Ex Parte Carter et alDownload PDFPatent Trial and Appeal BoardOct 19, 201714507528 (P.T.A.B. Oct. 19, 2017) Copy Citation 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 Claim 17—20 are withdrawn.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 2 Appeal 2017-002153 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 3 Appeal 2017-002153 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)). 4 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 5 Appeal 2017-002153 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). 6 Appeal 2017-002153 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 7 Appeal 2017-002153 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). 8 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: 9 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. 10 Appeal 2017-002153 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. 11 Appeal 2017-002153 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). 12 Appeal 2017-002153 Application 14/507,528 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 13 Copy with citationCopy as parenthetical citation