Ex Parte Kumar et al

Patent Trials and Appeals Board

May 31, 2019

13343889 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/343,889 01/05/2012 Subramanian Muthu Kumar
23413 7590 06/04/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
11PLAS0038-US-NP 2328
EXAMINER
NGUYEN, XUAN LANT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUBRAMANIAN MUTHU KUMAR,
DINESH MANA, MATTHEW DOUGLAS MARKS,
and GREGORY EVERETT TREMBLAY
Appeal2018-007527
Application 13/343,889
Technology Center 3600
Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3-7, 9-13, 15-19, and 21-24. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 SABIC Global Technologies B.V. is the real party in interest. Appeal
Br. 2.
Appeal2018-007527
Application 13/343,889
THE INVENTION
Appellants' invention relates to energy absorbing vehicle bumpers.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A multi-stage energy absorbing system, comprising:
a base, wherein the base is configured to be attached to a
bumper beam; and
a plurality of energy absorbers, wherein each energy
absorber individually comprises energy absorbing elements in a
nested arrangement, wherein the energy absorbing elements
each comprise a pair of sidewalls and a connecting wall,
wherein the sidewalls and the connecting wall of subsequent,
adjacent energy absorbing elements are shorter creating a space
between adjacent sidewalls and adjacent connecting walls; and
wherein each individual energy absorber is directly
connected to the base;
wherein a pair of the outer sidewalls has a non-uniform
thickness, wherein the thickness of each individual sidewall in
the pair is non-uniform, wherein each individual sidewall
extends from the base to the connecting wall.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Yamazaki
Chou
Ellison
Mani
us 4,940,270
US 6,179,355 Bl
US 2008/0093 831 Al
US 2011/0006554 Al
July 10, 1990
Jan. 30,2001
Apr. 24, 2008
Jan. 13, 2011
The following rejections are before us for review:
1. Claims 1, 5-7, 13, 17-19, 21, and 22 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Mani and Ellison.
2. Claims 3, 4, 15, 16, 23, and 24 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Mani, Ellison, and Yamazaki.
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3. Claims 9-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mani and Chou.
OPINION
Unpatentability of Claim 1, 5-7, 13, 17-19, 21, and 22
over Mani and Ellison
Appellants argue claims 1, 5-7, 13, 17-19, 21, and 22 as a group.
Appeal Br. 6-10. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Mani discloses the invention substantially as
claimed, except for the thickness limitations, for which the Examiner relies
on Ellison. Final Action 3. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to use different sidewall thicknesses in Mani, as Ellison teaches.
Id. at 4. According to the Examiner, a person of ordinary skill in the art
would have done this to achieve different shock absorbing levels gradually
in order to protect occupants of the car. Id. ( citing Ellison ,r 19).
Appellants argue that Mani fails to disclose a base as claimed. Appeal
Br. 8. Appellants argue that the claimed base is a "separate" element to
which other energy absorbing elements are connected. Id. Appellants
characterize Mani's component identified by the Examiner as the base as
merely "one side of the outermost loop element." Id. at 8.
In response, the Examiner states that the claim does not require the
base to be a separate element. Ans. 3. The Examiner points out that
Appellants' argument is inconsistent with the teachings in Appellants' own
Specification regarding the base and other energy absorbers being
"extruded." Id. In reply, Appellants reiterate that the claimed base is a
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Application 13/343,889
"separate element" to which each energy absorbing element is connected.
Reply Br. 2. Appellants Reply Brief fails to address or otherwise rebut the
Examiner's remarks concerning Appellants' base and absorbers being
extruded. See generally Reply Br.
Claim 1 requires a base and a plurality of energy absorbers. Claims
App. The energy absorbers are merely required to be "directly connected"
to the base. Id. The issue before us is whether the base and the energy
absorber elements may reside in a single, unified, integral structure. The law
recognizes that "the use of two terms in a claim requires that they connote
different meanings, not that they necessarily refer to two different
structures." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324,
1333 n. 3 (Fed. Cir. 2006). It is well established that a single structure in an
accused device may satisfy two different claim limitations. Intellectual
Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d
1308, 1320, n. 9 (Fed. Cir. 2003); see also In re Kelley, 305 F.2d 909, 915-
16 (CCPA 1962) (stating that two claim terms may read upon the same
physical structure).
Furthermore, Appellants' Specification language regarding "extruding
a base and an energy absorber" supports the Examiner's position that the
base and the energy absorbers ( or portions thereof) may be of unified,
integral construction. Spec. ,r,r 8, 56. In particular, we note the complete
absence of any teaching disclosure in the embodiment of paragraph 56
regarding how the base and the energy are connected to each other, the
implication being that they may be extruded together as a unified structure.
Id. ,r 56. In the absence of evidence requiring two distinct structures,
Appellants' claim language must be interpreted broadly to read upon prior
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Application 13/343,889
art containing the two claim terms, regardless of whether those elements are
encompassed in one or two structures. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that during examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification). Thus, we see no reason why
Appellants' "base" limitation should not be read onto Mani's element 46.
See Mani, Fig. 7.
Next, Appellants argue that Ellison is directed to a knee bolster within
the interior of the vehicle. Appeal Br. 8. Appellants contend that the
purpose of Ellison is to protect the bodies of vehicle occupants. Id.
Id.
It is clear that Ellison is only concerned with providing
protection to an occupant's femur bone during a collision. Such
a concern is wholly separate from that of the present claims,
which is to provide a multi-stage energy absorbing system.
In response, the Examiner sates that both Mani and Ellison absorb
impact energy. Ans. 4. In reply, Appellants essentially just repeat the
arguments from the Appeal Brief. Reply Br. 2-3.
Mani is directed to a safety automobile bumper assembly that includes
energy absorbers interposed between a fascia and a bumper beam. Mani,
Abstract. An embodiment of Mani includes three nested loops 40, 42,
and 44 formed by being connected to one side 46 of outermost loop
element 44. Id. ,r 52, Fig. 7. Ellison is directed to a vehicle knee bolster
assembly. Ellison, Abstract. A plurality of partition walls within Ellison
form crush zones that collapse as the bolster is deflected. Id. Segments of
the knee bolster have varying thickness to provide a desired crush effect.
Id. ,I 19.
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Contrary to the position taken by Appellants, we do not view the
teachings of Ellison regarding varying thicknesses as limited to knee
bolsters. A person of ordinary skill in the art would readily understand that
varying the thickness of material used in an energy absorbing structure has
broad application beyond that of knee bolsters. It is common sense that
familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). Therefore, "[a] reference must be considered for
everything that it teaches, not simply the described invention or a preferred
embodiment." In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed.
Cir. 2012).
The foregoing principles are particularly pertinent to the instant
controversy, as varying the thickness of material to alter the energy
absorbing properties of a structure is a relatively simple concept. "We find
it not unreasonable in cases ... involving relatively simple everyday-type
mechanical concepts, to permit inquiry into other areas where one of even
limited technical skill would be aware that similar problems exist."
Application of Heldt, 433 F.2d 808,812 (CCPA 1970). Here, the Examiner
relies on Ellison only for the varying thickness limitation. An artisan must
be presumed to know something about the art apart from what the references
disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). We view
Ellison as merely one illustrative example of a simple mechanical principle
that a person of ordinary skill in the art would have otherwise undoubtedly
already been familiar with based on education, experience, and common
sense.
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Finally, Appellants argue that the Examiner's rejection lacks
sufficient rationale to support the proposed combination. Appeal Br. 8-9.
"Appellants respectfully submit that there is no motivation or desire in Mani
to have a pair of outer sidewalls with a non-uniform thickness." Id. at 9.
This argument is unpersuasive. A motivation to combine can be
found in "any need or problem known in the field of endeavor at the time of
the invention and addressed by the [prior art]." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). "[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. A reason to modify a
prior art reference may be found explicitly or implicitly in market forces;
design incentives; the "interrelated teachings of multiple patents"; "any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent"; and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR, 550
U.S. at 418-21)). Here, the Examiner's stated rationale, namely, to achieve
different shock absorbing levels gradually, derives from Ellison, and is
sufficient to support the rejection. Final Action 4 ( citing Ellison ,r 19).
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion ofunpatentability is well-founded. We
sustain the Examiner's rejection of claims 1, 5-7, 13, 17-19, 21, and 22.
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Unpatentability of Claims 3, 4, 15, 16, 23, and 24
Mani, Ellison, and Yamazaki
Claims 3, 4, 15, and 16
Claims 3 and 4 depend, directly or indirectly, from claim 1. Claims
App. Claims 15 and 16 depend from claim 13. Id. These four claims are
argued as a group and we select claim 3 as representative.
Appellants argue that Mani is directed to steel energy absorbers.
Appeal Br. 10. Appellants contend that there is no motivation to modify
Mani with the synthetic resin materials of Yamazaki to achieve the claimed
invention. Id.
In response, the Examiner states that Mani teaches that aluminum is a
preferred material, but that steel may be used for greater energy absorption
and plastic may be used if lesser energy absorption is required. Ans. 5. The
Examiner concludes that: "one of ordinary skill would seek to employ the
materials taught by Yamazaki as 'a plastic' for the absorber of Mani if a
lesser energy absorption is required." Id. In reply, Appellants essentially
just repeat the arguments from their Appeal Brief. Reply Br. 4.
Mani expressly teaches that: "strips of 2.5 mm thick aluminum can be
used. Steel and plastic will provide greater and lesser energy absorption
such characteristics respectively." Mani, ,r 41. There is no merit to
Appellants contention that a person of ordinary skill in the art would not, at
least under appropriate circumstances, use plastic materials in the energy
absorbing components of Mani.
We sustain the rejection of claims 3, 4, 15, and 16.
Claims 23 and 24
Appellants argue that claims 23 and 24 further describe materials for
the various components of the claimed system. Appeal Br. 11. Appellants
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assert, in conclusory fashion, that the applied art fails to disclose the
materials described in these claims. Id. However, "[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim." 37 C.F.R. § 4I.37(c)(l)(iv); see also
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that
Rule 41.3 7 requires more than recitation of the claim elements and a naked
assertion that the elements are not found in the prior art).
Appellants' Appeal Brief fails to set forth an adequate argument for
the separate patentability of claims 23 and 24. Consequently, we sustain the
Examiner's rejection of claims 23 and 24.
Unpatentability of Claims 9-12
over Mani and Chou
Appellants argue claims 9-12 as a group. Appeal Br. 11-13. We
select independent claim 9 as representative.
The Examiner relies on Chou as disclosing limitations directed to
narrow, diverging, and wide sections accompanied by corresponding angles
as claimed. Final Action 7. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to modify Mani with the teachings of Chou. Id. at 7-8. According
to the Examiner, a person of ordinary skill in the art would have done this to
provide gradual energy absorption to protect occupants of the vehicle. Id.
at 8.
In traversing the rejection, Appellants rely on the same argument
regarding Mani's base that we previously considered and found
unpersuasive with respect to claim 1 and find equally unpersuasive here.
Appeal Br. 11-12. Appellants also argue that the Examiner has failed to
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explain "how" a skilled artisan could combine Mani and Chou without
destroying the design present in Main. Id. at 12.
In response, the Examiner states that modifying the shape of Mani's
absorber to conform to the shape taught by Chou requires only ordinary
skill. Ans. 5-6. The Examiner further states that: "changing the curved
shape of the walls of Mani into the sectional angular shape as taught by
Chou would not destroy the absorber of Mani." Id. at 6.
We are not persuaded by Appellants' argument that modifying Mani
by the teachings of Chou requires more than ordinary skill. Mani and Chou
show forming known materials into relatively simple geometric shapes. See
Mani, Fig. 7, Chou, Fig. 2B. Contrary to Appellants' position, the Examiner
is not required to provide a detailed statement as to "how" a skilled artisan
would combine the references. See Nu Vasive, Inc. v. Iancu, 752 Fed.
Appx. 985, 998 (2018) (explaining that case law does not require explaining
exactly how elements of two references could be physically combined).
Consequently, we sustain the Examiner's unpatentability rejection of
claims 9-12.
DECISION
The decision of the Examiner to reject claims 1, 3-7, 9-13, 15-19,
and 21-24 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)(l)(iv).
AFFIRMED
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