Ex Parte Renault

Board of Patent Appeals and Interferences

May 30, 2007

10122270 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte THIERRY RENAULT
______________

Appeal 2006-3219
Application 10/122,270
Technology Center 1700
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Decided: May 30, 2007
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 14, 15, 17 through 26, and 29 in the Final
Action mailed September 2, 2005. Appellant canceled claim 21 subsequent
to the Final Action leaving claims 14, 15, 17 through 20, 22 through 26, and
29 for our consideration. 5 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
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Claim 14 illustrates Appellant’s invention of an impact resistant
automotive part molded from a plurality of blanks, and is representative of
the claims on appeal:
14. An impact resistant automotive part molded from a plurality of
blanks including at least two layers, each of the layers having a woven mat
made of tows that contain fibers commingled with thermoplastic resin
material, and adapted to be attached to an automotive vehicle at a pair of
attachment locations spaced a predetermined distance apart, the part
comprising,
a central shock-absorbing portion;
a pair of attachment portions having fixation points or holes, and
connected to the central shock-absorbing portion and spaced the
predetermined distance apart; and
two thermoplastic reinforced fiber structures, each of the structures
being formed by a woven mat made of tows that contain woven fibers
wetted by the thermoplastic material, wherein each of the woven mats at
least partially forms the central shock-absorbing portion and the pair of
attachment portions and continuously extends between the attachment
portions to link the attachment portions to allow the part to withstand high
speed impact and wherein the points or holes are sufficiently located within
both of the woven mats so that the part meets high speed impact
requirements.
The Examiner relies on the evidence in these references:
Manning US 4,715,630 Dec. 29, 1987
Yamada US 4,749,613 Jun. 7, 1988
Uytterhaeghe US 5,927,778 Jul. 27, 1999
Appellant relies on the evidence in this reference (Br. 5 and Evidence
Appendix):
Drummond US 4,158,557 Jun. 19, 1979
Appellant requests review of the grounds of rejection under 35 U.S.C.
§ 103(a) (Br. 3): claims 14, 15, 17, 19, 20, 22 through 26, and 29 as
unpatentable over Yamada in view of Manning; and claims 18 and 23 as
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unpatentable over Yamada and Manning further in view of Uytterhaeghe
(Answer 3-7).
Appellant argues the claims in the first ground of rejection as a group
(Br. 4-8). With respect to the second ground of rejection, Appellant relies
on the same arguments advanced with respect to the first ground (id. 8).
Thus, we decide this appeal based on claim 14. 37 C.F.R. § 41.37(c)(1)(vii)
(2006).
The Examiner contends Yamada discloses an automotive part molded
from a plurality of layers including “two layers having tows of fibers
commingled with thermoplastic resin material” having sections
corresponding to the claimed automotive part “portions.” The sections are
formed from blanks of thermoplastic reinforced fibers including the layers
having tows of fibers which extend continuously between the “attachment
portions” having holes. The Examiner contends the disclosed part meets
high speed standard requirements (Answer 3-4, citing Yamada cols. 2, 5, and
6, and Figs. 1-3). The Examiner contends Yamada’s part differs from the
claimed part in that the tows of the reinforced fibers are not woven (id. 4).
The Examiner contends Manning discloses an automotive “bumper system
comprising outer and inner layers of woven fiberglass . . . able to withstand
the required . . . collision impact loads” (id., citing Manning col. 6). The
Examiner concludes it would have been obvious to one of ordinary skill in
this art to use “tows that are woven . . . to withstand the required . . .
collision impact loads” as taught by Manning (id.).
Appellant contends Yamada fails to teach or suggest the claimed
automotive part requiring “each of the woven mats continuously extends
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between the attachment portions (28) to link attachment portions (28), as
illustrated in representative [Specification] Figure 6” (Br. 4-5; original
emphasis omitted). Appellant contends “Yamada teaches a swirled fiber mat
disposed adjacent to reinforcing fibers and joined to the reinforcing fibers by
needling” (id. 5, citing Yamada claims 1, 9, and 14, and col. 4, ll. 24-39;
original emphasis omitted). Appellant contends Drummond, cited by
Yamada, discloses that “when a mat is needled, continuous strands are
broken up by the needles of the needled into a plurality of short and long
fibers” which does not result in “a woven mat made of tows that contain
woven fibers” as claimed in claim 14 and illustrated in Specification Fig. 6
(id. 5-6, citing Drummond col. 6, ll. 49-55, and Yamada, col. 4, ll. 32-39;
original emphasis omitted).
Appellant contends Manning does not cure the deficiencies of Yamda
since Manning discloses a “modular design” bumper system with “two
substantially identical, laterally extending members . . . secured at the
laterally innermost ends to define an integrated bumper device (10)” (Br. 6,
citing Manning Abstract and Fig. 1). Appellant contends, on this basis, that
Manning does not “teach or suggest woven mats continuously extending
between the attachment portions to link the attachment portions,” and thus,
the combination does not teach this claim limitation (id. 6-7; original
emphasis omitted).
Appellant contends that one of ordinary skill in this art considering
the claim language and the disclosure in the Specification would not
consider “holes (18) of Yamada [Fig. 2] equivalent to the attachment
portions (28) of claim 14 as the holes (18) of Yamada are for fitting a rim
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skin, not for attaching to an automotive vehicle” (Br. 6). Appellant further
contends the “combination of Yamada and Manning [differ] in that the
claimed invention discloses a pair of attachment portions (28) having
fixation points or holes (26) sufficiently located within both of the woven
mats so that the part meets high speed impact requirements” (id. 7).
Appellant contends Yamada does not teach this claim limitation as
“disclosed, for example, in the Specification . . . at page 2 line 26 through
page 3 line 16” (id.). Appellant contends the claim limitation “‘so that the
part meets high speed impact requirements”’ acts to further limit the location
of the points or holes within the woven mats” and is thus, of patentable
significance and not merely intended use (id.)
Appellant contends Yamada “teaches away” from using a woven mat
by the use of needling to “join the fiber mat and a layer of arranged (i.e.,
unidirectional) fibers” and Manning “teaches away from using woven mats
continuously extending between attachment portions to link the attachment
points” (Br. 8, citing Yamada col. 2, ll. 55-59, and col. 4, ll. 24-42; original
emphasis omitted).
The Examiner responds the claim limitation “automotive part is
'adapted to be attached to an automotive vehicle at a pair of attachment
locations spaced a predetermined distance apart'” does not limit the
“attachment potion” with respect to attachment to an automotive vehicle
(Answer 9).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness under § 103(a) over
the combined teachings of Yamada and Manning.
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The language of claim 14 specifies, in product-by-process format, any
automotive part that can be obtained by molding from a plurality of any
manner of blanks, including any length, width and depth, that include at least
two layers of blanks, each of the layers having any manner of woven mat
made of tows that contain any manner of fibers commingled with any
manner and amount of thermoplastic resin material, regardless of the manner
in which the part is molded or otherwise prepared from the blanks. See
generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985).
The claimed part comprises at least any manner of central shock-
absorbing portion. The part further “is adapted” in any manner to be
attached to an automotive vehicle through any manner of a pair of
attachment locations spaced apart a predetermined distance of any length,
however short, and either horizontally or vertically. Indeed, in the body of
the claim, the part further comprises at least the said spaced apart pair of
attachment locations as “portions” further having fixation points or holes
and connected to the central shock-absorbing portion.
The part still further comprises at least any manner of two
thermoplastic reinforced fiber “structures,” each formed by any manner of
“woven mats” made of tows that contain any manner of woven fibers wetted
by said any manner of thermoplastic resin material. The “woven mats,” and
thus, the “structures,” “at least partially forms to any extent the central
shock-absorbing portion and the pair of attachment portions, and
continuously extends between the attachment portions to link the attachment
portions.” The “woven mats” can be the same “woven mats” forming the
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required two layers of blanks which can be of any length, width and depth.
Thus, the “woven mats” or “structures” can range from extending between
the inner margins of the two attachment portions and thus, across at least
some portion of the central shock absorbing portion, to extending from one
end of the part to the other. Indeed, claim 14 encompasses any automotive
part that can be obtained by molding at least the two specified layers of
woven mat having thermoplastic resin materials therein.
The open-ended terms “comprising,” “including,” and, in this
instance, “having,” open claim 14 to include a part molded from any manner
of other material in the two required blanks; additional blanks containing
any manner of materials and of any length, width, and depth; and any other
material (see Specification, e.g., 4-10). See, e.g., In re Baxter, 656 F.2d 679,
686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”); In re Bertsch, 132 F.2d 1014, 1019, 56 USPQ 379, 384
(CCPA 1942) (“it is true that the word ‘comprising’ is usually in patent law
held to be synonymous with the word ‘including’”); cf., Ex parte Davis,
80 USPQ 448, 449 (Bd. App. 1948) (“the word ‘comprising’ alone being
synonymous with ‘including’”). On this record, we interpret the term
“having” as used in the claim language to have its ordinary meaning of
opening the claim to include additional materials because we find no basis in
the claim language or in the written description in the Specification to
interpret the term “having” in a limiting manner. See In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893
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F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest, 582
F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978).; compare University of
California v. Eli Lilly and Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398,
1409-10 (Fed. Cir. 1997)(in a claim encompassing a “cDNA having” an
unspecified sequence, “[t]he word ‘having’ still permitted inclusion of other
moieties.”) with In re Deuel, 51 F.3d 1552,1555,1558, 34 USPQ2d 1210,
1212, 1215 (claims 5 and 7 to a “cDNA . . . having the “ recited sequence
defined “the precise cDNA molecules”).
We determine that one of ordinary skill in the art would understand
from the Specification that the molding process would involve heating and
compression resulting in a unitary, laminated structure (see Specification,
e.g., 4:26 to 5:4, 6:10-12, 9:6-10; see also Yamada, e.g., col. 4, ll. 44-59, and
col. 6, ll. 55-66). We find no disclosure of the claim term “structures” in the
Specification; only the disclosure that the “woven mat” enters into the
molded laminate, forming a layer thereof, and the claim language also
describes “structures” as formed from “woven mat” which is one of the
blanks that are molded. Thus, we determine that the broadest reasonable
interpretation of the term “structure” in the context of the claim language
and the disclosure in the Specification is a layer of the molded laminated
part. See Morris, 127 F.3d at 1054-55, 44 USPQ2d at 1027; Zletz, 893 F.2d
at 321-22, 13 USPQ2d at 1322; Priest, 582 F.2d at 37, 199 USPQ at 15.
Indeed, contrary to Appellant’s Summary Of Claimed Subject Matter
encompassed by claim 14 (Supp. Br. 2-3), there is no “two thermoplastic
reinforced fiber structures (24,30)” identified in the final molded part
illustrated in Fig. 6 or in Fig. 9; the numerals 24,30 referring to layers or
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blanks 24 and 30 in the arrangement of layers or blanks illustrated in Figs. 4
and 7, respectively (see Specification 9:6-7 and 11, and 10:3 and 7-10).
Thus, the language of claim 14 encompasses any automotive part
attached inside or outside a vehicle, that can be prepared by molding blanks,
is capable of resisting any “high speed impact,” and has fixation points or
holes sufficiently located within the woven mats to meet high speed
requirements (see Specification, e.g., 8:20 to 9:5). There is no claim
requirement that the automotive part, including the attachment fixation
points, must be directly and/or squarely impacted by a “high speed impact.”
Thus, “high speed impact requirements” can be any such requirement
determined by any entity, e.g., governmental or commercial, for any
automotive part, inside or outside of a vehicle.
In this respect, there is no claim limitation specific to the bumper
beams and the specific parts thereof, including the particular portions and
holes, illustrated in Figs. 6 and 9, or to the particular so-called “high speed
impact requirements” set forth in the Specification (Specification 2-3 and
8-10). Indeed, contrary to the manner in which Appellant framed the
Summary Of Claimed Subject Matter (Supp. Br. 2-3), we find no basis in the
claim language or in the disclosure in the Specification on which to read the
bumper beams illustrated in Figs. 6 and 9 or the high speed impact
requirements as limitations into claim 14. See generally, Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d
1001, 1005 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480,
31 USPQ2d 1671, 1674 (Fed. Cir. 1994); In re Van Genus, 988 F.2d 1181,
1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993); Zletz, 893 F.2d at 321-22, 13
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USPQ2d at 1322; Priest, 582 F.2d at 37, 199 USPQ at 15; In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). It is well settled
that Appellant’s mere intent as to the scope of the claimed invention
encompassed by a claim does not so limit the scope of the claim which is
otherwise definite when construed in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Cormany, 476 F.2d 998,
1000-02, 177 USPQ 450, 451-53 (CCPA 1973).1
We find Yamada would have disclosed to one of ordinary skill in this
art an automotive bumper beam which exhibits mechanical strength that is
formed by stamping a composite fiber reinforced thermoplastic resin sheet
comprising reinforcing fibers and fibers mats impregnated with
thermoplastic resin (Yamada, e.g., col. 1, ll. 8-18, col. 2, ll. 20-35, col. 4, ll.
43-55, col. 5, l. 64, to col. 6, l. 7, and col. 6, ll. 55-67). The fiber mat can be
swirled bundles of continuous strands of fibers and the reinforcing fibers
arranged on the fiber mat, with the combination being mechanically joined
through needling (id., e.g., col. 3, ll. 5-30, and col. 6, ll. 37-41). The number
of fiber mat and reinforcing fiber laminates is determined on the
requirements of the bumper beam, with a construction of outer mat layers

1 Any conflict between Appellant’s intended invention as set forth in the
Summary Of Claimed Subject Matter (Supp. Br. 2-3) and the advanced
contentions, and the actual scope of claim 14 should be addressed under
35 U.S.C. § 112, second paragraph, on the basis of whether claim 14 and
claims dependent thereon are “claiming the subject matter which applicant
regards as his invention,” in any further prosecution of the appealed claims
before the Primary Examiner upon disposition of this appeal. See Cormany,
476 F.2d at 1000-02, 177 USPQ at 451-53; see also Zletz, 893 F.2d at
321-22, 13 USPQ2d at 1322 (citing Prater, 415 F.2d at 1404-05, 162 USPQ
at 550-51).
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and inner fiber layers illustrated in Fig. 1 (id., e.g., col. 3, l. 31, to col. 4, l. 4,
and col. 8, ll. 10-19).
Yamada discloses the mat is formed on top of the fibers as disclosed
in Drummond (id., col. 4, ll. 24-32, and col. 6, ll. 46-49). Yamada teaches
that with the thus superimposed layers, “the mat on the opposite side from
the needles suffers less form breakage of the strands” such that “the
possibility of the decline of strength can be curbed to a greater extent” (id.,
col. 4, ll. 32-42). We find that Yamada does not refer to any particular part
of Drummond for the arrangement of the mat and fibers and does not
specifically refer to Drummond with respect to needling. In this respect, we
find Drummond discloses at column 6, lines 49-55, that during needling of
the mat, the continuous strands are broken up into a plurality of short and
long fibers.
Yamada discloses bumper beam 11 is prepared by heating a stampable
sheet having the desired weight in a metal die to the melting point of the
resin in the sheet for a desired “molding cycle” (Yamada, e.g., col. 5, ll. 7-20
and 45-46). One of ordinary skill in this art would have found from
Yamada’s Fig. 5 that the fiber mat(s) extends the entire length of the
laminate sheets forming the entire length of the bumper beam (id., col. 6, ll.
55-67, and col. 8, ll. 10-19). The bumper beam 11 so formed is attached to
each of two stays 14 by nuts/bolts 19 through holes in the bumper beam at
positions which are spaced a predetermined distance apart as illustrated in
Yamada’s Figs. 2 and 4 (id., col. 5, ll. 45-51).
We find Manning would have disclosed to one of ordinary skill in this
art C-shaped bumper beams 16 for an energy absorbing vehicle bumper, in
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which a bumper beam 16 is present in each module of modular pairs 12,14
that are centrally joined, and each module is secured to the vehicle
(Manning, e.g., col. 1, ll. 5-15, col. 2, ll. 45-57, col. 2, l. 65, to col. 3, l. 2,
col. 3, ll. 65-66, col. 6, ll. 25-39, and Figs. 1-3, 8, 10, and 11). One of
ordinary skill in this art would have found from Manning’s Figs. 1 and 3 that
each beam 16 has two holes in vertical wall portion 18 for attachment to
bracket portion 26 of bracket member 24 which is mounted to the vehicle,
wherein the two holes are spaced a predetermined distance apart (id., col. 3,
l. 65, to col. 4, l. 26). Manning discloses that for advantageous weight and
strength purposes, the bumper beam is a laminate of fiberglass reinforced
plastic material which can be thermosetting resin impregnated fiberglass
having, inter alia, core elements C of linear and parallel roving elements R
and “overlaying outer layers M1 and M2 [which] are of a mat or woven
construction” as illustrated in Manning’s Fig. 8 (id., col. 6, ll. 42-66).
We determine the combined teachings of Yamada and Manning, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
claim 14, as we interpreted this claim above, would have been prima facie
obviousness of to one of ordinary skill in the molding arts familiar with the
mechanical strength requirements for bumper beams for vehicles. Contrary
to Appellant’s contentions, both Yamada and Manning disclose bumper
beams having all of the portions specified in claim 14, including the pair of
attachment positions spaced a predetermined distance apart and containing
holes, wherein all of the portions are made from laminates that include mats
which extend from one end of the bumper beam to the other, thus
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encompassing all the specified portions. Indeed, a single bumper beam 16 of
Manning meets these claim requirements. Thus, we determine that one of
ordinary skill in this art would have combined the references on the basis of
the common structure and manufacture of the same kind of automotive part
for mechanical strength purposes.
We cannot agree with Appellant that one of ordinary skill in this art
would have been led away from using woven tows for the mat in the
laminates of Yamada as taught by Manning because of the deleterious
effects of needling on the woven tows in the mat as taught by Drummond.
Indeed, Yamada teaches the steps to be taken so that fiber breakage and
strength loss is reduced, which steps are not taught by Drummond.
Appellant has not established by argument or evidence that the method of
Yamada would result in mats formed with woven tows which would not
provide sufficient mechanical strength to meet the objectives of the
references or any of the “high speed impact requirements” encompassed by
claim 14.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Yamada and Manning alone and as further combined
with Uytterhaeghe2 with Appellant’s countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 14, 15, 17 through 26, and 29 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).

2 Appellant does not advance contentions with respect to Uytterhaeghe and
accordingly, a discussion of this reference is not necessary to our decision.
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The Primary Examiner’s decision is affirmed.
OTHER ISSUES
While we have affirmed the decision of the Primary Examiner based
on the grounds of rejection of record, we suggest the Primary Examiner
consider the following upon any further prosecution of the appealed claims
subsequent to the disposition of this appeal.
Appellant discloses in the Specification that the arrangement of blanks
for the claimed automotive part can be that described in acknowledging prior
art French Patent No. 2,749,535, characterized in the Specification and
illustrated in Specification Fig. 1, to which is added blanks 24 of “Twintex,”
as illustrated in Specification Fig. 4, to obtain an improvement over that
prior art disclosure (Specification, e.g., 3:24 to 4:12, 7:22 to 8:4, 8:23 to 9:1,
9:21-24, and Figs. 1-6). According to Appellant, “Twintex” is a known
woven material “manufactured by Vetrotex France” that “includes woven
mats made of tows that contain both glass and polypropylene fibers” and
used in manufacturing the part disclosed in said French Patent (Specification
4:7-15; see also 4:16 to 5:12).
Accordingly, based on Appellant’s characterization of said French
Patent, it reasonably appears that the addition of a further woven mat
reinforcing material, taught in this patent document to provide strength, in
the manufacture of the part to further increase the mechanical strength
thereof to withstand high speed impacts would been within the ordinary skill
in this art at the time the claimed invention was made within the meaning of
35 U.S.C. § 103(a).
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In view of our affirmance of the decision of the Primary Examiner, we
decline to exercise our authority under 37 C.F.R. § 41.50(b) (2006) and enter
a new ground of rejection of the appealed claims over the French Patent on
the above basis, leaving it to the Examiner to consider a translation of this
patent document and enter any new ground(s) of rejection based thereon and
any other reference(s) as deemed appropriate.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

cam

BROOKS, KUSHMAN, P.C.
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