Ex Parte Kamata et al

Patent Trial and Appeal Board

Nov 15, 2018

13940057 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/940,057 07/11/2013 Kiyohiko Kamata
22428 7590 11/19/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
069389-0111 4094
EXAMINER
0 BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIYOHIKO KAMAT A, TOSHIHISA NISHIJYO,
TOKU FUKA YA, and YOSHIHARU SETTSU
Appeal2017-004097
Application 13/940,057 1
Technology Center 3600
Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Kiyohiko Kamata et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Final Office Action (dated Apr.
29, 2016, hereinafter "Final Act.") rejecting claims 1, 2, and 5-9 under
35 U.S.C. § 103(a) as being unpatentable over Okada et al. 2 (CN 202108349
(U), published Jan. 11, 2012, hereinafter "Okada '349"). 3
1 Mitsui Kinzoku Act Corporation is the Applicant as provided in 3 7 C.F .R.
§ 1.46 and is identified as the real party in interest in Appellants' Appeal
Brief 1 (filed Sept. 28, 2016, hereinafter "Appeal Br.").
2 Appellants refer to this reference as the "'349 reference" and the Examiner
refers to it as "'349."
3 Claims 3 and 4 are cancelled. Appeal Br. 13 (Claims App.).
Appeal2017-004097
Application 13/940,057
Appellants' representative presented oral argument on November 6,
2018. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants' invention is directed "to a check link apparatus which
defines a full open position of a door of a vehicle." Spec. 1, 11. 10-11.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A check link apparatus comprising:
an arm comprising a metal core that comprises:
a plate-shaped arm core portion;
a connecting core portion that is provided at a first end of
the arm core portion and is connected rotatably to either of a
vehicle main body or a door; and
a plate shaped stopper core portion that is provided at a
second end, which is opposite to the first end, of the arm core
portion and expands in a direction intersecting a longitudinal
direction of the arm core portion, wherein the stopper core
portion is coplanar with the arm core portion, the stopper core
portion has a substantially uniform thickness, and a stopper
portion is formed by covering at least the stopper core portion
with a resin material; and
a holding member that is mounted on the other of the
vehicle main body and the door, through which the arm core
portion is slidably inserted, wherein the holding member is
configured to define a full open position of the door by being
brought into abutment with the stopper portion,
wherein the stopper core portion has a curved surface on
an end face that is configured to face an abutment surface of the
holding member at least when the abutment surface of the
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Application 13/940,057
holding member is brought into abutment with the stopper
portion, the end face continued from the arm core portion
curves toward a plane orthogonal to a longitudinal axis of the
arm at the stopper core portion so as to form at least a portion
extending along the plane orthogonal to the longitudinal axis of
the arm at the stopper core portion, and the portion of the end
face extending along the plane orthogonal to the longitudinal
axis of the arm is directly connected to the curved surface, and
wherein a circular hole is formed substantially in a center
of the stopper core portion, the circular hole penetrates through
the stopper core portion in a thickness direction thereof, the
circular hole is included in a widthwise dimension of the arm
core portion extended in a longitudinal direction of the arm core
portion, the circular hole is formed in a position which lies
between a distal end of the stopper core portion and an
intersection of the arm core portion and a widthwise widened
portion of the stopper core portion, and the circular hole
extends to a proximity of the plane orthogonal to the
longitudinal axis of the arm along which the end face of the
stopper core portion extends.
ANALYSIS
The Examiner finds that Okada '349 discloses most of the limitations
of independent claim 1, including inter alia, "a reinforcing ridge (2 lg)
surrounding a circular hole (21 f)" and "another circular hole (21 e) without a
reinforcing ridge, the surface of that portion of the core ha[ ving] a
substantially uniform thickness." Final Act. 3--4; see also Okada '349, Fig.
9. However, the Examiner finds that Okada '349 "does not disclose wherein
the stopper core portion has a substantially uniform thickness." Id. at 4.
Nonetheless, the Examiner concludes that:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to reverse which circular
hole [in Okada '349] had a reinforcing ridge such that the
circular hole 21fhas no reinforcing ridge rendering the stopper
3
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Application 13/940,057
core portion a substantially uniform thickness, since it has been
held that a mere reversal of the essential working parts of a
device involves only routine skill in the art.
Id. at 4--5 (citing MPEP § 2144.04). The Examiner explains that "[t]he
removal of the ridges 21 g renders [the] identical structure to that claimed,"
and, thus, "[t]he structure of '349 as modified by the removal of the ridges
21 g would be equally capable of preventing the resin from separating from
the core as the structure of the claimed invention." Id. at 10 (citing MPEP
§ 2144.04(II)(A)) ("'Omission of an element and its function is obvious if
the function of the element is not desired'."). 4 As such, according to the
Examiner, because the function of ridges 21g of Okada '349 "increases the
difficulty of peeling the resin layer from the core portion," which "may only
be necessary under [application ofJ larger forces," the skilled artisan that
wants to use the check link of Okada '349 "in a low force application would
not need the ridges 21 g, and it would therefore be obvious to eliminate the
ridges 21g to reduce material costs." Id.
In response, Appellants argue that because "ridges 21 g are disclosed
by the '349 reference to increase the difficulty of peeling the cladding layer
22 off of the core stopper 21 c," a person of ordinary skill in the art "would
have no reason to remove the ridges 21 g and the disclosed function of the
ridges, from the apparatus disclosed by the '349 reference." Appeal Br. 9.
According to Appellants:
[T]he Examiner's assertion that low force applications exist for
the arm 20 which would not require the ridges 21 g is not
supported by the disclosure of the '349 reference, and there is
4 MPEP § 2144.04(II)(A) cites In re Larson, 340 F.2d 965 (CCPA 1965) and
In re Kuhle, 526 F.2d 553 (CCPA 1975).
4
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Application 13/940,057
no evidence that a "low force application" exists for a check
link apparatus of the type disclosed in the cited reference.
Id.
The Examiner responds that because "ridges are not the only part
preventing peeling" as "friction, adhesion, etc." and "the insertion of the
resin through the hole" prevent peeling as well, "the peeling resistance of
Appellant[s'] claimed invention would be equal to the peeling resistance of
the prior art with the ridges removed or relocated to a different hole."
Examiner's Answer 4 (dated Nov. 16, 2016, hereinafter "Ans.") (emphasis
added). According to the Examiner, "[t]he ridges only INCREASE the
peeling resistance," and, thus, a skilled artisan "wanting to utilize the hinge
in a lower force application ... would remove or relocate the ridges if the
increased peeling resistance were not desired." Id. at 4--5 ( emphasis added).
Hence, the Examiner concludes that because Appellants do not disclose or
claim any structure which performs the function of increasing peeling
strength without the presence of ridges, "the removal of the ridges 21 g
would be equally capable of preventing the resin from separating from the
core as the structure of the claimed invention." Id. at 3--4.
Okada '349 discloses a check link device 20 having metal core 21
covered by synthetic resin cladding 22, wherein core 21 includes, inter alia,
core portion 21 a, connecting portion 21 b that connects the device to a
vehicle body B using bracket BK and pin P, stopper portion 21 c that comes
into contact with holding member 10, and resin holes 21d. See Okada '349,
Abstract, Figs. 1, 9, 11. As Appellants note, during operation, curved
surface F c of stopper portion 21 c comes into contact with holding member
10, but "due to the formation of the reinforcing ridges 21 g surrounding
[hole] 21 f [ of stopper portion 21 c ], the metal core can withstand the pressing
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Application 13/940,057
force and the cladding layer resists peeling." Reply Brief 5 (filed Jan. 10,
2017, hereinafter "Reply Br.") (citing Okada '349, para. 72). 5 As such, in
Okada '349, reinforcing ridges 21g provide an adequate peeling resistance of
resin cladding 22.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citation omitted) (quoted in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007)). Here, the Examiner has not provided an "articulated reasoning
with some rational underpinning" to support modifying Okada '349 to
negate the benefit of adequate peeling resistance and, moreover, has also not
provided persuasive evidence that such a benefit is not desired. Rather, a
skilled artisan would readily understand that because stopper portion 21 c
absorbs impact forces when coming into contact with holding member 10,
reinforcing ridges 21 g surrounding hole 21 f provide adequate peeling
resistance of resin cladding 22 by absorbing and redistributing the impact
force. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962); see also Reply
Br. 5.
Hence, as reinforcing ridges 21g, when surrounding hole 21f, have a
specific purpose in providing adequate peeling strength of resin cladding 22,
we do not agree with the Examiner's position that relocating ridges 21g from
hole 21 f to hole 21 e constitutes a "mere reversal of ... parts" that is "equally
capable of preventing the resin from separating from the core." See Final
Act. 4--5, 10 (emphasis added). The Examiner has not provided sufficient
5 We note that the electronic record does not include an English language
translation of Okada '349.
6
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Application 13/940,057
evidence or technical reasoning to show by a preponderance of the evidence
that relocating ridges 21 g from hole 21 f to hole 21 e would provide adequate
peeling strength of resin cladding 22 such that it would equally prevent it
from separating from the core. 6 In other words, the Examiner's position
does not adequately explain how locating ridges 21g around hole 21e would
allow the absorption of impact forces when holding member 10 comes into
contact with stopper portion 21 c in an equal manner as when ridges 21 g
surround hole 21 f such that adequate peeling resistance of resin cladding 22
is provided.
We further do not agree with the Examiner's assessment that
reinforcing ridges 21 g "INCREASE the peeling resistance" of resin cladding
22. Ans. 4. Although adhesion and friction constitute factors that affect
peeling strength of resin cladding 22, the Examiner's position that such
factors, in the absence of ridges 21 g, can generate an adequate peeling
strength is based on speculation. See id. Even though we appreciate the
Examiner's position that "in lower force applications (such as small car
doors)" the skilled artisan would require "a check link apparatus with a
decreased peeling resistance" (see id. at 7), such a position also requires
speculation on the Examiner's part. The Examiner does not articulate
sufficient facts or technical reasoning to conclude that when modifying the
check link device of Okada '349 to relocate ridge 21g from hole 21fto hole
21 e that an adequate peeling strength results, even for small doors. Thus, for
the foregoing reasons, the Examiner fails to adequately evidence through
6 According to the Examiner, "it would be obvious to reverse which of holes
21f and 2[1]e [of Okada '349] had a reinforcing ridge such that the circular
hole 21 f has no reinforcing ridge [21 g]." Ans. 2.
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Application 13/940,057
factual support or technical reasoning whether cladding layer 22 of the
device of Okada '349, as modified by relocating ridges 21 g from hole 21 f to
hole 21 e, adequately resists peeling when stopper portion 21 c comes into
contact with holding member 10.
Lastly, we do not agree with the Examiner's position that Larson and
Kuhle, cited in MPEP § 2144.04(II)(A), support the rejection here. See Final
Act. 10; Ans. 4. In Larson, after eliminating an additional structure not
required by the claimed invention, but that provided an additional feature,
the resulting device still provided certain benefits, just not the specific
additional benefit associated with the additional structure. Larson, 340 F.2d
at 969. In contrast, here, ridge 21 g does not constitute an additional
structure, and removing ridge 21 g from hole 21 f would undermine the
purpose of providing adequate peeling strength. See Reply Br. 5. Similarly,
in Kuhle, the omission of a switch element did not affect the function of the
claimed device for measuring soil moisture content, as it was not needed to
complete the electrical circuit; whereas, in this case, the omission of ridge
21 g has an effect on the resulting peeling strength.
In conclusion, as speculation cannot form the basis for concluding
obviousness, we do not sustain the rejection of independent claim 1, and
dependent claims 2 and 5-9, under 35 U.S.C. § 103(a) as unpatentable over
Okada '349.
DECISION
The Examiner's decision to reject claims 1, 2, and 5-9 under 35 U.S.C.
§ 103(a) as unpatentable over Okada is reversed.
REVERSED
8