Ex Parte Petzold et al

Patent Trial and Appeal Board

May 25, 2018

14759605 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/759,605 07/07/2015
23280 7590 05/30/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Florian Petzold
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.
5068.1165 4811
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN PETZOLD,
SHAHBAZ ALI ABBAS, KAY BROCKMUELLER,
ANDREAS WUEST, TORSTEN HENSEL, and
KLAUSUSKE
Appeal2017-007578
Application 14/759,605
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 12-26. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is "Hilti Aktiengesellschaft." (Appeal Br. 2.)
Appeal2017-007578
Application 14/759,605
STATEMENT OF THE CASE
The Appellants' invention "relates to a console for joining a fa9ade to
a building wall." (Spec. ,r 1.)
Illustrative Claim
12. A console for joining a fa9ade to a building wall,
compnsmg:
a metal wall part for mounting on the building wall;
a metal fa9ade part for joining to the fa9ade; and
a bridge part joining the fa9ade part to the wall part, the
bridge part including a plastic material and forming a heat
barrier between the wall part and the fa9ade part, the bridge part
being an injection-molded part made of fiber-reinforced plastic,
and the bridge part being injection-molded around the wall part
and the fa9ade part so as to encapsulate the wall part and the
fa9ade part at least in certain areas.
Fischer
Prokop
Lorenz
Kunz
References
US 6,421,979 B 1
US 2005/0241111 Al
US 8,297,019 B2
EP 2 180 115 Al
Rejections
July 23, 2002
Nov. 3, 2005
Oct. 30, 2012
Apr. 28, 2010
The Examiner rejects claims 12, 13, 25, and 26 under 35 U.S.C.
§ I03(a) as unpatentable over Kunz and Prokop. (Non-Final Action 3-5.)
The Examiner rejects claims 14--18, 23, and 24 under 35 U.S.C.
§ I03(a) as unpatentable over Kunz, Prokop, and Fischer. (Non-Final
Action 5-9.)
The Examiner rejects claims 19-22 under 35 U.S.C. § I03(a) as
unpatentable over Kunz, Prokop, and Lorenz. (Non-Final Action 9-11.)
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Appeal2017-007578
Application 14/759,605
ANALYSIS
Claim 12 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 13-26) depending directly or indirectly
therefrom. (See Appeal Br., Claims App.)
Independent claim 12 recites a "console" comprising a "fa9ade part,"
a "wall part," and a "bridge part joining the fa9ade part to the wall part."
(Appeal Br., Claims App.) Independent claim 12 further requires the bridge
part to be "injection-molded around the wall part and the fa9ade part so as to
encapsulate the wall part and the fa9ade part at least in certain areas." (Id.)
The Examiner finds that Kunz discloses a console comprising a fa9ade
part (9), a wall part (11), and a bridge part (13). (See Non-Final Action 3.)
As shown in Kunz's Figure 3, reproduced below, the prior art console has an
end piece 9 connected to a cladding 3, an end piece 11 connected to a
bearing structure 5, and a spacing member 13 therebetween.
~--- --
-·--1
Fig. 3
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Application 14/759,605
The above drawing shows that Kunz's spacing member 13 has a plate-like
shape and bridges the space between the cladding 3 and the bearing
stn1cture 5. The above drawing also shows that the cladding-side edge area
of the spacing member 13 is sandwiched between flanges of the end piece 9;
and that the bearing-side edge area of the spacing member 13 is sandwiched
between flanges of the end piece 11. The above drawing further shows that
Kunz's console has a rivet 23 joining the flanges of the end piece 9 to the
spacing member 13; and has a rivet 23 joining the flanges of the end
piece 11 to the spacing member 13. 2
Thus, Kunz's spacing member 13 is not injection molded around the
end piece 9 and the end piece 11 so as to encapsulate certain areas thereof.
Instead, plate-edge areas of Kunz's spacing member 13 are sandwiched
between flanges of end pieces 9 and 11, and connected thereto by rivets 23.
The Examiner finds that a secondary reference, Prokop, teaches that
"overmolding" is "well known as a means to make the connection without
using additionally mechanical means." (Non-Final Action 4.) Prokop
discloses that an ergonomic handle "may be injection molded directly
around" the shank of a knife blade. (Prokop ,r 28.) In view of this teaching
by Prokop, the Examiner determines that it would have been obvious to
modify Kunz's console by substituting an injection-molded connection for
each of its rivet connections. (See Non-Final Action 4.) According to the
Examiner, this would be "an obvious way of constructing the device without
affecting the operation in order to obviate the need for the rivet fastener,"
2 We note that the rivets 23 are received within slot-shaped recesses 24,
which are provided to accommodate thermal expansion. (See Kunz Figs. 1
and 2, claims 2-3.)
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Appeal2017-007578
Application 14/759,605
and according to the Examiner, "doing so would simplify the connection
method, requiring fewer parts." (Id. at 4--5.)
The Appellants argue that the Examiner's proposed modification to
Kunz's console would not have been obvious over the prior art. (See Appeal
Br. 3-5.) Specifically, the Appellants contend that Kunz's spacing
member 13 is "incompatible with the proposed overmolding," as it is
substantially plate-shaped and "a plate cannot 'encapsulate' Kunz's outer
parts 9, 11." (Id. at 4.)
The Examiner answers the Appellants' argument by saying that the
record "makes explicitly clear" that encapsulation "would be understood as
an obvious method of connecting the bridge to the wall or fa9ade parts," and
"the mere inclusion of one connecting means over another would clearly be
an obvious method of connecti[on.]" (Answer 11.) Insofar as the record is
explicitly clear in this regard, the Examiner does not address adequately the
Appellants' contention that Kunz's spacing member 13 would be
incompatible with the proposed overmolding arrangement.
As discussed and depicted above, Kunz's spacing member 13 has a
plate-like shape and bridges the space between the cladding 3 and the
bearing structure 5. Kunz also describes the spacing member 13 as serving a
heat-transfer-resisting structure between the end pieces 9 and 11. (Kunz,
translated Abstract.) The Examiner does not provide us with a finding that
the plate-shaped geometry of Kunz's spacing member 13 could be preserved
with the proposed injection-molded connection; and the Examiner does not
provide us with a finding that heat-transfer-resisting purpose of Kunz's
spacing member 13 would not be compromised by a non-plate geometry.
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Application 14/759,605
Additionally, as discussed and depicted above, the plate edges of
Kunz' s spacing member 13 are sandwiched between flanges of the end
pieces 9 and 11. In other words, Kunz teaches "the bridge being embedded
in the outer parts." (Reply Br. 2.) Therefore, according to the Appellants,
one of ordinary skill in the art would have been, at most, inclined to
"encapsulate[] the outer parts 9, 11, around spacer member 13." (Appeal
Br. 4.) We note that the Appellants' offered alternative modification "would
not require a rivet" (Answer 11), but would still preserve the plate-like
geometry of Kunz' s spacing member 13. The Examiner does not address
adequately why one of ordinary skill in the art, when modifying Kunz' s
console by "the mere inclusion of one connecting means over another" (id.),
would not overmold Kunz's end pieces 9 and 11 around Kunz's spacer
member 13, rather than the proposed molding arrangement. 3
The Examiner does mention that "[t]he invention and the primary
reference are constructed of similar materials for identical purposes."
(Answer 11.) Indeed, the Appellants acknowledge that Kunz discloses "a
console [that] is provided with a bridge part that forms a heat barrier and
thus counters undesired heat dissipation away from the wall via the
console." (Spec. ,r 2.) However, this does little to clarify why one of
ordinary skill, completely unaware of the Appellants' invention, would have
3 In as much as the Examiner's proposed overmolding arrangement is
premised upon Kunz's spacing member 13 being made of plastic and/or
Kunz's end pieces 9 and 11 being made of metal (see e.g., Non-Final
Action 4), such material assortment alone does not do the trick. If anything,
these distinct materials would seem to encourage the use of the rivets 23,
rather than overmolding, so that slots 24 could accommodate the different
thermal expansion properties that Kunz implicates exist when metal and
plastic materials are joined together.
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Application 14/759,605
the insight to injection mold Kunz' s spacing member 13 around its end
pieces 9 and 11 when in pursuit of this heat-dissipation purpose. We note
that Prokop's teachings on ergonomic knife handles do not touch upon heat-
transfer-resisting qualities of overmolded structures.
Thus, we do not sustain the Examiner's rejection of independent
claim 12 under 35 U.S.C. § 103(a) as unpatentable over Kunz and Prokop.
The Examiner's further findings and determinations with respect to
the dependent claims and the additional prior art references (i.e., Fischer and
Lorenz) do not compensate for the shortcomings in the Examiner's rejection
of independent claim 12. (See Non-Final Action 5-11.) Thus, we do not
sustain the Examiner's rejection of dependent claims 13, 25, and 26 under
35 U.S.C. § 103(a) as unpatentable over Kunz and Prokop; we do not sustain
the Examiner's rejection of dependent claims 14--18, 23, and 24 under
35 U.S.C. § 103(a) as unpatentable over Kunz, Prokop, and Fischer; and we
do not sustain the Examiner's rejection of dependent claims 19-22 under
35 U.S.C. § 103(a) as unpatentable over Kunz, Prokop, and Lorenz.
DECISION
We REVERSE the Examiner's rejections of claims 12-26.
REVERSED
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