Ex Parte Govind et al

Board of Patent Appeals and Interferences

Feb 24, 2009

11308467 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHRINIVAS GOVIND AND NAGARAJ MARIYAPPA
____________________

Appeal 2008-4570
Application 11/308,467
Technology Center 3600
____________________

Decided:1 February 24, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4570
Application 11/308,467

STATEMENT OF THE CASE
Shrinivas Govind and Nagaraj Mariyappa (Appellants) seek our
review under 35 U.S.C. § 134 from the final rejection of claims 1 through 5
and 7 through 16. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention pertains to a vehicular armrest which
deforms in a controlled manner upon impact. (Spec. 1, [Para 1].) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A dynamically deconstructable armrest for an automotive
vehicle, comprising:
a mounting base;
a plurality of walls extending from said mounting base
and defining a cavity; and
an arm contact member inserted into said cavity with a
plug fit, such that a compressive force directed against at least
one of said walls, and having a magnitude in excess of a
predetermined threshold value, will cause at least a portion of
the arm contact member to become expelled from said cavity.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lueck US 3,428,357 Feb. 18, 1969
Scherf US 5,527,084 June 18, 1996
Cowelchuk US 7,070,221 B2 July 4, 2006
2
Appeal 2008-4570
Application 11/308,467

The following rejections are before us for review:
1. The Examiner rejected claims 1, 2, 4, 5, and 7-12 under
35 U.S.C. § 102(b) as anticipated by Scherf;
2. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Scherf and Lueck;
3. The Examiner rejected claims 13-15 under 35 U.S.C. § 103(a)
as unpatentable over Scherf and Cowelchuk; and
4. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Scherf, Cowelchuk, and Lueck.

ISSUES
The issues before us include whether the Appellants have shown that
the Examiner erred in rejecting claims 1, 2, 4, 5, and 7-12 under 35 U.S.C.
§ 102(b) as anticipated by Scherf. The issues also include whether the
Appellants have shown that the Examiner erred in rejecting claim 3 under
35 U.S.C. § 103(a) as unpatentable over Scherf and Lueck. These issues
turn on whether Scherf discloses the recited arm contact member.
The issues before us also include whether the Appellants have shown
that the Examiner erred in rejecting claims 13-15 under 35 U.S.C. § 103(a)
as unpatentable over Scherf and Cowelchuk, and in rejecting claim 16 under
35 U.S.C. § 103(a) as unpatentable over Scherf, Cowelchuk, and Lueck.
These issues turn on whether the Examiner has set forth a reasonable
rationale as to why a person of ordinary skill in the art would have combined
the cited references to arrive at the claimed subject matter.

3
Appeal 2008-4570
Application 11/308,467

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The customary meaning of “plug” is an object, such as a cork or
a wad of cloth, used to fill a hole tightly. THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000).
2. The dictionary definition of “frustum” is: “The part of a solid,
such as a cone or pyramid, between two parallel planes cutting the solid,
especially the section between the base and a plane parallel to the base.” Id.
3. Scherf discloses a collapsible arm rest for a vehicular door.
(See Scherf, col. 1, ll. 7-8; Fig. 1.) Scherf’s armrest has a base (thickened
bar section 30). (See id., col. 3, ll. 21-22; Figs. 1, 2.) A mounting plate 22
and several ribs 32 extend from the base upwardly and inwardly (relative to
the vehicle door). (Id., col. 3, ll. 21-27.) Cavities are formed between
adjacent ribs 32 and between mounting plate 22 and the nearest rib 32
thereto. (See id., Fig. 2.)
4. Scherf also discloses a top plate 40 that sits on the distal ends
36 of the ribs 32, and which has on its underside a series of grooves 42
formed between parallel ridges 44 that receive and seat the distal ends of the
ribs. (Scherf, col. 3, ll. 34-37; see Fig. 2.) The top plate 40 has several
parallel break lines, or grooves, 46 cut into the underside of the plate which
allow for controlled buckling of the plate. (Id., col. 3, ll. 37-39.)
5. Scherf’s Figure 2 shows the ridges 44 on the underside of the
top plate inserted into the cavities formed by the ribs 32. The ridges 44 fit
tightly within the opening between adjacent ribs 32. (See Scherf, Fig. 2.)
4
Appeal 2008-4570
Application 11/308,467

6. Scherf explains that, in a collision, a side impact to the top
plate’s abutment flange 58 causes the ribs to collapse together and the top
plate to fold into a collapsed position. (Scherf, col. 4, ll. 10-15.) The
collapse of the top plate lifts the plate off of the ribs, allowing them to move
in the direction of the vehicle door. (Id., col. 3, ll. 15-18.)
7. A side impact to Scherf’s ribs 32 (at the thickened midsection
38, for example) having a relatively high magnitude of force will cause the
ribs to collapse, which, in turn, will cause the top plate to buckle and to be
expelled from the cavities. (See Scherf, Fig. 3.)
8. Cowelchuk discloses an automotive door armrest. (Cowelchuk,
col. 2, ll. 54-58.) Cowelchuk’s figures depict a generally rectangular-shaped
armrest insert and an armrest cavity having a rectangular-shaped
cross-section. (Id., Figs. 2-4.)
9. Lueck teaches a vehicular armrest where the mounting base is a
center storage unit. (Lueck, col. 1, ll. 11-13; col. 2, ll. 66-68; Fig. 2.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
5
Appeal 2008-4570
Application 11/308,467

See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
It is Appellants’ burden to precisely define the invention, not the
United States Patent and Trademark Office’s. In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112, ¶ 2). Appellants have the
opportunity to amend the claims during prosecution, and broad interpretation
by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. Prater, 415 F.2d at 1404-05.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citations omitted).
“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, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). 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. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”).
6
Appeal 2008-4570
Application 11/308,467

ANALYSIS
The Rejection of Claims 1, 2, 4, 5, and 7-12 Under 35 U.S.C. § 102(b) as
Anticipated By Scherf
Claim 1 recites:
an arm contact member inserted into said cavity with a
plug fit, such that a compressive force directed against at least
one of said walls, and having a magnitude in excess of a
predetermined threshold value, will cause at least a portion of
the arm contact member to become expelled from said cavity.
Appellants contend that Scherf lacks a plug fit arm contact member
that is expelled from a cavity. (App. Br. 5-6.) Appellants suggest that the
claimed arm contact member is frustum-shaped such that a side impact on
the armrest “causes a ramping effecting” and “a wedging type of armrest
expulsion.” (App. Br. 5, 6.) Appellants’ position is not commensurate with
the scope of claim 1. The claim does not require the member to have a
particular shape. (Compare claim 1 with claim 13 (reciting “a generally
frustum-shaped arm contact member”).) Appellants point to Paragraph 16
of the Specification as supporting their argument. (App. Br. 5.) Although
Paragraph 16 does describes the arm contact member as frustum-shaped, that
discussion is found in the description of the preferred embodiments. (See
Spec. 4, [Para 16]). The language of claim 1 is broader than that particular
embodiment, and we decline to incorporate a frustum-shape limitation into
the claim. The ordinary meaning of plug is an object used to fill a hole
tightly. (Fact 1.) Therefore, in the context of Appellants’ claimed invention,
a plug fit means the arm contact member tightly fills the opening of the
cavity.
7
Appeal 2008-4570
Application 11/308,467

Appellants argue that Scherf does not disclose a plug fit. (App. Br. 6.)
We disagree. Scherf discloses a collapsible armrest with a top plate 40 that
sits on top of the ribs 32. (Facts 3-4.) The ridges 44 on the underside of the
top plate 40 tightly fill the openings of the cavities formed by the ribs 32.
(Fact 5.) Thus, Scherf does disclose a plug fit.
Appellants also argue that Scherf’s top plate is not expelled but is
self-removing because it buckles when a crushing load is applied to the top
plate. (Id.; see also Response to Examiner’s Answer 2.) Appellants are
correct in that Scherf’s top plate buckles when an adequate force is applied
to the top plate (Fact 6). However, we also agree with the Examiner (Ans.
6) that a side impact to Scherf’s ribs would expel the top plate. (Fact 7.)
As to independent apparatus claim 9, Appellants argue that “Scherf
contains neither any teaching nor any suggestion of a plug fit of an arm
contacting member into a cavity formed in the mounting base of the armrest,
such that crushing forces imposed upon the armrest squeeze the arm contact
member from its cavity.” (App. Br. 7.) Appellants’ arguments are not
persuasive. First, claim 9 (reciting “an arm contact member inserted into
said cavity such that …”) does not require a plug fit. Second, Scherf’s top
plate is inserted into the armrest cavity such that a side impact to the ribs
would squeeze the plate from the cavity. (Fact 7.)
Appellants have not persuaded us that the Examiner erred in finding
independent claims 1 and 9 anticipated by Scherf. Accordingly, we affirm
the rejection of claims 1 and 9. Appellants do not offer separate arguments
for the patentability of claims 2, 4, 5, 7, and 8 (which depend from claim 1)
or claims 10-12 (which depend from claim 9). (See App. Br. 6, 7.) As such,
we also affirm the rejection of those dependent claims.
8
Appeal 2008-4570
Application 11/308,467

The Rejection of Claim 3 Under 35 U.S.C. § 103(a) as Unpatentable Over
Scherf and Lueck
Claim 3 depends from claim 1 and further recites a mounting base that
comprises a center storage console. The Examiner relied upon Lueck for the
teaching of the center console. (Ans. 4.) Appellants do not dispute the
Examiner’s finding in this regard or challenge the Examiner’s rationale to
combine the references. (See App. Br. 7.) Rather, Appellants merely
assert that the rejection is unsustainable for the reasons given previously
concerning the anticipation rejection. (Id.) As discussed above, we are not
persuaded by those arguments. Therefore, Appellants have not shown the
Examiner’s rejection of claim 3 to be erroneous.

The Rejection of Claims 13-15 Under 35 U.S.C. § 103(a) as Unpatentable
Over Scherf and Cowelchuk
Independent claim 13 recites “a plurality of sidewalls … defining a
generally frustum-shaped cavity” and “a generally frustum-shaped arm
contact inserted into said cavity.” The Appellants contend that the
references do not teach the claimed invention. (App. Br. 8.)
The Examiner found that “Figure 3 of Scherf shows the cavity formed
between the walls (32) to be generally frustum-shaped, as broadly claimed.”
(Ans. 7; see also id. 5.) However, the Examiner also states that “Scherf does
not disclose the claimed shape of the cavity.” (Ans. 5; see also Final Rej. 4.)
We agree with the latter statement, as we fail to see how Scherf’s Figure 3
discloses a generally frustum-shaped cavity. A frustum shape is the part of a
solid between two parallel planes cutting the solid (e.g., a truncated
pyramid). (Fact 2.) Scherf’s Figure 3 depicts several walls 32 with
9
Appeal 2008-4570
Application 11/308,467

triangular shaped cavities between the walls, but does not appear to have
a cavity with two, generally parallel cutting planes.
The Examiner also relied upon Cowelchuk for the teaching of a cavity
having a frustum-shape. (Ans. 5.) The Examiner points to Cowelchuk’s
Figure 4 as showing frustum-shaped cavities formed between the raised
projections 42. (Ans. 7.) The Examiner reasoned that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to form the cavity of Scherf
with a substantially frustum-shape, as taught by Cowelchuk et
al., by spacing adjacent sidewalls apart at the mounting base to
tune the energy absorbing characteristics of the deconstructable
armrest.
(Ans. 5.)
We find the Examiner’s reasoning to modify Scherf’s cavity to make
it frustum-shaped as taught by Cowelchuk to be deficient in this case.
Cowelchuk’s armrest insert (backing member 24a) is rectangular-shaped
with open, generally frustum-shaped cavities between the projections 42 on
the top of the insert. (Cowelchuk, Fig. 4.) These cavities allow the top of
the armrest to deflect, resulting in a soft feel. (See Cowelchuk, col. 4, ll. 8-
19.) Thus, Cowelchuk suggests using a rectangular insert with material
removed therefrom rather than inserting material into a generally
frustum-shaped cavity. The Examiner does not adequately explain why
a person of ordinary skill in the art would have considered using a
frustum-shaped cavity into which a frustum-shaped contact member is
inserted as recited in claim 13. Thus, the Examiner has failed to present a
prima facie case of obviousness. The rejection of dependent claims 14 and
15 rely upon the underlying rejection of independent claim 13, and thus we
cannot sustain the rejection of those claims.
10
Appeal 2008-4570
Application 11/308,467

The Rejection of Claim 16 Under 35 U.S.C. § 103(a) as Unpatentable Over
Scherf, Cowelchuk, and Lueck
The Examiner relied upon Lueck for the teaching of the center storage
console recited in claim 16. (Ans. 6.) Claim 16 depends from independent
claim 13. The Examiner has failed to present a prima facie case of
obviousness of independent claim 13 over Scherf and Cowelchuk. Lueck
does not cure the deficiencies of that rejection. As such, we do not sustain
the Examiner’s rejection of claim 16.

CONCLUSIONS
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over
Scherf and Cowelchuk, and in rejecting claim 16 under 35 U.S.C. § 103(a)
as unpatentable over Scherf, Cowelchuk, and Lueck.
We further conclude that the Appellants have failed to show that
the Examiner erred in rejecting claims 1, 2, 4, 5, and 7-12 under 35 U.S.C.
§ 102(b) as anticipated by Scherf, and in rejecting claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Scherf and Lueck.

DECISION
The decision of the Examiner to reject claims 13-16 is reversed. The
decision of the Examiner to reject claims 1, 2, 4, 5, and 7-12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

11
Appeal 2008-4570
Application 11/308,467

AFFIRMED-IN-PART
JRG

Dickinson Wright PLLC
38525 Woodward Avenue
Suite 2000
Bloomfield Hills, MI 48304
12