Ex Parte O et al

Patent Trial and Appeal Board

Aug 15, 2016

13296572 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/296,572 11/15/2011 81466 7590 08/15/2016 MacMillan, Sobanski & Todd, LLC - GM One Maritime Plaza 720 Water Street 5th Floor Toledo, OH 43604 FIRST NAMED INVENTOR James C. O'Kane 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. P013094-GMVE-LCH 1021 EXAMINER MEKHAEIL, SHIREF M ART UNIT PAPER NUMBER 3634 MAILDATE DELIVERY MODE 08/15/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES C. O'KANE and ANIL K. SACHDEV Appeal2014-008375 Application 13/296,572 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James C. O'Kane and Anil K. Sachdev (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-008375 Application 13/296,572 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A vehicle door comprising: a door outer panel defining an exterior surface of the vehicle door; a common door inner panel located inboard of the door outer panel and configured to mount door hardware, the common door inner panel having a periphery; and a panel extension extending around essentially all of the periphery of the common door inner panel, the panel extension being permanently attached directly to the periphery of the common door inner panel, forming an inner panel-extension joint, and the panel extension permanently attached directly to the door outer panel, forming an outer panel-extension joint, to secure the common door inner panel to the door outer panel via the panel extension. REJECTIONS 1 I. Claims 1-5 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 1 Appellants mention the Examiner's objection to the drawings. Appeal Br. 4; see also Reply Br. 2. The propriety of the objection to the drawings under 37 C.F.R. § 1.83 is reviewable by petition under 37 C.F.R § 1. 181 (l\fPEP § 1002.02(c)), and is not appealable. Ex Parte Frye, 94 UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see MPEP § 1201 (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims). Accordingly, we do not specifically review the Exarniner's objection. To the extent that this objection turns on the same issues, or is premised on the same reasoning, as the written description rejection of the 2 Appeal2014-008375 Application 13/296,572 IL Claims 1-5 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. III. Claims 1and2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Feucht (US 4,416,088, iss. Nov. 22, 1983). IV. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feucht. V. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Feucht and Herringshaw (US 4,845,894, iss. July 11, 1989). DISCUSSION Rejection I-Indefiniteness The Examiner's articulated basis for the rejection of claims 1-----5 under 35 U.S.C. § 112, second paragraph, is that "it is not clear what the [Appellants] consider[] a 'permanent attachment."' Final Act. 4. According to the Examiner, "[Appellants] ... suggest[] hemmed joints and fasteners for securing the panel extension to the outer panel and the common door inner panel respectively, both of which are not permanent attachments, since they can be easily removed or released from each other." Id. The Examiner further clarified the basis of the rejection by pointing out that Appellants "describe[] and claim[] the attachments to be a hemmed joint and securing fasteners," which the Examiner considers to be "'removable' and 'releasably secured."' Ans. 8; see Appeal Br. 12, Claims App. (claims 2, 3). claims, our decision with respect to the written description rejection likewise is dispositive as to such aspect of the objection to the drawings. 3 Appeal2014-008375 Application 13/296,572 Appellants argue that "one skilled in the pertinent art would understand what is claimed in light of the [S]pecification." Appeal Br. 6. In particular, Appellants assert that paragraph 15 of the Specification describes types of attachment techniques that "support[] the understanding of the permanent attachment being that, for a single particular vehicle, the panel extension is permanently attached to the corresponding door inner panel and door outer panel." Id. We agree with Appellants. A person of ordinary skill in the art would understand that claim 1 requires that the attachment between the panel extension and each of the inner and outer door panels be permanent in nature. With respect to the hemmed joint and the fasteners recited in dependent claims 2 and 3, respectively, one of ordinary skill in the art would understand that these claims further limit the permanent attachment in claim 1 to permanent hemmed joints and fasteners, to the exclusion of non- permanent hemmed joints and fasteners. Accordingly, we do not sustain the Examiner's rejection of claims 1-5 under 35 U.S.C. § 112, second paragraph, as being indefinite. Rejection 11-Written Description The stated basis for the Examiner's rejection of claims 1-5 under 35 U.S.C. § 112, first paragraph, is that the Specification does not "mention ... that the panel extension is 'permanently attached', and[,] therefore[,] this language is considered new matter." Final Act. 4. Appellants argue that "[p]aragraph [0015] of the [S]pecification specifically addresses panel extension attachment techniques ... which one skilled in the art may consider as a permanent attachment of panels in 4 Appeal2014-008375 Application 13/296,572 vehicle doors." Appeal Br. 4. "For example, two of the techniques disclosed for attaching the panel extension to the door panels [include] welding and riveting." Id. at 4--5; see Spec., para. 15. \Ve agree with Appellants that paragraph 15 of the Specification provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. Namely, the disclosure of the Specification would reasonably convey to one having ordinary skill in the aii that Appellants had possession of a vehicle door with an extension panel that is pennanently attached to inner and outer door panels. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Thus, we do not sustain the r~jection of clahns 1-5 under 35 U.S.C. § 112~ first paragraph. Re} ection III-Anticipation Appellants' independent claim 1 recites, in relevant part, a vehicle door including a "panel extension extending around essentially all of the periphery of the common door inner panel." Appeal Br. 12, Claims App. Appellants argue that Feucht fails to disclose such a limitation because "element 32 in Feucht does not extend around essentially all of the periphery of the common door inner panel." Reply Br. 4; see Appeal Br. 8 (citing Feucht, Fig. 2). For the reasons that follow, Appellants' argument is persuasive of error in the rejection. The Examiner found that Feucht discloses "a panel extension (13,32) extending around essentially all of the periphery of the common door inner panel, the panel extension (13,32) being permanently attached directly to the periphery of the common door inner panel (21)." Final Act. 5 (citing 5 Appeal2014-008375 Application 13/296,572 Feucht, Fig. 3). Referring to the annotated reproduction of Feucht's Figure 3 on page 6 of the Final Action, the Examiner explained that "the flange member (32) is considered part of the panel extension (13), where the panel extension does not need to be one single integral monolithic piece." Id. at 6. In other words, the Examiner considers Feucht' s door frame part 13 and flange member 32, together, to make up the panel extension that extends around essentially all of the periphery of the common door inner panel. See Ans. 9. The Examiner's reliance on Figure 3 of Feucht is unavailing with respect to showing whether flange member 32 extends around essentially all of inner panel 21. Figure 3 shows a vertical cross-section through the door depicted in Figures 1 and 2, but does not show the entire periphery of the common door inner panel. Feucht, col. 2, 11. 67---68. Further, although Figures 1and2 of Feucht do show the periphery of inner door panel 21, Figure 1 does not show flange member 32, and reference numeral 32 in Figure 2 appears to point incorrectly to a window channel guide 28. See id., col. 3, 11. 21-22. As such, the Examiner's finding that Feucht's door frame part 13 and flange member 32 together extend around essentially all of the periphery of the common door inner panel (see Final Act. 5) lacks adequate evidentiary support and, instead, appears to be based upon a speculative assumption regarding the position and extent of flange member 32. For the above reasons, the Examiner fails to establish by a preponderance of evidence that Feucht anticipates a "panel extension extending around essentially all of the periphery of the common door inner panel," as recited in independent claim 1. Accordingly, we do not sustain 6 Appeal2014-008375 Application 13/296,572 the rejection of claim 1 or its dependent claim 2 under 35 U.S.C. § 102(b) as anticipated by Feucht. Rejections IV and V----Obviousness Dependent claims 3 and 4 incorporate the "panel extension extending around essentially all of the periphery of the common door inner panel" limitation of claim 1. Appeal Br. 12, Claims App. Independent claim 5 also recites this limitation. Id. at 12-13, Claims App. In rejecting these claims, the Examiner did not articulate any findings or reasoning, or rely on any teachings of Herringshaw, that would remedy the aforementioned deficiency in the Examiner's findings with respect to Feucht. See Final Act. 7-9. Accordingly, we do not sustain the Examiner's rejections of claims 3-5 under 35 U.S.C. § 103(a). DECISION The Examiner's decision rejecting claims 1-5 is reversed. REVERSED 7