Ex Parte Grgac et al

Patent Trial and Appeal Board

Aug 17, 2015

12746948 (P.T.A.B. Aug. 17, 2015)

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.
12/746,948 07/21/2010 Steven Grgac 707255US 3444
67410 7590 08/17/2015
MAGNA INTERNATIONAL, INC.
337 MAGNA DRIVE
AURORA, ON L4G-7K1
CANADA
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
08/17/2015 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 STEVEN GRGAC and BRADFORD D. ARMSTRONG
____________________

Appeal 2013-009703
Application 12/746,948
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 10 and 12–16 under 35 U.S.C. § 103(a) as being
unpatentable over Jones1 in view of Plastic Part Design,2 High Performance
Resins,3,4 and Resistive Implant Welding.5 Claims 1–9 and 17–23 are also

1 US 2004/0231628 A1, published Nov. 25, 2004.
2 R. A. Malloy, Plastic Part Design for Injection Moldings: An Introduction,
(Hanser Gardner Publications) 429–430 (1994).
3 S. Beland, High Performance Thermoplastic Resins and Their Composites, p. 128
(1991).
Appeal 2013-009703
Application 12/746,948

2
pending, but have been withdrawn from consideration and are not before us on
appeal.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to an assembly forming a butt joint
connected via resistive implant welding. The Appellants disclose that joining of
thermoplastic components, such as glass reinforced polypropylene, to other plastic
components made of similar materials has been achieved in the past via adhesives,
mechanical fasteners, laser welding, and/or sonic or vibration welding. Spec. p. 1,
ll. 16–19.
Claim 10 is reproduced below from the Claims Appendix of the Appeal
Brief dated April 4, 2013 (“App. Br.”). The limitations at issue are italicized.
10. An assembly forming a butt joint connected together through
the use of resistive implant welding comprising:

a butt joint formed from a first panel and a second panel connected
together;

a groove formed in a portion of said first panel;

a notch formed in said first panel, said notch extending along said first
panel and is substantially parallel to said groove;

a tongue portion formed in a portion of said second panel, said tongue
portion complementary in shape to, and operable for being positioned
in, said groove;

4 Although High Performance Resins is listed in the statement of the rejection on
page 2 of the Examiner’s Answer dated June 4, 2013 (“Ans.”), the Examiner does
not refer to any specific teachings of this reference in the body of the rejection.
5 Tan et al., Resistive Implant Welding of Glass Fiber Reinforced Polypropylene
Compounds, Soc’y Auto. Eng’rs 2006 World Congress & Exhibition, 1–11 (2006).
Appeal 2013-009703
Application 12/746,948

3
a flange formed on said second panel and complementary in shape to
said notch, said flange being operable to be engaged with said notch
when said tongue portion is positioned in said groove;

a smooth surface on a front face of said first panel and said second
panel created by said flange engaging said notch;

a resistive implant operable for being positioned in said groove and in
contact with said tongue portion when said tongue portion is
positioned in said groove such that when a current is applied to said
resistive implant, heat is generated, causing a portion of said tongue
portion to melt, and a portion of said groove to melt, and a melted
portion of said tongue portion will join a melted portion of said
groove portion after said tongue portion and said groove are allowed
to cool and connect said first panel and said second panel together to
form said butt joint;

a series of support members extending perpendicularly away from a
rear side of said second panel at intervals along said rear side; and

at least one slot formed between said series of support members and
said tongue portion, said at least one slot operable for receiving an
outer surface of said groove.

App. Br. 12 (emphasis added).

B. DISCUSSION
The Examiner finds that Jones discloses a butt joint formed between a first
panel and a second panel. Ans. 2. The Examiner finds that the first panel includes
a groove and a notch and the second panel includes a tongue portion and a flange.
Ans. 2. The Examiner finds Jones discloses a support member extending
perpendicularly away from a rear side of the second panel, with at least one slot
formed between the support member and the tongue portion. Ans. 3.
Appeal 2013-009703
Application 12/746,948

4
The Examiner finds Jones does not disclose a series of support members but
concludes it would have been obvious that the butt joint could comprise one
elongated joint having a series of support members consisting of ribs and indents to
facilitate snap fits along the device of Jones. Ans. 3. The Examiner further
concludes that it would have been obvious to make the support member a series of
support members to benefit material and cost savings. Ans. 3–4.
The Examiner further finds that Jones does not disclose a resistive implant
operable for being positioned in the groove to contact the tongue portion, such that,
when a current is applied to the resistive implant, heat is generated to cause
portions of the tongue portion and groove to melt and join, connecting the first and
second panels via a butt joint. Ans. 4.
The Examiner finds Plastic Part Design discloses the use of resistance
welding using a wire or braid placed in a joint interface, which is heated to soften
or melt a plastic mass in a local area and create a joint when pressure is applied.6
Ans. 4. The Examiner further finds Plastic Part Design discloses a resistance
welding process as a simple and fast process. Ans. 4. In addition, the Examiner
finds Resistive Implant Welding discloses resistive implant welding of fiber
reinforced polypropylene by using a stainless steel mesh. Ans. 4–5. The Examiner
finds Resistive Implant Welding discloses that the resulting joined materials
exhibit higher yield strengths than prior materials and that Resistive Implant
Welding discloses resistive welding techniques as an equivalent process to
adhesives. Ans. 5.

6 We note Plastic Part Design teaches that “[i]t is also possible to use wire mesh or
sacrificial metallic inserts as the electromagnetic welding material.” Plastic Part
Design, 430:6–8. We further note Plastic Part Design teaches that the strongest
joints using the resistance welding process are obtained when applied forces on the
parts result in shear forces at the welded joint, most commonly, tongue and groove
joints and step joints. Id. at 430:9–12.
Appeal 2013-009703
Application 12/746,948

5
The Examiner concludes it would have been obvious to substitute the
adhesive of the butt joint of Jones, per the teachings of Resistive Implant Welding,
with the welding techniques of Plastic Part Design and Resistive Implant Welding
to provide a butt joint created via a simple, fast process that provides materials
with high yield strength. Ans. 5.
The Appellants argue that Resistive Implant Welding does not establish
equivalence between resistive implant welding and adhesives. Reply Br. 2–4. In
the passage cited by the Examiner and the Appellants, page 1 of Resistive Implant
Welding states (with added emphasis):
An example of this is the Peugeot 806 bumper molded by Peguform
(France) from a sandwich of discontinuously reinforced composite
and a continuously reinforced sheet [12]. Rather than combine these
two materials in a mold, it is also possible to join them in a post-
molding operation using adhesives or welding operations.

Although Resistive Implant Welding does not specify “resistive implant
welding” in the above quoted passage, this does not amount to a reversible error.
The disclosure of Resistive Implant Welding is not merely directed to welding in
general, but rather is directed to the use of resistive implant welding to join
materials, particularly thermoplastic automotive components.7 In view of the fact
that the automotive components of Jones may also be fabricated from
thermoplastic material (Jones
¶ 14), Resistive Implant Welding would have taught one of ordinary skill in the art
that resistive implant welding is a suitable substitute for joining Jones’
components.
The Appellants also argue the Examiner relied upon impermissible
hindsight. App. Br. 7–8. In particular, the Appellants argue Jones does not

7 Resistive Implant Welding p. 1.
Appeal 2013-009703
Application 12/746,948

6
disclose or suggest using resistive implant welding with its mechanical snap fit
joint, which is joined via adhesives, and because Plastic Part Design and Resistive
Implant Welding do not disclose or suggest using resistive implant welding in the
butt joint of Jones. App. Br. 8–11 and Reply Br. 2–4.
It has been recognized that the question of obviousness involves hindsight
reasoning:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
The Appellants’ arguments regarding impermissible hindsight do not
demonstrate that the Examiner relied upon knowledge obtained only from the
Appellants’ disclosure. The Examiner has set forth a prima facie case of
obviousness based upon knowledge that was within the knowledge of those of
ordinary skill at the time of the Appellants’ invention, as evidenced by the applied
references. Here, the Examiner found that Jones discloses the joining of materials;
Plastic Part Design and Resistive Implant Welding disclose resistive implant
welding, another joining process, for the same kind of materials disclosed in Jones;
Plastic Part Design teaches resistive implant welding to be a simple and fast
process; and Resistive Implant Welding discloses that the process of resistive
implant welding provides joined materials having high yield strengths. Ans. 2–5.
Therefore, the Examiner’s conclusion of obviousness has been based upon the
disclosures of the applied references, not knowledge obtained only from
Appeal 2013-009703
Application 12/746,948

7
Appellants’ disclosure, and the Appellants’ arguments do not meet their burden of
rebutting the Examiner’s rejection.
The Appellants further argue that the combination of references set forth in
the rejection would change the principle of operation of the references because a
resistive implant welding process would destroy the snap fit joint disclosed by
Jones. App. Br. 8–9 and Reply Br. 4–6. This argument is unpersuasive for the
following reasons. First, the Examiner determines that the substitution of the
resistive welding techniques of Plastic Part Design and Resistive Implant Welding
would replace only the adhesives of Jones, not the snap fit joint of Jones. Ans. 7–
8. Second, the Examiner determines that the snap fit joint of Jones would function
to locate and hold two panels together until a permanent joint is provided, via the
adhesives of Jones or the welding techniques of Plastic Part Design and Resistive
Implant Welding, which would enhance the joint of Jones. Ans. 8.
Finally, the Appellants argue that the snap fit joint of Jones, which the
Examiner finds has a support member, does not function as a series of support
structures, as recited in claim 10. App. Br. 8. The Examiner determines that the
recitations of claim 10 directed to the series of support members are functional in
nature and that, under the broadest reasonable interpretation of the claims in light
of the Appellants’ Specification, the snap joint of Jones is deemed to function as a
support structure. Ans. 7; see also Ans. 3 (identifying a support member in
annotated Jones Fig. 3C). Moreover, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art to make the single support structure
of Jones a series of support members as claimed. See Ans. 3‒4. The Appellants
have not responded to the Examiner’s determinations and, thus, have not
demonstrated the Examiner reversibly erred.
Appeal 2013-009703
Application 12/746,948

8
For these reasons, and for those expressed in the Answer, the § 103(a)
rejection of claim 10 is sustained. Claims 12–16 have not been argued separately
and therefore fall with claim 10. 37 C.F.R. § 41.37(c)(iv).

C. DECISION
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).
AFFIRMED
cdc