Ex Parte Lay et al

Patent Trial and Appeal Board

Jun 7, 2016

12989433 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/989,433 11/12/2010
34044 7590 06/09/2016
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Reiner Lay
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.
022862-1219-usoo 9148
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINER LAY and VALERIE CARLIER
Appeal2015-000582
Application 12/989,433
Technology Center 1700
Before MARK NAGUMO, N. WHITNEY WILSON, and BRIAND.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE
1 According to the Appellants, the real party in interest is Robert Bosch
GmbH. Appeal Br. 2.
Appeal2015-000582
Application 12/989,433
STATEMENT OF CASE
Appellants describe the present invention as windshield wiper blades
having a carbon fiber surface coating for improved wiping quality over the
wiper's lifetime. Spec.2 i-fi-16-8.
All claims aside from claims 1, 3, and 5 have been previously
withdrawn or cancelled. Appeal Br. 4. 3 Claim 5 is objected to as depending
from rejected claim 1. Id. Thus, only claims 1 and 3 are on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A windshield wiper blade comprising a profile formed
from an elastomer material or from a rubber material, where the
profile has at least partially a surface coating, characterized in
that the surface coating (22) comprises carbon fibers (24),
characterized in that the carbon fibers (24) have been partially
carbonized but not fully carbonized, and characterized in that the
length of the carbon fibers (24) is < 1 mm.
Appeal Br. 10 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Denman
Azuma et al.
(hereinafter "Azuma")
Lam
us 1,851,087
us 6,077 ,592
Mar. 29, 1932
June 20, 2000
US 2005/0074595 Al Apr. 7, 2005
2 References are to the October 25, 2010 substitute specification.
3 In this decision, we refer to the Final Office Action filed October 8, 2013
("Final Act."), the Advisory Action filed February 13, 2014 ("Adv. Act."),
the Appeal Brief filed June 2, 2014 ("Appeal Br."), and the Examiner's
Answer filed July 31, 2014 ("Ans.").
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Appeal2015-000582
Application 12/989,433
REJECTION
The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103 as
unpatentable over Azuma in view of Lam as evidenced by Denman. Adv.
Act. 2; Ans. 2.
ANALYSIS
The Examiner cites Azuma as a primary reference teaching, for
example, use of carbon fiber in a windshield wiper. Final Act. 3; see also
Azuma 7:22-38. The Examiner notes that Azuma "is silent as to the
specifics of the carbon fiber." Final Act. 3. In other words, Azuma does not
teach the recitations of claim 1 requiring carbon fibers that "have been
partially carbonized but not fully carbonized" and that are less than 1
millimeter long.
The Examiner finds that Lam teaches use of partially carbonized
fibers with a length of 0.5 mm. Final Act. 3--4. Lam, however, is not
directed to a windshield wiper. Rather, Lam explains that its "invention is
useful as a high energy friction material for use with clutch plates,
transmission bands, brake shoes, synchronizer rings, friction disks or system
plates." Lam i-f 84.
Appellants argue that a person of ordinary skill would not look to Lam
when trying to design a wiper blade because Lam emphasizes the
importance of increasing friction (as this would be important for use of
Lam's material in an automotive brake). Appeal Br. 8; Lam i-f 9. In contrast,
the windshield wiper blade teachings of both the present application and
Azuma emphasize low friction. Appeal Br. 8. Spec. i-f 2; Azuma 15: 1--4,
Table 2. We agree with Appellants that the fundamental goals and operating
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Appeal2015-000582
Application 12/989,433
parameters of windshield wiper blades and Lam's "high energy friction
material" (for use in, for example, brakes) are different enough that, based
on the present record, a preponderance of the evidence does not support that
a person of skill in the art would look to Lam to modify Azuma.
The Examiner's stated rationales for combining the references are not
persuasive. The Examiner finds that Lam is analogous to the present
invention because both wiper blades are "friction material" because some
friction is required for their operability. Ans. 2-3. The amount of friction,
however, required for wiper blades is very different from the high friction
required for brakes. The Examiner also states that Lam addresses proper
adhesion of the carbon fiber just like the present invention. Ans. 3. Lam,
however, only states that its "fiber geometry" enhances resistance to
delamination-not fiber length or partial carbonization. Lam i-f 50. Finally,
the Examiner finds that a person of skill would look to the fibers of Lam to
modify wiper blades in order to increase wear resistance and reduce noise.
Final Act. 4. While we agree certain benefits of Lam would generally be
beneficial to windshield wipers, Lam is primarily concerned with, for
example, a material that can withstand high speeds (65 m/second), high
pressures (up to 1500 psi), and high temperatures. Lam i-fi-14-5. Windshield
wipers do not need to be adapted to address these extremes.
Thus, based on the present record, we are not persuaded that a person
of ordinary skill would have recognized that the teachings of Lam could
improve Azuma's windshield wipers in the same manner they improve the
items disclosed by Lam or that use of Lam's teachings could predictably
improve windshield wipers. See KSR Intern. Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). We therefore do not sustain the Examiner's rejection of
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Appeal2015-000582
Application 12/989,433
claim 1. Because claim 3 depends from claim 1, we also reverse the
Examiner's rejection of claim 3.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1and3.
REVERSED
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