Ex Parte HughesDownload PDFBoard of Patent Appeals and InterferencesSep 24, 201010867561 (B.P.A.I. Sep. 24, 2010) 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. 10/867,561 06/14/2004 Thomas Hughes 60130-2151; 01MRA0187 2039 26096 7590 09/27/2010 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER FLEMING, FAYE M ART UNIT PAPER NUMBER 3616 MAIL DATE DELIVERY MODE 09/27/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte THOMAS HUGHES ____________ Appeal 2009-008411 Application 10/867,561 Technology Center 3600 Before: LINDA E. HORNER, JENNIFER D. BAHR, and FRED A. SILVERBERG, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 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. Appeal 2009-008411 Application 10/867,561 2 STATEMENT OF THE CASE Thomas Hughes (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-4, 6-15, 17, and 18, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s claimed invention is a composite suspension trailing arm and a method of making the same. Spec.1, para. [2]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A suspension trailing arm made of a composite material for a heavy commercial vehicle, the suspension trailing arm comprising: an axle locating portion integral with the suspension trailing arm; a chassis mounting feature to mount the suspension trailing arm to a chassis component of a vehicle; and a spring mounting feature integral with the suspension trailing arm, wherein the axle locating portion is located between the chassis mounting feature and the spring mounting feature, the suspension trailing arm is made of a composite material, and the composite material includes a matrix material and a reinforcement material. THE REJECTION Appellant seeks review of the Examiner’s rejection of claims 1-4, 6-15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable in view of the Appellant’s Admitted Prior Art (Figure 3) (hereinafter “AAPA”) and Obeshaw (US 6,893,733 B2, issued May 17, 2005). ISSUES The issues presented by this appeal are: 1. Is Obeshaw analogous art to Appellant’s claimed invention? Appeal 2009-008411 Application 10/867,561 3 2. Would the Examiner’s proposed modification to the AAPA render it unsatisfactory for its intended purpose? 3. Is the Examiner’s proposed modification to the AAPA based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified the AAPA to be manufactured of a composite material as taught by Obeshaw to reach the subject matter of claim 1? 4. Would one having ordinary skill in the art found it obvious to use adhesive in place of welding to inhibit rotation between the axle locating portion and the axle, as called for in claim 2? 5. Would the non-circular or oval shaped axle locating portions called for in claims 3 and 18, respectively, have been obvious variations of the prior art circular axle locating portion? 6. Does Obeshaw disclose use of a single fiber surrounded by a resin as called for in claims 12 and 15? 7. Is the limitation of claim 17 that the axle locating portion and the suspension trailing arm are formed in one piece a product-by-process limitation? ANALYSIS Claims 1, 4, 6-11, 13, and 14 The Examiner found the AAPA discloses the subject matter of claim 1 except that the trailing arm is not made of a composite material.2 Ans. 3. The Examiner found that Obeshaw discloses making structural members for vehicles of composite materials to reduce vehicle weight to improve fuel 2 The Examiner initially finds that the trailing arm 132 of the AAPA is made of composite material, and later finds the trailing arm of the AAPA is not made of a composite material. Ans. 3. The former finding is erroneous. Appeal 2009-008411 Application 10/867,561 4 efficiency. Ans. 3-5. The Examiner concluded that it would have been obvious to modify the trailing arm of the AAPA to be made of a composite material, as taught by Obeshaw, to reduce vehicle weight to improve fuel efficiency. Ans. 5. Appellant argues claims 1, 4, 6-11, 13, and 14 as a group. App. Br. 3- 5. We select claim 1 as the representative claim, and claims 4, 6-11, 13, and 14 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Analogous Art Appellant argues that Obeshaw is not analogous art to Appellant’s claimed invention because Appellant’s device is in the field of trailing arms while Obeshaw discloses various composite vehicle components that are cylindrical or crushable. App. Br. 4. Appellant also argues that Obeshaw is not analogous art to Appellant’s claimed invention because Obeshaw relates to the problem of using composites to enhance crushability while Appellant’s problem relates to creating a trailing arm that provides for vehicle handling and a smooth ride. App. Br. 4-5. We consider these contentions in turn. “The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-7 (Fed. Cir. 2004). “‘A reference is reasonably pertinent if, even though it Appeal 2009-008411 Application 10/867,561 5 may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “In other words, ‘familiar items may have obvious uses beyond their primary purposes.’” In re ICON Health and Fitness, Inc, 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)). Regarding the field of endeavor, the structure and function of Appellant’s trailing arm is a lightweight arm that provides suspension connecting the chassis and axle of a vehicle that allows articulation forces induced during vehicle use to be taken up, such as by flexing of the trailing arm. Spec. 1, paras. [2]-[3]; id. at 2, paras. [8], [13]. In other words, Appellant’s claimed invention is a lightweight connection that flexes to absorb forces. Obeshaw discloses similar structure and function in that Obeshaw’s invention is directed to lightweight structural members, such as for use in motor vehicles, having various sufficient flexural structural properties for vehicle design requirements. Obeshaw, col. 1, ll. 13-14, 19- 23, 37-43. Thus, Obeshaw also discloses a lightweight connection that flexes to absorb forces. In addition to being in the same field of endeavor, we find a person of ordinary skill in the art would have considered Obeshaw because Obeshaw is reasonably pertinent to the problem facing Appellant. Appellant was concerned with devising a trailing arm of comparable flexibility, but lighter weight, than steel. Spec. 2, paras. [10], [13]. One general problem facing Appellant at the time of the invention was reduction of weight while maintaining structural strength for a mechanical connection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations omitted) (“[T]he problem Appeal 2009-008411 Application 10/867,561 6 examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made”). In considering this problem, Obeshaw’s disclosure of composite structural members for vehicles and methods of making the same so as to be lighter weight replacements for steel components and having sufficient structural properties (such as flexural) (Obeshaw, col. 1, ll. 13-14, 19-23, 37-46, 50- 52) would have logically commended itself to an inventor’s attention in considering the Appellant’s problem. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Intended Purpose Appellant contends that the trailing arm of the AAPA is made of sheets of steel and if it were made of composite material it would not be made of sheets, thus “ruining the purpose” of the trailing arm of the AAPA. Reply Br. 2. Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See e.g., Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). However, Appellant has incorrectly defined the purpose of the trailing arm of the AAPA as being manufactured of sheets. The purpose of the trailing arm of the AAPA is to “provide a rigid connection between the trailing arm and the axle to resist bending, but have a resilient connection between the chassis and the axle.” Spec. 2, para. [8]. We fail to see, and Appellant has failed to explain, how the Examiner’s proposed modification to the AAPA trailing arm to manufacture it from a composite material would render the trailing arm of the AAPA unsatisfactory for its intended purpose of providing a rigid connection that Appeal 2009-008411 Application 10/867,561 7 resists bending and provides a resilient connection between the chassis and the axle. Rationale Appellant does not contest the scope and content of the prior art, or the difference between the claimed invention and the proposed combination. App. Br. 3-5; Reply Br. 1-3. Further, Appellant does not contend such a modification is beyond the level of skill in the art, and does not present evidence of secondary considerations. Id. Rather, Appellant makes a variety of assertions in support of the argument that the proposed combination is not based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified the AAPA to be made of a composite as taught by Obeshaw. Id. For example, Appellant asserts that a person of ordinary skill in the art would “face considerable practical difficulties in successfully producing the claimed trailing arm” out of a composite material. App. Br. 3. Similarly, Appellant asserts the trailing arm of the AAPA “does not lend itself to being made using composite materials,” and that such a modification would necessitate a different manufacturing process. App. Br. 3, Reply Br. 1-2. We are not persuaded by these assertions. All obviousness rejections require some modification of the invention of the base reference, and it is understood that the person of ordinary skill would be required to use their knowledge to apply the teaching of the prior art in manufacturing the trailing arm of the AAPA of a composite material as proposed. The proper question is whether those modifications would require skills beyond the capabilities of a person of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would Appeal 2009-008411 Application 10/867,561 8 improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant has not asserted that the proposed modification would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find a person of ordinary skill in the art would overcome those difficulties within their level of skill. Id. at 418; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellant’s assertions seem to be based on the assumption that the proposed combination uses the trailing arm of the AAPA unaltered except that it is made of a composite as disclosed by Obeshaw. The proposed combination is not such a bodily incorporation, and such an assumption is a mischaracterization of the proposed combination. Contrary to Appellant’s underlying assumption, Obeshaw does not teach simply making vehicle components of composite material identical to the existing steel components. Rather, Obeshaw teaches to redesign steel vehicle components to be made of composites having sufficient structural properties and lighter weight. Obeshaw, col. 1, ll. 13-14, 19-23, 37-46, 50-52. This process can, for example, involve changes to cross-sectional shape, and overall component shape of the existing component, or an optimization of laminate fiber angle and ply thickness of the composite can be used to achieve the designed new composite structure. See, e.g., Obeshaw, col. 2, l. 60 – col. 3, l. 3; col. 10, ll. 48-54. In other words, Appellant’s suggestion that making the trailing arm of the AAPA out of a composite material instead of out of steel will involve redesign is not persuasive of error because such redesign is what Obeshaw teaches. Appeal 2009-008411 Application 10/867,561 9 Appellant asserts that the modification proposed by the Examiner is “not possible as the trailing arm of the Prior Art cannot be made of a crushable material.” Reply Br. 2. Appellant’s assertion mischaracterizes the rejection. While Obeshaw discloses that the structural members can be made crushable by inclusion of an initiator (Obeshaw, col. 2, ll. 13-14), the rejection does not rely upon this teaching of Obeshaw. Ans. 4-5. Appellant asserts that Obeshaw “is only used to form crushable cylindrical members” and that “[t]he trailing arm 132 of the Prior Art is not cylindrical.” App. Br. 4; Reply Br. 2. Appellant mischaracterizes the disclosure of Obeshaw. Obeshaw discloses that “structural members of the present invention may have a cylindrical or non-cylindrical configuration.” Obeshaw, col. 2, ll. 60-61 (emphasis added). Appellant contends, more generally, that there is “no motivation” to make the trailing arm of the AAPA of composite material. App. Br. 4; Reply Br. 2. This assertion is also unconvincing in that it fails to address the rationale provided by the Examiner for the proposed combination, namely, to reduce vehicle weight to improve fuel efficiency. Ans. 5. As such, we will sustain the rejection of claim 1 under § 103(a). Claims 4, 6-11, 13, and 14 fall with claim 1. Claim 2 Claim 2 depends from claim 1 and adds the limitation that the axle locating portion is rotationally securable to an associated axle by an adhesive. Appellant’s Specification describes that a suitable adhesive is “applied between the inside surface 253 of the axle wrap 256 [the axle locating portion] and the axle 42 to further prevent rotation between the axle 42 and the trailing arm 232.” Spec. 4, para. [29]. Appellant’s Briefs and Specification do not point to any distinction in function between use of Appeal 2009-008411 Application 10/867,561 10 welding or adhesive, nor do they point to any problem solved, or unexpected result produced by the use of adhesive. App. Br. 5; Spec. passim. The Examiner found that the trailing arm of the AAPA was welded to the axle and that an alternate method of attachment, such as by adhesive, was an obvious matter of design choice. Ans. 4. Appellant argues that neither reference suggests employing an adhesive to secure a trailing arm to an axle as called for in claim 2. App. Br. 5. Appellant’s contention is unconvincing in that it fails to address the Examiner’s design choice rationale, but rather simply argues that neither reference suggests employing an adhesive to secure a trailing arm to an axle as called for in claim 2. Claims 3 and 18 Claims 3 and 18 depend from claim 1 and call for the axle locating portion to be non-circular and oval, respectively. Appellant’s Specification describes that the axle locating portion (axle wrap 256) is designed to receive the axle 42, and that both the axle wrap 256 and axle 42 may have an oval cross-section to prevent rotation between the axle 42 and the trailing arm 232. Spec. 4, para. [29]. The Examiner found that it would have been an obvious matter of design choice to modify the prior art to a specific shape. Ans. 6. Appellant argues that the AAPA has a circular axle locating portion, and that Obeshaw has no axle locating portion, so that neither reference discloses a non-circular or oval axle locating portion as called for in claims 3 and 18, respectively. App. Br. 5-6. Again, Appellant’s contention is unconvincing in that it fails to address the Examiner’s design choice rationale, but rather simply argues that neither reference suggests employing a non-circular or oval axle locating portion as called for in claims 3 and 18. Appeal 2009-008411 Application 10/867,561 11 Claims 12 and 15 Claim 12 depends from independent method claim 9 and adds the limitation that the matrix material and the reinforcement material are arranged as a filament including a single fiber surrounded by a resin. Claim 15 contains this same limitation by virtue of its dependence from claim 12. Appellant’s Specification describes that combinations of reinforcing fibers in a matrix may be used to enable different compositions to be used in different areas of the trailing arm 232 according to mechanical properties. Spec. 5, para. [32]. Appellant contends that neither reference discloses the limitation that the matrix material and the reinforcement material are arranged as a filament including a single fiber surrounded by a resin. App. Br. 5. Contrary to Appellant’s contention, the Examiner found (Ans. 4), and we agree, that Obeshaw discloses use of a single fiber (“a continuous fiber” or fiber reinforcement tows) surrounded by a resin. Obeshaw, col. 4, ll. 30- 37. Claim 17 Claim 17 depends from claim 1 and adds the limitation that the axle locating portion and the suspension trailing arm are formed in one piece. The Examiner initially interpreted the limitation of claim 17 as a product-by-process limitation that did not warrant patentable weight. Ans. 3. Appellant points out, and we agree, that this limitation of claim 17 is not a product-by-process limitation, but rather calls for a structural limitation (that the axle locating portion and suspension trailing arm be one piece). App. Br. 6. In Response to Argument of the Answer, the Examiner asserts, with respect to claim 17, that it would have been an obvious matter of design choice to modify the prior art to a specific shape and to use a specific Appeal 2009-008411 Application 10/867,561 12 material. Ans. 6. We fail to see, and the Examiner fails to explain, how the limitation that the axle locating portion and the suspension trailing arm are formed in one piece as called for by claim 17 is a matter of design choice regarding the shape or material involved. For these reasons, the rejection of claim 17 is in error. CONCLUSIONS Obeshaw is analogous art to Appellant’s claimed invention. The Examiner’s proposed modification to the AAPA would not render its trailing arm unsatisfactory for its intended purpose. The Examiner’s proposed modification to the AAPA is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified the AAPA to be manufactured of a composite material as taught by Obeshaw to reach the subject matter of claim 1. One having ordinary skill in the art would have found it obvious to use adhesive in place of welding to inhibit rotation between the axle locating portion and the axle, as called for in claim 2. The non-circular or oval shaped axle locating portions called for in claims 3 and 18 would have been obvious variations of a circular axle locating portion. Obeshaw discloses use of a single fiber surrounded by a resin as called for in claims 12 and 15. The one-piece axle locating portion and suspension trailing arm limitation called for in claim 17 is not a product-by-process limitation. DECISION We AFFIRM the Examiner’s decision to reject claims 1-4, 6-15, and 18. Appeal 2009-008411 Application 10/867,561 13 We REVERSE the Examiner’s decision to reject claim 17. 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). AFFIRMED-IN-PART nlk CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM MI 48009 Copy with citationCopy as parenthetical citation