Ex Parte HipshierDownload PDFPatent Trial and Appeal BoardDec 16, 201613635649 (P.T.A.B. Dec. 16, 2016) Copy Citation 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. 10068/US _JOCA:0067 1258 EXAMINER HANDVILLE, BRIAN ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 13/635,649 09/17/2012 75576 7590 0: Johnson Controls, Inc. c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 Jason M. Hipshier 01/12/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON M. HIPSHIER Appeal 2015-003265 Application 13/63 5,6491 Technology Center 1700 Before JEFFREY T. SMITH, JENNIFER R.GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the February 7, 2014 Final rejection of claims 1—9.2 We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention “relates generally to a soft component with a decorative surface finish, such as in a vehicle.” (Spec. 2). Claim 1 is illustrative of the subject matter on appeal and reproduced from the Brief below: 1 The real party in interest is Johnson Controls Technology Company. (App. Br. 2). 2 According to Appellant, claims 10—20 have been withdrawn from consideration. (App. Br 2). Appeal 2015-003265 Application 13/635,649 1. A soft component, comprising: a substrate; a cushion disposed on the substrate; an outer skin disposed onto the cushion and configured to flex m response to depression of the cushion; a decorative layer disposed onto a show surface of the outer skin; and a top coat layer disposed onto the decorative layer and bonded to the show surface of the outer skin, wherein the top coat layer is configured to flex with the outer skin while substantially maintaining continuity across the show surface of the outer skin. The Examiner has maintained the rejection of claims 1—9 under 35 U.S.C. § 103(a) as unpatentable over Dieter et al.3, DE 19641134 A1 (“Dieter”) in view of Hipshier et al., WO 2008/064210 A2 (“Hipshier”). OPINION4 We have reviewed each of Appellant’s arguments for patentability. We sustain the Examiner’s rejection for essentially those reasons expressed in the Final Action and Answer, including the Response to Argument section. We add the following: We refer to the Examiner’s Final Action for a complete statement of the rejection. (Final Act. 2—6). Appellant argues the Examiner has improperly combined Dieter and Hipshier. (App. Br. 6—7). Appellant specifically argues Dieter has no 3 We rely on the English language translation of this document that has been entered into the record. 4 Appellants have not presented arguments specific to every claim on appeal. We limit our discussion to independent claim 1 as representative of the subject matter on appeal. 2 Appeal 2015-003265 Application 13/635,649 motivation or suggestion to protect the plastic casing from wear with an additional top layer coat; Dieter does not teach or suggest decorating the arm rest; and Hipshier does not teach or suggest utilizing a cushion. (Id.). Appellant’s arguments are not persuasive of reversible error. Appellant has focused the argument for patentability on the references individually and has not focused on the teachings as a whole to a person of ordinary skill in the art. A claimed invention is unpatentable if the differences between it and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). KSR further states that the “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.” Id. at 416. See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)(“0ur suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006)(“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine...”). The Examiner correctly found Hipshier teaches vehicle console trim components comprising the combination of a top coat layer which protects the layers from wear and an ink layer which provides decor 3 Appeal 2015-003265 Application 13/635,649 to the underlying substrate. (Final Act. 3—\\ Hipshier || 26 and 27). The Examiner also found Dieter teaches an internal armrest (a soft component) that comprises a foam core and an outer plastic casing. (Final Act. 2—3; Dieter). The Examiner reasonably determined that it would have been obvious to a person of ordinary skill in the art to form an armrest comprising a foam core covered by a flexible decorative layer and an external protective coating layer. (Final Act. 5). A person of ordinary skill in the art would have recognized the properties of a foam core, e.g., flex and compression, and would have selected materials for a layer which covers this type of core that possess similar properties. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). A person of ordinary skill in the art would also have sufficient skill to select the desired appearance of the decorative layer. Appellant argues Dieter and Hipshier fail to teach or suggest functional elements of independent claim 1. (App. Br. 7—8). In support of this position Appellant argues there is no indication the materials of Hipshier’s top coat layer is capable of performing the function of flexing with the outer skin. This argument lacks persuasive merit. Appellant has not directed us to evidence which supports this argument. Hipshier describes characteristics for the top coat that would indicate it was capable of flexing with the outer skin. (Hipshier 127). Moreover, it is recognized that the named inventor of the present application is also one of the inventors of the applied Hipshier reference. In cases such as this, Appellant is in the best position to provide evidence to establish that the applied reference does not in fact possess these functional elements. 4 Appeal 2015-003265 Application 13/635,649 Accordingly, we affirm the Examiner’s decision to reject claims 1—9 for the reasons presented by the Examiner and given above. ORDER The Examiner’s obviousness rejection of claims 1—9 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)(1). AFFIRMED 5 Copy with citationCopy as parenthetical citation