Kelvin S. Gray et al.

Patent Trials and Appeals Board

Dec 23, 2019

14289042 - (D) (P.T.A.B. Dec. 23, 2019)

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.
14/289,042 05/28/2014 Kelvin S. Gray 709564US1 4068
24938 7590 12/23/2019
FCA US LLC
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS, MI 48326-2757
EXAMINER
HAUTH, GALEN H
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
chris.davenport@fcagroup.com
michelle.madak@fcagroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KELVIN S. GRAY and JAMES D. SHIPTON
__________

Appeal 2018-001330
Application 14/289,042
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an
Examiner’s decision finally rejecting claims 1–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as FCA US
LLC. Appeal Brief dated June 26, 2017 (“Appeal Br.”), 3.
Appeal 2018-001330
Application 14/289,042

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CLAIMED SUBJECT MATTER
The claimed subject matter relates to methods for forming a laminated
article using a mold, including an article of a vehicle. Claims 1 and 12—the
independent claims—are representative.
1. A method comprising:
heating a mold member including a molding surface;
conducting a first slush molding step to attach a first
material to the molding surface;
conducting a second slush molding step to attach a
second material to the first material; and
laminating a substrate to the second material while the
second material ls in a molten state.
12. A method for forming a molded article of a vehicle,
comprising:
providing a mold including a molding surface, the
molding surface having a shape that corresponds to that of the
molded article;
heating the mold to a temperature sufficient to melt first
and second thermoplastic materials of the molded article;
conducting a first slush molding step to attach the first
thermoplastic material to the molding surface;
conducting a second slush molding step to attach the
second thermoplastic material to the molding surface, the
second thermoplastic material including a blowing agent; and
laminating a substrate to the first and second
thermoplastic materials while at least the second thermoplastic
material is in a substantially molten state and the blowing agent
is releasing a gas to foam the second thermoplastic material,
wherein the first thermoplastic material forms an exterior
surface of the molded article and the second thermoplastic
material forms a foam of the molded article.
Appeal Br. 14, 16.
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Application 14/289,042

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REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103 for
obviousness as follows:
Claims 1–6, 8–14, and 16–19 stand rejected over Tochioka2 in view of
Strebel3;
Claims 1–11 stand rejected over De Winter4 in view of Strebel; and
Claims 7 and 15 stand rejected over Tochioka in view of Strebel and
De Winter.
DISCUSSION5
For any ground of rejection, “the Examiner bears the initial burden . . .
of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We consider the record to determine whether
Appellant has identified reversible error in the Examiner’s rejection. See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential)). Further, “the burden of showing that the error is
harmful normally falls upon the party attacking the agency’s determination.
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009)).

2 Tochioka et al., US 6,552,095 B1, issued April 22, 2003.
3 Strebel, US 5,830,392, issued November 3, 1998.
4 De Winter et al., US 2006/0284330 A1, published December 21, 2006.
5 We refer to the Specification filed May 28, 2014 (“Spec.”), the Final
Office Action dated January 27, 2017 (“Final Act.”), the Appeal Brief filed
June 26, 2017, the Examiner’s Answer dated September 22, 2017 (“Ans.”),
and the Reply Brief filed November 17, 2017 (“Reply Br.”).
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Application 14/289,042

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Upon consideration of the rejections, Appellant’s arguments, and the
Examiner’s response to those arguments, we are persuaded of reversible
error in the Examiner’s rejection of claims 1–11 over De Winter in view of
Strebel, but are not persuaded of reversible in the Examiner’s rejection of
claims 1–6, 8–14, and 16–19 over Tochioka in view of Strebel, or of claims
7 and 15 in further view of De Winter.
Tochioka and Strebel – Claims 1–6, 8–14, and 16–19
Tochioka relates to thermoplastic resin materials formed into
laminates with a thermoplastic material foam layer. Tochioka, Abstract. In
rejecting claim 1, the Examiner relies on Tochioka for its teaching of a
method of forming a molded article that includes heating a mold member (7)
having a molding surface, conducting a first slush molding step to attach a
skin material (powder 6) to the molding surface, conducting a second slush
molding step to attach a powder containing a foaming agent (powder 10) to
the first material, and laminating a substrate (17) to the second material as
shown in Figure 2. Ans. 2 (citing Tochioka, 8:38–9:50; Fig. 2). The
Examiner further relies on Tochoika as teaching foaming the second
material, provided as powder 10, while the substrate is positioned in a closed
mold. Id. (citing Tochioka, 7:42–55). As disclosed in Tochioka, the powder
10 is “a thermoplastic resin containing a foaming agent” (Tochioka, 8:48–
50) and this can be foamed by heating the molds in which “the laminate of
the skin material [6] and the thermoplastic resin foam layer [10], and the
thermoplastic resin substrate[17]” coated with a “foam adhesive material”
are positioned in order to form a molded laminate that includes the skin
material, the thermoplastic resin foam layer, and the substrate (id. at 7:42–
55).
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Strebel relates to processes for forming molded articles from
thermoplastic resins having smooth exterior skins and foamed interiors.
Strebel, Abstract. The Examiner relies on Strebel for its teaching of “a
foamable power [that] is slush molded onto a skin layer in which the
decomposition of a blowing agent within the foamable material is higher
than the melt temperature of the powder used.” Ans. 2–3 (citing Strebel,
4:7–14). The Examiner further relies on Strebel for its teaching that this
foamable material “is placed within an elevated temperature oven to both
melt the foamable material and activate the foaming agent.” Id. at 3 (citing
Strebel, 6:43–49).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time [of] the invention . . . to bond the
substrate of Tochioka to the foaming material while the second material is
molten as Strebel teaches that it was known in the art that foamable powder
for use in slush molding can have a foam activation temperature above the
melt temperature of the powder.” Id.
As to claim 12, the Examiner similarly relies on Tochioka and Strebel
(id. at 4–5), but highlights that Tochioka is directed to “manufacturing a
laminate for use in vehicles” (id. at 4 (citing Tochioka, 1:15–30)).
Appellant contends that the combination of Tochioka and Strebel does
not yield the claimed method that includes “laminating a substrate to the
second material while the second material is in a molten state.” Appeal Br.
6–7. Appellant argues that Tochioka discloses two different two-part
processes, including that depicted in Figure 2 relied on by the Examiner. Id.
at 6. In describing the first process, Appellant relies on disclosure also cited
by the Examiner, focusing in particular on Tochioka’s disclosure of the pre-
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Application 14/289,042

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foam layer 11 that is formed of powder 10 for the foam that adheres to the
skin material 8 that is formed of powder 6. Id. at 7–8 (citing Tochioka,
8:61–9:3; Fig. 2); Ans. 2 (citing Tochioka, 8:38–9:50; Fig. 2). Based on this
disclosure, particularly column 8, line 61 to column 9, line 3, Appellant
contends that the second material is foamed and cooled and that the
intermediate part comprising the skin (first material) and foam (second
material) is then adhered to the disclosed substrate 15 using an adhesive
foam 17 that is sprayed onto the substrate. Appeal Br. 7; Reply Br. 5–6.
Appellant argues that, accordingly, “the second material [10/11] that is
added by slush molding is not in a ‘molten state’ when the substrate 15 is
adhered thereto, as claimed.” Appeal Br. 7; see also Reply Br. 6. Appellant
further argues that “this two-part process is different from the claimed
invention” “even if the second material 10 of Tochioka is replaced by the
material of Strebel as alleged by the Examiner.” Appeal Br. 7–8.
As to the second two-step process of Tochioka, Appellant argues that
it does not include a second slush molding step, and that the spraying step to
apply an adhesive foam layer does not suffice. Appeal Br. 8–10 (citing
Tochioka, 10:8–12).
Appellant’s argument is not persuasive of error because it fails to
squarely address the rejection as set forth by the Examiner grounded in part
on Tochioka disclosing a method in which the second material 10/11 is
foamed while the substrate 17 and a laminate of the skin material 6/8 and
foam layer 10/11 are heated in a closed mold. Ans. 2 (citing Tochioka,
7:42–55). Further, as explained in this portion of Tochioka, after the heating
and foaming step, “the molded laminate is cooled, . . . the molds are
opened[,] . . . [and] the molded laminate is removed from the molds”
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(Tochioka, 7:46–55), where the production method is “explained by making
reference to a laminate comprising a skin material, a thermoplastic resin
foam layer (an intermediate foam layer), an adhesive thermoplastic material
foam layer (a foam adhesive layer), and a substrate” (id. at 7:11–15). Thus,
Appellant’s argument that the second material is foamed and then cooled
prior to the intermediate part comprising the skin (first material) and the
foam (second material) being adhered to the substrate in the combination set
forth by the Examiner is unfounded.
As to the further argument that the second two-step process in
Tochioka identified by Appellant fails to disclose a second slush molding
step, it is at best, a misapprehension of the rejection set forth by the
Examiner. Ans. 8–9.
By not addressing the rejection as articulated by the Examiner,
Appellant has not demonstrated how the Examiner erred.
Appellant also belatedly raises an argument as to Tochioka disclosing
a foamable layer that is heated in a mold with the skin layer and the
substrate. Reply Br. 7 (citing Ans. 9–10). While citing to particular
language in the Answer, the Examiner had already raised the same points—
using the same words—in the Final Office Action. Compare id., and Ans.
9–10, with Final Act. 9–10. Appellant provides no good reason why the
argument could not have been raised in the Appeal Brief. See generally
Reply Br. We deem the argument waived, therefore, for purposes of the
present appeal. 37 C.F.R. § 41.41(b)(2). Cf. Becton Dickinson and Co. v.
C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990) (citations and internal
quotations omitted) (finding “no reason to depart from the sound practice
that an issue not raised by an appellant in its opening brief, . . . is waived”);
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Application 14/289,042

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McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir.
1986) (internal citations omitted) (“Considering an argument for the first
time in a reply brief . . . is not only unfair to the appellee but also entails the
risk of an improvident or ill-advised opinion on the legal issues tendered.”).
Accordingly, on this record, we are not apprised of reversible error in
the rejection of claims 1–6, 8–14, and 16–19 over Tochioka in view of
Strebel.
De Winter and Strebel – Claims 1–11
De Winter relates to a method for manufacturing a composite
automotive trim part that includes a skin layer and a rigid substrate layer
with an intervening foam layer. De Winter, Abstract. The Examiner relies
on De Winter for its teaching of slush molding of a skin layer (1) on the
surface of a heated mold. Ans. 6 (citing De Winter ¶¶ 49, 51); De Winter,
Fig. 1a. The Examiner relies on De Winter teaching of “pouring mold
material [3] on to the skin layer [1]” as “a second slush molding step to
attach a second material to the first material.” Ans. 6 (citing De Winter
¶ 45); De Winter, Fig. 1c. The Examiner maintains that “pouring a powder
into the mold” meets the recited “slush molding step of the claim.” Ans. 10.
The Examiner relies on De Winter “laminating the substrate [2] to the
second material [3] through foaming.” Id. at 6 (citing De Winter ¶ 45). The
Examiner relies further on De Winter for teaching that the second material
[3]”the foamable material”“is a thermoplastic foam” and that “the substrate
[2] and skin [1] are not completely hardened . . . during lamination.” Id.
(citing De Winter ¶¶ 41, 65).
The Examiner relies on Strebel, in the same manner as in the
combination with Tochioka, for its disclosure of “a foamable powder . . . in
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which the decomposition temperature of a blowing agent within the
foamable material” allowing “both melt[ing] the foamable material and
activat[ing] the foaming agent.” Id. (citing Strebel, 4:7–14, 6:43–49).
The Examiner also again concludes that it would have been obvious to
use Strebel’s disclosed foamable powder having a foam activation
temperature above the melt temperature of the powder in what the Examiner
takes to be a second slush molding step. Id. at 6–7.
Appellant contends that the disclosed pouring of foam material into
the mold—relied on by the Examiner as the second slush molding step—is
not a slush molding process. Appeal Br. 11; Reply Br. 8–10. Appellant
argues, for example, that “one skilled in the art would recognize that ‘slush
molding’ requires that any excess material must be drained off” and that this
is not done in “the ‘pouring’ of the powder material that is conducted by De
Winter.” Reply Br. 10.
The Examiner’s position, however, is that the meaning of “slush
molding” in the Specification includes “spraying or rotational molding,” as
the Examiner’s Answer sets forth that “Applicant’s own specification notes
in the background section that several methods including spraying or
rotational molding could read on ‘slush’ molding.’” Ans. 10. While the
Examiner is correct that the specification mentions spraying and rotational
molding, the Examiner fails to explain why spraying or rotational molding
alone is consistent with an understanding of “slush molding” that requires
draining off excess material, consistent with Appellant’s arguments, or with
the Specification. See, e.g., Spec. ¶¶ 10, 14. For this reason, we are
persuaded that the Examiner has failed to establish a factual basis for the
rejection because there is no draining off of excess material manifest in
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De Winter and this deficiency is not remedied. Ans. 6, 10. Accordingly, the
Examiner has not met its burden to establish unpatentability of claim 1, or of
claims 2–11 dependent thereon, over the combination of De Winter and
Strebel. In re Oetiker, 977 F.2d at 1445.
Tochioka, Strebel, and De Winter – Claims 7 and 15
Claims 7 and 15 both recite that “the substrate includes a plurality of
apertures that allow the gas to escape during the laminating of the substrate
to” either “the second material” (claim 7) or “the second thermoplastic
material” (claim 15).
The Examiner relies on Tochioka in view of Strebel, as discussed
above, as “teach[ing] a method for foaming a laminate with a foam core, a
skin, and a substrate within a pair of molds.” Ans. 8.
The Examiner relies on De Winter as “teach[ing] a similar laminate
forming process” and for “teach[ing] that it was known to include a plurality
of apertures in the substrate to allow for venting during the foaming
process.” Id. (citing De Winter ¶ 53; Fig. 15).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time [of] the invention . . . to include vent
holes in the substrate of Tochioka to allow for venting of the foaming gas as
taught by De Winter “ in order to obtain “the complete filling of the cavity
between the substrate and the skin layer.” Id.
We find the combination including De Winter for its teaching of
apertures to allow for venting well-founded. Any deficiency as to the
rejection of claims 1–11 grounded on De Winter in view of Strebel is not
manifestly material to this rejection.
Appellant does not address this ground of rejection.
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Accordingly, on this record, we are not apprised of reversible error in
the rejection of claims 7 and 15 over Tochioka in view of Strebel and in
further view of De Winter.
CONCLUSION
The Examiner’s decision is affirmed.

Claims
Rejected
35 U.S.C. § Rejection(s)/Basis Affirmed Reversed
1–6, 8–14, 16–
19
103 Tochioka, Strebel 1–6, 8–14, 16–
19

1–11 103 De Winter, Strebel 1–11
7, 15 103 Tochioka, Strebel,
De Winter
7, 15
Overall
Outcome
1–19

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).

AFFIRMED