Ex Parte Emerling et al

Board of Patent Appeals and Interferences

Nov 23, 2009

10711457 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. EMERLING and GEORGE B. BYMA
____________

Appeal 2009-002966
Application 10/711,457
Technology Center 3600
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Decided: November 23, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
David M. Emerling and George B. Byma (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
Automotive visors are usually formed from a core member and a
fabric or leather cover material that is wrapped and then adhered or
otherwise attached about the exterior of the core member. Spec. 1, para. 3.
Appellants’ claimed invention is to an automobile visor and method in
which a cover layer is integrally formed in place on the outer surface of a
core member of the visor. App. Br., Claims Appx., and Spec. 1, para. 1.
Independent claims 1, 10, and 16, are reproduced below.
1. An automotive visor, comprising:
a core member having an outer surface;
a polymeric cover layer integrally formed in place onto
said outer surface of said core member; and
a support arm coupled to said core member and adapted to
mount the visor proximate a windshield of an automobile.

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10. A method of forming an automotive visor, comprising:
forming a visor core from a polymeric material having a
first hardness;
integrally forming a cover layer in place on an outer
surface of the visor core, the cover layer comprising polymeric
material having a second hardness relatively lower than the first
hardness; and
coupling a support arm to the visor core, the support arm
adapted to mount the visor proximate a windshield of an
automobile.

16. A method of forming an automotive visor, comprising:
providing a visor core;
integrally forming a polymeric cover layer in place on an
outer surface of the visor core; and
coupling a support arm to the visor core, the support arm
adapted to mount the visor proximate a windshield of an
automobile.

THE EVIDENCE
The Examiner relies upon the following evidence:
Binish US 5,720,509 Feb. 24, 1998
Hier US 2003/0184064 A1 Oct. 2, 2003
Mills US 6,840,561 B2 Jan. 11, 2005
Fischer GB 2 336 577 A Oct. 27, 1999

THE REJECTIONS
Appellants seek review of the following rejections:
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1. Claims 1-6, 10-13, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mills and Hier.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mills, Hier, and Fischer.
3. Claims 8, 9, 14, 15, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mills, Hier, and Binish.

ISSUE
The Examiner found Mills discloses an automotive visor that has a
core member 12, a cover layer 14, and a support arm 16, but that Mills does
not disclose a polymeric cover layer material that is integrally molded in
place. Ans. 3-4. The Examiner found that Hier teaches forming a polymeric
cover layer in place onto the outer surface of a core member of a vehicle
interior part. Ans. 4 (citing figure 7 of Hier). The Examiner concluded it
would have been obvious to cover the core member of Mills with a formed-
in-place polymeric cover layer, as taught by Hier, “as an effective method to
provide a cover on the core member having obvious and expected results.”
Id.
Appellants contend the Examiner has failed to present a reasonable
rationale for modifying the visor of Mills in view of Hier. App. Br. 6-9;
Reply Br. 2.

The issue presented by this appeal is:
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Have Appellants shown the Examiner failed to provide a sufficient
rationale to explain why one having ordinary skill in the art would have been
led to modify the visor of Mills in the manner claimed in view of the
teaching of Hier?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Hier discloses vehicle seamless interior panels for concealing and
deploying an airbag. Hier 1, para. 0002. Hier describes a panel 10
having a retainer portion 12 which is disposed adjacent an airbag
16 and has an opening 20 formed therethrough to define a void 22
over airbag 16. Hier describes a door portion 14 disposed within
void 22 to define a seamless airbag door through which airbag 16
may deploy. Door portion 14 is molded to retainer portion 12 with
compatible materials such that the interface 26 between the
portions has a low resistance threshold to stress to allow the
portions to separate when the airbag is deployed. Hier 2, para.
0020, figs. 1, 2.
2. Figure 7 of Hier is a flowchart describing a two-shot molding
process for forming the retainer portion of the panel and then
forming the door portion of the panel within the void in the retainer
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panel and simultaneously bonding the door portion to the retainer
portion. Hier 2-3, para. 0025; fig. 7.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
The Supreme Court stated that when the claimed subject matter
involves more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement, then an analysis of whether there was an apparent reason
to combine the known elements in the fashion claimed is required:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
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community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 418. The Court noted that “[t]o facilitate review, this analysis should
be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
It is undisputed that Mills fails to disclose a polymeric cover layer
integrally formed in place on an outer surface of a core member. Ans. 3-4;
App. Br. 7. Hier is directed to molding a door portion of a vehicle panel
within an opening formed in the retainer portion of the vehicle panel so as to
cover an airbag in a seamless fashion (Fact 1). Although Hier discloses that
it was known in the art to use a two-shot molding process to mold one
portion of a vehicle panel within another portion of a vehicle panel, we find
Examiner’s rejection insufficient to explain what in the prior art would have
prompted a person having ordinary skill in the art to apply this two-shot
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molding processing of Hier to the visor of Mills so as to mold a polymeric
cover layer over the core member of the visor. The Examiner has not
provided any findings that either Mills or Hier recognized a problem with
the conventional technique used in Mills to apply the cover layer to the visor
core. Absent hindsight, we fail to see why one having ordinary skill in the
art would have been led by the teachings of Hier to modify the visor of Mills
in the manner claimed. As such, we cannot sustain the rejection of claims 1-
6, 10-13, and 16 under § 103 as unpatentable over Mills and Hier.
The rejection of claim 7 under § 103 based on Mills, Hier, and Fischer
and the rejection of claims 8, 9, 14, 15, 17, and 18 under § 103 based on
Mills, Hier, and Binish are based on the same insufficient articulation of a
reason to combine Mills and Hier. As such, we cannot sustain these
rejections for the same reasons provided supra.

NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). By rule, this panel has discretion to add one or more
new grounds of rejection:
Should the Board have knowledge of any grounds not involved
in the appeal for rejecting any pending claim, it may include in
its opinion a statement to that effect with its reasons for so
holding, which statement constitutes a new ground of rejection
of the claim.
37 C.F.R. § 41.50(b) (emphasis added). The rule is permissive and merely
provides the Board panel with the option of making a new ground of
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rejection. In the analysis that follows, we have chosen to enter a new ground
of rejection of only independent claims 1, 10, and 16 under 35 U.S.C.
§ 102(b) as anticipated by Fischer. We leave it to the Examiner to determine
whether any further rejections of the pending claims are appropriate.

ADDITIONAL FINDINGS OF FACT
3. Fischer discloses a vehicle visor 10 having a visor body 12 and
swivel mounting support shaft 14. Fischer, p. 4, ll. 3-4; Id. at 6,
l. 19; fig. 1.
4. The visor body 12 is formed of an expandable polyolefin particle
(“EPP”) or bead inner layer or core 52 and an in-molded exterior
fabric 54 constructed of non-woven PET, vinyl sheeting, nylon, or
polypropylene (exterior surface) coated with treated polyvinyl
chloride (TPO) (interior surface). Fischer, p. 5, l. 23 – p. 6, l. 3.
5. Appellants describe that it was known at the time of Appellants’
invention to make visors of a relatively harder plastic or cardboard
core member with a relatively less hard fabric or leather material
wrapped over the core member. Spec., para. 3. Based on the
conventional construction of automobile visors, one having
ordinary skill in the art would understand Fischer to inherently, if
not explicitly, disclose an exterior fabric 54 having a hardness
relatively lower than the hardness of core 52.
6. Fischer describes forming the visor body 12 using a two-piece
mold set 114 having a first mold half 116 and a second mold half
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118. Fischer, p. 8, ll. 14-16. The exterior fabric 54 is positioned
within mold cavity 124 of first mold half 116 and vacuum pressure
is applied to draw the fabric tightly against the mold cavity.
Fischer, p. 9, ll. 1-3. The second mold half 118 is then moved
toward the first mold half 116 to partially or completely close the
mold, and then the fabric is pre-heated to increase the fabric
flexibility. Fischer, p. 9, ll. 6-14. The EPP beads for the core 52
are then injected into the mold cavity 124. Fischer, p. 9, ll. 17-18.
Once the molding process is complete, “the mold halves 58, 60
with the in-molded skin 54 are removed from the mold.” Fischer,
p. 10, ll. 9-10. As such, the resulting visor body has a cover
material bonded to a core member. Fischer, p. 2, ll. 2-9.
7. Fischer discloses that the swivel mounting shaft 14 is provided
with a proximal end 44 which extends into the visor body 12
through a swivel mount orifice, and is received within indentations
68, 92 formed in the top and bottom halves 58, 60 of core 52.
Fischer, p. 4, ll. 27-28; Id. at 6, ll. 17-28; Id. at 7, ll. 21-26. Fischer
discloses that the swivel mounting shaft 14 is provided with a
distally-located swivel mount 42, which mates with a swivel mount
receiver within a vehicle interior to mount the visor above either
the operator of the vehicle or a vehicle passenger, and thus
proximate a windshield of an automobile. Fischer, p. 4, ll. 24-27;
fig. 1.

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ANALYSIS
Claim Construction
Independent claim 1 is directed to an automotive visor including a
core member having an outer surface and a polymeric cover layer integrally
formed in place onto said outer surface of said core member. The limitation
of “integrally formed in place onto said outer surface of said core member”
is a product-by-process limitation.
“A product-by-process claim is ‘one in which the product is defined at
least in part in terms of the method or process by which it is made.’”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir.
2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 (1989)). “The purpose of product-by-process claims is to allow
inventors to claim ‘an otherwise patentable product that resists definition by
other than the process by which it is made.’” SmithKline, 439 F.3d at 1315
(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Such claims are
still directed to the ultimate product, not the underlying process. See id. at
1317 (“Regardless of how broadly or narrowly one construes a product-by-
process claim, it is clear that such claims are always to a product, not a
process.”). “Once a product is fully disclosed in the art, future claims to that
same product are precluded, even if that product is claimed as made by a
new process” SmithKline, 439 F.3d at 1315. Thus, “[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 777 F.3d at 697. In other words,
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“[t]he patentability of a product does not depend on its method of
production.” SmithKline, 439 F.3d at 1317.
As such, claim 1 structurally requires that the cover layer is integral
with the core member along a common surface where the two materials
meet. In other words, claim 1 requires some amount of bonding between the
cover layer material and the core member material at their common surface.
Although Appellants’ Specification describes a two-shot molding process
for forming the core member and cover layer (Spec. para. 19), claim 1 is not
limited to any particular process for forming the integral bond between the
materials.
Independent method claims 10 and 16 recite the steps of forming
(claim 10) or providing (claim 16) a visor core and integrally forming a
cover layer in place on an outer surface of the visor core. A two-part test has
been established for determining if the steps of a method claim that do not
otherwise recite an order must nonetheless be performed in the order in
which they are written. First, we look to the claim language to determine if,
as a matter of logic or grammar, the recited steps must be performed in the
order written. “If not, we next look to the rest of the specification to
determine whether it ‘directly or implicitly requires such a narrow
construction.”’ Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed.
Cir. 2003) (quoting Interactive Gift Express, Inc. v. CompuServe Inc., 256
F.3d 1323, 1343 (Fed. Cir. 2001)) (emphasis in original). If not, the
sequence in which such steps are written is not a requirement of the claim.
Id.
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First, the claim language of claims 10 and 16 recites that the cover
layer is integrally formed in place on an outer surface of the visor core. We
do not read this claim language to require that the core member has been
formed prior to the integrally forming step. The integration of the cover
layer material with the visor core material occurs during the molding process
so that claims 10 and 16 are broad enough to encompass simultaneous
formation of the visor core and integral formation of the cover layer on the
visor core. Second, Appellants’ Specification does not require such a
narrow reading of the claims. Rather, the Specification describes one
embodiment in which the core member is formed prior to the integrally
molding step (Spec., para. 19), but it also describes that “[t]he core member
may be formed by various molding methods.” Spec, para. 5. As such, we
construe claims 10 and 16 to be broad enough to encompass a method in
which the core member is formed simultaneously with the integrally-
forming step.
Anticipation
With regard to claim 1, Fischer discloses an automotive visor 10
comprising a core member 52 and a polymeric cover layer 54 integrally
formed in place onto an outer surface of the core member (Facts 3-6). In
particular, the cover layer 54 of Fischer is “in-molded” with the core
member 52 so that the two materials are bonded together at their common
surface and are structurally the same as the claimed core member and
polymeric cover layer (Fact 6). Fischer further discloses a support arm 14
coupled to the core member 52 and adapted to mount the visor proximate a
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windshield of an automobile (Facts 3, 7). As such, Fischer anticipates
independent claim 1.
With regard to claim 10, Fischer discloses the method of forming an
automotive visor 10 including forming a visor core 52 from a polymeric
material having a first hardness (Facts 3-6) and integrally forming a cover
layer 54 in place on an outer surface of the visor core 52 (Fact 6), the cover
layer comprising a polymeric material having a hardness relatively lower
than the hardness of the core polymeric material (Facts 4, 5). In particular,
the visor core 52 of Fischer is formed at the same time that the cover layer
54 is being integrally molded to the core (Fact 6). Fischer further discloses
coupling a support arm to the visor core, where the support arm is adapted to
mount the visor proximate a windshield of an automobile (Facts 3, 7). As
such, Fischer anticipates independent claim 10.
With regard to claim 16, Fischer discloses the method of forming an
automotive visor 10 including forming a visor core 52 (Facts 3-6) and
integrally forming a polymeric cover layer 54 in place on an outer surface of
the visor core 52 (Fact 6). In particular, the visor core 52 of Fischer is
formed at the same time that the cover layer 54 is being integrally molded to
the core (Fact 6). Fischer further discloses coupling a support arm to the
visor core, where the support arm is adapted to mount the visor proximate a
windshield of an automobile (Facts 3, 7). As such, Fischer anticipates
independent claim 16.
Our new ground of rejection addresses only the independent claims
under our discretionary authority under 37 C.F.R. § 41.50(b). We leave the
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patentability determination of the remaining dependent claims to the
Examiner. See MPEP § 1213.02.

CONCLUSION
Appellants have shown the Examiner failed to provide a sufficient
rationale to explain why one having ordinary skill in the art would have been
led to modify the visor of Mills in the manner claimed in view of the
teaching of Hier.

DECISION
The decision of the Examiner to reject claims 1-18 is reversed.
We enter a new ground of rejection of independent claims 1, 10, and
16 under 35 U.S.C. § 102(b) as being anticipated by Fischer. This decision
contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2009).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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