Ex Parte Santini et alDownload PDFPatent Trial and Appeal BoardJun 8, 201613697413 (P.T.A.B. Jun. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/697,413 11112/2012 27305 7590 06/10/2016 HOW ARD & HOW ARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 FIRST NAMED INVENTOR Andrea Santini 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. 716227.00010 3747 EXAMINER BESLER, CHRISTOPHER JAMES ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 06/10/2016 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): IPDocket@HowardandHoward.com dtrost@HowardandHoward.com tmorris@Howardandhoward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREA SANTINI, PIERO MONCHIERO, and GUIDO BORGNA Appeal 2016-004540 1,2 Application 13/697,413 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 23-28 and 30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' substitute Specification ("Spec.," filed Jan. 9, 2013), Appeal Brief ("Appeal Br.," filed Aug. 24, 2015), and Reply Brief ("Reply Br.," filed Mar. 31, 2016), as well as the Final Office Action ("Final Action," mailed Feb. 24, 2015) and the Examiner's Answer ("Answer," mailed Feb. 1, 2016). 2 According to Appellants, "[t]he real party in interest is Sistemi Sospensioni S.p.A." Appeal Br. 1. Appeal2016-004540 Application 13/697,413 According to Appellants, "[t]he invention relates, generally, to a composite structural element and, particularly, to such an element for use in a vehicle suspension[,] as well as a method for manufacturing the element." Spec. i-f 2. We reproduce independent claim 23, which is the only independent claim under appeal, as representative of the appealed claims. 23. A method for manufacturing a structural element for a vehicle suspension, the method comprising steps of: providing separate first and second half-shells made of at least one layer of composite material including a fibre-reinforced polymeric matrix; providing a core made of metal, wherein the core comprises a flat middle portion having peripheral edges and lateral tabs bent at an angle to the middle portion and extending from the peripheral edges of the middle portion; joining the core to the first half-shell both at the middle portion and at the lateral tabs of the core such that at least one cavity is defined between the core and the first half-shell; and after the step of joining the core to the first half-shell, joining the second haif-sheH to the first haif-sheH to form a sheH such that the core is arranged within said shell. Appeal Br., Claims App. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: claims 23-27 and 30 under 35 U.S.C. § 103(a) as unpatentable over Hayashi (US 2008/0178467 Al, pub. July 31, 2008), Lakic (US 2008/0106123 Al, pub. May 8, 2008), Bladow (US 2006/0016078 Al, pub. Jan. 26, 2006), and Naughton (US 2007/0277926 Al, pub. Dec. 6, 2007); and 2 Appeal2016-004540 Application 13/697,413 claim 28 under 35 U.S.C. § 103(a) as unpatentable over Hayashi, Lakic, Bladow, Naughton, and Streubel (US 6,510,763 Bl, iss. Jan. 28, 2003). See Answer 2-7; Final Action 2---6. ANALYSIS Independent claim 23, from which each of the remaining claims depends, recites joining [a] core to [a] first half-shell both at [a] middle portion and at [] lateral tabs of the core such that at least one cavity is defined between the core and the first half-shell; and after the step of joining the core to the first half-shell, joining [a] second half-shell to the first half-shell to form a shell such that the core is arranged within said shell. Appeal Br., Claims App. Appellants argue that, contrary to the Examiner's finding (see, e.g., Final Action 2-3), Hayashi does not teach joining the second half-shell to the first half-shell after joining the first half-shell to the core (see, e.g., Appeal Br. 21; see also, e.g., Reply Br. 7-8). Based on our review of the record, we conclude that the Examiner's finding is not based on a preponderance of the evidence. Even assuming arguendo that we agree with the Examiner that the claimed "'joining' merely requires that the elements be placed or brought together" and does not require any type of fixation among the core and half- shells (Answer 8), the Examiner's finding that Hayashi discloses elements placed or brought together as recited in claim 23 is not supported by Hayashi. According to the Examiner, "Hayashi expressly teaches 'placing' the core onto the first half-shell ([F]igure 2, elements 5 and 4; page 2, paragraph 33) and then 'placing' the second half-shell onto the opposing 3 Appeal2016-004540 Application 13/697,413 side of the core ([F]igure 2, elements 6 and 5; page 2, paragraph 3[sic- 33])." Id.; see also Final Action 3. However, the cited portion of Hayashi states only, in relevant part, that "the flange Sa of the stiffener S is placed on the corresponding flange 6a of the inner panel 6, and the flange 4a of the outer panel 4 is placed on the flange Sa of the stiffener S with the projections 12 aligned with the notches 11." Hayashi i-f 33 (underlining added). Restated, Hayashi states only that stiffener 5 is placed on inner panel 6 and that outer panel 4 is placed on stiffener 5, but does not state that one placement occurs before or after any other placement, such as by stating that outer panel 4 is placed on stiffer 5 and then inner panel is placed on stiffener 5. Thus, we agree with Appellants that Hayashi "says nothing about the step of joining the core to the first half-shell, and then joining the second half- shell to the first half-shell." Appeal Br. 21. Based on the foregoing, we do not sustain the rejection of independent claim 23. Inasmuch as the Examiner does not show, for example, that another reference (such as Streubel) remedies the deficiency in the rejection of claim 23, we do not sustain the rejection of any of dependent claims 24-- 28 and 30. DECISION We REVERSE the Examiner's obviousness rejections of claims 23-28 and 30. REVERSED 4 Appeal2016-004540 Application 13/697,413 5 Copy with citationCopy as parenthetical citation