Ex Parte Schonebeck

Board of Patent Appeals and Interferences

May 31, 2007

10319429 (B.P.A.I. May. 31, 2007)

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is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HORST SCHONEBECK
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Appeal 2007-2061
Application 10/319,429
Technology Center 1700
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Decided: May 31, 2007
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 5-11, 13-20, and
25-29. Claim 24 is illustrative:
24. A composite component for an automotive vehicle body, comprising:

a firm outer skin having an outer side and an inner side, the outer side
of the firm outer skin defining an exterior automotive vehicle body surface
of the composite component;

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a plastic layer comprising a plastic foamed onto the inner side of the
firm outer skin;

a reinforcing layer foamed onto a side of the plastic layer opposite
from the firm outer skin; and

a spacer comprising a foam plastic having an open cell structure
between the reinforcing layer and the inner side of the firm outer skin, the
spacer being at least partially penetrated by the plastic of the plastic layer
and maintaining a space between the reinforcing layer and the inner side of
the firm outer skin and extending across a selected distance between the
inner side of the firm outer skin and the reinforcing layer, the plastic layer
filling the space between the inner side of the firm outer skin and the
reinforcing layer.
The Examiner relies upon the following references in the rejection of
the appealed claims:
Hashimoto US 3,738,675 Jun. 12, 1973
Alfter US 4,020,207 Apr. 26, 1977
Fukahori US 4,461,796 Jul. 24, 1984
Lutz US 4,626,023 Dec. 2, 1986
Maeda US 4,957,797 Sep. 18, 1990
Konig US 5,219,893 Jun. 15, 1993
Welich US 5,437,919 Aug. 1, 1995
Juriga US 5,565,269 Oct. 15, 1996
Lenkens (EP ‘138) EP 0,899,138 Mar. 3, 1999
Kralik US 2002/0021027 A1 Feb. 21, 2002
Appellant’s claimed invention is directed to a composite component
for an automotive vehicle body. The composite comprises a firm outer skin
having an outer side that defines an exterior automotive vehicle body
surface, a plastic layer formed on the inner side of the outer skin, a
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reinforcing layer formed on the plastic layer, and a spacer comprising a foam
plastic that is at least partially penetrated by the plastic of the plastic layer.
The appealed claims stand rejected under 35 U.S.C. § 102(b) as
follows:
(a) claims 5, 6, 8, 24, and 26 over Welich;
(b) claims 5, 7-9, 24, and 26-29 over Lutz;
(c) claims 26-29 over Maeda;
(d) claim 26 over Hashimoto; and
(e) claims 5, 7-9, 24, and 26-29 over Kralik.
The appealed claims also stand rejected under 35 U.S.C. § 103(a) as
follows:
(f) claim 6 over Lutz in view Fukahori;
(g) claim 6 over Kralik in view of Fukahori;
(h) claim 10 over Kralik in view of Konig;
(i) claim 11 over Kralik in view of EP ‘138;
(j) claims 15, 16, 18, 19, and 25 over Kralik in view of Alfter;
(k) claim 14 over Kralik in view of Alfter and Fukahori;
(l) claims 17 and 20 over Kralik in view of Alfter and Juriga;
(m) claims 13, 15-20, and 25 over Kralik in view of Lutz; and
(n) claim 14 over Kralik in view of Lutz and Fukahori.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find that the Examiner’s § 102
rejection over Kralik and § 103 rejections over Kralik as a primary reference
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are sustainable for the reasons set forth by the Examiner. On the other hand,
for the reasons set forth by Appellant, we find that the remaining rejections
are not sustainable.
We consider first the Examiner’s § 102 rejections over Welich, Lutz,
Maeda, and Hashimoto. The fundamental flaw in each of these rejections is
the Examiner’s position that the claim recitation in claims 24 and 26, “the
outer side of the firm outer skin defining an exterior automotive vehicle
body surface,” is a statement of intended use and, therefore, is not entitled to
patentable weight. The Examiner reasons that the claim recitation “simply
suggests that the skin of the composite component is an exposed outermost
layer [and] . . . does not indicate that the composite component constitutes
an exterior automotive vehicle body surface” (Answer 14, first para.).
However, we fully concur with Appellant that the claim recitation
“positively recites the limitation that the claimed component has a firm outer
skin with an outer side that is an automotive vehicle exterior body surface”
(Reply Br. 2, penultimate para.). Although the appealed claims do not
define an automotive vehicle body in its entirety, but only a composite
component thereof, we construe the claim recitation as expressly defining
the outer skin of an actual exterior automotive vehicle body, but not a
laminate that can be formed into one. Accordingly, this positively recited
claim feature is not met by the ski of Hashimoto nor the roof linings of
Welich, Maeda, nor Lutz. Significantly, the Examiner has not made the case
that the composites of Hashimoto, Lutz, Maeda, and Welich can reasonably
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be viewed as or function as the claimed exterior automotive vehicle body
surface.
The § 103 rejection of claim 6 over Lutz in view of Fukahori cannot
stand because Fukahori’s teaching of an insulating material for vehicle roofs
does not remedy the basic deficiency of Lutz discussed above.
We will sustain the Examiner’s § 102 rejection over Kralik, as well as
the § 103 rejections using Kralik as a primary reference, for the reasons set
forth in the Answer, which we incorporate herein. Appellant does not
dispute the Examiner’s factual determination that Kralik, like Appellant,
teaches a vehicle roof part comprising an outer skin, a honeycomb spacer,
and a glass fiber reinforcing layer. Appellant also does not dispute the
Examiner’s factual finding that Kralik discloses an adhesive which
permeates into the cellular structure of the honeycomb spacer. Rather, it is
Appellant’s contention that Kralik does not disclose “a plastic layer that fills
a space between an outer skin and a reinforcing layer” (principal Br. 8-9).
However, we fully agree with the Examiner that the appealed claims do not
require that the plastic entirely fills the space between the outer skin and the
reinforcing layer. While Appellant stresses that claim 24 on appeal
specifically recites “filling the space between the inner side of the firm outer
skin and the reinforcing layer,” Appellant seems to overlook the preceding
recitation in claim 24 which states that “the spacer being at least partially
penetrated by the plastic of the plastic layer.” Manifestly, when claim 24 is
read in its entirety, it is quite clear that the plastic layer is considered to fill
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the space when there is only partial penetration into the spacer. Likewise,
claim 26 recites “filling at least some of the openings of the spacer” with a
plastic layer.
We do not understand Appellant’s statement in the Reply Brief that
the Examiner has changed his position regarding the finding that the claims
do not require completely filling the space with the plastic layer. The
Examiner specifically states that the relevant claim recitation “does not
necessarily mean that the plastic layer completely fills the space between the
inner side of the firm outer skin and the reinforcing layer as asserted by
Appellant” (Answer 14, last para.). The Examiner goes on to state that
“[n]owhere does the specification of the present invention teach or suggest
that filling the space between the inner side of the firm outer skin and the
reinforcing layer is meant as a complete filling” (id.).
Appellant’s arguments regarding the § 103 rejections having Kralik as
a primary reference have been adequately addressed by the Examiner in the
Answer. Also, we further note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the
Examiner.
In conclusion, since we sustain the rejections of all the appealed
claims under § 102 and § 103 based on Kralik, the Examiner’s decision
rejecting the appealed claims is affirmed.
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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

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