Ex parte ITO et al.

Board of Patent Appeals and Interferences

Feb 22, 2001

08808789 (B.P.A.I. Feb. 22, 2001)

1
The opinion in support of the decision being entered today was
not written for publication is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YUKO ITO, TOMIO ITO,
TOSHIJI AKAGI and MASAYUKI SUDA
__________
Appeal No. 2000-1469
Application 08/808,789
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Yuko Ito et al. appeal from the final rejection of claims
20 through 29, all of the claims pending in the application.
We reverse.
THE INVENTION
The invention relates to “an automotive sunshade panel
formed from a hollow panel having a two-dimensional or three-
dimensional curved surface conforming to a bent curved surface
in
Appeal No. 2000-1469
Application 08/808,789
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the form of the top of an automobile” (specification, page 1).
Representative claims 20 and 21 read as follows:
20. An automotive sunshade panel comprising a metallic
hollow panel having longitudinal edges and flanged portions
provided along the longitudinal edges, the metallic hollow
panel having a two-dimensionally curved surface formed at a
central portion thereof and comprising first and second metal
sheet members, said first metal sheet member being provided
above said second metal sheet member and directly bonded
thereto to form a plurality of segregated, longitudinally
extending, parallel passageways therebetween.
21. An automotive sunshade panel comprising a metallic
hollow panel having longitudinal edges and flanged portions
provided along the longitudinal edges, the metallic hollow
panel having a three-dimensionally curved surface formed at a
central portion thereof and comprising first and second metal
sheet members, said first metal sheet member being provided
above said second metal sheet member and directly bonded
thereto to form a plurality of segregated, longitudinally
extending, parallel passageways therebetween.
THE PRIOR ART
The items relied on by the examiner as evidence of
obviousness are:
Trout 1,625,061 Apr. 19, 1927
Molin et al. (Molin) 3,534,463 Oct. 20, 1970
Haraga et al. (Haraga) 4,414,257 Nov. 8, 1983
Mori et al. (Mori) 5,356,695 Oct. 18, 1994
The admission on page 2 of the appellants’ specification
that fabrics typically are laminated to the curved surfaces of
automotive sunshade panels (the admitted prior art).
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Application 08/808,789
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THE REJECTIONS
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haraga in view of Mori.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haraga in view of Mori and Trout.
Claims 24 through 27 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Haraga in view of Mori and
the admitted prior art.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haraga in view of Mori and Molin.
Attention is directed to the appellants’ main and reply
briefs (Paper Nos. 16 and 18) and to the examiner’s final
rejection and answer (Paper No. 10 and 17) for the respective
positions of the appellants and the examiner with regard to
the merits of these rejections.
DISCUSSION
Haraga, the examiner’s primary reference, discloses a
panel designed to form the wall or door of an elevator. The
panel consists of a metal reinforcing plate 1 and a metal
surface plate 2 bonded together to form a hollow construction
Appeal No. 2000-1469
Application 08/808,789
Read in light of the underlying disclosure (see, for1
example, specification page 5 and drawing figure 4), the two-
dimensionally curved surface is one which is curved in the
longitudinal (Y-Y) direction of the panel and the three-
dimensionally curved surface is one which is curved in the
longitudinal (Y-Y) and transverse (X-X) directions of the
panel.
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having flanged portions along its longitudinal edges and a
plurality of segregated, longitudinally extending, parallel
passageways. As
conceded by the examiner (see page 3 in the final rejection),
this panel, which has a generally flat or planar
configuration, does not meet the limitations in claims 20 and
21 requiring the claimed panel to have a two-dimensionally
(claim 20) or three-dimensionally (claim 21) curved surface
formed at a central portion thereof. The examiner’s reliance1
on Mori to overcome this deficiency is not well founded.
Mori discloses a panel structure adapted for a variety of
uses in a vehicle including as a roof panel. One of Mori’s
objects is to provide a panel having a substantially uniform
stiffness without the need for variations in thickness (see
column 1, lines 61 through 64). To this end, and as described
by Mori, “[a]t least an intermediate portion 21 of the panel
20 is formed as including a curved surface having a
Appeal No. 2000-1469
Application 08/808,789
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substantially constant sum of the maximum curvature Dmax and
the minimum curvature Dmin at all points on a surface of the
intermediate portion 21" (column 3, lines 28 through 32).
In proposing to combine Haraga and Mori to reject claims
20 and 21, the examiner concludes that it would have been
obvious “to utilize two-dimensional and three-dimensional
curvatures as taught by Mori et al. on the panel of Haraga et
al. because the curvatures would enhance the stiffness of the
panel” (final rejection, page 3).
As persuasively argued by the appellants, however, there
is nothing in the combined teachings of Haraga and Mori which
would have suggested this particular modification. To begin
with, neither reference gives any indication that the Haraga
panel is in need of additional stiffening. Moreover, the flat
or planar configuration of the Haraga panel is entirely
consistent with its intended use in the wall or door of an
elevator, while the two-dimensional or three-dimensional
curvature proposed by the examiner would seem to be at odds
with such use. The mere fact that prior art could be modified
in the manner proposed by an examiner does not make the
modification obvious unless the prior art would have suggested
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Application 08/808,789
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the desirability of the modification. In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the
only suggestion for the proposed modification of the Haraga
panel in view of Mori stems from an impermissible hindsight
reconstruction of the claimed invention wherein the examiner
has used the appellants’ claims as a template to piece
together the teachings of the prior art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 20 and 21 as being unpatentable
over Haraga in view of Mori.
Inasmuch as the examiner’s application of Trout, the
admitted prior art and Molin does not cure the above noted
shortcomings of the basic Haraga-Mori combination, we also
shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claims 22 and 23 as being unpatentable over Haraga in view of
Mori and Trout, of claims 24 through 27 as being unpatentable
over Haraga in view of Mori and the admitted prior art, or of
claims 28 and 29 as being unpatentable over Haraga in view of
Mori and Molin.
As a final matter, the examiner might be well advised to
obtain a full translation of Japanese Patent Document 8-90080,
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Application 08/808,789
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which is of record and discussed on pages 1 and 2 of the
appellants’ specification, and reconsider the patentability of
the subject matter recited in claims 20 through 29 in light of
this reference, taken alone or in combination with other prior
art references, keeping in mind that claims 20 through 29 are
directed to an automotive sunshade panel and not a method of
making same.
SUMMARY
The decision of the examiner to reject claims 20 through
29 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Appeal No. 2000-1469
Application 08/808,789
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Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
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