Ex Parte Brancaleone et al

Patent Trial and Appeal Board

Feb 28, 2013

11307360 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT BRANCALEONE and MICHAEL KOZAK
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Appeal 2010-004653
Application 11/307,360
Technology Center 3600
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Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as being 2
unpatentable over Nozaki (US 2001/0015035 A1, publ. Aug. 23, 2001); 3
Nishikawa (US 4,969,295, issued Nov. 13, 1990); and Goto 4

1 The Appellants identify the real party in interest as Ford Global
Technologies, LLC of Dearborn, Michigan.
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(US 2001/0001917 A1, publ. May 31, 2001).2 We have jurisdiction under 1
35 U.S.C. § 6(b). 2
We REVERSE. 3
Claims 1, 10 and 19 are independent. Claim 1 recites: 4
1. A glass run mounting assembly for a 5
vehicle door, comprising: 6
an elongated stepped bracket; 7
an elongated plate attached to said elongated 8
stepped bracket; and 9
a channel defined by said elongated stepped 10
bracket and said elongated plate; 11
said channel receiving a glass run retention 12
member; 13
said elongated plate having an outer surface, 14
an inner surface, and a wall thickness 15
therebetween; 16
said elongated plate extending unilaterally 17
across said elongated stepped bracket and 18
offsetting an appliqué from said glass pane 19
substantially by said wall thickness. 20
21
Claim 10 also recites a glass run mounting assembly for a vehicle 22
door including an elongated stepped bracket and an elongate plate “having 23
an outer surface, an inner surface, and a wall thickness therebetween[,] said 24
elongated plate extending unilaterally across said elongated stepped bracket 25
and offsetting an appliqué from said glass pane substantially by said wall 26
thickness.” Claim 19 recites a glass run mounting assembly for a vehicle 27
door including an elongated bracket; an elongate plate “having an outer 28
surface, an inner surface, and a wall thickness therebetween;” and “an 29

2 On page 2 of the Examiner’s Answer, the Examiner withdrew a
rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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appliqué attached to said outer surface[,] said appliqué offset from said glass 1
pane substantially by one of said wall thickness.” 2
Nozaki describes trim and glass run attachment structures for 3
attachment to the window frames of automobiles. (Nozaki, para. [0014]). 4
Various embodiments of such trim and glass run attachment structures are 5
depicted in the drawing figures of Nozaki, including Figures 1 and 9. In 6
particular, Figures 1 and 2 of Nozaki depict an assembly including an outer 7
panel 16, a door sash 17 and a glass run 20 attached in an attachment groove 8
or channel 17c. (Nozaki, paras. [0038] and [0042]). The Examiner, on page 9
4 of the Examiner’s Answer, particularly cites to Figure 1 of Nozaki as 10
depicting the “mounting assembly of claim 1 . . . where the elongated 11
stepped bracket is reference numeral 17, elongated plate 16, and channel 12
(unnumbered, see below figure 1) for glass run retention member 20 formed 13
by bracket 17 and plate 16.” 14
Nishikawa describes a corner bracket 26 for the front window of an 15
automobile. The corner bracket 26 includes an outer panel 26a and a trim 16
panel 32 provided at the outer face of the outer panel 26a. (Nishikawa, col 17
7, ll. 4-8 and 44-45, and figs. 5 and 6; see also id., col. 5, ll. 12-16 and 43-18
45). The Examiner finds that Nishikawa’s description of the combination of 19
the corner bracket 26 and the trim panel 32 would have suggested placing an 20
appliqué on the outer panel 16 of the trim and glass run attachment structure 21
depicted in Figure 1 of Nozaki “as the appliqué is aesthetically pleasing.” 22
(Ans. 4). The Examiner’s conclusion that one of ordinary skill in the art 23
would have placed an appliqué on the outer panel 16 of the trim and glass 24
run attachment structure depicted in Figure 1 of Nozaki for aesthetic reasons 25
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implies that the appliqué would have been placed on the outer face of the 1
outer panel 16 so as to be visible on the assembled automobile. 2
Claims 1 and 10 recite an elongated plate “offsetting an appliqué from 3
said glass pane substantially by said wall thickness.” (Italics added.) Claim 4
19 similarly recites that the appliqué is “offset from said glass pane 5
substantially by one of said wall thickness.” (Italics added.) The term 6
“substantially” is a term of degree. Since neither the Examiner nor the 7
Appellants suggest any standard for determining what one of ordinary skill 8
in the art might understand by an offset “substantially by said wall 9
thickness,” we turn to the Specification for guidance in interpreting this 10
term. See Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 11
818, 826 (Fed. Cir. 1984). 12
As the Appellants correctly point out (see App. Br. 6), the 13
Specification teaches that it would be desirable “to provide a mounting 14
assembly that minimizes the offset distance between the appliqué and the 15
windowpane and thus decreases air drag on the vehicle and streamlines the 16
vehicle design.” (Spec., Para. 4; see also id., Para. 26). The Specification 17
contrasts this with the state of prior art sash constructions in which the 18
appliqué is offset from the glass pane at least twice the thickness of the sheet 19
metal from which the prior art constructions were made. (See Spec., Para. 20
3). Figure 4 of the Appellants’ drawings depicts an appliqué offset from the 21
pane of glass both by a single thickness of the sheet metal of the elongated 22
stepped bracket 56 and by an additional distance attributable to the upper 23
portion of the retention member 42. (See Spec., Para. 26). This arrangement 24
suggests that the term “offsetting . . . substantially by said wall thickness” is 25
sufficiently broad to encompass an offset by both a single sheet metal 26
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thickness and an additional distance attributable to an upper portion of a 1
retention or glass run member, but is not sufficiently broad to encompass an 2
offset by both a two or more sheet metal thicknesses and the additional 3
distance attributable to the upper portion of the retention member. 4
The outer panel 16 of the trim and glass run attachment structure 5
depicted in Figure 1 of Nozaki appears to offset the exterior surface of the 6
outer panel 16 from the door glass 14 by both three sheet metal thicknesses 7
in addition to the thickness of the exterior side wall 20c of the glass run 20. 8
(See also Nozaki, paras. [0038] and [0042]). Therefore, the outer panel 16 9
of the trim and glass run attachment structure depicted in Figure 1 of Nozaki 10
is incapable of offsetting an appliqué on the exterior surface of the outer 11
panel 16 from the door glass 14 by “substantially said wall thickness.” The 12
Examiner articulates no reasoning which might suggest why one of ordinary 13
skill in the art might have modified the outer panel 16 of the trim and glass 14
run attachment structure depicted in Figure 1 of Nozaki to satisfy this 15
limitation. We do not sustain the rejection of claims 1-20 under § 103(a) as 16
being unpatentable over Nozaki, Nishikawa and Goto. 17
18
DECISION 19
We REVERSE the Examiner’s decision rejecting claims 1-20. 20
21
REVERSED 22
23
24
Klh 25