Ex Parte Gupta et alDownload PDFPatent Trial and Appeal BoardMar 28, 201711232238 (P.T.A.B. Mar. 28, 2017) Copy Citation 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. 11/232,238 09/22/2005 Manish Gupta 16240.M322 5171 28410 7590 03/30/2017 BERENATO & WHITE, LLC 6550 ROCK SPRING DRIVE SUITE 240 BETHESDA, MD 20817 EXAMINER KOKKINOS, NICHOLAS C ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 03/30/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): uspto.filings@bw-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANISH GUPTA, TAMRA WILLIAMS, and TANK LONNIE REID Appeal 2016-001684 Application 11/232,238 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and DONNA M. PRAISS, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001684 Application 11/232,238 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4—15, 17—19, 22—25, 27, 35—39, 41—46.2 (App. Br. 2.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants state that the invention is directed to an impact resistant door facing including a rectangular sheet of molded hardened polymeric material having first and second opposing major surfaces and a porous mat having a continuous structure integrally molded into the sheet. (Spec. 2,11. 10-14.) Claims 1 and 39, reproduced below, are representative of the subject matter on appeal. 1. An impact resistant door facing, consisting essentially of: a compression molded, hardened rectangular sheet comprising a sheet molding compound, the sheet molding compound establishing first and second opposing major surfaces of the compression molded, hardened rectangular sheet; and a porous mat having a continuous structure integrally molded into and permeated by the sheet molding compound, wherein at least one of the major surfaces made of the sheet molding compound is unbroken by the porous mat. 1 This Decision refers to Appellants’ Appeal Brief (“App. Br.,” filed March 16, 2015), Examiner’s Answer (“Ans.,” mailed September 23, 2015), Appellants’ Reply Brief (“Reply Br.,” filed November 23, 2015), Final Office Action (“Final Act.,” mailed July 18, 2014), and Advisory Action (“Adv. Act.,” mailed November 6, 2014). 2 Claims 2, 3, 16, 20, 21, 26, 28—34 and 40 have been canceled. (App. Br. 2.) 2 Appeal 2016-001684 Application 11/232,238 39. A door facing, consisting essentially of: a rectangular sheet of molded hardened polymeric material, wherein the rectangular sheet has a first surface and a second surface; and a porous mat is integrally molded into the second surface of the rectangular sheet, and wherein the door facing is configured to substantially withstand an impact on the first surface of the rectangular sheet attributable to hurricanes and dissipate impact energy across the door facing such that the door facing is impact resistant according to at least one of a ASTM [American Society of Testing Materials] test method and a Dade County, Fla. Hurricane test. (App. Br. 68, 73—74, Clm. App’x.) THE REJECTIONS The Examiner rejected claims 39, 41, 42, and 45 under 35 U.S.C. § 102(b) as anticipated by Roehr.3 The Examiner rejected claims 1, 4—15, 17—19, 22—25, 27, 35—38, 43, 44, and 46 under 35 U.S.C. § 103(a) as follows: Claims 1,4, 17, and 35 as obvious over Roehr and Ongena;4 Claim 36 as obvious over Roehr, Ongena, and Choi;5 Claim 5 as obvious over Roehr, Ongena, and Gross;6 Claims 6—8 as obvious over Roehr, Ongena, Gross, and McBain;7 Claim 9 as obvious over Roehr, Ongena, and Carley;8 3 US 2003/0155066 Al, published on August 21, 2003. 4 U.S. Patent 4,668,460 issued May 26, 1987. 5 US 2002/0042468 Al published on April 11, 2002. 6 U.S. Patent No. 4,340,562 issued July 20, 1982. 7 U.S. Patent No. 5,342,554 issued August 30, 1994. 8 U.S. Patent No. 4,532,169 issued July 30, 1985. 3 Appeal 2016-001684 Application 11/232,238 Claim 10 as obvious over Roehr, Ongena, and Curzio;9 Claim 11 as obvious over Roehr, Ongena, and D’Amico;10 Claims 12 and 13 as obvious over Roehr, Ongena, and Ma;* 11 Claim 14 as obvious over Roehr, Ongena, Ma, and Ryan;12 Claim 15 as obvious over Roehr, Ongena, Ma, and Wanat;13 Claim 18 as obvious over Roehr, Ongena, and Chrysler Town & Country;14 Claims 19, 22, 27, and 37 as obvious over Roehr, Ongena, and West;15 Claim 23 as obvious over Roehr, Ongena, West, and Gross; Claim 24 as obvious over Roehr, Ongena, West, and Carley; Claim 25 as obvious over Roehr, Ongena, West, and Curzio; Claim 38 as obvious over Roehr, Ongena, West, and Choi; Claim 46 as obvious over Roehr and Chrysler Town & Country; Claim 44 as obvious over Roehr and D’Amico; and Claim 43 as obvious over Roehr, Gross, and McBain. (Final Act. 5—31.) 9 U.S. Patent No. 5,433,998 issued July 18, 1995. 10 U.S. Patent No. 4,824,507 issued April 25, 1989. 11 U.S. Patent No. 4,622,192 issued November 11, 1986. 12 U.S. Patent No. 6,576,331 B1 issued June 10, 2003. 13 U.S. Patent No. 1,661,982 issued March 6, 1928. 14 1986 Chrysler Town and Country Wagon. http://www.murrayco.com/Car_Collection/1986%20Chrysler%20Town%20 &%20Country.html 2/24/2010. 15 U.S. Patent No. 6,487,824 B1 issued December 3, 2002. 4 Appeal 2016-001684 Application 11/232,238 DISCUSSION Appellants have argued certain claims subject to each of the grounds of rejection separately. Accordingly, we confine our discussion to independent claims 1,19, and 39, which contain claim limitations representative of the arguments made by Appellants, and address other claims only to the extent that Appellants have argued them separately pursuant to 37 C.F.R. § 41.37(c)( 1 )(vii). In addition, for dependent claims subject to further grounds of rejection, but for which Appellants rely on arguments made for the independent claims, our discussion of the independent claims should be understood to apply to those rejections as well. Claim Construction During examination, claims terms must be given their broadest reasonable construction consistent with the Specification. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations that are not a part of the claim should not be imported into the claim. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In the Answer, the Examiner stated that the door facing of claims 1, 4—15, 17—19, 22—25, 27, and 35—39 need only be ‘“impact resistant,’ which is broadly interpreted consistent with its plain meaning and the specification.” (Ans. 6.) The Examiner stated further that claims 39 and 41—46 “are interpreted as requiring that the door facing be able to ‘substantially withstand’ any impact on the first surface ‘attributable to 5 Appeal 2016-001684 Application 11/232,238 hurricanes’ and dissipate the energy per an ASTM test method or any Dade County, Fla. test.”16 (Id.) Appellants argue that the doors and door facings are designed to withstand impact from flying debris associated with high velocity winds experienced during a hurricane and the Examiner’s construction “would read on most doors and door facings, because they are resistant to impact from various materials that will not damage the door facing or door.” (Reply Br. 2.) Appellants contend also that there is only one Dade County and one ASTM standard for hurricane debris impact for doors, and as a result, construing the claims to meet other standards that do not relate to hurricane impact for doors would not be reasonable. (Reply Br. 2—3.) Regarding claims 1 and 19, we agree with the Examiner and adopt the Examiner’s construction that the door facing and door recited in claims 1 and 19 need only be impact resistant to any degree in order to satisfy the claims. Although the Specification may be directed to withstanding certain impacts from flying degree as associated with hurricanes, claims 1 and 19 set forth no specific requirements for the impact resistance consistent with such arguments. Appellants have had ample opportunity to amend the claims to recite more particular impact resistance requirements, but have chosen not to amend the claims in that regard. Accordingly, we will not read any particular impact resistance properties of the claimed door facing from the Specification into the claims. 16 The Examiner had rejected claim 39 previously as being indefinite among other things because the Specification and claims did not specify a particular ASTM or Dade County Florida hurricane test. (Final Act. 4—5, Adv. Act. 3— 6.) However, the Examiner withdrew this rejection in the Examiner’s Answer. (Ans. 5, 26.) 6 Appeal 2016-001684 Application 11/232,238 Regarding claim 39, the Examiner interpreted the claim “as requiring that the door facing be able to ‘substantially withstand’ any impact on the first surface ‘attributable to hurricanes’ and dissipate energy per any ASTM test method or any Dade County, Fla. test.” (Ans. 6.) We agree with and adopt the Examiner’s construction, which we determine is the broadest reasonable construction consistent with the Specification. Although the claim recites that the door facing is configured to substantially withstand “an impact. . . attributable to hurricanes,” by also reciting that the door facing is impact resistant “according to at least one of a[n] ASTM test method,” the claim does not identify any particular ASTM method. The Specification states that door facings according to the invention are “impact resistant under ASTM test methods and the Dade County, Florida hurricane test” stating further that the first major surface is “an engineered structure that dissipates energy arising from impacts, such as impacts attributable to hurricanes.” (Spec. 8,11. 13—19.) However, the Specification references ASTM methods plural, “[fjacing 10 is impact resistant under ASTM test methods” (Spec. 8,11. 14—15), whereas Appellants contend that there is one particular ASTM method that is satisfied. Moreover, claim 39 recites only that the claim must “substantially” withstand impact attributable to hurricanes. Thus, the Examiner’s interpretation comports with the broadest reasonable interpretation of the claims in light of the Specification. 7 Appeal 2016-001684 Application 11/232,238 Anticipation Rejection Claim 39 — Roehr The Examiner found that Roehr discloses a door facing in the form of a tailgate panel disclosed therein, because “it is the outer panel in a tailgate, which is a type of vehicle door.” (Final Act. 5—7, citing Roehr, panel 18, Fig. 10, page 1, paragraph 21.) The Examiner stated that with respect to the transitional phrase “consisting essentially of,” the Specification did not indicate what features are directed to the basic and novel feature of the invention, and therefore the Examiner was interpreting the phrase to be equivalent to the open “comprising” language. (Final Act. 5—6.) Regarding the impact resistance recited in claim 39, the Examiner found that such features were inherent to the door facing in Roehr, because Roehr discloses the same structure and materials as the door facing recited in the claims, namely, a rectangular sheet of molded hardened polymeric material and the porous mat, and because an outer panel for a tailgate would be expected to be impact resistant. (Final. Act. 7.) Appellants contend that Roehr does not anticipate claim 39 because claim 39 recites the transitional phrase “consisting essentially of’ and the Specification discloses that the impact resistant door facing includes only two elements, a rectangular sheet of molded hardened polymeric material and a porous mat coupled to the second surface of the rectangular sheet. (App. Br. 12.) Asa result, Appellants contend that because Roehr discloses three layers in making up its sheet of material used in both the outer and inner tailgate panels disclosed therein, Roehr does not anticipate the claimed invention. (App. Br. 14—17; Reply Br. 3—5.) 8 Appeal 2016-001684 Application 11/232,238 Accordingly, the dispositive issue for this rejection is: Did the Examiner reversibly err in finding that Roehr’s three-layer panel structure anticipates claim 39? Analysis We are not persuaded by Appellants’ arguments that because Roehr discloses a porous mat sandwiched between two layers of sheet molding compound (“SMC”), Roehr does not anticipate the door facing recited in the claims. Roehr discloses that a woven fiberglass mat is sandwiched between polymer sheets and then molded such that the polymer material is impregnated directly into the reinforcing fiberglass mat. (Roehr, para. 22; Fig. 5.) The transitional phrase ‘“consisting essentially of limits the scope of a claim to the specified ingredients and those that do not materially affect the basic and novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551—52 (CCPA 1976) (emphasis in original). If applicants contend that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicants have the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964). We agree with the Examiner that the Specification, although describing a rectangular sheet and a porous mat as providing the claimed impact resistance, does not provide guidance as to what would constitute a material change in the basic and novel characteristics of the invention. (Ans. 7.) That is, the Specification provides no basis to find that an additional 9 Appeal 2016-001684 Application 11/232,238 layer of polymeric material would affect the basic and novel characteristics of the invention. Roehr discloses woven fiberglass mat 25, which is sandwiched between two polymer sheets (26, 27) made of sheet molding compound to form a sheet of material 28. (Roehr para. 22, Fig. 5.) Although there is an additional or third layer of SMC in Roehr beyond what is recited in claim 39, such layer is oriented toward the inner side 32 with shaped ribs 33 and cross ribs 34 to form the tailgate panel 18. (Roehr paras. 22, 27, Figs. 8, 10.) The ribs 33 and cross ribs 34 correspond to the frame and core material of the door, which Appellants admit do not affect the basic and novel characteristics of the invention. (App. Br. 12—13.) Importantly, the additional layer in Roehr is not exposed to the side of the molded material that is exposed to potential impact. Appellants do not point out with any particularity or direct us to any persuasive evidence that would indicate another layer of sheet molding compound would affect the impact resistance of the door facing. (Reply Br. 3—4.) In addition, it is difficult to reconcile Appellants’ position that adhesive resin or SMC paste applied to mat does not materially affect the impact resistance capability of the door facing (App. Br. 13—14) with Appellants’ argument that another layer of hardened molded material would negatively impact the impact resistance properties. (App. Br. 14—17; Reply Br. 4.) That is, it is not clear what criteria Appellants are using to make the determination that SMC paste impregnated into the mat 18 and present in the finished product (Spec. 6,11. 5—11) would not affect the impact resistance, whereas a third layer of SMC in Roehr would affect the impact resistance. Accordingly, Appellants have not provided a sufficient explanation as to 10 Appeal 2016-001684 Application 11/232,238 how an additional SMC layer present in Roehr would affect the basic and novel characteristics of the invention. With particular reference to Appellants’ argument that the tailgate of Roehr does not constitute a door (App. Br. 15), and as such, the tailgate would not be configured to be impact resistant according to the ASTM or Dade County standards, we observe that Appellants provide no persuasive evidence to support their position that a tailgate would not be considered a door. The Examiner found that a door is “any closure on any structure, vehicle or other place.” (Ans. 9.) Appellants have provided no objective evidence to contradict the Examiner’s finding. It is the structural components of Roehr’s tailgate, i.e., a rectangular sheet of molded hardened material and an integrally molded porous mat, which were found by the Examiner to be taught by Roehr and that would result in the impact resistance requirements of the claims. (Final Act. 7.) Appellants have not shown that the Examiner erred in finding that Roehr anticipates claim 39. Accordingly, we affirm the Examiner’s rejection of claim 39, as well as dependent claims 41, 42, and 45, which Appellants have not argued separately, for the same reasons. Obviousness Rejections Claim 1 — Roehr in view of Ongena The Examiner found that Roehr did not teach that the mat is disposed within the sheet so that at least one of the major surfaces made of the sheet molding compound is unbroken by the porous mat as recited in claim 1. (Final Rej. 11.) The Examiner found that Ongena discloses that thermoplastic structures are subject to surface defects by compression 11 Appeal 2016-001684 Application 11/232,238 molding, discloses a process of coating molded products in-mold to combat such problems, and provides an alternative to traditional steel tailgates. (Final Rej. 11—12.) The Examiner concluded that it would have been obvious to have used the techniques suggested by Ongena to form the composite of Roehr in order to produce a superior “class ‘A’” 17 unbroken major surface, thus ensuring that at least one major surface made out of sheet molding compound is unbroken by the porous mat. (Final Rej. 12.) Regarding the combination of Roehr and Ongena, in addition to the arguments set forth for Roehr above, Appellants argue further that the Examiner did not consider the claim limitations as a whole in applying the teachings of Ongena relating to a single layer film absent of surface defects, because the claims require that the major surfaces are unbroken by the porous mat and Ongena fails to teach manufacturing a compression molded film in combination with a porous mat. (App. Br. 21—22.) Appellants argue that neither Roehr nor Ongena teaches the combination of a major surface unbroken by a porous mat. (App. Br. 24; Reply Br. 6—7.) Appellants contend that because Ongena is directed to liquid base material and Roehr starts with a solid material having three layers, the two references cannot be combined because the molding methods used in each reference are different, leading to unpredictable results. (App. Br. 23—24.) Accordingly, the dispositive issue for this rejection is: Did the Examiner err in concluding that the combination of Roehr and Ongena would result in a mat disposed within the sheet so that at least one of 17 According to Ongena, a “class ‘A’” surface is a surface of a molded product that conforms to certain surface standards as set forth in brochure MD 79-012 of General Motors entitled “Molded Coating Process and Specifications.” (Col. 1,11. 18-24,40-44.) 12 Appeal 2016-001684 Application 11/232,238 the major surfaces made of the sheet molding compound is unbroken by the porous mat as recited in claim 1 ? Analysis We shall affirm the Examiner’s rejection for the reasons that follow. We understand the Examiner’s reasoning to be that methods of Ongena would have been used by one of ordinary skill in the art in conjunction with the methods of Roehr to produce a class “A” surface that is smooth and, as a result, unbroken. Appellants’ argument appears to be that the Examiner’s combination does not meet the claim language because a layer of SMC applied as a coating does not produce a major surface made of SMC that is unbroken by the porous mat. (Reply Br. 7.) The Examiner determined that the “claims do not recite any particular number or structure of ‘layers.’” (Ans. 13.) Claim 1 recites a “hardened rectangular sheet comprising a sheet molding compound,” and that the sheet molding compound “establishes] first and second opposing major surfaces of the compression molded, hardened rectangular sheet.” Claim 1 also recites that the porous mat is “integrally molded into and permeated by the sheet molding compound” and that “at least one of the major surfaces made of the sheet molding compound is unbroken by the porous mat.” Thus, according to claim 1, the major surfaces are established by sheet molding compound, which are unbroken by the porous mat. Appellants have not considered the Examiner’s rejection as a whole. Roehr discloses sheet molding compound that is impregnated into the porous mat. (Roehr, para. 22.) We observe also that Roehr discloses that molded tailgates have “surface finish requirements” such that molded tailgates are “visually indistinguishable from a painted steel tailgate.” (Roehr, para. 5.) 13 Appeal 2016-001684 Application 11/232,238 Ongena discloses specifically, that the coating material may be sheet molding compound. (Ongena, col. 5,11. 33—47.) Ongena discloses that the molded part is subject to “at least partial[] curing” so that the “surface is receptive to a coating.” (Col. 2,11. 29-35.) Accordingly, consistent with the Examiner’s finding that Roehr fails to disclose an unbroken surface, the result of the combination of Roehr and Ongena is a molded article that has a smooth major surface of sheet molding compound. The sheet molding compound would be impregnated into the exposed surface of the porous mat to some extent consistent with the teaching in Ongena that the molded article to be coated need only be partially cured. Thus, the claim language that the porous mat is permeated by sheet molding compound, and the major surface of sheet molding compound is unbroken by the porous mat would be met by the Examiner’s combination. Therefore, Appellants’ argument is not persuasive. In addition, we agree with the Examiner, that Appellants have not provided sufficient evidence to support the technical arguments that the combination of Roehr and Ongena would have been unpredictable. (Ans. 14—16.) The mere fact that each reference starts with a solid or a liquid material does not provide sufficient basis for error in the Examiner’s rejection. Appellants appear to be focusing on each reference individually rather than what the collective teachings of the references would inform one of ordinary skill in the art. In responding to a prima facie case of obviousness, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 14 Appeal 2016-001684 Application 11/232,238 Regarding the difference in pressure, as the Examiner points out, Appellants have not provided support for the alleged calculations giving rise to the alleged difference in pressures between Ongena and Roehr. (Ans. 15— 16.) In addition, Appellants have not accounted for any necessary modifications that would be provided in applying the system of Ongena to the system of Roehr within the skill of one of ordinary skill in the art. Claim 36 —Roehr, Ongena, and Choi Regarding claim 36, Appellants argue that Choi discloses a sheet molding having 20—35% by weight of fiberglass is “very different” than the claimed range of about 10% and 18% by weight chopped fiberglass. (App. Br. 27—28.) Appellants argue that reducing the amount of fiberglass in the sheet molding compound in Roehr, which discloses 50-60% by weight of fiberglass would reduce the strength and impact resistance of the material, which is important in truck tailgates, thus rendering Roehr unsatisfactory for its intended purpose. (App. Br. 28; Reply Br. 8.) Appellants also argue that Choi teaches away from combining with Roehr because Choi criticizes the use of higher fiber glass content as disclosed in Roehr. (Reply Br. 8.) The Examiner found that Choi’s disclosure of 20% by weight, constitutes “about 18% by weight.” (Final Act. 13.) Appellants do not explain sufficiently why the Examiner’s position in this regard is incorrect. The contention that Choi’s disclosure is different does not provide a sufficient basis to contradict the Examiner’s finding. The Examiner also found that the amount of chopped fiberglass was a result effective variable as to strength and the presence of surface defects. (Final Act. 13; Choi, para. 17.) Appellants emphasize that Roehr discloses 15 Appeal 2016-001684 Application 11/232,238 between 50-60% fiberglass, however Roehr discusses that amount in relation to the specific SMC used, and does not discuss any particular considerations in choosing the particular amount of fiberglass to be present in the SMC. (Roehr, para. 22.) Thus, there is no particular evidence that if the fiberglass present in the SMC of Roehr was lowered to the particular amounts disclosed in Choi, that Roehr would be unsuitable for its intended purpose. Accordingly, we are not persuaded by Appellants’ arguments that Choi teaches away from its combination of Roehr. Claims 5 and 11 —Roehr, Ongena, and Gross or D’Amico Regarding claim 5, the Examiner found that Gross discloses fiberglass mats should be pre-impregnated with resin to provide for ease of handling before the molding process begins. (Final Act. 14; Gross, col. 1,11. 41—68.) The Examiner concluded that it would have been obvious to have modified Roehr by pre-impregnating the fiberglass mat for that reason. (Final Act. 14.) Appellants argue that Gross is relied on only for the purpose of disclosing a fiberglass mat pre-impregnated with resin for ease of handling, but one of ordinary skill in the art would have recognized that any additional material applied to the mat would be unnecessary because any problems associated with the mat during the manufacturing process would have been eliminated, because the mat is already sandwiched between two polymer sheets. (App. Br. 30; Reply Br. 8—9.) Appellants make a similar argument for claim 11, regarding the application of D’Amico, which is relied upon for disclosing a fiberglass mat 16 Appeal 2016-001684 Application 11/232,238 placed in a mold apparatus such that a lip structure is created to improve safety and handling of the fiberglass article. (App. Br. 35—36; Final Act. 18.) We are not persuaded by Appellants’ arguments. For claim 5, as further explained by the Examiner in the Answer, the fiberglass mat will need to be handled at some point during production. (Ans. 18—19.) Appellants have not provided sufficient explanation of how the fiberglass mat being sandwiched between two polymer sheets renders the Examiner’s rationale erroneous. Regarding Appellants’ arguments in the Reply Brief concerning the different processes disclosed by Gross (Reply Br. 8—9), we observe that such arguments are improper because they were not raised in the Appeal Brief, no new positions regarding claim 5 were raised by the Examiner in the Answer, and Appellants have not provided an explanation that would amount to a showing of “good cause” warranting consideration of such arguments. 37 C.F.R. § 41.41(b)(2). For similar reasons, we are not persuaded by Appellants’ arguments with respect to claim 11. Accordingly, we affirm the Examiner’s rejection of claims 5 and 11. Regarding claim 44, which depends from claim 39, and which rejection also relies on D’Amico, Appellants present similar arguments as for claim 11. (App. Br. 60-61.) Accordingly, we affirm the Examiner’s rejection of claim 44 for the same reasons. Claims 12 and 13 — Roehr, Ongena, andMa Regarding claims 12 and 13, Appellants argue that Ma cannot be relied on to teach that the porous mat comprising a first piece of a porous 17 Appeal 2016-001684 Application 11/232,238 mat and a second piece of a porous mat because Ma discloses a single mat with three layers similar to what is disclosed in Roehr, and not a plurality of pieces of mats within a single article as recited in claim 12. (App. Br. 37.) The Examiner found that Roehr does not teach that the porous mat comprises first and second mats. (Final Act. 19.) The Examiner found that Ma discloses a stack of stampable polymer reinforced with fiber mat, which meets the first and second pieces of porous mats recited in claim 12. (Final Act. 19, citing Ma, col. 2,11. 5—12.) The Examiner concluded that it would have been obvious to have modified the structure of Roehr by applying multiple mat reinforcement to improve the strength of the resulting molded tailgate. (Final Act. 19.) We agree with the Examiner. That is, claim 12, which depends from claim 1, does not expressly limit the number of layers containing porous mats that may be used to form the door facing of claim 12. In this regard, Appellants have not explained how additional layers containing porous mat would affect the basic and novel characteristics of the invention. In addition, the Specification, while providing examples of embodiments containing “pieces of mat,” does not set forth any particular definition of what constitutes a “piece” of a porous mat to require a single mat “layer” within the article to be two pieces. (Spec. 8,11. 5—12.) Therefore, we affirm the Examiner’s rejection of claims 12 and 13. Claim 14 —Roehr, Ongena, Ma, and Ryan Regarding claim 14, which recites that “the first piece of the porous mat overlaps the second piece of the porous mat in a cross configuration,” Appellants argue that one of ordinary skill in the art would not have 18 Appeal 2016-001684 Application 11/232,238 combined the teachings of Ryan, which is related to poles, pilings, railroad cross-ties, and load carrying structures with the tailgate taught in Roehr. (App. Br. 39.) In addition, Appellants argue that even if combined, the prior art would still fail to disclose a first piece of a porous mat that overlaps the second piece of a porous mat in a cross configuration. (Id.) The Examiner relied on Ryan for the aspect of overlapping reinforcement, finding that Ryan discloses bamboo strips, which were analogous to a fiberglass mat as a reinforcing agent, that are surrounded by a plastic shell, which the Examiner stated is equivalent to SMC compound. (Final Act. 19—20.) We agree with Appellants. Ryan discloses a pallet having a top panel which may be formed of “a plurality of bamboo strips . . . which may be laid in layers with each layer being oriented at 90 degrees to adjacent layers or, in preferred form, with the strips woven into mats that can be laid atop one another to a desired number of layers.” (Col. 6,11. 43—52.) There is insufficient rational underpinnings to support the Examiner’s rejection that it would have been obvious to have formulated the tailgate of Roehr with overlapping pieces of porous mat. That is, Ryan discloses a choice between bamboo strips and woven mats. The Examiner does not adequately explain how Ma and Roehr would be modified with Ryan to meet the limitations of claim 14. Therefore, we reverse the Examiner’s rejection of claim 14. Claim 15 —Roehr, Ongena, Ma, and Wanat Regarding claim 15, Appellants argue that one of ordinary skill in the art would not divorce the disclosure of Wanat related to wooden planks in a 19 Appeal 2016-001684 Application 11/232,238 Z shape from the wooden door facing disclosed therein. (App. Br. 41; Reply Br. 10-11.) The Examiner found that Wanat discloses the concept of wooden planks in a “Z” configuration which are analogous to fiberglass mats, provide reinforcing qualities. (Final Rej. 21.) The Examiner concluded that it would have been obvious to apply this technique to the modified combined teachings of Roehr, Ongena, and Ma. (Id.) We agree with Appellants. The Examiner does not direct our attention to any particular disclosure of Wanat that suggest a “Z” pattern of the wood planks as a method of reinforcing the door. Wanat is directed to a door lock. (Page 1,11. 1—25.) Accordingly we agree with Appellants, and as a result, reverse the Examiner’s rejection of claim 15. Claim 18 —Roehr, Ongena, and Chrysler Town and Country Regarding claim 18, Appellants argue that Chrysler Town and Country does not disclose a wood grain textured surface as recited in claim 1, but rather is an image of a wood grain pattern, and as a result, is two- dimensional, and not textured. (App. Br. 33.) The Examiner found that Roehr and Ongena failed to disclose a wood grain textured area as recited in claim 18. The Examiner sated that it is well known that automobiles can contain this feature relying on Chrysler Town and Country for support. (Final Act. 21—22.) As a result, the Examiner concluded that it would have been obvious to have provided Roehr in view of Ongena with such a surface to improved aesthetic and stylistic qualities of the surface. 20 Appeal 2016-001684 Application 11/232,238 We agree with the Examiner. It is undisputed that Chrysler Town and Country discloses wood paneling. Wood grain paneling can be either smooth or textured, and we do not find such to be a patentable distinction. Appellants do not argue that making a wood grain surface textured or smooth is beyond the ability of one of ordinary skill in the art. Accordingly, we affirm the Examiner’s rejection of claim 18. For claim 46, which depends from claim 39 and which stands rejected over the combination of Roehr and Chrysler Town and Country, Appellants present similar arguments as for claim 18. (App. Br. 61—62.) Accordingly, we affirm the Examiner’s rejection of claim 46 for the same reasons. Claim 19 —Roehr, Ongena, West Regarding claim 19, the Examiner found that Roehr did not teach that the peripheral frame defined an outer edge of the door, relying on West for this missing feature and finding that West discloses that the edges of the door facings terminate exactly at the edge of the frame. (Final Act. 22.) The Examiner also found that doors in cars are expected to provide sound dampening via foam filling similar to entry doors. (Id.) The Examiner stated that in order to maximize insulation performance, increasing internal core material is needed such that the door faces extend to the edges of the frame in order to enclose the most possible core material. (Final Act. 23.) The Examiner concluded that it would have been obvious to modify the structure of Roehr and Ongena to terminate the faces at the edges of the door frame to increase the insulating efficiency of the door structure. (Id.) The Examiner also found that Roehr and Ongena do not teach that the porous mat is directly adjacent to the core portion of the door. (Id.) The Examiner 21 Appeal 2016-001684 Application 11/232,238 found that West teaches including a core portion directly under molded skin and that including a core portion in a door can be useful depending on the application of the door. (Final Act. 24.) The Examiner concluded that it would have been obvious to include a core so that the resultant door insulates against heat, sound, and other intrusions. (Id.) Appellants argue that modifying the tailgate of Roehr to include the compression door of West would render Roehr unsatisfactory for its intended purpose and change the principle of operation of the tailgate of Roehr. (App. Br. 46.) That is, Appellants argue that substituting the wooden stiles of West for the thermoplastic ribs in the frame of Roehr would likely decrease the impact resistance of the tailgate of Roehr thus rendering the tailgate of Roehr unsatisfactory for its intended purpose. (App. Br. 47; Reply Br. 12—13.) Appellants contend also that it is unclear how one of ordinary skill in the art would modify Roehr in view of West and even if combined the results would be unpredictable. (App. Br. 47-48; Reply Br. 11—12.) Appellants argue that the combined teachings of Roehr, Ongena, and West fail to disclose that the porous mat is directly adjacent to the core portion of the door as recited in claim 19. (App. Br. 48.) Accordingly, the dispositive issue for this rejection is: Did the Examiner reversibly err in concluding that it would have been obvious to have moved the supporting ribs of Roehr to the outside of the door in view of Ongena? Analysis We agree with Appellants that the Examiner erred in relying on West to modify the structure of Roehr in view of Ongena. That is, we agree with 22 Appeal 2016-001684 Application 11/232,238 Appellants that moving the support ribs of Roehr to the outside of the door as shown in West as articulated by the Examiner (Ans. 23—24) would appear to remove the reinforcing capability of the ribs. In addition, the reasons articulated by the Examiner in modifying Roehr and Ongena with West, to provide insulation against heat or sound, while important for an entry door, do not appear to be supported by rational underpinnings as it is unclear why such considerations would be of interest for a tailgate, particularly at the expense of providing support to the tailgate (by moving or eliminating the cross ribs of Roehr). (See Reply Br. 11—12.) Thus, we reverse the Examiner’s rejection of claim 19 and for the same reasons, claims 22, 27, and 37. Because the rejections of claims 23—25 and 38 fail to remedy the deficiencies discussed for the rejection of claim 19, we reverse the Examiner’s rejections of claims 23—25 and 38 as well. ORDER We affirm the Examiner’s decision rejecting claims 1, 4—13, 17, 18, 35, 36, 39, and 41—46. However, we reverse the Examiner’s decision to reject claims 14, 15, 19, 22-25,27, 37, and 38. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 23 Copy with citationCopy as parenthetical citation