Ex Parte Boland

Patent Trial and Appeal Board

Sep 30, 2016

12297945 (P.T.A.B. Sep. 30, 2016)

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.
12/297,945 06/03/2009 Xavier Boland 710290-00031 2915
59582 7590 09/30/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
HONG, HENRY Y
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
09/30/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XAVIER BOLAND
____________

Appeal 2015-001507
Application 12/297,9451
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–4, 11–15, 19, and 20. Appeal Br. 3. Claims 5–
10 and 16–18 have been withdrawn. See id. at 3, 23–26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellant, Federal-Mogul S.A. is the real party in
interest. Appeal Br. 3.
Appeal 2015-001507
Application 12/297,945

2
Claimed Subject Matter
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below, with some paragraphing added, is illustrative of the
subject matter on appeal.
1. A windscreen wiper device comprising
an elastic, elongated carrier element, as well as an
elongated wiper blade of a flexible material, which can be placed
in abutment with a windscreen to be wiped, which wiper blade
includes opposing longitudinal grooves on its longitudinal sides,
in which grooves spaced-apart longitudinal strips of the carrier
element are disposed, wherein neighbouring ends of said
longitudinal strips are interconnected by a respective connecting
piece,
which windscreen wiper device comprises
a connecting device for an oscillating arm,
a joint part being detachably connected to said connecting
device by engaging protrusions of said connecting device at a
pivot axis in recesses provided in said joint part,
said protrusions being formed as one piece with said
connecting device and having outer bearing surfaces, and
wherein said protrusions extend outwardly on either
side of said connecting device are provided with co-axial
through holes having inner bearing surfaces to present an
axially extending opening across said connecting device
for receiving a transverse pin.

Rejections
I. Claims 1–4, 11–15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fink et al. (US 2006/0117515 A1, pub. June 8,
2006, hereinafter “Fink”) and Nacamuli (US 2002/0002755 A1, pub.
Jan. 10, 2002).
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Application 12/297,945

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II. Claims 1–4, 11–15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fink and Journee et al. (FR 2801551 A1, pub.
June 1, 2001, hereinafter “Journee”).

ANALYSIS
Rejection I
The Appellant argues that combining Fink’s connecting device (slide
element 22) and bolt 36 into a one piece would render the resulting piece
unable to be manufactured. Reply Br. 2–5; see also Appeal Br. 8–9.
However, as pointed out by the Examiner, Fink discloses an embodiment in
Figure 11, which “teaches that the protrusions can be formed as one piece
with said connecting device (paragraph 0024 and 0073; two hinge pins
which project with their ends from the slide element/connecting element;
pins made in one piece with the slide element).” Ans. 3 (emphasis added).
The Appellant acknowledges the disclosure associated with Figure 11, but
persists that such an embodiment is unable to be manufactured and asserts
that the teaching associated with Fink’s Figure 11 is not enabled. See Reply
Br. 2–5. The Appellant’s argument is not persuasive.
At the outset, we note that that there is a presumption that a patent is
valid (Ans. 3, 19), and within that presumption is a presumption of
operability. See 35 U.S.C. § 282, MPEP § 716.07; see also Metropolitan
Eng. Co. v. Coe, 78 F.2d 199 (D.C. Cir. 1935). We determine that the
Appellant’s argument does not overcome the presumption of operability of
Fink’s embodiments, particularly that of Figure 11. Notably, the Appellant’s
argument of non-enablement of Figure 11 is premised on the use of bolt 38
being made of a one piece construction with Fink’s connecting device (slide
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Application 12/297,945

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element 22). See Reply Br. 2–5. However, the Examiner does not indicate
that bolt 38 would be constructed in one-piece with Fink’s connecting device
(slide element 22). See Ans. 3, 9. Rather, the Examiner points to “two
hinge pins,” which are described in Fink’s paragraph 73 as bearing pins 88,
as constructed in one-piece with Fink’s connecting device (slide element
22). See id. The Appellant’s argument does not suggest that bearing pins 88
cannot be of a one piece construction with Fink’s connecting device (slide
element 22), and as such, the Appellant’s argument is not persuasive.
The Appellant argues that the Examiner’s reasoning for combining the
teachings of Fink and Nacamuli is based on impermissible hindsight.
Appeal Br. 10–12. The Appellant’s argument is directed to the Examiner’s
conclusion that
it would have been obvious to a person having ordinary skill in
the art . . . to modify the connecting device of Fink to incorporate
the protrusions with through holes of Nacamuli for the purpose
of providing connection joints for additional windscreen wiper
components (abstract; for coupling and articulation between two
arcs).
Ans. 3. We determine that the Examiner’s conclusion articulates reasoning
with some rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) (cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). The Appellant supports the
argument concerning impermissible hindsight by asserting that Fink’s
connecting device 22 and Nacamuli’s intermediate piece 32 should perform
similar functions. See Appeal Br. 10–11. The Appellant’s argument is not
persuasive because Fink’s connecting device 22 and Nacamuli’s
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Application 12/297,945

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intermediate piece 32 do not have to perform similar functions for the
Examiner’s rejection to be adequately supported. Additionally, the
Appellant asserts that Fink and Nacamuli fail to teach a “connecting device[]
capable of attachment with both bayonet-style and side pin-style wiper
arms.” See Appeal Br. 12. However, claim 1 does not require a “connecting
device[] capable of attachment with both bayonet-style and side pin-style
wiper arms,” and as such, the Appellant’s assertion is not persuasive. See
Ans. 9.
The Appellant contends that Nacamuli’s intermediate piece is not
equivalent to the connecting device of claim 1, which “is ‘for an oscillating
arm’; detachably support[ing] a joint part; and has inner and outer bearing
surfaces.” Reply Br. 5; see also Appeal Br. 10–11. The Appellant’s
contention is not persuasive because, as pointed out by the Examiner, “Fink
discloses all the essential features of the invention except for the protrusions
having a through hole which forms the inner bearing surface” and
“Nacamuli is relied upon to teach the through hole and inner bearing
surface.” Ans. 9. As such, the Appellant does not argue persuasively that
the Examiner’s findings particular to Nacamuli are inadequately supported.
The Appellant contends that the wiper device of claim 1 provides new
and unexpected results by having “the ability of the connecting device of
claim 1 to connect with such a pin-style wiper arm.” Reply Br. 9; see also
Appeal Br. 12, 13. The Appellant’s contention is not persuasive. “The
question whether an applicant made a showing of unexpected results is one
of fact.” In re Soni, 54 F.3d 746, 749 (Fed. Cir. 1995). “[W]hen an
applicant demonstrates substantially improved results . . . and states that the
results were unexpected, this should suffice to establish unexpected results in
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Application 12/297,945

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the absence of evidence to the contrary.” Id. at 751. However, as pointed
out by the Examiner, the Appellant does not offer evidence to support the
contention the results are new and unexpected. Ans. 10. Additionally, the
alleged ability that is new and unexpected is not recited in claim 1.
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief and the Reply Brief, and have determined that
they are unpersuasive of Examiner error. Thus, we sustain the rejection of
claim 1 as unpatentable over Fink and Nacamuli. The Appellant does not
present any separate arguments for claims 2–4 and 11–15 apart from
claim 1. Appeal Br. 14. Therefore, we sustain the rejection of claims 2–4
and 11–15 as unpatentable over Fink and Nacamuli.
Turning to the rejection of claim 19, we note that independent
claim 19 includes similar limitations as independent claim 1 (Appeal Br.,
Claims App.) and the Examiner’s rejection of claim 19 is similar to that of
claim 1 (see Ans. 4–5). The Appellant relies on arguments provided for
claim 1 for claim 19. See Appeal Br. 14. As such, for similar reasons as
discussed above, we sustain the rejection of claim 19 as unpatentable over
Fink and Nacamuli. We also note that claim 20 depends from claim 1
(Appeal Br., Claims App.) and that the Appellant does not advance further
arguments for the rejection of claim 20 apart from claim 1 (Appeal Br. 14).2
Therefore, we sustain the rejection of claim 20 as unpatentable over Fink
and Nacamuli.

2 The Appellant mistakenly argues claim 20 as dependent on claim 19,
rather than claim 1. See Appeal Br. 14, Reply Br. 10.
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Application 12/297,945

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Rejection II
Our affirmance of the rejection of claims 1–4, 11–15, 19, and 20 on
one prior art ground specified by the Examiner, namely, under § 103(a) as
unpatentable over Fink and Nacamuli constitutes a general affirmance of the
decision of the Examiner on these claims. 37 C.F.R. § 41.50(a). We do not
reach the rejection of claims 1–4, 11–15, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Fink and Journee.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–4, 11–15,
19, and 20.
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)(iv).

AFFIRMED