Ex Parte Warnken et al

Patent Trial and Appeal Board

Oct 30, 2017

12056803 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/056,803 03/27/2008 Christoph Warliken LEAR44967PUSP 1203
34007 7590 11/01/2017
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH WARNKEN, ANDREAS THIEX,
OLIVER KLIER, and MARTIN STANNER
Appeal 2015-003867
Application 12/056,803
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHELLE R. OSINSKI, and
HYTJN J. JUNG, Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christoph Warnken et al. (Appellants)1 appeal under 35 U.S.C. § 134
from rejections of claims 1 and 3—10. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
1 The Appellants identify the real party-in-interest as Lear Corporation. Br.
2.
Appeal 2015-003867
Application 12/056,803
CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claim 1 is reproduced below:
1. A seat back for a rear seat of an automotive
vehicle, the seat back comprising:
a plate member; and
a one-piece stamping attached with the plate
member to form a structural member, the one-piece
stamping including upper and lower transverse
portions and left and right side portions extending
between the transverse portions, the portions, when
viewed from a direction normal to the plate
member, defining an outline of a shape of the
structural member around a perimeter of the
structural member, at least one of the portions being
formed with a radius defining a curved portion of
the outline, and at least one of the portions including
a trim channel formed therein.
The application before us on appeal was the subject of prior Appeal
2012-001000, in which a Decision was rendered on November 12, 2013,
affirming the Examiner’s rejections before the Board at that time. Since the
date of that prior Decision, the Appellants have amended the claims in the
application.
The prior art relied upon by the Examiner in rejecting the claims on
PROCEDURAL HISTORY
REFERENCES
appeal is:
Chales
Behrens
US 5,249,841
US 2006/0175887 A1
Oct. 5, 1993
Aug. 10, 2006
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Application 12/056,803
Blankart US 2008/0277993 A1 Nov. 13, 2008
REJECTIONS
The Appellants seek our review of the rejections2 of:
claims 1 and 3—10 under 35 U.S.C. § 103(a) as unpatentable over
Behrens and Chales; and
claims 1 and 3—10 under 35 U.S.C. § 103(a) as unpatentable over
Behrens and Blankart.
ANALYSIS
For the rejection of claim 1 over Behrens and Chales, the Examiner
finds that the
primary reference shows all claimed features . . . with the
exception of the structural member being a one-piece stamping,
and the portions when viewed from a direction normal to the
plate member defining an outline of a shape of the structural
member around a perimeter of the structural member wherein at
least one of the portions being formed with a radius defining a
curved portion of the outline.
Final Action 2 (citing Behrens Fig. 4); see also id. at 4, 6, 8 (making similar
findings for the other rejections). The Examiner also finds that Chales
2 The Examiner states that claims 6—10 are rejected under 35 U.S.C. § 102(a)
as being anticipated by Behrens and Chales or by Behrens and Blankart.
Final Action 6, 8. The bodies of these rejections, however, state that the
“primary reference shows all claimed features of the instant invention with
the exception of. . . ,” that “it would have been obvious ... to modify the
primary reference,” and provide reasons for modifying. See id. at 6—10. The
Appellants argue against these rejections by citing their arguments for the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Behrens
and Chales. Br. 4. Thus, we also understand the Examiner as rejecting
claims 6—10 under 35 U.S.C. § 103(a), not 35 U.S.C. § 102(a).
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Application 12/056,803
teaches, inter alia, a one-piece stamped structural member attached to
another member and an “outline of a shape of the structural member around
a perimeter of the structural member, at least one of the portions being
formed with a radius defining a curved portion (rounded comers) of the
outline.” See id. at 3 (citing Chales 2:56—63, Figs. 1, 4); see also id. at 5, 7,
9—10 (making similar findings for the other rejections).
The Examiner concludes that it would have been obvious to modify
Behrens in view of Chales because the proposed modification “provides an
alternate, equivalent configuration for the stmctural member, wherein the
configuration is conventionally used in the pertinent art” and “a member that
performs equally as well as that in the primary reference, with slight visual
variation (round comers versus square comers).” Id. at 4; see also id. at 5—6,
8, 10. The Appellants argue (1) that “alternate, equivalent configuration” is
circular reasoning and not articulated reasoning with some rational
underpinning, (2) that the claimed invention is not conventionally used in
the art, and (3) that the statement “performs equally as well” does not
explain why one of ordinary skill in the art would have had reason to
combine the references. Br. 3.
The Examiner finds that Behrens teaches that its rear backrest frame 1
includes plate 2 and hat-shaped sections 4, 5, 6, 7 “into which the cushion or
the foam component of the rear backrest can be installed.” Final Action 2—
3; see also Behrens 125. The portion of Chales cited by the Examiner for
teaching a one-piece stamping with a curved portion states that the “the
framework considered herein” is “for supporting a back cushion of a vehicle
seat.” Chales, 2:56—63. Both Behrens and Chales, thus, support the
Examiner’s determination that they teach “alternate, equivalent
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Application 12/056,803
configuration^]” for a structural member and that each would “perform[]
equally well” for the installation or support of a backrest or cushion. A
change of shape does not make a product nonobvious where the claimed
shape is not of functional significance and accomplishes the same purpose as
the prior art shape. In re Dailey, 357 F.2d 669, 672—73 (CCPA 1966).
Chales also supports the Examiner’s determination that a one-piece
stamped structural member with a curved portion was “conventionally used
in the pertinent art.” Final Action 4. The Examiner cites Figures 1 and 4 of
Chales, which show that it was known to use a one-piece stamped structural
member with a rounded comer or curved portion. See id. Thus, we are not
persuaded that the Examiner’s rationale for modifying Behrens in view of
Chales are deficient for the reasons asserted by the Appellants.
Furthermore, the Appellants argue that the Examiner’s reasoning
lacks rational underpinning but do not present any reason that Behrens and
Chales fail to teach alternate, equivalent configurations for stmctural
members or that those stmctural members would fail to perform equally
well, as determined by the Examiner. See Br. 3. The Appellants also
provide no reason why Figures 1 and 4 of Chales fail to show a
“configuration conventionally used in the pertinent art.” See id. The
Appellants do not explain why a radius defining a curved portion of an
outline is critical or provides unexpected results. See id. Moreover, the
modification proposed by the Examiner appears to be nothing more than the
simple substitution of one known element for another to perform the same
function or the combination of familiar elements according to known
methods to achieve a predictable result. See KSR Int 7 Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007); see also In reKuhle, 526 F.2d 553, 555 (CCPA
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Application 12/056,803
1975) (use of claimed feature solves no stated problem and presents no
unexpected result and “would be an obvious matter of design choice within
the skill of the art”).
The Appellants also argue that the Examiner “implicitly admits that
Behrens does not suffer from a problem that some combination of Behrens
and Chales would solve because ... the [EJxaminer contends that Behrens
and the claimed invention are equivalent configurations that perform equally
well.” Br. 4. This argument is unpersuasive because the Examiner
determines that Behrens and Chales each teach structural members that
perform equally well, not that Behrens and the claimed invention perform
equally well. Also, as discussed above, Behrens and Chales support the
Examiner’s determination that their structural members would perform
equally well (see Behrens 125; Chales, 2:56—63), and no arguments have
been presented that shows that the Examiner’s proposed modification of the
hat-shaped sections of Behrens in view of Chales would fail to perform as
well. Moreover, the Appellants’ argument appears to insist on an explicit
teaching, suggestion, or motivation in Behrens to include a curved portion,
but such an argument has been foreclosed by the Supreme Court. KSR, 550
U.S. at 419. As described above, the KSR court found that the combination
of familiar elements according to known methods yielding no more than
predictable results renders a claim obvious. Id. at 416—17. Such a
combination is itself a sufficient reasoning with rational underpinning to
support a finding of obviousness, and the Appellants’ argument that some
additional rationale is required is unpersuasive.
The Appellants further argue that Behrens uses a manufacturing
technique that “preclude[s] the formation of the claimed curved portion of
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Application 12/056,803
the outline of the shape of the structural member around the perimeter of the
structural member.” Br. 4. These arguments are unpersuasive because they
attack Behrens individually, instead of addressing the proposed combination
of Behrens and Chales. The Examiner finds that Chales teaches a one-piece
stamped member that has at least one portion formed with a radius defining
a curved portion of the outline. See Final Action 3. The Examiner proposes
modifying the hat-shaped sections of Behrens in view of the one-piece
stamped member of Chales. See id. at 3^4.
Furthermore, Behrens states that “[i]n all embodiments, the hat­
shaped sections can be manufactured from one standard semi-finished
product, for example an extruded profile or rolled profile.” Behrens 115
(emphasis added). Because of the use of “for example” after describing that
the hat-shaped sections are made from a semi-finished product, Behrens
does not indicate only making hat-shaped sections from an extruded or
rolled profile. Behrens, thus, would not preclude manufacturing hat-shaped
sections through stamping of a semi-finished product, as proposed by the
Examiner, so that the hat-shaped sections would be a one-piece stamping
with radius defining a curved portion of an outline. See Final Action 3^4.
The Appellants have not provided any persuasive evidence or technical
reasoning that the Examiner’s proposed modification of Behrens with the
rounded comers of Chales would have been beyond the level of ordinary
skill in the art or unpredictable to a person of ordinary skill in the art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
The Appellants further contend that Behrens emphasizes rectilinear
orientation and forming straight lines with its hat-shaped sections. Br. 4.
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The Appellants, however, provide no arguments that modifying the hat­
shaped sections of Behrens to be a one-piece stamping with a radius defining
a curved portion of an outline (see Final Action 3 4) would lack a rectilinear
orientation or would not form straight lines. A stamping with a radius as
proposed could still have a rectilinear orientation and form straight lines.
Also, to the extent that the Appellants are arguing that Behrens teaches away
from the Examiner’s proposed modification, such arguments would not be
persuasive because they do not show that Behrens criticizes, discredits, or
otherwise discourages the claimed invention. See Behrens 115 (“the hat­
shaped sections can be manufactured from one standard semi-finished
product, for example an extruded profile or rolled profile”).
For the reasons above, we sustain the Examiner’s rejection of claim 1.
The Appellants contend that “[cjlaim 1 is patentable over Behrens and
Blankart for the same reasons it is patentable over Behrens and Chales,”
“[cjlaims 3—5 are patentable because they depend from claim 1,” “[cjlaim 6
is patentable for the reasons claim 1 is patentable,” and “[cjlaims 7—10 are
patentable because they depend from claim 6.” Br. 4. Because the
Appellants’ arguments against the rejection under 35 U.S.C. § 103(a) of
claim 1 based on Behrens and Chales are unpersuasive, we also sustain the
Examiner’s rejections of claims 3—10 as unpatentable over Behrens and
Chales and of claims 1 and 3—10 as unpatentable over Behrens and Blankart.
DECISION
For the above reasons, the Examiner’s rejections of claims 1 and 3—10
are 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)(l)(iv).
AFFIRMED
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