Ex Parte Wolfe et al

Patent Trial and Appeal Board

Jun 23, 2016

13273877 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/273,877 10/14/2011
23413 7590 06/27/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Mark Wolfe
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.
IPL0198US2 3087
EXAMINER
BROWN, DREW J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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 MARK WOLFE, JOHN OXNER, and EDWARD WENZEL
Appeal2014-006159 1
Application 13/273,8772
Technology Center 3600
Before MICHAEL C. ASTORINO, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, 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 1-13 and 15-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
Dec. 30, 2013) and Reply Brief ("Reply Br.," filed Apr. 28, 2014), and the
Examiner's Answer ("Ans.," mailed Feb. 27, 2014) and Final Office Action
("Final Act.," mailed June 28, 2013).
2 Appellants identify Inteva Products, LLC as the real party in interest.
Appeal Br. 1.
Appeal2014-006159
Application 13/273,877
CLAIMED fNVENTION
Appellants' claimed invention "relates generally to an instrument
panel used in a vehicle having an inflatable cushion or airbag module, and
more particularly to an instrument panel cover having an integral hidden
door." Spec. 1:9--11.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. An instrument panel having a deployable cover for
an airbag module, the instrument panel comprising:
a substrate layer with a tear seam formed therein;
a bi-laminate layer comprising a foam layer and an outer
layer with a tear seam formed therein, the tear seam of the
bi-laminate layer of [sic] being formed after the foam layer and
the outer layer are secured to each other to form the bi-laminate
layer and the tear seam of the bi-laminated layer being aligned
with the tear seam of the substrate layer, wherein the substrate
layer and the bi-laminate layer are secured to each other and
wherein the tear seam of the substrate layer and the tear seam of
the bi-laminate layer are each separately formed prior to the
substrate layer and the bi-laminate layer being secured to each
other.
REJECTIONS
Claims 1-13 and 15-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Geltinger (US 2006/0220354 Al, pub. Oct. 5, 2006) and
Muller (US 7,014,209 B2, iss. Mar. 21, 2006).
Claims 12, 13, and 16-19 are rejected alternatively under 35 U.S.C.
§ 103(a) as unpatentable over Geltinger, Muller, and Merrifield
(US 2003/0011174 Al, pub. Jan. 16, 2003).
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Appeal2014-006159
Application 13/273,877
ANALYSIS
Independent Claim 1 and Dependent Claims 2-7
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Geltinger does
not disclose or suggest an instrument panel in which "the tear seam of the
bi-laminate layer [is] formed after the foam layer and the outer layer are
secured to each other to form the bi-laminate layer," as recited in claim 1.
Appeal Br. 7-9; see also Reply Br. 6-7.
Geltinger relates to motor vehicle trim elements cooperating with
airbags. Geltinger i-f 2. A process for forming the motor vehicle trim
element involves introducing a weakened area in spacer layer 6, and
introducing another weakened area in decorative layer 8. Id. i-fi-125-26. The
decorative layer 8 and spacer layer 6, which has an attached thin film 7, then
are laminated. Id. i-f 26. The resulting laminate formed of spacer layer 6,
film 7, and decorative later 8 is subsequently laminated onto carrier
substrate 5.
Appellants take the position that Geltinger describes forming the
weakened area in the decorative layer 8 prior to lamination on spacer 6, and
thus does not teach or suggest forming a tear seam after the layers are
secured together, as required by claim 1. Appeal Br. 8. Appellants assert
that the Examiner erred in not considering the process steps in the
product-by-process claims when assessing patentability. Id. at 9 (citing
MPEP § 2113; In re Garnero, 412 F.2d 276, 279 (CCPA 1979)).
However, the Examiner finds that Appellants have provided no
objective evidence indicating that the instrument panel taught by the prior art
combination differs in structure from the instrument panel claimed. Final
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Appeal2014-006159
Application 13/273,877
Act. 14; see also Ans. 14--15. And the Examiner finds that no such evidence
exists in the record. Final Act. 14. In the Reply Brief, Appellants argue that
the claimed process "allows the use of different scoring devices, which
enables the use of 'robust mechanical scoring process technology, such as
sonic scoring."' Reply Br. 6 (citing Spec. i-f 36). However, scoring relates to
the process of manufacture, not the resulting structure. Because Appellants
have not identified any structural difference between the instrument panel of
the prior art combination and the claimed instrument panel, Appellants'
argument directed to the process is not persuasive of Examiner error. See
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir.
2006) (citing In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), for the
proposition that "[i]f the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.").
Appellants argue for the first time in the Reply Brief that Geltinger
does not disclose or suggest a bi-laminate layer, as recited in claim 1, but
rather a "tri-laminate" layer comprising spacer layer 6, thin film 7, and
decorative layer 8. Reply Br. 2-5. Appellants' argument refers to the
Examiner's findings in the Answer regarding the bi-laminate layer. Id. at 2
(citing Ans. 3). But these findings are merely copied by the Examiner from
the Final Office Action. See Final Act. 2. As such, Appellants' argument is
untimely and will not be considered in the absence of any good faith
showing why it could not have been timely presented in Appellants' Appeal
Brief. See 37 C.F.R. § 41.41(b)(2).
Therefore, we sustain the Examiner's rejection of independent claim 1
under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection under
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Appeal2014-006159
Application 13/273,877
35 U.S.C. § 103(a) of dependent claims 2-7, which are not argued
separately, except based on their dependence on claim 1. Appeal Br. 10.
Independent Claims 8 and 15, and Dependent Claims 9-13 and 16-19
Appellants argue that independent claims 8 and 15 are allowable for
the same reasons set forth with respect to claim 1. Id. at 10-12. We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner's
rejection of independent claims 8 and 15 under 35 U.S.C. § 103(a) for the
same reasons. We also sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 9-13 and 16-19, which depend from claims 8 and 15,
respectively, and are not argued separately except based on their dependence
on claims 8 and 15. Id. at 11-13.
DECISION
The Examiner's rejections of claims 1-13 and 15-19 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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