Ex Parte Preisler

Board of Patent Appeals and Interferences

Dec 23, 2004

10252177 (B.P.A.I. Dec. 23, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DARIUS J. PREISLER
__________
Appeal No. 2005-0361
Application 10/252,177
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and BAHR, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Darius J. Preisler appeals from the final rejection of
claims 18 through 24, all of the claims pending in the
application.
Appeal No. 2005-0361
Application 10/252,177
2
THE INVENTION
The invention relates to a method of making a unitary
composite air bag cover. Representative claim 18 reads as
follows:
18. A method of making a unitary composite air bag cover for
an inflatable air bag system, the method comprising the steps of:
injecting a first molten plastic into a mold cavity of a
first mold having a shape defining a body of the air bag cover,
wherein the body has a contact surface layer that contacts
substantially an entire bottom contact surface of a front panel
of the cover;
permitting the resulting body to cool to a temperature
beneath the softening point of the first plastic;
removing the body from the first mold;
inserting the body into a mold cavity of a second mold
having a shape defining the entire air bag cover;
injecting a second molten plastic into the mold cavity of
the second mold at a temperature and pressure sufficient to melt
the contact surface layer of the body;
permitting the resulting air bag cover to cool to a
temperature beneath the softening point of both plastics so that
a molecular concentration gradient is formed at an interface
between the first an second plastics comprising the body contact
surface layer and the front panel bottom contact surface to bond
the first and second plastics by diffusion; and
removing the completed air bag cover from the second mold.
Appeal No. 2005-0361
Application 10/252,177
1 In the final rejection (mailed December 3, 2003), claim 24
also stood rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. The examiner has since withdrawn this
3
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Cherry 5,536,037 Jul. 16, 1996
Kikuchi et al. (Kikuchi) 5,762,362 Jun. 09, 1998
THE REJECTIONS
Claims 18, 23 and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cherry in view of Kikuchi.
Claims 18 through 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kikuchi in view of Cherry.
Attention is directed to the main and reply briefs (filed
April 9, 2004 and August 23, 2004) and the answer (mailed July
28, 2004) for the respective positions of the appellant and the
examiner regarding the merits of these rejections.1
Appeal No. 2005-0361
Application 10/252,177
rejection (see page 2 in the answer) in light of an “amendment”
of claim 24 in the main brief (see pages 2, 5 and 12, and the
version of claim 24 appended thereto). This “amendment” has not
been formally entered into the record, however, presumably due to
the fact that PTO practice prohibits the inclusion of amendments
in a brief (see MPEP §§ 1206 and 1207).
4
DISCUSSION
I. The examiner’s rejections
We shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claims 18, 23 and 24 as being unpatentable over
Cherry in view of Kikuchi, or the standing 35 U.S.C. § 103(a)
rejection of claims 18 through 24 as being unpatentable over
Kikuchi in view of Cherry. For the reasons expressed below, the
scope of claims 18 through 24 is unclear. Accordingly, the
standing prior art rejections thereof must fall since they are
necessarily based on speculative assumption as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ
292, 295 (CCPA 1962). It should be understood, however, that our
decision in this regard is based solely on the indefiniteness of
the subject matter claimed, and does not reflect on the adequacy
of the prior art evidence applied in support of the rejections.
Appeal No. 2005-0361
Application 10/252,177
5
II. New rejection
The following new rejection is entered pursuant to 37 CFR
§ 41.50(b).
Claims 18 through 24 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellant regards as the
invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In determining
whether this standard is met, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.
Id.
Appeal No. 2005-0361
Application 10/252,177
6
The specification in the instant application describes the
appellant’s unitary composite air bag cover (10, 110) as
comprising (1) a one-piece thermoplastic elastomeric body (16,
118) including a front panel (20, 122), and (2) a one-piece
thermoplastic outer layer (30, 132) bonded to the front panel of
the one-piece thermoplastic elastomeric body by diffusion.
Appealed claims 18 through 24, however, recite methods of making
a unitary composite air bag wherein the body and the front panel
are set forth as separate pieces. For example, independent
claims 18, 23 and 24 define the body as having “a contact surface
layer that contacts substantially an entire bottom contact
surface of a front panel of the cover,” and further recite a
molecular concentration gradient “formed at an interface between
the first and second plastics comprising the body contact surface
layer and the front panel bottom contact surface.” In addition,
claim 24 ambiguously refers to “an outer layer of the air bag
cover” without any indication as to how this outer layer relates
to the body and front panel. In the same vein, dependent claims
19 and 20 contradict parent claim 18 by respectively reciting
that the second plastic forms a “one-piece outer layer” and that
the body “includes the front panel.” Finally, the term “the
Appeal No. 2005-0361
Application 10/252,177
2 This lack of antecedent basis in claim 24 formed the basis
for the 35 U.S.C. § 112, second paragraph, rejection which was
prematurely withdrawn by the examiner (see n.1, supra).
7
first part” in claim 24 lacks a proper antecedent basis.2 These
inconsistencies and ambiguities render the scope of claims 18
through 24 unclear.
SUMMARY
The decision of the examiner to reject claims 18 through 24
is reversed, and a new rejection of these claims is entered
pursuant to 37 CFR § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered
final for judicial review."

37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal No. 2005-0361
Application 10/252,177
8
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 proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
REVERSED; 37 CFR § 41.50(b)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM:pgc
Appeal No. 2005-0361
Application 10/252,177
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