Ex Parte Ignafol

Board of Patent Appeals and Interferences

Sep 12, 2008

11227381 (B.P.A.I. Sep. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUY M. IGNAFOL
____________

Appeal 2008-1803
Application 11/227,381
Technology Center 3600
____________

Decided: September 12, 2008
____________

Before WILLIAM F. PATE, III, ANTON W. FETTING, and
DAVID B. WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-2, 4-8, and 12-20. We have jurisdiction under 35 U.S.C.
§ 6(b)(2002). We affirm.
Appellant claims a vehicle bumper with a tubular bumper beam including at
least one longitudinal channel and a tubular reinforcer positioned at least partially
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in the channel (Specification 1:7-9). Claims 1 and 8, reproduced below, are
representative of the subject matter on appeal.
1. A bumper comprising:
a tubular bumper beam having a length and a
primary impact surface with at least one longitudinal
channel formed therein; and
a tubular reinforcer positioned at least partially in
the channel and secured to the bumper beam.
8. A bumper comprising:
a tubular beam having a length and an outer wall,
the outer wall having a primary impact surface with at
least two longitudinal channels formed therein and a
relatively flat section extending vertically between the at
least two longitudinal channels; and
an elongated reinforcer positioned at least partially
in each of the channels and secured to the beam.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Goto US 6,726,261 B2 Apr. 27, 2004
Nees US 5,785,376 Jul. 28, 1998

1. Claim 8 stands rejected under 35 U.S.C. § 102(b) as anticipated by Goto.
2. Claims 1-2 and 4-7, and 12-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goto in view of Nees.

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ISSUE
The issue before us is whether the Examiner erred in rejecting 1) claim 8
under 35 U.S.C. § 102(b) as anticipated by Goto; and 2) claims 1-2 and 4-7, and
12-20 under 35 U.S.C. § 103(a) as unpatentable over Goto in view of Nees. The
correctness of the anticipation rejection turns on whether or not claim 8 requires
two tubular reinforcers, while the correctness of the obviousness rejection turns on
whether it would have been obvious to one of ordinary skill in the art at the time of
the invention to combine the tubular bean of Goto with the tubular reinforcer of
Nees.
Rather than repeat the arguments of Appellant or the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).

1. Goto teaches a bumper reinforcement attached to a front or rear side of a
vehicle frame as a strength member, which includes a bumper beam to be
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supported on a vehicle frame and a reinforcement member attached to the
bumper frame in an upstream direction with respect to the potential direction
of impact (Goto, Abstract).
2. Figure 4 of Goto shows that the bumper beam can be a closed tube with two
parallel channels located to receive corresponding portions of a
reinforcement member (Goto, Figure 4).
3. Nees teaches a stamped beam for a vehicle door with improved structural
strength while minimizing added weight to the vehicle. The beam body has
a sinusoidal cross-sectional configuration with a longitudinal valley allowing
the entire beam to be stamped from an integral metal blank forming the
mounting brackets. For additional strength, a tubular center member is
welded within the longitudinal valley. The tube acts as a tuning mechanism
by altering the thickness of the tube wall according to the application of the
beam (Nees, Abstract).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (quoting 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
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than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
“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), cert. denied, 484 U.S. 827 (1987).
“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., 127 S.Ct. 1727, 1734 (2007). 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 ordinary skill in the art, and (4)
where in evidence, so-called secondary considerations. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
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sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.

ANALYSIS
Rejection of Claim 8 under 35 U.S.C. § 102(b) as anticipated by Goto.
Appellant argues that it is unreasonable to read claim 8 as defining a single
reinforcer having portions located in each of two different channels. According to
Appellant, a person skilled in the art would read the language, “an elongated
reinforcer positioned at least partially in each of the channels,” as requiring two
reinforcers, one in each of the channels, based on the present Specification, which
clearly shows two different reinforcers in each of its two different channels (Br. 4,
citing Figures 1-6 of Appellant’s disclosure). The Appellant further argues that an
earlier response referred directly to two reinforcers (Br. 4).
The Examiner interpreted the disputed claim language as defining a single
reinforcer, which has portions partially received in each of two channels, and
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found that the plain meaning of the argued claim language cannot be altered based
on what is disclosed in the Specification or based on previously presented
arguments as to what the intended meaning may be (Answer 6). There is nothing
in the Specification that would justify interpreting “an elongated reinforcer” to
require “two elongated reinforcers.” We therefore decline the Appellant’s
invitation to read limitations from the drawings into claim 8. See Superguide
Corp., 358 F.3d at 875 (“a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader than
the embodiment.”). The Appellant has failed to show error in the Examiner’s
rejection of claim 8.

Rejection of claims 1-2 and 4-7, and 12-20 under 35 U.S.C. § 103(a) as
unpatentable over Goto in view of Nees.
Appellant argues claims 1-2, 4-6, and 12-20 as a group. We treat claim 1 as
representative.
The Examiner found that Goto teaches all of the limitations of claim 1, but
for failing to show that the reinforcer is a tubular reinforcer. The Examiner found
that Nees discloses a bumper beam 12 with a primary surface 14 having a
longitudinal channel 18 for receiving a tubular reinforcer 20. The Examiner
concluded that it would have been obvious to one having ordinary skill in the art at
the time the invention was made to reconstruct the reinforcer of Goto to be tubular
members received in each of the channels as taught by Nees for greater resistance
to deformation (Answer 5).
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The Appellant argues that the reinforcer of Goto is not tubular and it would
not be logical to make it tubular, since the reinforcer illustrated in Goto extends a
vertical length of the face such that it covers the underlying beam, and thus would
be redundant to the underlying beam 11 (Br. 6). The Appellant further argues that
Nees teaches a door beam stamped from sheet metal that has two ridges forming a
valley therebetween, the stamping of Nees is not tubular, and it would not be
logical to make it tubular due to space constraints within the door (Id.). We do not
find these arguments persuasive because the Appellant appears to be arguing the
references separately and not addressing the combination asserted by the
Examiner. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Appellant also argues that Goto and Nees are not combinable because
the thickness dimension of the reinforcer in Goto is at least 50% of the thickness of
the beam in a fore/aft direction, while Nees teaches a reinforced beam where its
thickness dimension must be minimized due to space constraints within a door.
According to the Appellant, Nees would not include a tubular beam and then add a
tubular reinforcer to it that causes a substantial increase in its thickness dimension,
because this would result in beam system having a very large total thickness (Br.
7). We do not find the Appellant’s argument persuasive, because the combination
asserted by the Examiner modifies the bumper of Goto, in which the Appellant
concedes the thickness of the bumper system is apparently not a problem (Br. 6-7),
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to incorporate the tubular reinforcer of Nees, and does not propose adding thicker
components to a space-constrained door beam.
The Appellant further argues that, even if combined, Goto and Nees do not
result in the invention of claim 1, because both references teach a beam system
where an open section is attached to a closed tubular section (Br. 7). We do not
find this argument persuasive, because the Appellant again appears to be arguing
the references separately and not addressing the combination asserted by the
Examiner, which does combine the tubular bumper beam of Goto with the tubular
reinforcer of Nees.
The Appellant thus has failed to show that the Examiner erred in rejecting
claim 1. Claims 2, 4-6 and 12-20 are not argued separately and thus fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(vii)(2007). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

Appellant separately argues that claim 7 is patentable, because neither Nees
nor Goto teaches or suggests forming two parallel channels as defined in claim 7,
nor to attach a reinforcer to each of the channels, nor to attach a tubular reinforcer
to each of the channels (Br. 7-8). The Examiner found that Goto by itself discloses
two parallel channels in a bumper beam and a reinforcer with elements in each of
the two parallel channels, and relied upon Nees to teach a tubular reinforcer
received within a channel of a bumper beam. The Examiner found the safety
solution taught by Nees for attaching a tubular reinforcer in one channel to be
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equally applicable to more than one channel for greater resistance to deformation
(Answer 8). We agree with the Examiner.
Goto does teach parallel channels as shown in Figure 4 (Finding of Fact 2).
One of ordinary skill in the art would have been able to modify Goto to replace the
reinforcement member of Figure 4 with a first and second tubular reinforcer
respectively positioned at least partially in the first and second channels as taught
by Nees using methods known in the art at the time the invention was made.
Moreover, each of the elements of Goto and Nees combined by the Examiner
performs the same function when combined as it does in the prior art. Thus, such a
combination would have yielded predictable results. See Sakraida v. AG Pro, Inc.,
425 U.S. 273, 282 (1976).
Claim 7 therefore is a combination which only unites old elements with no
change in their respective functions and which yields predictable results.
Therefore, the claimed subject matter likely would have been obvious under KSR.
In addition, the tubular reinforcers of Nees have been used to improve the
operation of the vehicle door beam disclosed therein. The Appellant has provided
no persuasive evidence that using the tubular reinforcers of Nees with the bumper
of Goto is beyond the skill of one of ordinary skill in the art. Under those
circumstances, the Examiner did not err in holding that it would have been obvious
to one of skill in the art at the time the invention was made to reconstruct the
reinforcer of Goto to be tubular members received in each of the channels as taught
by Nees for greater resistance to deformation (Answer 5).
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CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 8 as anticipated by Goto and claims 1-2, 4-7 and 12-20 under
35 U.S.C. § 103(a) unpatentable over Goto in view of Nees.

DECISION
The decision of the Examiner to reject claims 1-2, 4-8, and 12-20 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).

AFFIRMED

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