absorb a greater amount of energy than the first stage. The Examiner finds Zander’s Figure 4 discloses all limitations of claim 20. Final Act. 2—3. Zander’s Figure 4 is reproduced below with additional markings for illustration. Zander’s Figure 4 shows a cross-sectional side view of an energy absorbing bumper for a vehicle. 7 Appeal 2016-001645 Application 13/288,298 Appellants contend Zander does not disclose a multi-stage energy absorber wherein: (1) “the first stage extends from the base a greater distance than the second stage” and (2) “the second stage is configured to absorb a greater amount of energy than the first stage” as recited in claim 20. App. Br. 8—10. According to Appellants, “Zander FIG. 4 is not drawn to scale and therefore cannot be relied upon to disclose such subtle differences” and “nothing is mentioned in Zander whatsoever regarding a second stage configured to absorb more energy than a first stage.” Id. at 10. As such, Appellants argue “the Examiner’s particular interpretations of Zander appear to be based upon impermissible hindsight reasoning.” Id. In response, the Examiner finds Zander teaches that the foam member 24 can be optimized with different weights, different wall thicknesses, and energy absorbing capability. Ans. 4—5 (citing Zander 121). Zander also teaches the first stage’s impact face “E” as shown in Figure 4, has a “substantially uniform” face, is substantially free of partial cavities, and “can vary between a planar face, a set of planar faces, a curved face [as shown in Zander’s Figure 4], or a combination of these.” Id. at 4 (citing Zander 121) (emphasis omitted). Based on the different wall thicknesses of Zander’s foam member 24 used to optimize the weight and energy absorbing capability, and the difference between planar and curved impact face, shown in Figure 4, the Examiner concludes that “[a] curved . . . impact point in front of one of the cavities followed by more-rearwardly impact points in front of the other two cavities” would meet the disputed limitation “the second stage is configured to absorb a greater amount of energy than the first stage” as recited in claim 20. Id. at 5. 8 Appeal 2016-001645 Application 13/288,298 We do not agree with the Examiner. At the outset, we note that anticipation is separate and distinct from obviousness. As such, Appellants’ reference to an impermissible hindsight reasoning is misplaced. We also recognize that claim 20 is written broader than Appellants’ actual embodiments disclosed in Figures 1A—1C. Nevertheless, a claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Based on the different wall thicknesses of Zander’s foam member 24 used to optimize the weight and energy absorbing capability, and the difference between planar and curved impact face, shown in Figure 4, we find a skilled artisan would be able to configure “the second stage ... to absorb a greater amount of energy than the first stage” as recited in claim 20. However, we agree with Appellants that Zander does not disclose the disputed limitation “the second stage is configured to absorb a greater amount of energy than the first stage” as recited in claim 20 For these reasons, we do not sustain the Examiner’s anticipation rejection of claim 20.4 4 In the event of further prosecution, we recommend the Examiner to reject claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Zander for reasons discussed above. 9 Appeal 2016-001645 Application 13/288,298 § 103(a) Rejection of Claims / 4, 6, 7, 13 16, 22, and 23 based on Zander and Evans In support of the rejection of independent claim 1, and similarly, claim 22, the Examiner acknowledges Zander’s multi-stage energy absorbing system does not have “a flanged frame wherein the crush lobe has a proximal base aligned with the flanged frame.” Final Act. 5. The Examiner relies on Evans for teaching the missing feature to support the conclusion of obviousness. Id. at 5 (citing Evans, Figs. 13—16). Appellants dispute the Examiner’s factual findings regarding Zander. In particular, Appellants argue Zander does not teach the disputed limitations: (1) “wherein the crush lobe comprises a central slab and slab pairs” and (2) “wherein the slabs are disposed in a stepped arrangement and configured to absorb impact energy by collapsing in a telescopic manner with increasing energy level” as recited in independent claim 1. App. Br. 13-16. At the outset, we note that independent claim 22 is broader than claim 1, and does not recite the disputed limitations Appellants argue. As such, the Examiner’s obviousness rejection of claim 22 is summarily affirmed. With respect to independent claim 1, we do not find Appellants’ arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants’ arguments supported by evidence. Ans. 5—6. As such, we adopt the Examiner’s findings and explanations provided therein. Id. Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 1 and 22 and their respective dependent claims 2-4, 6, 7, 13—16, and 23, which Appellants do not argue separately. App. Br. 16. 10 Appeal 2016-001645 Application 13/288,298 § 103(a) Rejection of Claims 5 and 17 based on Zander Claim 5 depends directly from independent claim 1, and further recites: wherein the slabs have a wall thickness defined according to formula (II): Tt« T><, < << Tj (II) wherein: i is the number of slab pairs T is the wall thickness of a center slab; Ti is the wall thickness of a first zth slab pair; T2 is the wall thickness a second zth slab pair; and Ti is the wall thickness of the last ith slab pair. Claim 17 also depends from claim 1, and recites wherein the wall thickness of each z'th slab pair increases as a function of i such that the wall thickness of a first slab pair (/= 1) is less than a wall thickness of a second slab pair (i= 2), and wherein a central slab wall thickness is less than the first slab pair wall thickness. The Examiner characterizes these features are “common knowledge” to those skilled in the art. Final Act. 6. Appellants dispute the Examiner’s characterization and request the Examiner to provide evidence pursuant to MPEP § 2144.03 to support such characterization. App. Br. 17—18. As correctly recognized by Appellants, the Examiner must provide, and has not provided, any specific factual findings predicated on sound technical and scientific reasoning to support the characterization of common knowledge. For this reason, we do not sustain the Examiner’s obviousness rejection of claims 5 and 17. 11 Appeal 2016-001645 Application 13/288,298 § 103(a) Rejection of Claim 8 based on Zander and Official Notice Claim 8 depends directly from independent claim 1, and further recites: “wherein the system meets 49 C.F.R. Part 581, meets IIHS bumper like barrier impact standard, or meets both 49 C.F.R. Part 581 and IIHS bumper like barrier impact standards, and is rated as pedestrian safe.” The Examiner further takes Official Notice: that selecting the proper pedestrian protection to meet current (or back in 2011) pedestrian protection standards is an obvious design choice, which was notoriously well known to a person having ordinary skill in the art at the time of the invention to “tune” the impact protection in order to meet common pedestrian protection standards. Final Act. 7. Appellants dispute the Examiner’s taking of Official Notice and request the Examiner to provide evidence pursuant to MPEP § 2144.03 to support such an assertion. App. Br. 18—19. We disagree with Appellants, however. In contrast to claims 5 and 17, claim 8 simply refers to well-known impact standards that do not require documentary evidence. Any energy absorbing system designs, whether today or back in 2011, are expected to meet these common pedestrian protection standards. For this reason, we sustain the Examiner’s obviousness rejection of claim 8. § 103(a) Rejection of Claim 18 based on Zander and Shuler Claim 18 depends directly from independent claim 1, and further recites: “wherein the central slab has a top load wall and a bottom load wall, and wherein at least one of the top load wall and the bottom load wall 12 Appeal 2016-001645 Application 13/288,298 comprises a plurality of slots extending from a central slab front wall to a first slab pair front wall.” The Examiner finds Shuler teaches “at least one of the top load wall and the bottom load wall comprises a plurality of slots extending from a central slab front wall to a first slab pair front wall” to support the conclusion of obviousness. Final Act. 8—9. However, the Examiner does not provide any evidence to support this finding. For this reason alone, we do not sustain the Examiner’s obviousness rejection of claim 18. CONCLUSION On the record before us, we conclude Appellants have demonstrated the Examiner erred in rejecting: (1) claim 20 under 35 U.S.C. § 102(b) based on Zander; (2) claim 8 under 35 U.S.C. § 112, second paragraph; (3) claims 5 and 17 under 35 U.S.C. § 103(a) based on Zander; and (4) claim 18 under 35 U.S.C. § 103(a) based on Zander and Shuler. However, we conclude Appellants have not demonstrated the Examiner erred in rejecting: (1) claims 1—4, 6, 7, 13—16, 22, and 23 under 35 U.S.C. § 103(a) based on Zander and Evans; and (2) claim 8 under 35 U.S.C. § 103(a) based on Zander and common knowledge. DECISION As such, we reverse the Examiner’s final rejection of: (1) claim 8 under 35 U.S.C. § 112, second paragraph; (2) claim 20 under 35 U.S.C. § 102(b) based on Zander; (3) claims 5 and 17 under 35 U.S.C. § 103(a) based on Zander; and (4) claim 18 under 35 U.S.C. § 103(a) based on Zander and Shuler. However, we affirm the Examiner’s final rejection of: 13 Appeal 2016-001645 Application 13/288,298 (1) claims 1—4, 6, 7, 13—16, 22, and 23 under 35 U.S.C. § 103(a) based on Zander and Evans; and (2) claim 8 under 35 U.S.C. § 103(a) based on Zander and common knowledge. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 14 Copy with citationCopy as parenthetical citation