Tobias Weiler

Patent Trials and Appeals Board

Oct 2, 2019

14269263 - (D) (P.T.A.B. Oct. 2, 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.
14/269,263 05/05/2014 Tobias Weiler 480805.00323(66639-US) 2874
160504 7590 10/02/2019
QUARLES & BRADY LLP/ITW Automotive OEM
Attn: IP Docket
411 E. WISCONSIN AVE.
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOBIAS WEILER
____________

Appeal 2018-005950
Application 14/269,263
Technology Center 3700
____________

Before DANIEL S. SONG, BRANDON J. WARNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Illinois Tool Works Inc. (“Appellant”)1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 2, 7, 10–12, and
15–26, which are all the pending claims. Appeal Br. 1, 5. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Illinois Tool Works Inc. is the applicant, as provided in 37 C.F.R.
§ 1.46, and is identified as the real party in interest. Appeal Br. 5.
Appeal 2018-005950
Application 14/269,263

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to a sealing plug for sealing
an opening in a component, in particular a vehicle body part.” Spec., p. 1,
ll. 3–4. Claims 16, 18, and 26 are independent. Claim 16, reproduced
below, is illustrative of the subject matter on appeal.
16. A sealing plug configured to seal an opening in a
component, the sealing plug comprising:
an annular shank centered on an axis and closed on one
end by a sealing surface, the shank extending into the opening
when the sealing plug seals the opening;
a cone-shaped sealing lip having a free end extending
from the shank and axially towards the one end, the free end
being locked in place on a rear side of the component to close
the opening when the shank extends into the opening, the
sealing lip having a plurality of discrete portions spaced
circumferentially apart from one another by recesses extending
towards the axis and entirely through the sealing lip; and
a plurality of separate and distinct first flexible folding
zones connecting adjacent discrete portions of the sealing lip,
each of the plurality of separate and distinct first flexible
folding zones being folded while the shank is inserted into the
opening to a condition positioned entirely within the recess
between the adjacent discrete portions to allow a circumference
of the sealing lip to be reduced, each of the plurality of separate
and distinct first flexible folding zones automatically unfolding
back when the sealing plug seals the opening.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Parker US 3,156,372 Nov. 10, 1964
Takahashi US 4,715,095 Dec. 29, 1987
van den Beld US 4,760,935 Aug. 2, 1988
Appeal 2018-005950
Application 14/269,263

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REJECTIONS
The following rejections are before us for review:
I. Claims 2, 7, 11, 12, 15–23, and 25 stand rejected under
35 U.S.C. § 103 as being unpatentable over van den Beld and
Takahashi. Final Act. 2–6.
II. Claims 10, 24, and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over van den Beld, Takahashi, and Parker.
Id. at 7–10.

ANALYSIS
In each of Rejections I and II, the Examiner relies on a combination of
teachings from van den Beld and Takahashi to reject the claims as obvious.
See Final Act. 2–10. Appellant argues that the Examiner has not set forth an
adequate reason why one of ordinary skill in the art would have combined
the features from these references, suggesting instead that the combination is
the result of improper hindsight reconstruction. See Appeal Br. 11–19
(focusing on independent claim 16), 19–21 (focusing on independent
claim 18), 27–34 (focusing on independent claim 26). We agree.
As the requisite articulated reasoning for combining van den Beld and
Takahashi, the Examiner states that it would have been obvious “to have
provided the sealing lip 4 of [v]an [d]en Beld, [with] flexible folding zones,
for the predictable result of providing effective locking as taught by
Takahashi.” Final Act. 4 (citing Takahashi, col. 5, ll. 1–3); see also id. at 5
(same reasoning for claim 18), id. at 9 (same reasoning for claim 26). But
this reason disregards the fact that van den Beld already provides effective
locking, in the context of a seal no less. See, e.g., van den Beld, Figs. 5, 6
Appeal 2018-005950
Application 14/269,263

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(depicting bottom sealing lip or retaining ring 4′′ and top sealing lip 3′ being
cooperatively locked to vehicle bodywork 12 to seal an opening therein); id.,
col. 3, l. 56 – col. 4, l. 12 (describing same and noting that these sealing
elements “ensure very satisfactory sealing by the closure member”).
Although Takahashi teaches discrete projections 4 that flex inwardly
to insert and attach leg portion 2 of a plate fastener, the notion of using a
plurality of flexible folding zones as part of a continuous sealing lip is
disclosed—not by the cited art—but by Appellant. Thus, we agree with
Appellant that the rejection does not sufficiently explain why a person of
ordinary skill in the art would have combined these disparate teachings. See
Appeal Br. 11–19.
In other words, the Examiner has not sufficiently articulated reasoning
based on rational underpinnings as to why one skilled in the art would have
been prompted to combine the teachings of van den Beld and Takahashi
(along with Parker in Rejection II) in the manner proposed. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))); see also Appeal Br. 12–13
(citing same).
Here, in response to Appellant’s arguments, the Examiner simply
reiterates the individual teachings relied upon and alleges that the arguments
are directed to each reference individually. See Ans. 2–6. But the Examiner
does not provide any additional explanation as to why such individual
teachings—particularly those of van den Beld and Takahashi—would be
Appeal 2018-005950
Application 14/269,263

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combined to arrive at the specific use of a plurality of flexible folding zones
as part of a continuous sealing lip as claimed. See id.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify van den Beld and Takahashi, and a reason for such
modification is not otherwise evident from the record.
Even if we presume that the Examiner’s findings regarding individual
elements from each of van den Beld and Takahashi are supported by a
preponderance of the evidence,2 we note that a claim “composed of several
elements is not proved obvious merely by demonstrating that each element
was, independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418.
Rather, a sustainable obviousness rejection further needs to explain the
reasoning by which those findings support the Examiner’s conclusion of
obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–30 (Fed. Cir. 2009). In this case, the rejection fails to meet this
required standard.

2 We do not find any indication that Takahashi’s purported “sealing lip”
(discrete projections 4) would function as a seal, or that these projections
have any recesses extending therethrough to receive flexible folding zones
therein. See Appeal Br. 13–18.
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Application 14/269,263

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Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain Rejections I and II.

DECISION
We REVERSE the Examiner’s decision rejecting claims 2, 7, 11, 12,
15–23, and 25 under 35 U.S.C. § 103 as being unpatentable over
van den Beld and Takahashi.
We REVERSE the Examiner’s decision rejecting claims 10, 24, and
26 under 35 U.S.C. § 103 as being unpatentable over van den Beld,
Takahashi, and Parker.

CONCLUSION
In summary:

Claims
Rejected Basis Affirmed Reversed
2, 7, 11, 12,
15–23, and 25
35 U.S.C. § 103
van den Beld and
Takahashi
2, 7, 11, 12,
15–23, and 25
10, 24, and 26 35 U.S.C. § 103
van den Beld,
Takahashi, and
Parker
10, 24, and 26
Overall Outcome 2, 7, 10–12,
and 15–26

REVERSED