Ex parte Dyer

Board of Patent Appeals and Interferences

Aug 12, 1999

08616605 (B.P.A.I. Aug. 12, 1999)

Application for patent filed March 15, 1996.1
Although the appellant stated on page 2 of the Brief that it was indicated that “newly proposed2
claims 10-12 would be allowable,” it appears to us that these claims (Paper No. 7) were denied entry
by the examiner (Paper No. 8). This is borne out by the fact that they were not mentioned in the
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID J. DYER
_____________
Appeal No. 97-4455
Application 08/616,6051
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and CRAWFORD, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally rejecting claims 3-5 and 9. Claims 1
and 2 have been canceled, and claims 6-8 have been indicated as containing allowable subject matter.
No claims have been allowed. 2
Appeal No. 97-4455
Application 08/616,605
Answer.
PTO translations of these references are enclosed.3
2
The appellant's invention is directed to an inflatable cushion for a vehicle passenger restraint
system (airbag). The claims on appeal have been reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the final rejection are:
Kalberer et al. (Kalberer) 5,335,884 Aug. 9, 1994
Sakai ('191) 6-239191 Aug. 30, 1994
(Japanese Patent)3
Imai ('859) 4-278859 Oct. 5, 1992
(Japanese Patent)3
THE REJECTIONS
Claims 3, 4 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kalberer
in view of Japanese ‘859.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kalberer in view of
Japanese ‘859 and Japanese ‘191.
The rejections are explained in the Paper No. 6 (the final rejection).
Appeal No. 97-4455
Application 08/616,605
3
OPINION
In reaching our decision on the issues raised in this appeal, we have carefully assessed the
claims, the prior art applied against the claims, and the respective views of the examiner and the
appellant as set forth in the Answer and the Brief. As a result of our review, we have determined that
neither of the rejections should be sustained. Our reasoning in support of this conclusion follows.
The test for obviousness is what the combined teachings of the prior art would have suggested
to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must
stem from some teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure. See, for
example, Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The objective of the appellant’s invention is to provide an improved vehicle airbag that is so
shaped as to offer additional cushioning between the occupant and the “A” pillar of the vehicle when
Appeal No. 97-4455
Application 08/616,605
The “A” pillar is the roof support pillar located between the windshield and the adjacent door.4
We interpret this to mean simply that the enlarged wall portion of the outer panel is larger than5
that of the inner panel.
4
deployed. The airbag is made up of a plurality of panels of flexible material and is inflatable to a4
predetermined three-dimensional configuration. As manifested in independent claim 9, the panels
comprise an inner side panel having a neck portion and an enlarged wall portion projecting from the
neck portion, an outer wall panel having a neck portion and an enlarged wall portion projecting from
the neck portion that is “of greater cross-sectional dimensions than the enlarged wall portion of said
inner side panel,” and a center panel complementary to the peripheral edges of the inner and outer side5
panels and attaching the two together. The examiner finds in Kalberer an airbag having the same shape
as that of the claimed invention when in the inflated state but lacking the claimed panel construction.
However, it is the examiner’s position that it would have been obvious to construct the Kalberer airbag
of multiple panels meeting the terms of the claim 9, in view of the teachings of Japanese ‘859.
Like the appellant’s invention, the Kalberer airbags are shaped to provide more extensive
protection to one side for the occupant of the vehicle (see Figure 1). Kalberer is silent as to the
construction of the airbags. Therefore, this reference fails to teach that the airbag is comprised of two
opposed panels attached together by a third panel, much less that the cross-sectional dimensions of one
of the opposed panels are greater than the other.
Japanese ‘859 discloses airbags constructed of three panels. This reference does not,
Appeal No. 97-4455
Application 08/616,605
5
however, disclose an airbag in which two opposing side panels are of different cross-sectional
dimensions.
We begin our analysis by pointing out that the mere fact that the prior art structure could be
modified does not make such a modification obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In the present
situation we find no such suggestion. Kalberer is totally silent as to how the disclosed airbags could be
made and therefore, from our perspective, one of ordinary skill in the art would have a multitude of
choices, ranging from making each of a single panel such as a balloon, or a number of panels attached
together at their edges, with the orientation of each of the panels with respect to the others being
unspecified. Japanese ‘859 teaches making an airbag of three panels attached together at their edges,
and discloses in Figure 3 an embodiment having opposed panels (3) which are connected together by a
third panel (2). However, the oppositely oriented panels are of the same size.
We fail to perceive any teaching, suggestion or incentive in either of these references which
would have led one of ordinary skill in the art to form the airbag disclosed in Kalberer such that one of
the pair of opposed panels is of greater cross-sectional dimensions than the other
Appeal No. 97-4455
Application 08/616,605
6
one, much less that it be the “outer” panel that is the largest. From our perspective, the only suggestion
for doing so is found in the hindsight afforded one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for establishing obviousness. See In re Fritch, 972 F.2d 1260, 23
USPQ2d 1780 (Fed. Cir. 1992). A prima facie case of obviousness having not been established with
regard to the subject matter of claim 9, we will not sustain the rejection. Nor, it follows, will we sustain
the rejection of claims 3 and 4, which depend from claim 9.
The addition of Japanese ‘191 to the other two references does not cure the defect set forth
above, and therefore we also will not sustain the rejection of claim 5.
SUMMARY
Neither of the rejections is sustained.
Appeal No. 97-4455
Application 08/616,605
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
CHARLES E. FRANKFORT ) INTERFERENCES
Administrative Patent Judge )
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
NEA/dal
Appeal No. 97-4455
Application 08/616,605
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SALLY J. BROWN
AUTOLIV ASP, INC.
3350 AIRPORT RD.
OGDEN, UTAH 84405