Ex Parte Popovski et al

Patent Trials and Appeals Board

Jun 24, 2019

14453910 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/453,910 08/07/2014
121691 7590 06/26/2019
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
FIRST NAMED INVENTOR
Mike Popovski
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.
83460417 9114
EXAMINER
SAN,JASONW
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE POPOVSKI and DAVID HUELKE 1
Appeal 2018-007278
Application 14/453,910
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3, 4, 6, 8-12, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
1 The Appeal Brief (hereinafter "Br.") indicates that Appellant, Ford Global
Technologies, LLC, is the real party in interest. Br. 3.
Appeal 2018-007278
Application 14/453,910
CLAIMED SUBJECT MATTER
The claims are directed to a magnet fastener and a method of
eliminating ticking and rattling in a magnet fastener. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A magnet fastener, comprising:
a carrier including a unitary body having a base, a
magnet support, and a resilient shaft extending between said base
and said magnet support, wherein said unitary body including the
base, the magnet support and the resilient shaft is made from a
single-piece of plastic;
a magnet fixed to said magnet support whereby said
resilient shaft allows articulation of said magnet support and
magnet on said base without any ticking or rattling; and
a cup made from a ferromagnetic material, wherein
said cup is over molded with said unitary body.
Br. 20 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith
Burton
Sjoquist
Dickinson
US 2010/0289288 Al
US 2012/0074807 Al
US 9,131,739 Bl
US 2015/0283957 Al
REJECTI0NS2
Nov. 18, 2010
Mar. 29, 2012
Sept. 15, 2015
Oct. 8, 2015
I. Claims 1, 3, 4, 6, 8-12, and 14 are rejected under 35 U.S.C.
§ 103 as unpatentable over Smith and Sjoquist.
2 Page 3 of the Examiner's Answer indicates that a rejection of claims 1, 12,
and 15 as unpatentable over Dickenson et al. (US 2015/0283957, published
October 8, 2015) (Final Act. 3) has been withdrawn.
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II. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable
over Smith, Sjoquist, and Burton.
OPINION
Rejection L Smith and Sjoquist3
Claims 1 and 12
The Examiner finds that Smith discloses many of the elements recited
in claim 1, including a cup (holder 70), magnet (80), and unitary body (20,
30, 90), but fails to disclose (i) that the cup is made from ferromagnetic
material, (ii) that the body is made from a single piece of plastic, and (iii)
that the cup is over molded with the body. Final Act. 6-8.
As to deficiency (i), the Examiner relies on Sjoquist to teach the use
of a ferromagnetic material. Id. at 7. The Examiner reasons "It would have
been obvious to one having ordinary skill in the art at the time the invention
was effectively filed to have modified the cup of [Smith] with a
ferromagnetic material as taught by [Sjoquist] in order to magnetically
attract the ring magnet and have a strong magnetic connection." Id.
Addressing deficiency (ii), the Examiner states "It would have been
obvious to one having ordinary skill in the art at the time the invention was
made to have made the pieces out of one material, since it has been held that
forming in one piece an article which has formerly been formed in two
pieces and put together involves only routine skill in the art." Id.
Additionally, the Examiner states, "it would have been obvious to one of
ordinary skill in the art to have known that making multiple components into
3 Appellant makes arguments for the patentability of independent claims 1,
12, and 15 together (Br. 10-17) and then provides additional argument for
claim 15 specifically (Br. 18). We address the rejection of claim 15 under
the heading "Rejection II, Smith, Sjoquist, and Burton."
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Application 14/453,910
one single piece yields the predictable result of easier manufacturing and is
more durable against wear and tear." Id.
Addressing deficiency (iii), the Examiner determines that the process
by which the cup is made ( over molding) is a product-by-process limitation.
Id. at 8. Based on this determination, the Examiner does not give this
limitation patentable weight. Id. (citing In re Thorpe, 777 F.2d 695 (Fed.
Cir. 1985).
(i), Magnetic
Appellant contends that the Examiner's reasoning for modifying the
cup of Smith to be made from a ferromagnetic material is not supported by
rational underpinnings. Appeal Br. 11-12. Specifically, Appellant contends
that Smith has no need for a ferromagnetic cap, and "The Examiner's naked
statement about the ferromagnetic material of Sjoquist is not relevant in the
arrangement disclosed by Smith and therefore is simply a conclusory
statement which the Supreme Court in KSR warned cannot support a prima
facie case of obviousness." Id. at 12 (citing KSR Int'!. Co. v. Teleflex, Inc.,
550 U.S. 398 (2007)).
In response, the Examiner points out that paragraph 34 of Smith
teaches that fastener clip 10 can be made of magnetic steel as well as various
other unspecified materials. See Ans. 3-4. The Examiner also finds that
Sjoquist discloses benefits of using a magnetic connection. Id. at 4.
Specifically, the Examiner refers to the statement in Sjoquist that a magnetic
connection is "easy to operate[,] and is especially useful for persons who
lack fine motor coordination." Id. (quoting Sjoquist 2:8-9).
The Examiner has the better position on this issue. Paragraph 34 of
Smith states "According to one embodiment, the fastener clip 10 is made of:
magnetic steel or any suitable metal. The body panel may be constructed
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Application 14/453,910
from plastic or from any suitable material such as plastic, vinyl, closet,
wood, steel, aluminum, magnesium, carbon fiber or any suitable material."
(Emphasis added.) Thus, Smith at least suggests making its cup (holder 70)
magnetic. Additionally, as the Examiner finds, Sjoquist discloses benefits of
making a magnetic connection between two components. See Sjoquist 2:2-
9. Accordingly, the Examiner's reasoning for modifying the cup of Smith
to be made from a ferromagnetic material is supported by rational
underpinnings, specifically, the teachings of the prior art.
(ii), Unitary, One-piece
Appellant contends Smith does not disclose a body made from a
single piece, as claimed. Br. 12-13 ("Since Smith discusses attaching the
carrier 90 to the base 20 and attaching the umbrella 30 to the carrier 90,
these elements are not unitary and not made from a single piece of plastic,
but rather are removably attached to one another."). Appellant also contends
that the caselaw upon which the Examiner relies in support of reasoning that
it would have been obvious to form the body out of a single piece is outdated
and not on point. Br. 13-14 (discussing In re Hotte, 177 USPQ 326, 328
(CCPA 1973); Howard v. Detroit Stove Works, 150 US 164 (1893);
Krementz v. S. Cottle Company, 148 U.S. 556 (1893)). Appellant argues
that Examiner's findings as to the benefits that would result from making
the body from a single piece ( durability and ease of manufacture) are not
supported by the evidence of record. Br. 15.
In response, the Examiner finds that Smith discloses injection molding
may be used to obtain the desired shape of Smith's device and, further, that
other manufacturing processes may be used. Ans. 5 ( citing Smith ,i 49).
The Examiner states, "One of ordinary skill in the art would have known
that where multiple elements that are manufactured by extrusion or injection
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molding to be attached together could be formed as a single piece." Id. The
Examiner reiterates that the decision in Howard is applicable to the present
claims. Id.
We reproduce a portion of Figure 1 of Smith below.
FIG. 1
The reproduced portion of Figure 1 of Smith is a perspective view of base
20, umbrella 30, and optional carrier 90, the components the Examiner
considers to be the recited "carrier." See Smith ,-J 29; Final Act. 6.
We agree with the Examiner that a person of ordinary skill in the art
would have found it obvious to manufacture the combination of components
20, 30, and 90 of Smith as a single piece. Smith's umbrella 30 is attached to
base 20 via optional carrier 90. Smith ,-J 29. Smith discloses that these
three components may be made from the same material, for example,
polypropylene. Id. ,-i 37. Smith states that polypropylene is normally tough
and flexible and that polypropylene is used as an engineering plastic,
sometimes in place of other materials such as ABS, acrylic or certain other
plastics. Id. ,-i 38. Further, Smith discloses that polypropylene is reasonably
economical and has good resistance to fatigue. Id. Smith teaches that
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Application 14/453,910
polypropylene is particularly suitable for injection molding. Id. ,i 39. Smith
explains that "Melt processing of polypropylene can be achieved via
extrusion and molding. Injection molding may be used to obtain the desired
shape." Id. ,i 42. Thus, Smith teaches the use of polypropylene, based on
various benefits, such as fatigue resistance and economy, and, further, that
desired shapes can be made with it via injection molding. Injection molding
results in a contiguous item. Accordingly, the Examiner's reasoning that
forming the combination of components 20, 30, and 90 of Smith as a single
piece (such as by injection molding polypropylene) would be easier to
manufacture and more durable is supported by rational underpinnings.
(iii), Over molding
Regarding the requirement in claim 1 that the cup be over molded
with the unitary body, the Examiner determines that this is a product-by-
process limitation that does not define the structure of the claimed fastener.
Final Act. 8.
Appellant contends that the over molded cup results in improved
functionality inasmuch as it prevents rattling. Br. 16. Specifically,
Appellant states that Appellant's
[S]pecification provides that prior art magnet holders similar to
the cited references are made of multiple pieces that move
relative to one another in order to provide articulation and "the
relative movement of the parts may lead to a ticking or rattling
sound that can be particularly annoying to a vehicle operator."
Appellant's Specification, para. [0005]. Furthermore, it is noted
the unitary carrier body being over molded onto the cup
"prevents any movement between the cup and the unitary body."
Id., para. [0022].
Br. 16. Appellant asserts that, in contrast to beneficially reducing or
preventing rattling, "Smith expressly provides that '[t]he boss 40 is attached
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Application 14/453,910
to the magnetic fastener 10 such that the umbrella 3 0 is operative to flex to
permit the umbrella 30 to pivot about the boss 40. "' Br. 17 ( citing Smith
iJ 31 ).
In response, the Examiner finds that Smith discloses that its fastener
is designed to minimize buzzing or rattling that would distract vehicle
occupants or would loosen the connection of the fastener with the vehicle.
Ans. 6 ( citing Smith ,i 9).
Appellant has the better position on this issue. The Examiner does
not explicitly find, based on evidence or technical reasoning, that an over
molded component would have the same structure as the structure resulting
from the proposed combination of Smith and Sjoquist. See Final Act. 8.
Rather, the Examiner concludes that this limitation is a product-by-process
limitation and then states that it will not be given patentable weight. Id.
The facts at hand are similar to those in In re Nordt, 881 F.3d 1371
(Fed. Cir. 2018) where the Board had presumed that the term "injection
molded" was a product-by-process limitation carrying no patentable weight
and required the appellant to rebut this presumption. See id. at 1375. In
Nordt, the Court explained that the Board failed to distinguish between
construing a claim element and concluding that the claimed element is a
product-by-process limitation. Id. ("the Board confounded two somewhat
distinct inquiries-the first being whether 'injection molded' is a process or
structural limitation, the second being the precise meaning of the limitation
if structural."). The Court articulated a principle of claim construction for
such process-related limitations in a device or apparatus claim, stating, "as
we have explained, 'words of limitation that can connote with equal force a
structural characteristic of the product or a process of manufacture are
commonly and by default interpreted in their structural sense, unless the
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Application 14/453,910
patentee has demonstrated otherwise."' Id. ( quoting 3M Innovative Props.
Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371-72 (Fed. Cir. 2003)).
Based on the specification, the Court went on to interpret the "injection
molded" recitation as a structural limitation, requiring, at a minimum, that
the recited injection molded component be an "integral structure." Id. at
1375-1376.
The Specification provides little guidance as to what, if any structure
over molding the cup entails. Paragraph 22, cited by Appellant, appears to
indicate that such a process causes the unitary body to completely fill an
aperture through which it extends. However, this limitation is explicitly
recited in dependent claim 9, and, therefore, we presume is not inherently
required by the over molding limitation recited in independent claim 1 from
which claim 9 ultimately depends. Paragraph 26 of the Specification implies
a connection between the over molding process and an absence of ticking
and rattling. This paragraph contrasts the over molded connection with prior
art connections that held the magnet support loosely. See Spec. ,i 26.
Appellant's disclosure makes clear that the over molding process is not a
requirement for the prevention of ticking and rattling. Specifically, original
claim 1 recites prevention of these problems, and original dependent claim 7
adds the limitation that the cup and body are over molded. Appellant also
points to paragraph 5 of the Specification as support for the conclusion that
over molding the cup prevents ticking and rattling. See Br. 16-17.
However, paragraph 5 articulates a problem solved by Appellant's invention,
but does not mention the process of over molding. Nonetheless, the above-
noted paragraphs, taken in the context of Appellant's disclosure, imply that
the over molding process provides a structure that connects components
tightly and assists in preventing ticking and rattling of these components.
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Accordingly, contrary to the Examiner's determination on page 8 of the
Final Action, the recitation in claim 1 that the cup is over molded with the
unitary body should be given patentable weight as a structural limitation.
Consequently, we reverse the rejection of claims 1 and 12 as unpatentable
over Smith and Sjoquist, which depends on the term "over molded" in claim
1 having no patentable weight.
Claims 3, 4, 6, 8-11, and 14
As claims 3, 4, 6, 8-11, and 14 depend, directly or indirectly, from
claims 1 and 12, we likewise reverse the rejection of these claims as
unpatentable over Smith and Sjoquist.
NEW GROUND OF REJECTION
Claims 1 and 12
We enter a new ground of rejection of independent claims 1 and 12
as unpatentable over Smith, Sjoquist, and Burton. In the rejection of
independent method claim 15, the Examiner relies on Burton to teach an
over molding process. See Final Act. 11-12. The Examiner proposes to
over mold the cup of Smith, based on the teachings of Burton in order to
easily manufacture components while establishing and maintaining
placement of the components with respect to each other. Id. This reasoning
is supported by rational underpinnings and applies equally well to modifying
the Examiner's proposed combination of Smith and Sjoquist used to reject
claim 1. Specifically, Burton, titled "Retaining Sleeve for Over Molding
Magnets," teaches a method of improving the over molding process used
to secure magnets to a core of a motor. See Burton ,-J,-J 2, 4, 29. The
Background section of Burton indicates that attachment of magnets to a
motor core via over molding was previously known, and Burton improves
upon this technique via the use of a sleeve. See id. Claim 15 of Burton
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includes the step of "injecting a plastic molding material into said space to
attach the shaft to the retaining sleeve containing the magnets." Thus,
Burton is pertinent to the problem of providing a secure attachment of two
components and applies its teachings in the specific context of attaching
magnets. In other words, Burton's teaching of over molding is applicable to
Smith's device, and, especially, Smith's device as modified based on
Sjoquist.4 It would have been obvious to apply over molding, as taught by
Burton, such that Smith's cup (holder 70) is over molded with body (20, 30,
90) in order to, as stated by the Examiner with respect to the rejection of
claim 15, "easily manufacture components while establishing and
maintaining placement of the components with respect to each other." Final
Act. 12. Simply put, such a modification would provide the predictable
result of better securing these items together.
In addressing the rejection of claim 15 as unpatentable over Smith,
Sjoquist, and Burton, Appellant argues that "Smith expressly desires that the
magnet fastener pivots about the boss[, a ]nd [ a Js a result, over molding the
cup with the carrier would render Smith inoperable for its intended
purpose." Br. 18 (citing MPEP § 2143.01; In re Gordon, 733 F.2d 900 (Fed.
Cir. 1984)).
Appellant's argument that over molding the cup with the carrier
would make Smith's device inoperable is unavailing. Even assuming,
arguendo, that Smith requires that umbrella 30 be pivotable about boss 40, it
is not clear that such a pivoting requirement would preclude the use of over
molding as a method of connecting cup (holder 70) with body (20, 30, 90).
4 Smith discusses making fastener clip 10 magnetic. Smith ,-J 34. The
Examiner relies on Sjoquist to teach the use of a ferromagnetic material.
Final Act. 7; see also Sjoquist 2:2-11.
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See Smith ,i 31, Figs. 1-5. In one embodiment, hole 100 of Smith is sized
to allow umbrella 30 to pivot about boss 40 while umbrella 30 remains
securely fastened to boss 40. See id. ,i 31. However, Smith also teaches that
umbrella 30 flexes to allow the required pivoting. See id. ,i,i 23, 31. We see
no reason that, even if the holder 70 were over molded with body (20, 30,
90), umbrella 30 would not be able to flex.
In any event, contrary to Appellant's argument, the ability of umbrella
30 in Smith to pivot is not synonymous with the ability of Smith to perform
its intended use. Rather, Smith's contribution over known magnetic clips
used for attaching automobile headliners is that Smith's device is more
flexible and accommodates varying curvature of automobile roofs. See
Smith ,i,i 6-9. Thus, at most, the ability of Smith's umbrella 30 to pivot is an
advantage Smith provides over prior art magnetic fasteners used to attach
automobile roof liners. Consequently, to the extent the proposed
modification to Smith's device would render umbrella 30 less able, or even
unable, to pivot about boss 40, this disadvantage is balanced against the
advantage of making Smith's device easier to manufacture and better
securing cup (holder 70) to body (20, 30, 90). An ordinarily skilled artisan
may be motivated to pursue the desirable properties taught by one prior art
reference even if that means foregoing the benefits taught by another prior
art reference. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see
also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
("[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.").
For the reasons discussed above, we enter a new ground of rejection
of claims 1 and 12 as unpatentable over Smith, Sjoquist, and Burton.
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Claims 3, 4, 6, 8-11, and 14
We leave it to the Examiner to determine the propriety of any
rejections of claims 3, 4, 6, 8-11, and 14 based upon the prior art and
rationales set forth above. Although we decline to reject every claim under
our discretionary authority under 3 7 C.F .R. 41. 50(b ), we emphasize that our
decision does not mean the remaining claims are patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.
Rejection II, Smith, Sjoquist, and Burton
Claim 15
Independent claim 15 recites, in part, "over molding said cup with
said carrier; and providing said carrier with a resilient shaft to allow said
magnet to articulate so as to make a better connection with a substrate to
which said magnet is to be connected." Br. 21 (Claims App.).
As noted above, the Examiner relies on Burton to teach over molding
two components. Final Act. 12. As further noted above, we agree with the
Examiner's reasoning that it would have been obvious to apply over
molding, as taught by Burton, such that Smith's cup (holder 70) is over
molded with body (20, 30, 90) in order to "easily manufacture components
while establishing and maintaining placement of the components with
respect to each other." Id. Appellant's argument that this modification
would render Smith's device inoperable is of no avail because, as explained
above, we do not agree that Smith's device would fail to operate if modified
as proposed. Accordingly, we affirm the Examiner's rejection of claim 15
as unpatentable over Smith, Sjoquist, and Burton.
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DECISION
I. We reverse the rejection of claims 1, 3, 4, 6, 8-12, and 14 as
unpatentable over Smith and Sjoquist.
II. We affirm the rejection of claim 15 as unpatentable over Smith,
Sjoquist, and Burton.
III. We enter a new ground of rejection of claims 1 and 12 as
unpatentable over Smith, Sjoquist, and Burton.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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