Ex Parte Santini et al

Patent Trial and Appeal Board

Jun 8, 2016

13697413 (P.T.A.B. Jun. 8, 2016)

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.
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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
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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
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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
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