Ex Parte Carter et al

Patent Trial and Appeal Board

Oct 19, 2017

14507528 (P.T.A.B. Oct. 19, 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.
14/507,528 10/06/2014 Jon T. Carter P027553-RD-SDJ 3900
65798 7590
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
KELLY, CATHERINE A
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
10/20/2017 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 JON CARTER and ANIL K. SACHDEV
Appeal 2017-002153
Application 14/507,528
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY HUME, and
JOSEPH LENTIVECH, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—16, which are all the claims pending in this application.
Claim 17—20 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal: “relates generally to
enhanced stiffness of an automobile door header and, more particularly, to
stiffeners which can be added to cast light-metal door headers, where the
headers are part of door inner panels and have open sections by virtue of
being cast, and the stiffeners effectively provide a closed section header with
Appeal 2017-002153
Application 14/507,528
greater bending stiffness and minimal additional weight.” (Spec. 12).
Representative Claim
1. A door header for a vehicle, said header comprising:
a cast header section, said cast header section being part of
a cast light-metal door inner panel, where the cast header
section has an open cross-sectional shape defining a
channel which is oriented with a concave surface facing
toward an exterior of the vehicle, and the light-metal is
either magnesium or aluminum; and
a stiffener, said stiffener being attached to the cast header
section so as to create a closed cross-sectional shape to
provide additional bending stiffness to the cast header
section.
App. Br. 23 (Contested limitation emphasized).
Rejections
A. Claims 1, 7—9, 11, and 15 are rejected under (AIA) 35 U.S.C.
§ 103 as being obvious over the combined teachings and
suggestions of Suzuki (US 8,764,099 B2, issued July 1, 2014),
Hock et al. (US 6,668,490 B2, issued Dec. 30, 2003) (hereinafter
“Hock”), and Ohtsuka (US 5,680,886, issued Oct. 28, 1997).
B. Claims 2—6, 10, 12—14, and 16 are rejected under (AIA) 35 U.S.C.
§ 103 as being obvious over the combined teachings and
suggestions of Suzuki, Hock, Ohtsuka, and Hellriegel et al. (US
3,791,693, issued Feb. 2, 1974) (hereinafter “Hellriegel”).
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of Rejection
A of independent claims 1 and 11 based upon independent representative
claim 1. We decide the appeal of Rejection A of dependent claims 7—9 and
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Application 14/507,528
15 based upon representative dependent claim 7. We address the remaining
dependent claims 2—6, 10, 12—14, and 16, rejected under Rejection B, infra.
To the extent Appellants have not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See 37
C.F.R. §41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
Final Office Action (2—7) from which this appeal is taken, and (2) the
findings, legal conclusions, and explanations set forth in the Answer (7—11)
in response to Appellants’ arguments. We highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 1 under 35 U.S.C. § 103
Issue: Under (AIA) 35 U.S.C. § 103, did the Examiner err by finding
the cited combination of Suzuki, Hock, and Ohtsuka teaches or suggests the
contested limitation: “a stiffener, said stiffener being attached to the cast
header section so as to create a closed cross-sectional shape to provide
additional bending stiffness to the cast header section,” within the meaning
of representative claim 1? 1 (Emphasis added).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. 117 (“The following
discussion of the embodiments of the invention directed to stiffeners for cast
light-metal door headers is merely exemplary in nature, and is in no way
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Application 14/507,528
Regarding the contested limitations of claim 1, Appellants contend,
inter alia:
In particular, Appellant submits that Hock does not teach “said
stiffener being attached to the cast header section so as to
create a closed cross-sectional shape to provide additional
bending stiffness to the cast header section" as recited in
Appellant's claim 1 and similarly in claim 11.
The window frame 5 of Hock (equating to Appellant’s
header section) is clearly described in column 3 (lines 17-22,
34-35 and 45) as being “pressed”, “deep-drawn” or
“extruded”. Hock does not teach or suggest a cast header
section as recited in Appellant's claims. This is significant
because Appellant’s claimed invention is directed
to a stiffener for cast door headers which transforms the
inherently open cross-sectional shape of a cast door header into
a closed cross-sectional shape.
Hock also fails to teach the stiffener being attached to the
cast header section so as to create a closed cross-sectional
shape. This is because the window frame 5 of Hock is already a
closed section, as can be clearly seen in Hock Figure 3
(reproduced below). Furthermore, the reinforcement part 27 of
Hock (equating to Appellant’s stiffener) is not in any way
“attached to the cast header section so as to create a closed
cross-sectional shape” as in Appellant’s claims. On the
contrary, Hock's reinforcement part 27 is simply an appendage
off of the window frame 5, from which further "add-on
components" are attached (such as plastic panel module 10; see
col. 3,11. 34-38).
(App. Br. 12—13) (underline omitted, italics added).
Appellant respectfully submits that it is clear from the
above analysis that the Hock disclosure does not teach “a
stiffener, said stiffener being attached to the cast header section
so as to create a closed cross-sectional shape to provide
intended to limit the invention or its applications or uses. ” (Emphasis
added)).
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Appeal 2017-002153
Application 14/507,528
additional bending stiffness to the cast header section", as in
Appellant's claims. Appellant further submits that Suzuki
teaches only a cast door module, but not a stiffener (as
acknowledged by the Examiner), and that Ohtsuka teaches only
the general concept of adding "energy absorbers" to various
locations of a vehicle.
(App. Br. 13—14) (underline omitted).
Although Appellants contend “Hock does not teach or suggest a cast
header section as recited in Appellant’s claims'’ (App. Br. 12), we note the
Examiner relies on Suzuki for teaching a cast header section, as claimed.
(Final Act. 2; Ans. 7). The Examiner finds Hock’s aluminum stiffener 27
(“frame reinforcement part 27,” col. 5,11. 23—29), when combined with
Suzuki’s cast header section (e.g., col. 9,1. 20, col. 10,11. 61—63), and
Ohtsuka, teaches or suggests the “stiffener being attached to the cast header
section so as to create a closed cross-sectional shape to provide additional
bending stiffness to the cast header section,” as recited in claim 1. (See
Final Act. 3).
Appellants’ contentions are not persuasive, because Appellants are
attacking the teachings of the references in isolation and do not specifically
rebut the Examiner’s ultimate legal conclusion of obviousness which is
based on the combined teachings and suggestions of Suzuki, Hock and
Ohtsuka. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. Id.
Appellants additionally contend “reinforcement part 27 of Hock
(equating to Appellant’s stiffener) is not in any way ‘attached to the cast
header section so as to create a closed cross-sectional shape’ as in
Appellant’s claims. On the contrary, Hock’s reinforcement part 27 is simply
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Application 14/507,528
an appendage off of the window frame 5, from which further ‘add-on
components’ are attached (such as plastic panel module 10; see col. 3,11. 34-
38).” (App. Br. 12—13). Appellants urge “the window frame 5 of Hock is
already a closed section, as can be clearly seen in Hock Figure 3.” (App.
Br. 12).
The Examiner agrees “the ’490 [Hock] reference does teach a stiffener
forming a closed cross-section with the frame.” (Ans. 8). However, the
Examiner clarifies the basis for the rejection: “While applicant argues the
frame is member 5 in the ’490 reference, [the] [E]xaminer disagrees with
this overly narrow reading and maintains the frame can include members 8
and 10 as well. Member 8 is integral with member 5 and thus can be
considered part of the frame and member 10 is connected to member 8 to
form the full frame structure as shown in the annotated figure 3 below.”
{Id.).
We find the Examiner’s reading of the claimed “closed cross-sectional
shape” (claim 1) on Hock’s window frame 5, comprising components 8 and
10, is expressly supported by the evidence:2
It is essential in the preferred embodiment that the light metal
profile which constitutes the window frame 5 comprises at
least one acceptance groove 6; 7 which follows the profile and
is essentially continuous; and/or comprises at least one clip-on
strip 8 which follows the profile and is essentially continuous;
with said acceptance groove(s) 6; 7 and clip-on strip 8
essentially being used for accommodation, affixation or
attachment of an add-on component 9; 10; 11; 27.
2 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
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Application 14/507,528
(Hock, col. 3,11. 49—57) (emphasis added).
We reproduce the pertinent portion of the Examiner’s annotation of
Hock’s Figure 3 below:
W 'U'i
fcwrwtg ar
Hock’s Figure 3 is depicted above, showing elongated frame
reinforcement part 27 (i.e., “stiffener”), window frame 5,
comprising frame parts 8 and 10, as annotated by the Examiner
(Ans. 9; see also Hock, col. 3,11. 49—57).
Based upon our review of the record, we find a preponderance of the
evidence (Hock, col. 3,11. 49—57) supports the Examiner’s finding that
“Member 8 is integral with member 5 and thus can be considered part of the
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Application 14/507,528
frame and member 10 is connected to member 8 to form the full frame
structure as shown in the annotated figure 3 . . . (Ans. 8).
To the extent Hock ’490 does not teach the “stiffener” (Hock’s frame
reinforcement part 27 — Fig. 3) is located in the claimed header section of
the door panel “so as to create a closed cross-sectional shape to provide
additional bending stiffness to the cast header section” (claim 1), we
emphasize the Examiner relies on the tertiary Ohtsuka reference for teaching
that “stiffeners could be added to a variety of locations on the door frame
including the header 19, B pillar 13, and A pillar 12 as shown in figures 1-8
of the [Ohtsuka] ‘886 reference and as such the stiffener could be added to
the header region of the [Suzuki] ‘099 reference.” (Ans. 3 4) (emphasis
added). Buttressing the Examiner’s findings, see Figure 7 of Ohtsuka, and
column 4,11. 50—52: “the arrangement locations of the energy absorbers 1
are not limited to the aforementioned locations.” On this record, we find
Appellants have not advanced substantive arguments traversing the
Examiner’s additional reliance on Ohtsuka in support of the ultimate legal
conclusion of obviousness.3
Therefore, for at least the aforementioned reasons, we find the
Examiner’s underlying factual findings and legal conclusion of obviousness
are supported by a preponderance of the evidence. Because Appellants have
not persuaded us the Examiner erred, we sustain Rejection A of independent
claim 1. Grouped independent claim 11 (not separately argued) falls with
representative claim 1, as also rejected under rejection A. See Grouping of
Claims, supra.
3 Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal 2017-002153
Application 14/507,528
Rejection A of Claims 7—9 and 15 under 35 U.S.C. §103
“Appellants] respectfully submit[] that the references do not teach a
stiffener tube pressed into a V-shaped cavity in the header, as recited in
Appellant's claim 7-9 and 15.” (App. Br. 16) (emphasis added).
However, based upon our review of the record, we find a
preponderance of the evidence supports the Examiner’s findings:
[S]tiffener 27 of the ’490 reference (as shown in annotated
figure 3 above) is a tube as the stiffener forms a partial cylinder
and thus is sufficient to read of tube. Further, [the] examiner
notes that the V-shaped cavity in the header is shown in the
primary ’099 reference (as shown in annotated figure 5A above
in body of rejection). This, when the tube stiffener of the ’490
reference is provided to the V-shaped header of the ’099
reference, the combination would [teach or suggest] the present
invention as described in claims 7-9 and 15.
Ans. 11.
We reproduce figure 5A of Suzuki below, as annotated by the
Examiner on page 3 of the Final Office Action:
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Appeal 2017-002153
Application 14/507,528
FIG, 5 A
Upper
Uswsrc-
dif&esfca!
vsiiicfc
Leaser
Annotated figure 5 A of Suzuki is reproduced above depicting a
V-shaped cavity.
We additionally find that pressing Hock’s stiffener tube into Suzuki’s
V-shaped cavity (Figure 5A), would have merely realized a predictable
result. The Supreme Court guides: “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273,
282 (1976)). Moreover, “‘the question under [35 U.S.C. § 103] is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807
(Fed. Cir. 1989), cert, denied, 493 U.S. 975 (1989); see also MPEP § 2123.
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Application 14/507,528
We find this guidance is applicable here. Because Appellants have
not persuaded us the Examiner erred, we sustain Rejection A of
representative dependent claim 7. The remaining associated grouped claims
8, 9, and 15, also rejected under Rejection A, fall with representative
claim 7. See Grouping of Claims, supra.
Rejection B of Claims 2—6, 10, 12—14, and 16 under 35 U.S.C. § 103
To the extent Appellants do not advance separate, substantive
arguments for these claims, such arguments are waived. We emphasize that
“[a] statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” See 37
C.F.R. §41.37(c)(l)(iv).
To the extent that Appellants aver that the additional Hellriegel
reference does not teach specific claimed shape-based features of
components and interactions of the features of the components (App.
Br. 20), we find Appellants have not substantively traversed the Examiner’s
specific findings regarding Official Notice under MPEP § 2144:
The ’693 reference clearly shows the stiffener shape can be
design to suit the situation in which it is used, which would
include designing to optimize area of moment as in claim 1. It
would have been obvious to one of ordinary skill in the art to
provide the door of the ’099 reference, having the stiffener in a
cast door of the ’490 reference and the stiffener in a header of
the '886 reference, with the design choice of the ’693 reference
because the design and optimization of parts to suit their
specific purpose was old and well known in the art as well the
use of different embodiments of the same invention (see also
MPEP 2144.04 IV Section B change in shape).
Final Act. 5.
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Application 14/507,528
To adequately traverse the Examiner’s reliance on Official Notice,
Appellants must specifically point out the supposed errors in the Examiner’s
action, which would include stating why the noticed fact is not considered
to be common knowledge or well-known in the art. See Manual of Patent
Examining Procedure (MPEP) § 2144.03.4
Here, Appellants have not affirmatively stated in the record why the
noticed fact is not considered to be common knowledge or well-known in
the art. Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and legal conclusion of
obviousness regarding dependent claims 2—6, 10, 12—14, and 16, as rejected
under rejection B.
Accordingly, we sustain the Examiner’s Rejection B of claims 2—6,
10, 12—14, and 16, for essentially the same reasons articulated by the
Examiner in the Final Office Action (5—6) and in the Answer (6—7), and for
the reasons further discussed above. See MPEP § 2144.03.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner’s Answer
will not be considered except for good cause, which Appellants have not
shown. See 37 C.F.R. § 41.41(b)(2).
4 There is no evidence of record presented pursuant to 37 C.F.R. §§ 1.130,
1.131 or 1.132. (“Evidence Appendix” App. Br. 28).
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DECISION
We affirm the Examiner’s decision rejecting claims 1—16 under (AIA)
35 U.S.C. § 103.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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