Ex Parte Boland

Patent Trial and Appeal Board

Dec 19, 2016

12666901 (P.T.A.B. Dec. 19, 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.
12/666,901 06/14/2010 Xavier Boland 710290-00044 2753
59582 7590 12/19/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
MATTEI, BRIAN DAVID
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
12/19/2016 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 2014-009118
Application 12/666,901
Technology Center 3600
____________________

Before: ANNETTE R. REIMERS, THOMAS F. SMEGAL, and GORDON
D. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1, 3, 4, and 6–16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Federal-Mogul
Corporation. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a windscreen wiper device. Claim 1, the
only independent claim, is reproduced below and illustrates the claimed
subject matter:
1. A windscreen wiper device comprising an elastic, elongated
carrier element, as well as a two piece elongated wiper blade
including an upper holding part and an elongated lower wiping
part of a flexible material which can be placed in abutment with
a windscreen to be wiped, wherein said upper holding part
includes at least one longitudinal groove, in which groove a
longitudinal strip of the carrier element is disposed, which
windscreen wiper device comprises a connecting device for an
oscillating arm, wherein said longitudinal groove has a closed
circumference along its length and wherein said connecting
device is welded, soldered or glued to only said upper holding
part of said wiper blade.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee
Nacamuli
Jollec
Cerdan
US 2004/0181894 A1
US 2006/0037167 A1
US 2010/0275403 A1
FR 2,891,227
Sept. 23, 2004
Feb. 23, 2006
Nov. 4, 2010
Sept. 23, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerdan and Lee.
Claim 6–8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerdan, Lee, and Jollec.
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Claims 9–12 and 16 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Cerdan, Lee, and Nacamuli.
Claim 13–15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerdan, Lee, Nacamuli, and Jollec.

OPINION
Claims 1, 3, and 4.
Appellant argues claims 1 and 3 together. Appeal Br. 7–12. We
select claim 1 as representative, and claim 3 stands or falls with claim 1. 37
C.F.R. § 41.37(c)(1)(iv)
In seeking reversal of the rejection of claim 1, Appellant argues that
Cerdan does not teach welding, soldering, or gluing between the connecting
device 8 and the holding part 2 shown in Cerdan, Figure 1. Appeal Br. 8.
Appellant further argues that Cerdan does not teach any sort of bonding
connection between the holding part 2 and a connecting device 8. Id.
Appellant further contends that “the welding connection taught in Lee
involves neither a connecting device nor a wiper blade, the very two
components which claim 1 recites as being ‘welded, soldered or glued’
together.” Id. Appellant adds that even if welding is suggested, it would
only suggest welding the two halves of Cerdan’s connecting device to each
other, not to the wiper blade. Appeal Br. 12. Because neither reference
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teaches welding together the very parts claimed in Claim 1, Appellant
argues, the rejection of claim 1 should be reversed.2
In the Examiner’s Answer, it is conceded that Lee does not
specifically disclose the method of how the central connection device 11
(Cerdan Fig. 2) is attached to the holding part 3. Ans. 3–4. However, Lee
does specifically teach that welding two members together in the windscreen
wiper art is known in order to make a more secure connection. Ans. 4,
citing Lee ¶ 14.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Appellant’s first argument does not address the
combination asserted by the Examiner to be obvious, but instead attacks the
references separately. For this reason it is not persuasive of Examiner error.
Appellant’s reply makes the same argument, and likewise does not persuade
us of error. Reply 4–5.
Appellant also argues that combining Cerdan with Lee can only be the
result of hindsight reconstruction because “neither Cerdan nor Lee teaches a
direct bonding connection between . . . the connecting device and the wiper
blade, and it is not readily apparent from either of these references that such
bonding connection like welding would even be desirable.” Appeal Br. 11.

2 Appellants also argue the Examiner is mistaken in asserting that Lee
teaches welding “a connecting device” to “an upper holding part of a two
piece wiper blade.” Reply 3. We do not reach this issue in light of the
Examiner’s broader finding that Lee teaches welding two members together
in the windscreen art to make a more secure connection. Ans. 4.
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Appellant makes the same argument in abbreviated form in his Reply.
Reply 4–5. The Examiner responds:
it must be recognized that any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight
reasoning. But so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge
gleaned only from the appellant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392
(CCPA 1971).
Ans. 4. After pointing out that Cerdan shows securing the connecting device
to the upper holding part with teeth and that Lee teaches a welded
connection of parts in a wiper blade for a more secure connection (Ans. 4–
5), the Examiner concludes that “substituting the frictional teeth connection
between the connecting device and the upper holding part of Cerdan with the
more secure welded connection of Lee would have been obvious to one of
ordinary skill in the art at the time of the invention without any knowledge
gleaned only from the appellant’s disclosure.” Ans. 5.
“[A] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l. v. Teleflex, 550 U.S. 398, 421 (2007). The
Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or
in another. If a person of ordinary skill in the art
can implement a predictable variation, and would
see the benefit of doing so, § 103 likely bars its
patentability. Moreover,, if a technique has been
used to improve one device, and a person of
ordinary skill in the art would recognize that it
would improve similar devices in the same way,
using the technique is obvious unless its actual
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application is beyond that person’s skill.
Id. at 401. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
We agree with the Examiner that welding the connection device of
Cerdan to the upper holding part is an obvious implementation of a
technique (welding) that improved Lee’s wiper blade to improve the wiper
blade of Cerdan. Appellant does not argue that the result is unpredictable or
that it required any unusually high level of skill to accomplish. Accordingly,
we are not persuaded that the Examiner erroneously used hindsight in
rejecting claim 1.
Appellant argues that claim 4 is patentable over the cited art because it
recites “that the connecting device is connected to a longitudinal horizontal
side of the holding part that faces toward a windscreen to be wiped, i.e., a
lower surface of the holding part.” Appeal Br. 13. He argues that Cerdan
teaches holding the sides and not the bottom of the wiper blade and that
therefore Cerdan “lacks any teachings of a connection between the
connecting device and a lower surface of the holding part as recited in claim
4.” Id. The Examiner responds that Cerdan discloses a connecting device 8
that “wraps around the underside of the upper holding part in figure 1.”
Ans. 5. Appellant’s Reply does not address the Examiner’s Answer on this
point. Because welding is known in the art and the pieces of Cerdan wrap
around to the underside of the blade, we agree with the Examiner that it
would have been obvious to weld those services together. Accordingly, we
are not persuaded the Examiner erred in his rejection of claim 4.
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Claims 6–8.
Claim 6 depends from claim 1 adding that the “connecting device is
welded or soldered to said wiper blade through an ultrasonic welding or
soldering operation.” Appeal Br. 21 (Claims App.). Appellant argues that
while Jollec may teach ultrasonic welding, it does not render this claim
obvious because Jollec teaches ultrasonic welding of longitudinal strips to
the connecting device rather than the wiper blade. Appeal Br. 13–14. The
Examiner answers that “Lee teaches welding the connection between the
connection device and the wiper blade of Cerdan to make it more secure.
Jollec teaches making the weld through the process of ultrasonic welding
[0012].” Answer 5. For further support the Examiner refers to Kotlarski
(US pub. 2001/000-4783) for its showing that ultrasonic welding is a reliable
and economical way to weld the connection device to a wiper support
element, citing paragraph 9. Answer 5. As with Appellant’s argument about
the combination of Cerdan and Lee, we find that the use of an old fastening
technique in place of that shown in Cerdan would of been obvious at the
time of the invention because it was likely to improve the Cerdan device the
same way it improved the Jollec device, and such a substitution is well
within the ordinary skill of the art. See KSR, supra.
Claim 7 depends from claim 1 adding that a polymer material is used
as a soldering material in the ultrasonic weld. See Appeal Br. 21 (Claims
App.). Appellant argues that Jollec would not render the proposed
combination obvious for the same reasons argued in connection with claim
6. Appeal Br. 14. We do not find that reasoning persuasive for the same
reasons it was not persuasive in connection with claim 6.
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Claim 8 is argued patentable for the same reasons that claims 1 and 7
were argued patentable. Id. We do not find those arguments persuasive for
the same reasons that they were not persuasive in connection with claims 1
and 7.
Claims 9–12 and 16.
Appellant makes no separate argument for claim 9, relying on the
arguments made in connection with claim 1. Id. at 15. We therefore affirm
the rejection of claim 9 for the same reasons as claim 1.
Appellant argues that claim 10 was improperly rejected because the
reference relied on, Nacamuli, shows end caps that are merely in contact
with the wiper, and such contact is not the claimed “connection.” Appeal
Br. 15. Appellant also argues that the end caps in Nacamuli are attached to
the carrier 7 by means of openings (unnumbered) in the ends of the carrier
and therefore are not connected to the holding part 6. Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “It is the applicants’ burden
to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997). Here, Appellant has given no special meaning
to the word “connect”. Spec. passim. The end caps (“connecting pieces”) 7
are described as preferably being welded, soldered or glued to the holding
part. Spec. 6. Such an expressed preference is not a sufficient to displace
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the ordinary meaning of “connect”.3 Nacamuli shows tips (end caps) that
surround and engage the ends of his wiper blades. Nacamuli, Figs. 13, 14; ¶
49. We agree with the Examiner that the end caps of Nacamuli are
“connected” to the holding part 6 of Nacamuli. Nor do we find any support
in Nacamuli for Appellant’s claim that the holes in the ends of the carrier 7
are associated with connecting end caps 35 to Nacamuli’s wiper blade, and
even if the end caps do latch onto the holes in the carrier 7, such an
arrangement would still meet the claim terms because the carrier 7 is, in
turn, carried by the holding part 6 of Nacamuli. Accordingly, we have not
been persuaded the Examiner erred in rejection claim 10.
Appellant contends the rejection of claim 11 should be reversed for
the same reasons as claim 10. Appeal Br. 16. For the same reasons as stated
above in connection with claim 10, we are not persuaded that the Examiner
erred in rejecting claim 11.
Appellant argues that claim 12’s recitation that the end caps are
“welded, soldered or glued to said wiper blade” patentability distinguishes
over the art cited. Appeal Br. 16; see also id. at 21 (Claims App.).
Specifically (and in contradiction to its argument in connection with claim
10) Appellant argues “Nacamuli lacks any teachings of the connection
between the connecting pieces in the wiper blade, much less a welded,
soldered or glued connection.” Appeal Br. 16. The Examiner responds that
Lee teaches the welded connections in combination with Cerdan, and that
welding the endcaps of Nacamuli would have been obvious. Ans. 6. As

3 Connect: 1: to join or fasten together usually by something intervening; 2:
to place or establish in relationship. https://www.merriam-
webster.com/dictionary/connect
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discussed above, we agree that the use of welding taught by Lee is an
obvious method to improve the device of Cerdan. For the same reasons,
welding the end caps of Nacamuli would have been obvious, and we are not
persuaded the Examiner erred in rejecting claim 12.
Appellant argues claim 16 is allowable for the same reasons as claim
1. Appeal Br. 16. We therefore affirm the rejection of claim 16 for the same
reasons we affirm the rejection of claim 1.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 4, and
6–16 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). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED