Ex Parte Flores et al

Board of Patent Appeals and Interferences

Sep 24, 2010

11361650 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNESTO CISNEROS FLORES,
LEONARDO CAMACHO ARAIZA, and
EDUARDO JONAS SANCHEZ VAZQUEZ
____________

Appeal 2009-005341
Application 11/361,650
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 4, and 5, all of the pending claims in
the above-identified application.2 We have jurisdiction under 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Details of the appealed subject matter are recited in representative
claims 1 and 2 reproduced from the Claims Appendix to the Appeal Brief as
shown below:
1. A method of producing a leather-covered
automotive component comprising the steps of:

a. cutting one or more pieces of leather to cover the
surface of the component and to define at least two mating
edges;

b. hemming the mating edges;

c. thinning the hemmed edges;

d. false stitching the mating edges; and

e. adhesively bonding the leather to the surface of the
component with the mating edges in juxtaposition.

2. The method as defined in Claim 1 wherein the
edges are thinned before the hemming step.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references3 at pages 2 and 3 of the
Answer (“Ans.”) dated January 29, 2008:
Sugiyama JP 03082680 A Apr. 8, 1991
Itagaki4 JP 07132908 A May 23, 1995
Arima JP 17312728 A Nov. 10, 2005

2 See page 2 of the Appeal Brief (“App. Br.”) filed October 30, 2007.
3 Our reference to these Japanese Patent publications is to the corresponding
English Translations of record.
4 The Examiner refers to Itagaki as “Midori” at pages 2 and 3 of the Answer.
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Appellants seek review of the following grounds of rejection set forth
at pages 3 through 6 of the Answer5:
1) Claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Itagaki, Sugiyama, and Arima; and
2) Claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Arima and Sugiyama.
FACTUAL FINDINGS, ISSUES, CONCLUSIONS, AND
PRINCIPLES OF LAW
Appellants do not dispute the Examiner’s finding that Arima teaches
a process for making a leather-covered automobile component, which
comprises proving one or more pieces of leather to cover the surface of the
automobile component and to define at least two mating edges, pre-thinning
the edges, hemming the thinned edges, false stitching the mating edges, and
connecting the leather with the edges in juxtaposition to cover the
automobile component.6 (Compare Ans. 3-5 with App. Br. 3-8 and Reply

5 Appellants argue the limitations of claims 1 and 2 only (App. Br. 3-8).
Therefore, for purposes of this appeal, we select claims 1 and 2 and decide
the propriety of the Examiner’s § 103 rejections set forth in the Answer
based on these claims alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).

6 Appellants do not dispute the Examiner’s finding that Itagaki, like Arima,
teaches a process for making a leather-covered automobile component, such
as a shift knob, which comprises providing at least one or more pieces of
leather to cover the surface of the automobile component and to define at
least two mating edges, false stitching the edges, and adhesively bonding the
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Br. 1-2.) Nor do Appellants dispute the Examiner’s determination that
cutting the leather to an appropriate shape and size to provide the above-
mentioned one or more pieces of leather and connecting the same to the
automobile component by an adhesive would have been obvious to one of
ordinary skill in the art as evidenced by Sugiyama.7 (Compare Ans. 3-6 with
App. Br. 3-8 and Reply Br. 1-2.) Rather, Appellants contend that one of
ordinary skill in the art would not have been led to further thinning the
hemmed edges in the process suggested by Arima and Sugiyama or Itagaki,
Arima, and Sugiyama (App. Br. 3-8 and Reply Br. 1).
Thus, the first critical question is: Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to
further thinning the hemmed edges of the leather in the process for making a
leather-covered automobile component suggested by Arima and Sugiyama
or Itagaki, Arima, and Sugiyama within the meaning of 35 U.S.C. § 103(a)?
On this record, we answer this question in the negative.
As is apparent from pages 28 and 31 of Arima, it is desirable to obtain
the thickness of superposed portions (bonded hemmed edges) of the leather
similar to the thickness of the non-superposed portion of the same.
Although Arima only mentions thinning prior to hemming to achieve a
substantially uniform thickness for a leather cover, it is well within the
purview of one of ordinary skill in the art to carry out further thinning when
the thickness of the hemmed edges (superposed portions), after bonding

leader to the surface of the automobile component. (Compare Ans. 3 with
App. Br. 3-8 and Reply Br. 1-2.)
7 Arima also teaches bonding the hemmed edges to the inner surface portion
of the leather and bonding the resulting leather pieces to a core member (an
automobile component) (pp. 21, 23, and 27).
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them to the interior portion of the leather pieces, is not similar to the
thickness of the non-superposed portion of the leather pieces. Thus, we
concur with the Examiner that one of ordinary skill in the art interested in
obtaining uniformly thick leather pieces having hemmed edges for covering
an automobile component, such as a shift knob, as suggested by Arima,
would have been led to apply either pre-hemmed or post-hemmed thinning
or both to ensure similar or identical thicknesses for the superposed portions
(hemmed edges) and the non-superposed portions of the leather pieces in a
process for making a leather-covered automobile component. This is
especially true in this instance since Appellants do not challenge the
Examiner’s finding that one of ordinary skill in the art is aware that such
thinning allows the formation of the desired smooth mating edges of the
leather pieces covering the automobile component. (Compare Ans. 3-5 with
App. Br. 3-6 and Reply Br. 1-2.)
Appellants rely on declarations filed under 37 C.F.R § 1.131 executed
by the inventors and a patent attorney, Thomas N. Young, respectively to
swear behind the publication date of Arima, thereby removing Arima as
“prior art” under § 102(a). According to the declaration executed by the
patent attorney:
[T]he invention of the subject application was conceived by the
inventors well prior to November 10, 2005, was actually
reduced to practice following diligent pursuit of same prior to
November 10, 2005 and was constructively reduced to practice
following diligent pursuit of same on February 24, 2006.

Manual of Patent Examining Procedure (MPEP) § 715.07 (Rev. 6,
Sept. 2007) states in relevant part:

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The affidavit or declaration must state FACTS and produce
such documentary evidence and exhibit in support thereof….to
show conception and completion of invention in this country or
in a NAFTA or WTO member country..., .…Where there has
not been reduction to practice prior to the date of the reference,
the applicant or patent owner must also show diligence in the
completion of his or her invention from a time just prior to the
date of the reference continuously up to the date of an actual
reduction to practice or up to the date of filing his or her
application (filing constitutes a constructive reduction to
practice, 37 CFR 1.131).
…The showing of facts must be sufficient to show:
(A) >(actual)< reduction to practice of the invention
prior to the effective date of the reference; or
…
(C) conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to
the reference date to the filing date of the application
(constructive reduction to practice). [(Emphasis added.)]

Our reviewing court in Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir.
1998) stated:
Conception is the formation, in the mind of the inventor,
of a definite and permanent idea of the complete and operative
invention, as it is thereafter to be applied in practice…A
reduction to practice can be either a constructive reduction to
practice, which occurs when a patent application is filed, or an
actual reduction to practice…. In order to establish an actual
reduction to practice, the inventor must prove that: (1) he
constructed an embodiment or performed a process that meets
all the limitations of [the claimed subject matter]; and (2) he
determined that the invention would work for its intended
purpose….Depending on the character of the invention and the
problem it solves, determining that the invention will work for
its intended purpose may require testing.

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On this record, Appellants have not demonstrated that the claimed
invention was actually reduced to practice prior to the publication date of
Arima. Specifically, Appellants have not shown that the claimed invention
was made or constructed prior to the publication date of Arima, much less
shown to work for its intended purpose prior to the publication date of
Arima. Exhibit A relied upon by Appellants only shows that the claimed
subject matter was conceived at least on Nov. 10, 2004, well prior to the
publication date of Arima.
Appellants focus on conception, due diligence, and constructive
reduction to practice to swear behind the publication date of Arima (App.
Br. 3-5 and Reply Br. 2). However, as correctly pointed out by the
Examiner at pages 6 and 7 of the Answer, Appellants have not demonstrated
due diligence from a time just prior to the publication date of Arima
continuously up to the date of filing of the subject application.8 In other
words, the declarants’ mere assertion of diligence is not supported by any
evidence which shows that the inventors were reasonably diligent during the
critical time period from a time just prior to the publication date of Arima
continuously up to the date of filing of the subject application. See In re
Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983); see also Gould v. Schawlow,
363 F.2d 908, 919 (CCPA 1966)(An applicant must account for the entire
period for which diligence is required; a mere statement that there were no

8 Appellants request us to ignore the fact that Appellants have not carried
their burden of establishing reasonable diligence to swear behind the
publication date of the closest prior art, Arima, since the Examiner for the
first time raised it as an issue in the Answer (Reply Br. 2). However,
Appellants’ remedy is via a timely petition under § 1.181 to reopen the
prosecution of the subject application if the Examiner’s allegedly newly
stated position on reasonable diligence constitutes a new ground of rejection.
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weeks or months that the invention was not worked on the claimed invention
is not enough.); In re Harry, 333 F.2d 920, 923 (CCPA 1964)(A mere
statement that the claimed subject matter “was diligently reduced to
practice” is not a showing.). Appellants simply have not proffered any
evidence directed to due diligence, which is specific as to dates and facts.
Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949)(To establish reasonable
diligence, Applicants must be specific as to dates and facts).
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter recited in claims 1, 2, 4, and 5 within the meaning of 35
U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v) (2009).

AFFIRMED

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