Ex parte King

Board of Patent Appeals and Interferences

Mar 9, 2001

08697034 (B.P.A.I. Mar. 9, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH A. KING
__________
Appeal No. 2000-1582
Application 08/697,034
___________
ON BRIEF
___________
Before CALVERT, STAAB, and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
20, all the claims in the application.
The claims on appeal are drawn to a laminated truck
bumper, and are reproduced in appendix A of appellant’s
Appeal No. 2000-1582
Application 08/697,034
All references herein to appellant’s brief are to the1
revised brief filed on October 12, 1999.
In reviewing the application, we note that in the2
specification on page 4, lines 15 to 21, it is stated that
should the chrome plating on series 304 stainless steel
fracture, corrosion “simply does not form” under the fractured
chrome plating. On the other hand, at page 10, lines 6 to 8,
appellant states that “Chrome plating is applied on the No. 8
finish of series 304 stainless steel to prevent corrosion from
propagating therethrough.” These apparently contradictory
statements should be reconciled during any further
prosecution.
A translation of this reference, prepared by the PTO, is3
forwarded to appellant herewith.
2
brief.1,2
The references applied in the final rejection are:
Shanok et al. (Shanok) 3,590,769 Jul. 6,
1997
Buettner er al. (Buettner) 4,225,167 Sep. 30,
1980
Demastro et al (Delmastro) 4,466,646 Aug. 21,
1984
Placek 4,569,865 Feb. 11,
1986
Fleming 5,067,759 Nov. 26,
1991
Matthysse et al. (Matthysse) 5,131,702 Jul.
21, 1992
Hagiwara (Japanese Kokai) 55-110639 Aug. 26,
19803
The appealed claims stand finally rejected on the
Appeal No. 2000-1582
Application 08/697,034
In claim 19, it appears that --ones-- should be inserted4
after “selected”.
3
following grounds:
(A) Claims 1, 5, 6, and 8, anticipated by Hagiwara, under
35 U.S.C. § 102(b).
(B) Claims 2 to 4, 7 and 9 to 20, unpatentable under 35 U.S.C.
§ 103(a) over the following combinations of references:
(1) Claim 2, Hagiwara in view of Shanok.
(2) Claims 3, 4, 12, 14, 15 and 20, Hagiwara in view of
Matthysse.
(3) Claim 7, Hagiwara in view of Fleming.
(4) Claim 9, Hagiwara in view of Delmastro.
(5) Claims 10 and 13, Hagiwara in view of Buettner.
(6) Claim 11, Hagiwara in view of Placek.
(7) Claims 16 to 19, Hagiwara in view of Matthysse and4
Placek.
(A) REJECTION UNDER § 102(b)
There seems to be no disagreement that Hagiwara discloses
all the subject matter recited in claim 1, except for the
limitation that an exterior surface of the outer sheet has “a
Appeal No. 2000-1582
Application 08/697,034
4
mechanical finish.” Before considering the merits of the
rejection, it is necessary to construe this term.
As held in In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997):
the PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the
applicant’s specification.
Accordingly, looking to appellant’s specification for
disclosure relative to the term “mechanical finish”, we find
on page 9, lines 18, to page 10, line 8:
The mechanical finishes described herein are based
on American Iron and Steel Institute, Washington D.C.
(AISI) standard finishes for stainless steel. As
defined, mechanical finishes are produced by various
mechanical processes such as hot or cold rolling.
Mirror-bright finishes are commonly produced by cold
rolling on polished rolls or by successive well-known
polishing and buffing operations. Rolled mill finishes
result from the initial forming of a metal, usually by a
rolling process and range in appearance from rough dull
to mirror-bright. . . . A No. 2BA finish is a bright
annealed finish and is a highly reflective finish
obtained by final annealing in a controlled atmosphere
furnace. Final buffing is often employed with the No.
2BA finish. Polished mill finishes are produced by
successive steps of grinding, polishing, and also
buffing. The simpler polished finishes are the No. 3 and
Appeal No. 2000-1582
Application 08/697,034
5
4 sheet finishes [which] are considered herein as
reflective mechanical finishes. . . . The No. 7 and No.
8 polished finishes of stainless steel are highly
reflective mechanical finishes, the No. 8 being the most
reflective finish commonly produced. The No. 7 and No. 8
are also considered herein as mirror finishes which are
both bright and reflective. The No. 8 finish utilizes a
buffing operation with a very fine buffing compound.
Chrome plating is applied on the No. 8 finish of series
304 stainless steel to prevent corrosion from propagating
therethrough.
In view of this disclosure, we construe the claim term
“mechanical finish” as a finish produced by a mechanical
process such as rolling, grinding, polishing and/or buffing.
However, we do not construe “mechanical finish” as being
limited to a finish on a metal part, contrary to what
appellant seems to assume (see brief, page 5, first four
lines), since non-metallic materials may also be ground,
polished, buffed, etc. Also, at page 10, lines 14 and 15 of
the specification, appellant specifically
discloses that the outer and reinforcing sheets may be made
out of non-metals, i.e., “[p]lastic, fiberglass, carbon fiber,
or polymer.”
Reading claim 1 on Hagiwara in light of the foregoing
Appeal No. 2000-1582
Application 08/697,034
6
construction, we find no express disclosure in the reference
of a mechanical finish on the exterior surface of the outer
sheet 11, which is elastic and molded from rubber or synthetic
resin (translation, page 4, line 3). Hagiwara may however
still anticipate claim 1 if such mechanical finish would
nonetheless be inherent therein. Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir.
1999).
In the examiner’s answer (but not in the final
rejection), the examiner finds inherency per the statement at
page 6 that (emphasis added):
Although the Hagiwara reference does not
specifically recite that the bumper has a “mechanical
finish”, it is inherent to the construction of the bumper
and clearly desirable that the outside surface of the
bumper be aesthetically appealing and thus include some
type of sanding, which is a “mechanical finish”, to
either prepare the bumper for painting or to simply
provide the bumper with a smooth appearance.
We do not agree with this finding. Under the principles of
inherency, a reference does not anticipate unless it
necessarily includes the limitation alleged to be inherent.
Atlas Powder Co., supra. Here, although the examiner
theorizes that the exterior surface of the outer sheet 11 of
Appeal No. 2000-1582
Application 08/697,034
When the reference is silent about the asserted inherent5
limitation, such gap in the reference may be filled by
recourse to extrinsic evidence. See MPEP § 2131.01, part III
(Feb. 2000), and cases cited therein.
7
the Hagiwara bumper would be mechanically finished (sanded)
after molding to prepare it for painting or to provide it with
a smooth appearance, there is no indication in the reference
that the bumper is to be painted or that its as-molded surface
is not sufficiently smooth, nor has the examiner cited any
evidence that molded bumpers as disclosed by Hagiwara would5
necessarily be sanded. Since inherency “may not be
established by probabilities or possibilities,” In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), the
possibility that under some scenarios the bumper of Hagiwara
might be mechanically finished does not establish that a
mechanical finish would necessarily be present, and thus, does
not establish inherency.
The § 102(b) rejection therefore will not be sustained.
(B) REJECTIONS UNDER § 103(a)
Rejection (1)
Claim 2 reads:
Appeal No. 2000-1582
Application 08/697,034
8
2. The laminated, truck bumper of claim 1 wherein said
mechanical finish is a bright finish.
The examiner takes the position that in view of Shanok’s
disclosure that aluminum foil “simulates the appearance of
chromium trim such as is commonly used as decoration for
automobiles” (col. 2, lines 24 to 27), it would have been
obvious to apply a foil finish to the bumper of Hagiwara “to
make the appearance of the bumper more aesthetically pleasing”
(final rejection, page 3).
We will not sustain this rejection. Assuming that the
examiner’s proposed combination would meet the “mechanical
finish” limitation of parent claim 1, we do not consider that
one of ordinary skill would have derived any suggestion or
motivation from Shanok to modify Hagiwara as the examiner
proposes. Since the aluminum foil 16 of Shanok is disclosed
as being encapsulated in a clear plastic molding strip 12 used
as border trim for the rear window of an automobile, one
skilled in the art would not have been taught thereby to apply
it to a rubber or plastic bumper as disclosed by Hagiwara.
Appeal No. 2000-1582
Application 08/697,034
9
Rejection (2)
In the group of claims to which this rejection applies,
claims 3, 4, and 20 call for, inter alia, the outer sheet of
the bumper to be stainless steel.
Matthysse discloses a laminated bumper in which the outer
sheet 12 is 301 stainless steel (col. 4, lines 4 to 8), 20 to
30 mils (.02 to .03 inches) thick (col. 3, lines 64 to 67),
and the reinforcing sheet 20 is fiber-reinforced plastic.
Both sheets are in the form of elongated channels (see
drawings), and the outer sheet may be buffed before it is
chrome plated (col. 4, lines 62 and 63). The examiner has
explained the basis of the rejection on page 8 of the answer
as:
The combination proposed by the examiner in the rejection
includes modifying the outer layer of Hagiwara to be a
stainless steel channel, as taught by Matthysse, and not
simply plating the plastic outer layer of Hagiwara, which
is not taught by the reference. The examiner has in no
way suggested that the plastic outer layer of Hagiwara
could be chrome plated.
From this explanation, we understand the examiner’s position
to be that it would have been obvious, in view of Matthysse,
to make Hagiwara’s outer sheet 11 out of stainless steel
Appeal No. 2000-1582
Application 08/697,034
10
instead of rubber or synthetic resin.
We do not consider this rejection to be well taken. In
the first place, the Hagiwara bumper is described as an
“elastic bumper,” and its elastic character would be nullified
if its outer sheet 11 were made of stainless steel. Secondly,
the laminated bumpers of Hagiwara and Matthysse are both made
up of metal and plastic laminations; there is no disclosure in
either of an all-metal laminated bumper. For these reasons,
Matthysse would not in our view provide any teaching,
suggestion or motivation to one of ordinary skill in the art
to utilize stainless steel for the outer sheet of the Hagiwara
bumper.
We therefore will not sustain the rejection of claims 3,
4 and 20, nor of claims 12, 14 and 15, the other claims
included in this rejection.
Rejections (3), (4), (5) and (6)
As discussed above in connection with rejection (1), the
outer sheet 11 of the Hagiwara bumper would not inherently
Appeal No. 2000-1582
Application 08/697,034
11
have a mechanical finish on its exterior surface, as required
by claim 1. Since rejections (3) to (6) are of claims which
are dependent on claim 1, and none of the secondary references
applied in these rejections would have rendered obvious the
application of such a
mechanical finish to the Hagiwara bumper (or is cited by the
examiner as evidence thereof), rejections (3) to (6) will not
be sustained.
Rejection (7)
This rejection will not be sustained for the same reasons
as rejection (2) above, since Placek, the additional
reference, does not overcome the deficiencies noted in the
combination of Hagiwara and Matthysse.
REJECTIONS PURSUANT TO 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), we enter the following new
grounds of rejection.
(a) Claims 16 to 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matthysse in view of Placek. The relevant
Appeal No. 2000-1582
Application 08/697,034
12
disclosure of Matthysse is discussed above in relation to
rejection (2). Placek discloses a laminated bumper with a
plurality of concentric apertures 32 therethrough for
receiving lights (col. 4, lines 32 to 34). In view of Placek,
it would have been obvious to one of ordinary skill to provide
the bumper of Matthysse with such apertures, this being simply
the selection of a location taught by Placek for mounting the
vehicle’s side lights.
As noted previously, the outer sheet 12 of Matthysse has
a mechanical finish, in that it is buffed (col. 4, lines 62
and 63). The particular degree to which Matthysse’s outer
sheet was finished would be but an obvious matter of design
choice or aesthetics, depending on how shiny the designer of
the vehicle on which the bumper was to be mounted wanted the
bumper to be; as appellant discloses at page 9 and 10 of the
specification, highly reflective, mirror and bright annealed
finishes are all standard finishes for stainless steel, and
each includes the step of buffing.
(b) Claims 16 and 19 are rejected under 35 U.S.C. § 102(b) as
Appeal No. 2000-1582
Application 08/697,034
13
anticipated by Placek. The bumper disclosed by Placek
includes an elongated stainless steel channel 16 which is
chrome plated and then buffed (col. 2, lines 47 and 48).
Reading this disclosure on claim 16, the chrome plating
constitutes a metallic outer sheet configured into an
elongated channel with a recess, the exterior surface of the
chrome having a highly reflective mechanical (buffed) finish,
the elongated channel 16 is a reinforcing sheet in the outer
sheet’s recess, and both sheets have concentric apertures 32
therethrough for light fixtures.
Conclusion
The examiner’s decision to reject claims 1 to 20 is
reversed. Claims 16 to 19 are rejected pursuant to 37 CFR
1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Appeal No. 2000-1582
Application 08/697,034
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Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 1.196(b)
Appeal No. 2000-1582
Application 08/697,034
15
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
IAC:pgg
Varnum Riddering Schmidt & Howlett
Bridgewater Place
Post Office Box 352
Grand Rapids, MI 49501-0352
Appeal No. 2000-1582
Application 08/697,034
16