Ex Parte BOBBA et al

Patent Trial and Appeal Board

Nov 9, 2017

13288298 (P.T.A.B. Nov. 9, 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.
13/288,298 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.
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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
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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.
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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
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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
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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.
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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.
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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.
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§ 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.
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§ 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.
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§ 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
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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:
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(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
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