Ex Parte Staser

Patent Trial and Appeal Board

Aug 22, 2016

12533456 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/533,456 07/31/2009 Brian H. Staser
23413 7590 08/24/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
DP-316735 7610
EXAMINER
KELLY, CATHERINE A
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN H. STASER
Appeal2014-007741
Application 12/533,456
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Brian H. Staser ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-22 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Inteva Products, LLC as the real party in
interest. Appeal Br. 2.
Appeal2014-007741
Application 12/533,456
CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent. Claim 1 illustrates the subject matter
on appeal, and it recites:
1. A cross arm module for a vehicle door, comprising:
a plastic carrier plate configured to have a periphery to
completely cover a periphery of an opening in an inner panel of
the vehicle door, the plastic carrier plate having an inner surface
and an outer surface;
a window lift system mounted to the outer surface, the
window lift system having a pair of cross arms each being
pivotally secured to each other and movably secured to the outer
surface for movement between a first position, wherein the
window lift system is capable of being positioned such that no
components of the window lift system extend past the periphery
of the carrier plate and a second position wherein the window lift
system is capable of extending past the periphery of the carrier
plate; and
a sealing member disposed about the periphery of the
carrier plate, the sealing member providing a moisture barrier
bet\~1een the carrier plate and the opening in the inner panel.
Appeal Br. 28 (Claims App.).
REJECTIONS ON APPEAL
Claims 1, 2, 4, 6, 15-17, and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Staser (US 6,564,525B1, iss. May 20, 2003) and
Morrison (US 6,823,628 B2, iss. Nov. 30, 2004).
Claims 3, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Staser, Morrison, and Dupuy (US 5,174,066, iss. Dec. 29,
1992).
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Application 12/533,456
Claims 8-10, 12, 13, 18-20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Staser, Morrison, and Heyer
(US 2007/0163177 Al, pub. July 19, 2007).
Claims 11 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Staser, Morrison, Heyer, and Dupuy.
ANALYSIS
A. Obviousness based on Staser and Morrison
In rejecting independent claim 1, the Examiner finds Staser discloses
a cross arm module for a vehicle door comprising, inter alia, window lift
system 78 mounted to carrier plate 28. Final Act. 2. The Examiner finds
Staser's carrier plate 28 is not "plastic" as claimed, and Staser's system 78 is
not movable to a first position in which no components of system 78 extend
past the periphery of carrier plate 28 as claimed. Id. at 3.
As to the carrier plate material, Staser's carrier plate 28 is made of
steel or a steel alloy (Staser, 4:56-62), but the Examiner finds Morrison
discloses "carrier [plate] 26 can be made of plastic." Final Act. 3 (citing
Morrison, 5:3--4). The Examiner determines a person of ordinary skill in the
art would have been motivated to make Staser's carrier plate 28 of plastic,
because Morrison teaches "carriers were known in the art to be made
interchangeably of metal or plastic." Id. (citing Morrison, 5: 1-5). The
Examiner further concludes "[p ]lastic is strong, cheap, and lightweight." Id.
Appellant argues the Examiner errs in determining it would have been
obvious to make Staser's carrier plate 28 out of plastic. Appeal Br. 15-19;
Reply Br. 3-5. Appellant points out Staser is directed to a "roll formed"
steel carrier plate 28 "having a pair of parallel edges." Appeal Br. 15.
Appellant asserts changing Staser's roll formed steel carrier plate 28 into a
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Application 12/533,456
plastic carrier plate with non-parallel edges would improperly change
Staser's principle of operation, or render Staser inoperable for its intended
purpose of providing a roll forming manufacturing process. Id. at 15-17
(citing Staser, Fig. 2, 5:1--41); Reply Br. 3--4. Appellant also contends
Staser's roll forming is inconsistent with Appellant's Specification, because
the roll forming "creates two parallel edges as opposed to the reduced
periphery or a plurality of edges as shown" in Appellant's Figure 4. Appeal
Br. 17-18 (citing Spec. 6:11-20). Appellant further contends Staser's roll
forming process results in "longitudinal protrusions" within carrier plate 28
to increase the strength of the door structure, which would be eliminated if
carrier plate 28 were made of plastic, thereby rendering the carrier plate
unsatisfactory for its intended purpose. Id. at 18-19.
We are not persuaded of Examiner error in determining it would have
been obvious to make Staser's carrier plate 28 out of plastic, in light of
Morrison. Staser discloses using a "roll forming" process to make a steel
carrier plate for mounting a window lift assembly in a vehicle door, in order
to achieve lower production costs versus a previously known "steel
stamping" process. Staser, 1:29-33, 1 :47-57, 1:66-2:3. Thus, while Staser
discloses a steel roll forming manufacturing process, Staser does so as an
improvement to a steel stamping manufacturing process, not in relation to
plastic manufacturing processes. Appellant cites no evidence to support the
assertions that a plastic carrier plate would be unsatisfactory for Staser' s
intended purpose of providing a mounting support for a window lift
assembly in a vehicle door. Indeed, the evidence is to the contrary. See
Morrison, 5: 1---6 ("In a preferred embodiment ... , carrier 26 is a one-piece
metal stamped structure[, but] carrier 26 may also be molded as a one-piece
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Application 12/533,456
structure from a polymeric material .... "). Further, the evidence does not
support Appellant's contention that using a plastic carrier plate 28 would
eliminate longitudinal protrusions 32, 34, 36 in plate 28. See Staser, Fig. 4,
3: 16-22. Finally, claim 1 is open to a carrier plate having parallel edges, so
Appellant's attempt to distinguish Staser's carrier plate 28 from claim 1
because it has parallel edges relies on an unclaimed limitation, and is
therefore unpersuasive.
As to the first position recited in claim 1, the Examiner finds Staser
fails to disclose window lift system 78 being movable to the first position
because, in the retracted state of system 78, "a small portion of the gear 90
(approximately a third of the arc of the gear) would extend beyond the lower
edge" periphery of carrier plate 28. Final Act. 3. The Examiner finds "[t]he
use of a larger carrier plate 26 is shown in [Morrison's] figures 1-13," and
determines a person of ordinary skill in the art would have been motivated to
use "a slightly larger carrier plate" in Staser "because a variety of carrier
plate sizes were known in the art." Id. The Examiner further concludes "the
desirability of a particular size would be a design choice based on factors
such as weight, number of components to be used, installation
considerations, etc." Id. (citing MPEP § 2144.04(IV)(A)).
Appellant argues Staser and Morrison fail to disclose or suggest a
window lift system moveable to the first position of claim 1, even when
combined with knowledge generally available in the art. Appeal Br. 13-15;
Reply Br. 5. Appellant contends the Examiner's conclusion that it would
have been obvious to use a slightly larger carrier plate in Staser "is
completely in contrast to the desired reduced size carrier plate as mentioned
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Application 12/533,456
in Appellant's [S]pecification." Appeal Br. 14--15 (emphasis added)
(quoting Spec. 1:23-25, 6:1-20).
We are not persuaded of Examiner error in determining it would have
been obvious to make Staser's carrier plate 28 slightly larger, as "a design
choice based on factors such as weight, number of components to be used,
installation considerations, etc." Final Act. 3 (citing MPEP
§ 2144.04(IV)(A)). The cited section of the MPEP provides:
In Gardner v. TEC Syst., Inc., 725 F.2d 1338 [Fed.
Cir. 1984], the Federal Circuit held that, where the only
difference between the prior art and the claims was a recitation
of relative dimensions of the claimed device and a device having
the claimed relative dimensions would not perform differently
than the prior art device, the claimed device was not patentably
distinct from the prior art device.
MPEP § 2144.04(IV)(A).
The decision in Gardner concerned facts very similar to the facts
presented here. The invention in Gardner was directed to an "air bar"
device, used in a printing process to float a paper web bearing wet ink
without smearing the ink. Gardner, 725 F.2d at 1340. The claim in
Gardner recited dimensional limitations of the distance between a plate and
the paper web ("Y"), the nozzle slot width ("D"), and the distance between
the jets ("L"). Id. at 1340-41. 2 The decision in Gardner held "the
dimensional limitations [of the air bar] did not specify a device which
performed and operated any differently from the prior art," and therefore
upheld a holding of invalidity based on obviousness over a prior art
2 In particular, the claim recited that Y be as small as mechanically
practicable, be greater than or equal to 2D, and never be greater than L, as
well as that the product LY be less than 20D. Gardner, 725 F .2d at 1341.
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Application 12/533,456
reference that failed to specify the claimed dimensional limitations. Id. at
1349.
Here, as in Gardner, the only difference between the claimed
invention and the applied prior art is a dimensional limitation. Appellant's
contention that modifying Staser's carrier plate 28 to be slightly larger "is
completely in contrast to the desired reduced size carrier plate as mentioned
in Appellant's [S]pecification" (Appeal Br. 14--15) fails to establish that the
Examiner's proposed modification would perform or operate any differently
from the carrier plate expressly disclosed by Staser. We are therefore not
persuaded of Examiner error.
For the foregoing reasons, we sustain the rejection of claim 1 as
unpatentable over Staser and Morrison. Appellant relies on the same
arguments for the patentability of claims 2, 4, 6, 15-17, and 21. Appeal
Br. 19 (claim 2), 20 (claim 4), 20-21 (claim 6), 24--25 (claims 15-17), 26
(claim 21 ). In each instance, Appellant additionally points out what the
claim recites. Id. However, our Rules provide: "A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv). Thus, for
the reasons provided in connection with claim 1, we sustain the rejection of
claims 2, 4, 6, 15-17, and 21 as unpatentable over Staser and Morrison.
B. Obviousness based on Staser, Morrison, and Dupuy
Appellant argues for the patentability of claim 3 separately from its
parent claim 1. Appeal Br. 19-20. Claim 3 specifies that the sealing
member recited in claim 1 comprises first and second portions, with the first
portion having a harder durometer than the second portion, and with the first
portion being secured to the periphery of the carrier plate and the second
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Application 12/533,456
portion providing a sealing function between the carrier plate and the vehicle
door. Appeal Br. 28-29 (Claims App.).
The Examiner finds Staser discloses, as recited in claim 1, sealing
member 96 disposed about the periphery of carrier plate 28 to provide a
moisture barrier between plate 28 and a vehicle door panel opening. Final
Act. 2-3, 5 (citing Staser, 3:52---67). The Examiner further finds Staser's
sealing member 96 does not comprise first and second portions of different
durometers, as recited in claim 3. Id. at 5. The Examiner cites Dupuy as
disclosing seal 44 having a harder durometer first portion 46 and a softer
durometer second portion 48. Id. (citing Dupuy, Fig. 6, 4:26-31 ). The
Examiner determines it would have been obvious to provide the combined
carrier plate of Staser and Morrison with a dual durometer seal as disclosed
by Dupuy, "because dual durometer seals were well known in the art as the
harder portion allows for secure attachment and the softer portion allows for
good sealing." Id.
Appellant argues Dupuy's seal 44 "is used in conjunction with a glass
pane 34 as opposed to a sealing member that is about the periphery of the
carrier plate," as recited in claim 1. Appeal Br. 19. Thus, Appellant asserts
Dupuy' s seal 44 does not provide a moisture barrier between a carrier plate
and an opening in a vehicle door panel, as claimed. Id. at 19-20.
We are not persuaded of Examiner error. As the Examiner points out
in response to Appellant's argument, Staser's sealing member 96 is
disposed about the periphery of carrier plate 28 to provide a moisture barrier
between plate 28 and a vehicle door panel opening. Ans. 7. The bare fact
that Dupuy's dual durometer moisture seal 44 is in a different location
(between the vehicle window and the vehicle door frame) does not persuade
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Application 12/533,456
us of error in the Examiner's determination that it would have been obvious
to modify Staser's seal to have the dual durometer structure of Dupuy's seal
to obtain the benefits of such a structure that are evident from Dupuy. See
Dupuy, Fig. 6, 4:3-31.
Thus, we sustain the rejection of claim 3 as unpatentable over Staser,
Morrison, and Dupuy. Appellant relies on the same arguments for the
patentability of claims 5 and 7. Appeal Br. 20 (claim 5), 21 (claim 7). For
the reasons provided in connection with claim 3, we sustain the rejection of
claims 5 and 7 as unpatentable over Staser, Morrison, and Dupuy.
C. Obviousness based on Staser, Morrison, Heyer, and Dupuy
Appellant relies solely on arguments discussed above in arguing for
the patentability of the remaining claims. Appeal Br. 21-26. For the
reasons provided above, we sustain the rejection of claims 8-10, 12, 13, 18-
20, and 22 as unpatentable over Staser, Morrison, and Heyer, and the
rejection of claims 11 and 14 as unpatentable over Staser, Morrison, Heyer,
and Dupuy.
DECISION
The Examiner's decision to reject claims 1-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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