Ex Parte Lee et al

Patent Trial and Appeal Board

Sep 23, 2016

13437407 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/437,407 04/02/2012
28866 7590 09/27/2016
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
Yun Shin Lee
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.
83218521 2954
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
docketing@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUN SHIN LEE and JOHN W. JOHNSTON
Appeal2015-004947
Application 13/437,407
Technology Center 1700
Before WESLEY B. DERRICK, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision below, we refer to the Specification filed April 2, 2012
(Spec.), the Final Office Action appealed from mailed November 5, 2014
(Final Act.), the Appeal Brief filed January 13, 2015 (Appeal Br.), the
Examiner's Answer mailed March 12, 2015 (Ans.), and the Reply Brief filed
March 30, 2015 (Reply Br.).
2 Appellants identify the real party in interest as Ford Global Technologies,
LLC, the assignee of the instant application. Appeal Br. 1.
Appeal2015-004947
Application 13/437,407
STATEMENT OF CASE
Appellants' claimed invention relates to in-mold grain skin lamination
for interior trim panel having a decorative applique. Spec. 1. According to
Appellants, "the present invention achieves efficient processing while
avoiding prior art problems associated with differential shrinkage and the
need to accommodate mechanical fasteners." Id. at 4. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for forming a composite trim panel for a vehicle
interior, comprising the steps of:
loading a sheet-like applique onto a female negative
vacuum molding tool, wherein the applique has a Class A surface
facing the female negative-vacuum molding tool and a Class B
surface carrying a heat-activated adhesive;
heating a skin-forming sheet;
negative-vacuum forming the heated skin-forming sheet
into a trim panel skin in the female negative-vacuum molding
tool surrounding and atop of the applique, wherein the trim panel
skin surrounding the applique is formed with an in-mold grain
and, during negative-vacuum forming, the heated skin-forming
sheet activates the adhesive on the applique to bond the applique
to the trim panel skin; and
while the trim panel skin remains pliable from the heating
and remains in the female negative-vacuum molding tool,
pressing a pre-molded rigid substrate against the trim panel skin
to adhere them together.
Claims Appendix at Appeal Br. 6.
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Application 13/437,407
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1, 2, 4, 6-10, 12, and 14 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Spengler3 in
view of Appellants' Admitted Prior Art.4 Final Act. 3.
B. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spengler in view of AAP A and further
in view ofHijikata. 5 Id. at 5.
C. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spengler in view of AAP A and further
in view of Shon. 6 Id. at 6.
D. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spengler in view of AAP A and
further in view of Kunthady. 7 Id.
E. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spengler in view of AAP A and
:forth er in view of Casteel. 8 Id. at 7.
3 Spengler et al., US 4,923,539, issued May 8, 1990 (hereinafter
"Spengler").
4 Appellants' Admitted Prior Art (hereinafter "AAPA"), Spec. 1, 11. 23-2, 11.
2 and 4, 11. 4-14.
5 Hijikata et al., JP 61-193830, published August 28, 1986 (hereinafter
"Hijikata").
6 Inn-Tae Shon, US 6,171,428 Bl, issued January 9, 2001 (hereinafter
"Shon").
7 Kunthady et al., US 8,106,320 B2, issued January 31, 2012 (hereinafter
"Kunthady").
8 Casteel et al., US 6,174,396 Bl, issued January 16, 2001 (hereinafter
"Casteel").
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Application 13/437,407
Appellants seek our review of Rejections A-E. 9 Appellants present
argument directed to independent claim 1 and dependent claim 3 and
provide no additional argument as to claims 2, and 4-14 separate from what
is argued for claims 1 and 3. Appeal Br. 4-5. Therefore, we focus our
discussion below on claim 1 (Rejection A) and claim 3 (Rejection B) to
resolve all issues on appeal.
OPINION
Claim 1 - Obviousness
The Examiner rejects claim 1, among other claims, as unpatentable
under 35 U.S.C. § 103(a) over Spengler in view of AAPA. The Examiner
finds that Spengler teaches a method for forming composite trim panels
using a female vacuum molding tool and having the limitations of claim 1.
Final Act. 3. The Examiner acknowledges that Spengler does not disclose
"whether the portions of the skin-forming sheet being formed against the
lower molding surface also undergo in-mold graining i.e. a textured mold."
Id. But, the Examiner finds that such a technique is "a widespread
embossing technique in this art (as admitted for example by Applicants [Pg.
1, 23-30 & Pg. 4, 6-14])." Id. The Examiner then concludes that one
skilled in the art would find it obvious to "perform IMG [in-mold graining]
as suggested by AAP A on the 'Class A' surface of Spengler's skin-forming
sheet as it is shaped against the female mold, in order to provide the
9 Appellants fail to expressly identify claim 13 (Rejection E) as subject to
appeal. However, we consider claim 13, ultimately depending from claim 1,
in conjunction with our discussion of claim 1.
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Application 13/437,407
conventional attractive/tactile patterning on the exposed surfaces of the
plastic skin product." Id.
Appellants contend that the Examiner has mischaracterized Spengler.
Appeal Br. 3. Appellants argue that in Spengler, the
vacuum form [sic] chambers 15' in lower form 15 is optional and,
at most, it only pre-forms [sic] the vinyl film to the shape of
lower form 15 (col. 5, lines 60-63). The skin layer or film takes
shape only after substrate 2 is pressed firmly against lower mold
15 (col. 6, lines 4-6).
Id.; see also Reply Br. 2. Further, Appellants contend that the in-mold
graining of the admitted prior art "uses vacuum-forming the skin against the
textured mold" and argue that because Spengler does not suggest vacuum-
forming and the AAP A does not teach "compression as disclosed in
Spengler is capable of achieving an in-mold grain, even if the lower mold
had a textured surface," the claimed method is not taught. Appeal Br. 3.
In response, the Examiner finds that "Spengler ... teaches pre-
forming the skin to the shape of the lower mold by vacuum, followed by
pressing the substrate to the rear of the still pliable pre-formed sheet, before
fully curing the entire assembly, after which the vacuum may then be
interrupted." Ans. 2. Moreover, the Examiner explains that while Spengler
is "silent as to whether the surface of its vacuum mold is grained, this is a
well-known additive feature .... " Id. at 2-3.
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection. Spengler teaches a process for vacuum forming
automotive interior trim panels so that "the facing materials of a trim panel,
e.g. a cover skin layer such as a vinyl film, and facing inserts of textile or
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Application 13/437,407
carpet, are all applied simultaneously in a single operation in a single work
station." Spengler, col. 2, 11. 42--45. According to Spengler
[a] vacuum may be applied to the vacuum chambers 15' in order
to partially preform the vinyl film to the shape of the lower form
15. Vacuum applied to the vacuum chambers 8a' and 8b' assists
in holding the inserts 10 and 11 in place . . . . Then the upper
form 1 carrying the substrate 2 is lowered by the piston cylinder
devices 25, as shown by the arrow 19.
Id. at col. 5, 11. 60-68. Appellants contention that Spengler only optionally
teaches using a vacuum to pre-form the skin layer and that "[t]he skin layer
or film only takes shape after the substrate 2 is pressed firmly against lower
mold 15" attacks the degree of vacuum formation taught in Spengler-not
that vacuum formation is in fact taught by Spengler. Notably, Appellants'
claims do not require complete vacuum formation. See In re Self, 671 F .2d
1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset
because ... they are not based on limitations appearing in the claims.").
And, like the relevant process disclosed in Spengler, Appellants' claim
requires that "while the trim panel skin remains pliable ... pressing a pre-
molded rigid substrate against the trim panel skin to adhere them together."
Claims Appendix at Appeal Br. 6.
Moreover, irrespective of whether vacuum formation in Spengler is
optional, Spengler still teaches vacuum forming an interior panel, including
appliques, against a mold. We emphasize this is a rejection based on
obviousness, not anticipation, and further we consider the prior art for all
that it teaches and suggests. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
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Application 13/437,407
considered."); Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578
(Fed. Cir. 1991).
Because we find that Spengler teaches vacuum formation, Appellants'
remaining argument about the "in-mold graining" similarly fails to identify
Examiner error.
For these reasons, we are unpersuaded of reversible error in the
Examiner's obviousness rejection of claim 1.
Claim 3 - Obviousness
The Examiner rejects claim 3 as unpatentable under 35 U.S.C.
§ 103(a) over Spengler in view of AAPA and further in view ofHijikata.
Claim 3, depending from claim 1, additionally requires that the "sheet-like
applique includes a perimeter flange that creates a space between the sheet-
like applique and the female negative-vacuum molding tool, and wherein the
skin-forming sheet enters the space during the negative-vacuum forming
step." Claims Appendix at Appeal Br. 6. The Examiner finds that:
The prior art does not expressly disclose providing the appliques
with peripheral flanges that overhang the mold so that the skin
enters the spaces formed between the appliques and the mold,
capturing the applique; however, this is a well-known technique
as taught for example by Hijikata, which wraps skin (8) around
the ends of appliques (7) (throughout, e.g. abstract, [FIGS. 1-2]).
Final Act. 5 and Ans. 3. The Examiner explains that one of ordinary skill in
the art would have found it obvious to combine the teachings of Spengler,
AAPA, and Hijikata "in order to provide for improved encapsulation of an
applique in a skin material and prevent delamination." Id.
Appellants explain that the instant claim describes a method where the
"skin-forming sheet enters the space during the negative-vacuum forming
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step .... [which] provides mechanical bonding between the applique and
skin to further strengthen retention of the applique." Appeal Br. 4.
Appellants argue that Hij ikata, in contrast, does not teach that "turning and
setting of [the] skin material occurs during vacuum forming." Id. Rather,
Appellants contend that "[i]t is clearly a subsequent step since the
undersurface of substrates 7 is not accessible while they are in the mold, and
suction holes 6 are not placed in a manner to draw any skin material beneath
substrates 7." Id. Moreover, Appellants urge that in Hijikata "each separate
base receiving unit 4 receives a base material 7 and a skin material 8 is
simultaneously vacuum formed over each base material." Reply Br. 2. In
the instant application, "it is clear that the applique is not at an edge since it
is surrounded by an in-mold grain." Id. Thus, the limitations of claim 3 are
not met by Hijikata. Appeal Br. 4; Reply Br. 2.
Appellants do not apprise us of reversible error by the Examiner.
Here, we find the Examiner relies on Hijikata for the limited purpose of
teaching "a well-known technique ... which wraps skin (8) around the ends
of appliques (7)" so that the skin enters the space between the applique and
the mold. Figure 2 of Hijikata, reproduced below, shows surface skin
material (8) being pulled into the valley of gap (10) and around the molded
base (7) by action of the suction/vacuum holes ( 6).
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Hijikata, Fig. 2. While it is true, as Appellants suggest (Reply Br. 2), that
the molded products formed on each base unit 7 are subsequently separated
from one another and subjected to additional processing steps, these
additional steps do not render the teaching relied on any less relevant. See,
e.g., Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (explaining a reference is good for all that it teaches to a person of
ordinary skill in the art). Further, Appellants' arguments focus on Hijikata
individually, and are not persuasive because they do not address the
combination relied on by the Examiner and what the combination, "taken as
a whole would [have] suggest[ ed] to one of ordinary skill in the art." See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For the reasons above, we are unpersuaded of reversible error in the
Examiner's obviousness rejection of claim 3.
CONCLUSION
For the reasons above, we sustain the Examiner's obviousness
rejections of claims 1-14.
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Application 13/437,407
DECISION
The Examiner's decision rejecting claims 1-14 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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