Ex Parte Ban et al

Patent Trials and Appeals Board

Mar 25, 2019

13129217 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/129,217 05/13/2011 Akane Ban
22428 7590 03/27/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
040302-0902 7032
EXAMINER
GUO,TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKANE BAN, MAKOTO TAMURAY A, TAKASHI
TAKEUCHI, YEON-YI KANG, HIDEO FUJIMOTO, AKIHITO SANO,
HIROMI MOCHIY AMA, NAOYUKI TAKESUE, and
YOSHIHIRO TANAKA
Appeal2017-006050
Application 13/129,217
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 7, 9, and 11-14 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined prior art of Sano et al. (US
1 The real parties in interest are stated to be Nissan Motor Co., Ltd. and
National University Corporation Nagoya Institute of Technology (Appeal
Br. 3).
Appeal2017-006050
Application 13/129,217
2008/0305305 Al, published, Dec. 11, 2008), Okajima et al. (US
2005/0186396 al, published Aug. 25, 2005), and Spengler (US 6,136,415,
issued Oct. 24, 2000)2. An oral hearing was conducted on March 21, 2019.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 7 is illustrative of the subject matter on appeal ( emphasis added
to highlight key limitation in dispute):
7. A surface structure of an article, comprising:
a surface which has a plurality of concave portions on the
surface and intervals relative to each of the plurality of concave
portions,
wherein each of the plurality of concave portions has a
curvature radius ranging from 1 mm to 2 mm at a cross section
edge, and has a plurality of fine convex portions arranged next
to one another at least on a surface of the edge of each of the
plurality of concave portions,
wherein each of the plurality of fine convex portions has
a diameter ranging from 15 µm to 4 0 µm, and a height ranging
from 15 µm to less than 3 0 µm, and
wherein centers of the concave portions are disposed in
position to correspond to an apex of a regular hexagon in a
planar view.
2 While the Examiner also relies upon Suehiro (US Pub. 2011/0177303) as
"evidence" (Ans. 2) that a regular hexagon is one of the "most commonly
used design lattice" (Ans. 4) for a dotted pattern on the surface of an article,
the Examiner's reliance on this "evidence" was not necessary; thus, we do
not rely upon this reference in our decision.
2
Appeal2017-006050
Application 13/129,217
ANALYSIS
We review the appealed§ 103(a) rejections for error based upon the
issues identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in 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")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's§ 103(a) rejections for the reasons expressed
in the Final Office Action and the Answer. We add the following primarily
for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants' first argument is that the Examiner has impermissibly
relied upon Suehiro as evidence because it is not prior art to the case on
appeal and is not being relied upon to show a universal fact (Appeal Br. 8-
11; Reply Br. 4--8). Even assuming arguendo that Appellants are correct
that Suehiro may not be relied upon, Appellants' arguments are unpersuasive
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Appeal2017-006050
Application 13/129,217
of error in the Examiner's rejection because Suehiro's teachings are a
necessary component of the rejection.
Sano is directed to a surface structure and pattern for automotive
interior trim that has both concave recesses and convex features on the
concave surface edges that results in a good touch/tactile feel (Sano, e.g., ,r,r
24, 26, 27, 30, 31). As the Examiner finds, one of ordinary level of skill in
the art would have readily inferred from at least these disclosures in Sano
that the dimensions as well as the pattern of features on the trim surface are
result effective variables (e.g., Ans. 12). "A recognition in the prior art that
a property is affected by the variable is sufficient to find the variable result-
effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012). It is well settled that it would have been obvious for an artisan with
ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990);
In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454,
456 (CCPA 1955). Indeed, the dimensions disclosed in Spengler when
combined with Sano for the curvature radius of the concave portions
overlaps the claimed range (Spengler col. 8, 11. 15-22; Ans. 12, 13). 3 Cf
Iron Grip Barbell Co. v. USA Sports, 392 F.3d 1317 (Fed. Cir. 2004) (it has
been established that the fact that a range is found from various prior art
references ( versus one prior art reference) is "a distinction without a
3 Appellants also argue that Sano teaches away "from combination with
Spengler" (Appeal Br. 15). This is not persuasive of reversible error, since it
is well established that a reference is not limited to its examples or preferred
embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200
possible combinations rendered all possible formulations obvious).
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Appeal2017-006050
Application 13/129,217
difference" from other range cases). Accordingly, Appellants have not
shown error in the Examiner's determination that concave portions'
curvature radius and convex portions diameter and height dimensions as
recited in claim 7 would have been obvious to one of ordinary skill in the
art, using no more than ordinary creativity to determine workable ranges as
recited herein for these result effective variables.
Appellants also argue that the Examiner has not shown that Sano
exemplifies or suggests that "centers of the concave portions are disposed in
position to correspond to an apex of a regular hexagon in planar view". In
construing claims, "the PTO must give claims their broadest reasonable
construction consistent with the specification .... Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee." Id. Contrary to the Appellants' position, the
Examiner has clearly explained how he interpreted the claim language as
only requiring that a line may be drawn in the shape of a regular hexagon
between centers of any concave portions (Ans. 9, 10). Appellants have not
adequately refuted the Examiner's reasonable interpretation of the claim
language ( e.g., Reply Br. 8, stating that the claim is not limited to "any of
the embodiments" inclusive of Fig. 12 for this limitation; furthermore,
Appellants' representative at the oral hearing would not agree to an
interpretation of the claim language to a hexagon shape that excluded other
concave recesses inside or outside the hexagon shape).
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Appeal2017-006050
Application 13/129,217
Notably, Sano describes that the embossed pattern(s) may be any
pattern, regular or semiregular (e.g., Sano ,r 26). Accordingly, one of
ordinary skill in the art, using no more than ordinary creativity, would have
used a pattern of concave portions disposed as recited herein. Thus, a
preponderance of the evidence supports the Examiner's position that it
would have been prima facie obvious, using no more than ordinary
creativity, to place the concave recesses such that centers of concave
portions correspond to an apex of a regular hexagon as claimed. 4
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
4 The Examiner characterizes Sano' s spacing as depicted in Fig. 1 as
resulting in a "stretched regular hexagon" and explains that a regular
hexagon would have likewise been an obvious variant. While Appellants'
state that a "stretched regular hexagon" is an "oxymoron" (Reply Br. 10), we
view the Examiner's language as harmless error in distinguishing between a
regular hexagon (i.e., one with all six sides and angles equal) and an
irregular hexagon (i.e., one wherein all six sides are not equal).
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Appeal2017-006050
Application 13/129,217
Appellants do not direct us to any evidence adequate to show
unexpected results from the claimed dimensions and hexagon feature as
interpreted herein.
We, therefore, discern no error in the Examiner's determination that
the applied prior art would have rendered obvious the surface structure of
claim 7 (as well as the dependent claims not separately argued).
With respect to dependent claim 13, Appellants have not shown error
in the Examiner's determination that Fig. 5 of Okajima exemplifies the
obviousness of convex portions arranged without a gap between them as a
known pattern for use on the surface of an article (Appeal Br. 19; Ans. 15).
Appellants have not persuasively argued that the facts and reasons
relied on by the Examiner are insufficient to establish a prima facie case of
obviousness. In light of these circumstances, the preponderance of the
evidence supports the Examiner's rejection. Accordingly, we sustain the
rejection of the claims on appeal.
DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
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