11628589 (B.P.A.I. Aug. 31, 2009)

Ex Parte Nilsson

Board of Patent Appeals and InterferencesAug 31, 2009

11628589 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOHAN NILSSON ____________________ Appeal 2009-010625 Application 11/628,589 Technology Center 3600 ____________________ Decided: August 31, 2009 ____________________ Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and STEVEN D.A. MCCARTHY, Administrative Patent Judges. PATE, III, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010625 Application 11/628,589 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 21-24. App. Br. 1 We have jurisdiction under 35 U.S.C. § 6(b). The claims are directed to a crash box for fastening a bumper to a vehicle. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A crash box for fastening a bumper to a vehicle, said crash box comprising: an upper U-shaped profile having a central flange and two webs, and corners between the central flange and the webs; and a lower U-shaped profile having a central flange and two webs, and corners between the central flange and the webs; the webs of said upper and lower U-shaped profiles being fastened together in overlapping pairs to form a closed profile of the crash box; each said corner of said crash box comprising two convex portions and an intermediate concave portion disposed between said two convex portions. (Emphasis added) The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hirano US 4,190,276 Feb. 26, 1980 Jurisich US 5,542,365 Aug. 6, 1996 Appeal 2009-010625 Application 11/628,589 3 Claims 21-24 stand rejected under 35 U.S.C. § 103(a) over Hirano and Jurisich. ANALYSIS Appellant contends that in rejecting claim 21 the Examiner has failed to consider the claim limitation requiring that “each [] corner of [the] crash box compris[es] two convex portions and an intermediate concave portion.” Appellant and the Examiner agree that Hirano does not teach concave and convex portions. App. Br. 5; Ans. 4. The Examiner cites Jurisich for a teaching of a crash box with concave and convex portions. Ans. 4. Appellant asserts that since Jurisich teaches only a circular cylindrical structure having concave and convex portions and no corners, Jurisich would not teach or suggest incorporating concave and convex portions into the corners of a crash box as claimed. App. Br. 6-8. The Examiner contends that the statement of the rejection “fully explains how Hirano’s crush box corners were modified as disclosed by Jurisich.” Ans. 5. The Examiner’s rejection, however, states only that it would have been obvious to modify Hirano “with a crush box with concave and convex portions” but does not address the limitation requiring those concave and convex portions to be incorporated into the corners of the crash box. Ans. 4; Reply Br 2. The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. Appeal 2009-010625 Application 11/628,589 4 § 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. There is no legally recognizable essential gist or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed.Cir.1983), cert. denied, 469 U.S. 851 (1984). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Since the Examiner has not articulated any reason why it would have been obvious to incorporate Jurisich’s concave and convex portions into the corners of Hirano, we must conclude that the Examiner has failed to consider this limitation in concluding that the subject matter of claim 21 would have been obvious to one having ordinary skill in the art. Accordingly, we are constrained to reverse the rejection of independent claim 21 and, for the same reason, claims 22-24 depending therefrom. DECISION For the above reasons, the Examiner's rejection of claims 21-24 is reversed. 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) (2007). REVERSED Appeal 2009-010625 Application 11/628,589 5 vsh MARK P. STONE ATTORNEY AT LAW 50 BROADWAY HAWTHORNE NY 10532