Unique Fabricating, Inc.

Patent Trials and Appeals Board

Jul 30, 2020

14621990 - (D) (P.T.A.B. Jul. 30, 2020)

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.
14/621,990 02/13/2015 Daniel Bianchi 144487-0025 1025
150661 7590 07/30/2020
Panagos Kennedy PLLC
3331 West Big Beaver Road
Suite 102
Troy, MI 48084
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/30/2020 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@paniplaw.com
bpanagos@paniplaw.com
lkennedy@paniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL BIANCHI
____________

Appeal 2020-000412
Application 14/621,9901
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 5, 6, 16, and 17. 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 Unique
Fabricating Inc. (Appeal Br. 1.)
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Application 14/621,990

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CLAIMED SUBJECT MATTER
Appellant’s invention relates “to an air duct system with noise
attenuation properties.” (Spec. ¶ 2.)
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. An air duct, comprising:
a foam body having a foam outer surface; and
a foam inner surface; said foam inner surface having air
flow impediments of a variety of thicknesses and lengths
uniformly disbursed along the entirety of the inner surface in an
arrangement sufficient to reduce noise transmission of air as it
travels through the duct relative to a reference air duct of
identical material and shape, the reference air duct lacking air
flow impediments.

REJECTIONS
Claims 1, 5, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Onodera (US 2011/0073211 A1, pub.
Mar. 31, 2011) and Bauman (US 3,605,817, iss. Sept. 20, 1971).
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Onodera, Bauman, and Jungers (US 2010/0071797 A1, pub. Mar. 25, 2010).
Claims 1, 6, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Cacciacarro (US 2013/0255820 A1, pub.
Oct. 3, 2013) and Bauman.

ANALYSIS
The § 103 rejection in view of Onodera and Bauman
Appellant does not separately argue independent claim 16. (See
Appeal Br. 4–6.) Claim 16 will stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that “Onodera discloses all of the recited structure with the exception
of providing uniformly dispersed inner surface air flow impediments of
specific dimensions.” (Final Action 4.) Additionally, the Examiner
determines that
[i]t would have been obvious to one skilled in the art to modify
the air duct in Onodera by providing air flow impediments as
suggested by Bauman to provide noise reduction in a moving air
duct and since Bauman discloses that either indentations or
impediments can be used to reduce noise, and where the selection
of a specific sized impediment is merely a choice of mechanical
expedients requiring only routine skill in the art to optimize the
size of the impediments to achieve the desired noise reduction as
such is merely a choice of mechanical expedients.

(Id. at 4–5.)
Appellant argues that “Onodera, the primary reference, specifically
teaches away from the modification that the Examiner posited would result
from a combination with Bauman. As such, the combination of references is
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Application 14/621,990

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improper.” (Appeal Br. 4.) Citing paragraph 11 of Onodera, Appellant
argues that “Onodera identifies irregularities on an inner surface of a duct as
a problem to be solved.” (Id. at 5.) Appellant further argues that
Onodera rejects configurations with air flow impediments on the
interior and instead adopts a structures [sic] with protrusions on
the outer surface of the duct. (Onodera, Fig. 2; paras. [0045]-
[0048], claim 1). As such, one of ordinary skill in the art would
not be motivated to modify Onodera in view of Bauman, which
expressly uses irregularities in the inner surface to hinder air flow
to achieve its goals of reduced whistling.

(Id. at 5 (citing Bauman, col. 5, ll. 32–37).) In sum, Appellant argues that “it
is unreasonable to interpret ‘air flow impediments’ along the inner surface or
‘protrusions extending inwardly’ to cover a structure where there are no
inward-facing air flow impediments on the inner surface of an air duct body
. . . Onodera is such a structure.” (Reply Br. 9.) We do not find this
argument persuasive.
Onodera discloses “a method for manufacturing a climate control
duct, the method capable of improving a characteristic of transferring a
shape of a protrusion onto a surface of a duct and capable of preventing
reduction in ventilation efficiency.” (Onodera, Abstract.) Figures 1 and 2 of
Onodera are reproduced below.
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Figure 1 “is a general schematic view illustrating a duct according to one
embodiment” (id. ¶ 33), and Figure 2 “is a sectional diagrammatic view
illustrating the duct taken along a line X-X in [Figure 1]” (id. ¶ 34).
Onodera explains that in the case of
conventional climate control ducts . . . , when an outer peripheral
surface is configured to have irregularities formed thereon, an
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inner circumferential surface is also configured to have
irregularities formed thereon.
These irregularities result in stagnation of air near the
inner circumferential surface of the climate control duct to hinder
climate control air from passing through the duct. Consequently,
there arises a problem that the irregularities formed on the inner
circumferential surface causes [sic] reduction in ventilation
efficiency.

(Id. ¶¶ 10–11.) To solve this problem, Onodera discloses “a climate control
duct obtained by molding a foamed resin while fitting the foamed resin to a
shape of a mold by use of a pressurized fluid. The duct includes a protrusion
formed on an outer peripheral surface thereof.” (Id. ¶ 25.) Onodera
discloses a “groove to be formed on the inner circumferential surface of the
duct in correspondence with the protrusion.” (Id. ¶ 28.) Onodera’s Figure 2
shows the depth of the interior groove as Da and the height of the protrusion
from the outer surface as Ha.
In view of Onodera’s disclosure of an interior groove, Onodera clearly
teaches having surface irregularities on the interior of an air duct. (See, e.g.,
id. at Fig. 2.) Additionally, Onodera discloses 0.5mm