12847288 (P.T.A.B. Sep. 11, 2017)

Ex Parte Hirt et al

Patent Trial and Appeal BoardSep 11, 2017

12847288 (P.T.A.B. Sep. 11, 2017)

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. 12/847,288 07/30/2010 Mark Hirt 509514 3636 53609 7590 09/25/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER CHENEVERT, PAUL A ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 09/25/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK HIRT, MARTIN HINZ, and DETLEF STEINHOFER Appeal 2015-002853 Application 12/847,288 Technology Center 3600 Before JAMES P. CALVE, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark Hirt et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—5, 7, 9-19, and 21—23, which are all the pending claims. Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Thyssenkrupp Steel Europe AG. Appeal Br. 2. Appeal 2015-002853 Application 12/847,288 CLAIMED SUBJECT MATTER Appellants’ disclosed invention “relates to a cockpit cross beam for a motor vehicle.” Spec. 11. Claim 1, reproduced below with emphasis added, is the sole independent claim and is representative of the subject matter on appeal. 1. A cockpit cross beam for a motor vehicle, the cockpit cross beam comprising: a one-piece structured metal section; wherein the metal section exhibits cross-sectional areas varying in the axial direction; wherein the metal section has connection elements for connecting the metal section to other structural parts of a motor vehicle body; wherein the metal section only extends within the region of the driver’s side of the cockpit beam; wherein the metal section has rotationally symmetric cross-sectional areas as connection elements at the ends; wherein the cross-sectional areas of the ends have a common rotational axis and at least partially a circular contour; and wherein the metal section has planar parallel lateral surfaces at least within the region of a steering column connection. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Edwards US 5,868,426 Feb. 9, 1999 Seksaria US 5,931,520 Aug. 3, 1999 Sutou US 6,517,139 B2 Feb. 11,2003 2 Appeal 2015-002853 Application 12/847,288 Brownlee US 6,644,690 B2 US 7,484,792 B2 US 7,735,905 B2 US 8,020,355 B2 US 8,141,404 B2 Nov. 11,2003 Feb. 3, 2009 June 15, 2010 Sept. 20, 2011 Mar. 27, 2012 Penner Mullen Monteiro Newport REJECTIONS The following rejections are before us for review: I. Claims 1—5, 9—16, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, and Sutou. Final Act. 3—8. II. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Monteiro. Id. at 8. III. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Penner. Id. at 9—10. IV. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, Brownlee, and Edwards. Id. at 10—11. V. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Newport. Id. Independent claim 1 recites, in relevant part, a cockpit cross beam for a motor vehicle, where the cockpit cross beam includes “a one-piece at 11-12. ANALYSIS 3 Appeal 2015-002853 Application 12/847,288 structured metal section” that “only extends within the region of the driver’s side of the cockpit beam,” and “has planar parallel lateral surfaces at least within the region of a steering column connection.” Appeal Br., Claims App. (emphasis added). All the other pending claims depend, directly or indirectly, from claim 1 and thus also include these recitations. See id. In rejecting the claims, for all Rejections I—V, the Examiner relies on a combination of teachings from Mullen, Seksaria, and Sutou. See Final Act. 3—12. Of particular relevance, the Examiner relies on Sutou for disclosing a metal section that has planar parallel lateral surfaces at least within the region of a steering column connection. Id. at 6 (citing Sutou’s bracket 15 A, shown in Fig. 1, as including the planar parallel lateral surfaces); see also Ans. 3 (clarifying that the rejection’s reliance on Sutou is “only employed to teach a box-shaped steering column support bracket”). As the requisite articulated reasoning for combining this disclosure from Sutou with a combination of teachings from Mullen and Seksaria, the Examiner states that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Mullen’s cockpit cross beam (as already modified by Seksaria) to include Sutou’s planar parallel lateral surfaces “to provide a rigid connection surface.” Final Act. 7—8. But the Examiner provides no factual evidence or persuasive technical reasoning to explain why such a further modification of Mullen’s modified cockpit cross beam—to include planar parallel lateral surfaces from Sutou—would “provide” any more of a “rigid connection surface” relative to the cross beams of Mullen or Seksaria alone, or even Mullen’s cross beam as modified by Seksaria. See id.', Ans. 2—3. 4 Appeal 2015-002853 Application 12/847,288 Appellants persuasively argue that the rejections are deficient because the Examiner’s combination of teachings from Mullen, Seksaria, and Sutou is not properly supported. See Appeal Br. 5—7; Reply Br. 5—7. In particular, Appellants assert that the stated reason for the combination is “without a rational underpinning because there is no objective reason [to] modify Mullen [with the teaching from Sutou,] given that Mullen and Seksaria each already teach rigid connection arrangements” (Reply Br. 5); thus, it “purports to solve a problem already solved” (id. at 7). See also Appeal Br. 6 (asserting that the stated basis for the combination is “to solve an apparently] non-existent problem of providing a more rigid connection,” such that the rejections are premised upon a combination that is “merely conclusory and thus without a rational underpinning”). We agree with Appellants that the rejection does not sufficiently explain why a person of ordinary skill in the art would have incorporated a teaching from Sutou based on the reason provided. See Appeal Br. 5—9; Reply Br. 5—7. In other words, the Examiner has not sufficiently articulated reasoning based on rational underpinnings as to why one skilled in the art would have been prompted to combine the teachings of Sutou with Mullen and Seksaria in the manner proposed. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “[^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” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Here, in response to Appellants’ arguments, the Examiner simply reiterates the conclusion that incorporating Sutou’s bracket 15A would “indeed provide a more rigid connection surface,” presumably 5 Appeal 2015-002853 Application 12/847,288 relative to those already provided within Mullen and Seksaria, but does not provide any additional explanation as to why incorporating such an isolated teaching would have been done. Ans. 2; see id. at 2—5. To the extent that the Examiner’s rationale is premised on a perceived benefit of incorporating planar lateral surfaces of Sutou’s cross beam, such a finding is not supported by evidence and is therefore speculative. The Examiner has not shown that the planar lateral surfaces of Sutou’s cross beam provide a connection surface that is any more rigid than the surfaces of Mullen or Seksaria. The Examiner’s further finding in the Answer that “replacing the thin brackets of [Mullen] with a box-shaped steering column support in order to provide a more rigid connection for the steering column (a box-shaped bracket is more rigid than thin brackets welded to the column which could easily twist during installation),” is not supported by a preponderance of the evidence. Ans. 3. As Appellants point out, Mullen teaches that thin brackets 21, 23 in Figure 2 are used for attaching defroster nozzle 20 to cowl 22. Reply Br. 5 (citing Mullen, col. 3,11. 1—7). In this regard, Mullen also teaches that beam assembly 18 is attached to instrument panel 14 and cowl 22 at points 15, 23, which appear to be similarly thin brackets. Mullen, col. 3,11. 2-4. As Appellants further point out, Mullen does not provide a teaching as to which element of Figure 2, if any, is used to support a steering column. See Reply Br. 6. Indeed, the Examiner does not cite to any portion of Mullen to support the finding that any particular element, whether an unidentified thin bracket or otherwise, is used to support a steering column. See Ans. 3. Rejections based on obviousness must rest on a factual basis; in making such a rejection, the Examiner has the initial burden of supplying the 6 Appeal 2015-002853 Application 12/847,288 requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Absent reliance on improper hindsight reconstruction, we do not see a sufficient reasoned explanation based on a rational underpinning as to why one of ordinary skill in the art would have been led to modify Mullen’s cross beam (as initially modified by Seksaria), which already includes rigid connection surfaces, to then incorporate Sutou’s bracket 15A, and a reason for such modification is not otherwise evident from the record. See Appeal Br. 7—8. Even if all the individual features of the claimed cockpit cross beam for a motor vehicle were collectively known in the art, we note that the Supreme Court has instmcted that a claim “composed of several [features] is not proved obvious merely by demonstrating that each [feature] was, independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418. Rather, a sustainable obviousness rejection further needs to explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328—30 (Fed. Cir. 2009). In this case, the rejections fail to meet this required standard. Appellants also argue that Sutou’s bracket 15A, as relied upon in the rejections, is deficient in teaching some claimed features—namely, that it is not disclosed as being part of a “one-piece structured metal section” (Appellants contend that it is a “separate component”), and that it does not disclose having “planar parallel lateral surfaces” (Appellants contend that the top and bottom surfaces identified by the Examiner “converge”), as 7 Appeal 2015-002853 Application 12/847,288 required by the claims. See Appeal Br. 11—14; Reply Br. 8—10. Regardless of whether Sutou’s bracket 15A is part of a “one-piece structured metal section” (e.g., Sutou’s support member 15), or separate therefrom, we agree with Appellants that the Examiner’s finding that bracket 15A includes “planar parallel lateral surfaces” is not supported by a preponderance of the evidence. See Final Act. 6; see also Ans. 8—9 (discussing “lateral” surfaces, but not including any explanation as to which surfaces would be “parallel”); Sutou, Fig. 1. In particular, we agree with Appellants’ observation that the identified top and bottom surfaces of Sutou’s bracket 15A appear to “converge” toward one another, “thereby making them non-parallel to one another.” Reply Br. 10 (emphasis added); see Sutou, Fig. 1. The Examiner does not direct us to any disclosure within Sutou, other than Figure 1, to describe the nature of the identified surfaces stated as being parallel. In relevant part, Sutou discloses only that “a steering column (not shown) is attached to a bracket 15 A provided on the right side to support the steering support member 15.” Sutou, col. 4,11. 14—16 (boldface omitted). For the reasons provided by Appellants regarding the distinction between Sutou’s apparent converging surfaces compared with the “planar parallel” surfaces required by the claims, we agree with Appellants that the evidence of record does not support the Examiner’s conclusion. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a proper prima facie case of obviousness. On this basis, we do not sustain the rejections. 8 Appeal 2015-002853 Application 12/847,288 DECISION We REVERSE the Examiner’s decision rejecting claims 1—5, 9—16, 19, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, and Sutou. We REVERSE the Examiner’s decision rejecting claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Monteiro. We REVERSE the Examiner’s decision rejecting claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Penner. We REVERSE the Examiner’s decision rejecting claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, Brownlee, and Edwards. We REVERSE the Examiner’s decision rejecting claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Mullen, Seksaria, Sutou, and Newport. REVERSED 9