11465486 (P.T.A.B. Dec. 4, 2012)

Ex Parte Kirn et al

Patent Trial and Appeal BoardDec 4, 2012

11465486 (P.T.A.B. Dec. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD KIRN, ROBERT R. ARMITAGE, ROBERT W. BARTUS, and KENNETH S. LAIRD ____________________ Appeal 2010-006544 Application 11/465,486 Technology Center 3600 ____________________ Before: GAY ANN SPAHN, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006544 Application 11/465,486 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 5, 6, 9, 10 and 12-14. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a head impact countermeasure system for an automotive vehicle. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A head impact countermeasure system for an automotive vehicle having a fixed roof, with said impact countermeasure system comprising: a headliner fastened to said roof and extending over a passenger compartment of said vehicle; and at least one buffer extending rearwardly from said headliner and into a cargo compartment of said vehicle along a side rail of said roof, wherein said buffer comprises a plastic foam block having an inner surface molded to conform with said side rail, an outer surface molded to conform with at least part of said headliner, and a surface finish having an appearance matched to the appearance of said headliner. EVIDENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Nicopolis Guebitz US 5,466,028 US 2002/0065357 A1 Nov. 14, 1995 May 30, 2002 Preisler US 2003/0021956 A1 Jan. 30, 2003 Tiesler Bristow US 6,733,034 B2 US 2005/0082881 A1 May 11, 2004 Apr. 21, 2005 The acknowledged prior art of paragraph [0002] on page 1 of Appellants’ Specification (“APA”). Appeal 2010-006544 Application 11/465,486 3 REJECTIONS Claims 9 and 12 are rejected under 35 U.S.C § 102(a) as being anticipated by APA. Ans. 3. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over APA, Tiesler, Nicopolis, and Guebitz. Ans. 5. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over APA, Tiesler, Nicopolis, Guebitz and Bristow. Ans. 6. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over APA, Nicopolis and Guebitz. Ans. 7. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over APA and Preisler. Ans. 7. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over APA and Tiesler. Ans. 8. OPINION Regarding the rejection of claims 9 and 12, there is no dispute that figure 4 of Appellants’ disclosure constitutes acknowledged prior art since it is clearly labeled as such. See Application of Nomiya, 509 F.2d 566, 571 (CCPA 1975) (“We see no reason why [A]ppellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered “prior art” for any purpose, including use as evidence of obviousness under § 103.”). The Examiner found that [t]he specification further states that it would be possible to apply crudely fitted blocks of plastic foam to the roof side rails 68. Therefore, from the specification, it is apparent that the trim panel 60 may have a plurality of plastic foam blocks mounted to a rear face of the trim panel 60 in place of headliner extension 64. Appeal 2010-006544 Application 11/465,486 4 Ans. 3-4 (citing Spec. p. 1, para. [0002]) (Emphasis ours); see also Final Rej. 3. Appellants do not contest the Examiner’s characterization of the statements made in paragraph [0002] of the Specification as acknowledged prior art. Rather, Appellants’ contend that “Figure 4, which is cited by the Examiner does not show any foam buffer of any type.” App. Br. 7. This argument fails to address the Examiner’s position. The Examiner never contends Appellants’ Figure 4 shows such a feature. Rather, the Examiner clearly relies on the statements from the Specification quoted above to conclude that Appellants’ Specification acknowledges that it was known to replace the headliner extension 64 depicted in Appellants’ Figure 4 with foam blocks. Doing so, according to the Examiner, results in a structure that anticipates claims 9 and 12. The Examiner’s position in this regard stands uncontroverted. Accordingly, we will sustain the Examiner’s rejection of claims 9 and 12. Since claim 10 is argued solely based upon dependency from claim 9 (App. Br. 10), we sustain the rejection of claim 10 as well. Turning to the rejection of claim 1, initially we note that the arguments concerning APA (App. Br. 8) are unpersuasive for the reasons indicated above. We also note that, despite language in the preamble suggesting the contrary, claim 1 is interpreted as directed to the combination of the countermeasure and the vehicle because elements of the vehicle are positively required to have specific structural relationships with the countermeasures in the body of the claim. Appellants contend that “the rails alluded to by the Examiner are molded in Tiesler’s headliner” and “Tiesler does not show any foam structure in contact with a structural roof rail.” App. Br. 8-9. These arguments attack Tiesler in isolation where the rejection is predicated on the combined teachings of APA, Tiesler, Nicopolis, and Guebitz. Ans. 9. See In Appeal 2010-006544 Application 11/465,486 5 re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references.). Tiesler is relied upon by the Examiner to demonstrate that the technique of making a foam countermeasure 32, 34 conform to the shape of a vehicle roof rail (the portion of 36 depicted in Tiesler’s Figure 3) was known in the art. The teaching of such conformity is in no way negated by the presence of the carrier 14, rails 16, 18, or the headliner 12. The Examiner does not appear to confuse the two types of ‘rails’ in Tiesler. See Ans. 10; contra App. Br. 9. Claim 1 does not actually require “contact” of the buffer with the side rail of the roof as Appellants suggest. App. Br. 9. In any case, the requirement for extension of the buffers along the side rail would be met by incorporating Tiesler’s conforming technique into the APA. Accordingly, we sustain the Examiner’s rejection of claim 1. Regarding claims 5 and 6, we agree with the Examiner that Bristow does in fact demonstrate the specific type of foam recited in the claims was known in the art. See Ans. 10, App. Br. 9-10. This being the only contested issue, we sustain this rejection. Regarding claim 13, there does not seem to be any disagreement that Preisler teaches energy absorbing ribs 30, interpreted by the Examiner as “buffers,” wholly underlying Preisler’s headliner 20. Ans. 11; App. Br. 10- 11. Parent claim 9 requires the buffers to extend rearwardly from a location adjoining a rearward portion of the headliner. Appellants correctly point out that, while claim 13 expressly requires only a leading end of the buffers to underlie a portion of the headliner, when read in combination with claim 9, Appeal 2010-006544 Application 11/465,486 6 claim 13 cannot possibly be construed to include a structure wherein the buffers entirely underlie the headliner. App. Br. 10-11. The Examiner, characterizing this feature as “overlap” does not appear to have adopted a contrary construction. Overlap is generally understood to mean covering a part of something.1 The Examiner concludes that such an arrangement would predictably enable parts to conform and fit together in a more secure and aesthetic manner. Ans. 8. The Examiner’s position in this regard stands uncontroverted. Accordingly, we sustain this rejection. Appellants’ final argument, concerning claim 14 (App. Br. 11), is not commensurate in scope with the claim. Claim 14 requires an axially engageable fastener to retain the buffer, not to engage it. Accordingly, we sustain the rejection of claim 14. DECISION The Examiner’s rejections are 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). AFFIRMED mls 1 See “overlap” in THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (2007) (found at: http://www.credoreference.com/entry/hmdictenglang/overlap).