Ex Parte Lara sandoval et al

Patent Trial and Appeal Board

Aug 31, 2018

14458570 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/458,570 08/13/2014
121691 7590 09/05/2018
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
FIRST NAMED INVENTOR
J ezahel Lara sand oval
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.
83459247 8770
EXAMINER
WHITE, RODNEY BARNETT
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEZAHEL LARA SANDOVAL,
FERNANDO LARA, GERARDO DIAZ PAREDES,
STEVE WALTER NUNEZ, and BHAYANI THOTA 1
Appeal2018-000685
Application 14/458,570
Technology Center 3600
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 11-13, 15, 16, 19, and 20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, designating new grounds of rejection.
1 Appellants indicate that Ford Global Technologies, LLC is the real party in
interest. App. Br. 3.
2 According to Appellants, claim 18 is cancelled.
Appeal2018-000685
Application 14/458,570
CLAIMED SUBJECT MATTER
The claims are directed to a seat assembly with embedded and hidden
storage. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A seat assembly, comprising:
a seat back;
a seat cushion including a seating surface, a first side
bolster, a second side bolster and a face extending around said
first side bolster and said second side bolster as well as across a
front of said seat cushion;
a first storage compartment in said seat cushion, said
storage compartment having an access opening in said face,
wherein said first storage compartment is a molded plastic bin
embedded in said face of said seat cushion;
a cover overlying said access opening; and
a security lock for said cover.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lobanoff
Shafer
Edelman
us 4,681,366
us 5,358,307
US 8,789,884 Bl
REJECTION
July 21, 1987
Oct. 25, 1994
July 29, 2014
Claims 1, 11-13, 15, 16, 19, and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Shafer, Edelman, and Lobanoff.
2
Appeal2018-000685
Application 14/458,570
OPINION
Claims 1 and 15 are independent with claim 1 being representative of
the group of claims rejected as indicated above. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
In rejecting claim 1 the Examiner relies on the Figure 4 embodiment
of Shafer. Final Act. 2-3. There is no dispute that Shafer discloses a "seat
assembly" 20 comprising a "seat back" 23. Shafer does not appear to use the
exact term "seat cushion." However, it is reasonably apparent from Figures
3 3 and 4 of Shafer that Shafer's seat 21 includes a "a seat cushion including
a seating surface, a first side bolster, a second side bolster and a face
extending around said first side bolster and said second side bolster as well
as across a front of said seat cushion."
Shafer also discloses a storage cavity formed within housing 12,4, 5 a
storage bin 36, and an additional storage location 60. Shafer col. 2, 11. 39-53;
col. 3, 11. 46-54. Any of these storage compartments is reasonably regarded
as the recited "first storage compartment." Each of these storage
compartments in Shafer is also reasonably regarded as a "bin" having an
"access opening" through which items may be stored and retrieved. Shafer's
3 With regard to the seat itself, the Figure 3 embodiment is the same as that
depicted in Figure 4. Shafer col. 4, 11. 10-17.
4 The Examiner cites reference numeral 12 as referring to a "storage
compartment." However, reference numeral 12 in Shafer refers to the
housing in which a storage cavity (unenumerated) is formed. Shafer col. 2,
11. 39-53. We will hereinafter refer to this unlabeled storage cavity as
"Schafer's first storage cavity" because it is the first one described in
Schafer's Detailed Description. We also note that this cavity is present in
both the embodiment depicted in Figures 1-3 and that depicted in Figure 4.
5 Shafer uses the terms compartment, container, cavity, location, area, and
bin interchangeably. Shafer passim.
3
Appeal2018-000685
Application 14/458,570
first storage compartment ( unlabeled) and additional storage location 60
each include a covers 30, 62, respectively. Each of these covers is
reasonably regarded as "a cover overlying said access opening." Shafer's
first storage cavity ( unlabeled) and storage bin 3 6 are expressly described as
"integrally molded" in Shafer's console. Shafer col. 2, 11. 46-53. The interior
61 of additional storage location 60 is described as having walls integrally
mating with those of the housing 12. Although the description of the
additional storage location 60 uses only the term "integrally" and does not
expressly use the term "molded," when these descriptions are considered
collectively, it is reasonably inferred that each storage compartment in
Shafer is "a molded plastic bin." Based on their description as integral, they
are reasonably regarded as "embedded in" Shafer's console 10.
The first distinction between Shafer and the claimed subject relates to
the exact location of Shafer's storage bins or cavities. All of Shafer's bins or
cavities are molded or embedded in Shafer's console 10. None of Shafer's
bins or cavities are "in said seat cushion" or "embedded in said face of said
seat cushion." This results in an arrangement also lacking an access opening
"in said face [ of the seat cushion]." The second distinction between Shafer
and the claimed subject matter relates to the absence of "a security lock for
said cover." Appellants do not appear to take issue with the Examiner's
findings concerning Shafer, only pointing out, as we have, that Shafer fails
to satisfy the limitations discussed above. See App. Br. 10-11. 6 The
6 In the Reply Brief, Appellants argue that the absence of a disclosure
concerning embedding in the seat cushion amounts to a teaching away from
embedding in the seat cushion. App. Br. 2. It is well-settled, however, that
simply teaching an alternative does not rise to the level of teaching-away
without some identifiable criticism or discouragement of pursuing the
solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
4
Appeal2018-000685
Application 14/458,570
Examiner cites Lobanoff regarding the first distinction and Edelman
regarding the second. Final Act. 3--4.
Lobanoff demonstrates that the technique of embedding a receptacle
68 or "compartment" into the face of a head restraint 30 comprising a foam
core 32, "a cushion," such that the compartment has an access opening
(unlabeled, receiving cover 72) in the face of the cushion (left-hand side as
viewed in LobanoffFigure 4), was known in the art. See LobanoffFig. 4;
col. 3, 1. 61---col. 4, 1. 47. Appellants argue that "Lobanoff fails to disclose a
storage compartment, much less a storage compartment provided or
embedded within a front face of the seat cushion." App. Br. 11, 13. First, we
note, as the Examiner does (Ans. 7), this argument is not commensurate in
scope with the claim which lacks any recitation requiring the embedding to
be in the "front" face specifically. Further, this is an attack on Lobanoff
individually, not an argument against what would have been obvious in view
of the combined teachings of Lobanoff and Shafer. Shafer already discloses
a compartment for general "storage." Lobanoff need not also disclose a
compartment for precisely this same purpose to support a rejection under
§ 103. Lobanoff may predominately be concerned with a compartment for
storing a mirror and lights. Lobanoff col. 3, 1. 34---col. 8, 1. 24. However,
Lobanoff also discloses embodiments wherein other vehicle accessories are
stored (Lobanoff col. 8, 1. 25---col. 9, 1. 3) and expressly suggests that the
invention may be practiced with "various other accessory assemblies"
Lobanoff col. 1, 11. 19--20; col. 8, 11. 64--68. The absence of a compartment
for general storage in Lobanoff does not apprise us of error in a rejection
that cited Shafer for that feature.
5
Appeal2018-000685
Application 14/458,570
A similar analysis is applicable regarding the location "a front face of
[the] seat cushion." Shafer already discloses having a storage compartment
at the front face of a seat cushion. Employing Lobanoff' s embedding
technique, while maintain Shafer's general location, would yield a
compartment or bin "embedded in said face of [the] seat cushion." As the
Examiner points out (Ans. 10), the precise location of Lobanoff need not be
incorporated in to Shafer because "a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir.
2012). Furthermore, Lobanoff clearly suggests locating the compartment or
receptacle in areas other than the head rest (see, e.g., Lobanoff Fig. 10),
which is consistent with the Examiner's comment that the exact location of
Lobanoffs receptacle is not critical to employing Lobanoffs embedding
technique (Ans. 10).
In articulating a motivation for the proposed incorporation of
Lobanoffs embedding technique, the Examiner found that, "[b ]y embedding
a receptacle or storage compartment within the seat cushion or the foam
material of the seat cushion, it can simultaneously provide a sturdier cushion
in which the receptacle or storage compartment is embedded." Final Act. 3.
The Examiner found that this arrangement "would strengthen the seat
structure similar to a reinforcing element." Ans. 11.
Appellants argue that "neither the cited references nor the claimed
invention are concerned with the sturdiness of the cushion." App. Br. 13.
Concerning the first portion of this argument, Appellants are incorrect
regarding the references concern for cushion sturdiness. Lobanoff does, in
fact, depict a reinforcing element 34 (Fig. 4, col. 4, 11. 5-9), which is the type
6
Appeal2018-000685
Application 14/458,570
of structure we understand the Examiner to be describing as a "reinforcing
element" that could serve the dual purpose of strengthening the seat and
providing storage space. Omitting apertures 48 to exclude foam from this
region of the core 32 and providing an access opening would yield the type
of arrangement the Examiner describes. Appellants do not present any
technical arguments to explain why inclusion of such an arrangement in
Shafer would be undesirable, infeasible or nonobvious for some other
reason.
Turning to the next portion of Appellants' argument that "the claimed
invention [is not] concerned with the sturdiness of the cushion," it is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellants' Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972); see also KSR Int'!. v. Teleflex, 550 U.S. 398,419 (2007)
("[NJ either the particular motivation nor the avowed purpose of the
[Appellants] controls" in an obviousness analysis.) "[ A ]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed" KSR, 550 U.S. at 420. Appellants do not apprise us of any specific
errors in the problem of cushion sturdiness proposed to be addressed by the
Examiner.
Concerning the reasoning to incorporate Lobanoffs teachings
regarding embedding into Shafer, two additional points are also worth
noting: First, Shafer expressly sought out to address the problem of
providing storage in limited vehicular space (col. 1, 11. 19--24) and expressly
recognized the desirability of utilizing undeveloped areas of the vehicle ( col.
7
Appeal2018-000685
Application 14/458,570
1, 11. 29--30). The use of a cushion that serves the dual purpose of storing
objects and providing a seat for the vehicle occupants, as would be realized
by applying Lobanoffs embedding technique to Shafer's storage
compartments, would help realize these stated objectives. Second, as an
alternative to embedding, Lobanoff also discloses embodiments which,
similar to Shafer's L-shaped device, are also L-shaped and positioned to
surround portions of the vehicle seat. See Lobanoff Figs. 13-15; col. 6, 1. 27
et seq. Lobanoff's disclosure of these arrangements as alternatives would
also suggest to one skilled in the art that, contrary to Appellants' argument
(Reply. Br. 4), that the seat-cradling arrangement of Shafer could be
replaced with a seat-embedded arrangement without any significant
redesign, or change or loss in function, and that one skilled in the art would
know how to effectuate such a modification. Thus, the review of Shafer and
Labonoff in their entirety evince the obviousness of the Examiner's
proposed combination of these references.
Turning to Edelman, it is not disputed that Edelman discloses "a
security lock" according to claim 1. See Final Act. 3. Appellants argue that
the Examiner's statement that
[i]t would have been obvious and well within the level of ordinary
skill in the art to modify the compartments, as taught by Shafer et al,
to include a security lock, as taught by Edelman et al, sine a security
lock would prevent theft of any items the user of the compartments
considered to be valuable,
"does not qualify as an articulated reason for combining the references."
App. Br. 14 ( citing Final Act. 6); Reply. Br 3. Appellants contend, "it merely
speculates about one benefit of the proposed combination. Indeed, the
Examiner ignores that Shafer is primarily concerned with larger accessories,
8
Appeal2018-000685
Application 14/458,570
such as briefcases, purses, satchels and umbrellas and expressly discusses
attaching these personal items to the side of the housing with no locking
means whatsoever." App. Br. 14. That a lock would protect valuable items
does not appear to be "speculat[ive]." The fact that Shafer has attachment
mechanisms outside the housing and does not mention using a lock for the
compartments therein, does not mean that Shafer would not benefit from
incorporating a lock. Without further development of this argument, it is not
clear to us why Appellants believe the Examiner's statement "does not
qualify as an articulated reason for combining the references." Id.
Lastly, Appellants argue that Edelman is nonanalogous art and "not
even remotely relevant to a motor vehicle seat assembly like the claimed
invention." App. Br. 14--15; Reply. Br. 3. We agree with and adopt as our
own the Examiner's analysis concerning this issue (Ans. 15-16), but also
note the following: First, Appellants' argument is not commensurate in
scope with claim 1, which makes no mention of a "motor vehicle." The
"claimed invention" must be considered when determining the scope of
relevant or analogous art. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)
( discussing the second, or "particular problem," prong of the analogous art
test). Second, as the Examiner points out, Appellants do not identify, and we
do not see, any reason why one skilled in the art would regard the scope of
relevant prior art to be limited by the particular environment in which a seat
assembly is intended to be employed. "[F]amiliar items may have obvious
uses beyond their primary purposes." KSR, U.S. 550 at 420. Securing
valuables is not a problem unique to either automotive seats or chaise
lounges. One skilled in the art would recognize that Edelman's solution of
providing a security lock for a compartment's cover as relevant to both types
9
Appeal2018-000685
Application 14/458,570
of seating. See, e.g., In re Paulsen, 30 F.3d 1475, 1481-2 (Fed. Cir. 1994);
accord In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir.
2007).
For the foregoing reasons, we sustain the Examiner's rejection based
on the combination of Shafer, Lobanoff, and Edelman. Because we have
cited additional portions of the applied prior-art not previously discussed by
the Examiner, and articulated additional reasoning in support of the
Examiner's proposed combination, we designate our decision as including
new grounds of rejection so as to afford Appellants the procedural options
associated therewith.
DECISION
The Examiner's rejection is affirmed. Pursuant to 37 C.F.R.
§ 4I.50(b) we designate our decision as including new grounds of rejection.
FINALITY OF DECISION
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
10
Appeal2018-000685
Application 14/458,570
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
11