Ex Parte Preisler et alDownload PDFPatent Trial and Appeal BoardJun 21, 201713479974 (P.T.A.B. Jun. 21, 2017) 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. 13/479,974 05/24/2012 Darius J. Preisler GIPH0146PUS 4838 22045 7590 06/23/2017 RROOKS KTTSHMAN P C EXAMINER 1000 TOWN CENTER AD AMOS, THEODORE V TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 06/23/2017 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 @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARIUS J. PREISLER and CHRISTOPHER A. HEIKKILA Appeal 2016-0022911 Application 13/479,974 Technology Center 3600 Before HUNG H. BUI, AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—4, 6—9, 13, 15—17, 19, and 21—23, which are all of the pending claims.3 We have jurisdiction over these claims under 35 U.S.C. § 6(b). We affirm. 1 In co-pending Appeal No. 2016-005981, Appellants identify the subject of that appeal, application serial no. 14/603,413, as a continuation-in-part of the present application, and identify that appeal as a related appeal. 2 Appellants identify the real party in interest as Global IP Holdings, LLC. (App. Br. 2.) 3 Claims 5, 10-12, 14, 18, and 20 have been canceled. (Final Act. 2.) Appeal 2016-002291 Application 13/479,974 STATEMENT OF THE CASE Introduction According to Appellants, “[t]his invention generally relates to assemblies including compression-molded composite components having sandwich structures and, in particular, to such assemblies which have fastener components mounted in the composite components.” (Spec. 11.) Exemplary Claim Claims 1, 16, and 19 are independent. Claim 1, reproduced below, is exemplary of the claimed subject matter: 1. An automotive vehicle panel assembly comprising: a compression-molded composite component having a sandwich structure, the component including: a load-bearing, reinforced plastic, first outer layer; a reinforced plastic, second outer layer; and a low density, cellular core positioned between the outer layers and having a plurality of cavities wherein the outer layers are bonded to the core by press molding; at least one fastener component, each fastener component including: a fastener part having a length, a width and an axis defined as being central to the fastener part; and a mounting part mounting the fastener part to the first outer layer, the mounting part having a pair of holding faces that oppose each other and define a space therebetween, a portion of the first outer layer being positioned in the space in engagement with the faces to prevent the fastener part from moving along its length relative to the first outer layer; and an opening which extends completely through the first outer layer and at least partially extends through the core towards the second outer layer but not through the second outer 2 Appeal 2016-002291 Application 13/479,974 layer, wherein the opening terminates so as to leave the second outer layer impervious at the opening, wherein the mounting part mounts the fastener component in the opening and wherein each fastener component provides an attachment mechanism to secure cargo in a cargo area at least partially defined by the first outer layer wherein each of the holding faces has a set of locking formations spaced about the axis of the fastener part to prevent rotary movement of the fastener component relative to the first outer layer. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Volkmann Shackelford Fell Neri US 3,651,563 US 4,717,612 US 5,316,604 US 2008/0193256 A1 Mar. 28, 1972 Jan. 5, 1988 May 31, 1994 Aug. 14, 2008 Rejection Claims 1—4, 6—9, 13, 15—17, 19, and 21—23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shackelford, Fell, Volkmann, and Neri. (Final Act. 3—12.)4 4 Appellants argue independent claims 16 and 19 collectively with claim 1. (App. Br. 10-11.) Separate patentability is not argued for dependent claims 2—4, 6—9, 13, 15, 17, and 21—23. (App. Br. 12.) Therefore, based on Appellants’ arguments, we decide the appeal of claims 1—4, 6—9, 13, 15—17, 19, and 21—23 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2016-002291 Application 13/479,974 Appellants ’ Contentions 1. Appellants argue: [N]one of the four prior art references combined for the obviousness rejections of independent claims 1, 16 and 19 recognizes the problems facing the inventors. Shackelford requires a bore through the entire panel structure, which defeats the need for the panel to remain impervious to moisture and entry of contaminants. Fell is cited only for the preparation of thermoplastic sandwich structures; there is no fastener in Fell. Volkmann functions in the context of a yieldable foam body core, not a low density core with a plurality of cavities. Neri is cited for the use of knurls on the surfaces of parts to resist rotational displacement under loading, but nothing more. (App. Br. 10.) 2. Appellants argue, “[T]he combination of Shackelford with Fell and Volkmann is based on hindsight, and improper.” (App. Br. 11; see also App. Br. 5.) 3. Appellants argue, “[T]he Examiner has chained Shackelford with Fell and Volkmann without any explanation of why a person of skill in the art would have motivation to combine them, only conclusory generalizations. See Office Action, 6/2/2015, pp. 6 and 7.” (App. Br. 10; see also Reply Br. 4.) 4. Appellants argue: In rejecting independent claims 1, 16 and 19[,] the Examiner combined four prior art references whose issuance (or publication) dates span 36 years, from 1972 to 2008. Add to that the present application was filed in 2012. Objective evidence of nonobviousness includes long felt but unsolved need. In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The fact that the for [sic, four] references applied by the Examiner pre-date the 2012 filing date in a time range of 4-40 years is 4 Appeal 2016-002291 Application 13/479,974 evidence of a long felt but unsolved need for the invention of the present application. (App. Br. 11.) Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner erred. We disagree with Appellants’ conclusions and we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3— 12) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. (Ans. 2—17.) We concur with the conclusions reached by the Examiner, and we highlight the following for emphasis.5 As an initial matter, we note Appellants present little discussion regarding the substance of the Examiner’s findings or the teachings of the prior art. Instead, in a section titled “Discussion of the Four References Applied in the Obviousness Rejections,” Appellants present arguments that amount to conclusory statements regarding the teachings of the prior art, followed by unsupported assertions that the prior art fails to teach the limitations. (See App. Br. 6—7.) We are not persuaded of Examiner error by such unsupported argument, which is entitled to little probative value. In re 5 Only those arguments made by Appellants have been considered in this decision. Arguments Appellants did not make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal 2016-002291 Application 13/479,974 Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). In that same section, Appellants also suggest the Volkmann reference is “not analogous art” by offering the conclusory assertion that the fastener it discloses is “structurally dissimilar” and “used in [a] dissimilar environment.” (App. Br. 9.) We disagree. As the Examiner finds, and we agree: Volkmann reference is not only within the field of Appellants’] endeavor, i.e. installing and using an insert fastener within a sandwich panel, it also solves the particular problem [with] which Appellants were] concerned, i.e. maintaining the imperviousness and strength of the sandwich panel by installing the insert such that it does not extend entirely through the panel and thus does not require a hole extending through a second outer layer of the sandwich panel. (Ans. 14.) See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellants also challenge the references individually without addressing the Examiner’s findings regarding the combined teachings of the cited references. (E.g., App. Br. 7—9.) It is well established that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Turning next to Appellants’ above contention 1, we disagree. Appellants’ conclusory argument—which is premised primarily on an alleged lack of express recognition of certain problems faced by the inventor in the references themselves—is contrary to the Supreme Court’s holding in KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As the Court 6 Appeal 2016-002291 Application 13/479,974 explained in KSR, the problem purportedly addressed by a claimed invention need not be expressly recognized in the prior art. Rather, “[u]nder the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). As to Appellants’ contentions 2 and 3, we disagree that the Examiner has engaged in improper hindsight reconstruction or has erred in combining the teachings of the cited references. We recognize the Examiner must articulate “reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, the Examiner’s reasoning need not appear in, or be suggested by, one or more of the references on which the Examiner relies. (Cf. App. Br. 8 (arguing “there is no teaching or discussion in Fell of how the features of fell could be combined with the teachings of Shackelford to obtain the present invention”).) Instead, a reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” IVMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). We further point out that Appellants are essentially arguing that the Examiner has a burden to provide some precise teaching, suggestion, or motivation to combine the references under 35 U.S.C. § 103. (E.g., Reply Br. 4.) We disagree. Although Appellants acknowledge the Court’s KSR decision {id.), Appellants overlook that the Court repudiated any special 7 Appeal 2016-002291 Application 13/479,974 requirement for such a showing to establish obviousness. KSR, 550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of Appeals.”). Rather, the requirement is only that the Examiner show ‘“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 to which said subject matter pertains.’” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418 (“[T]he 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.”). We conclude, in the instant appeal, the Examiner has provided rationales supporting motivation by a person of ordinary skill in the art to achieve the claimed subject matter by combining the cited references. (Final Act. 5—8, 12; Ans. 12—15.) As noted above, Appellants do not address the substance of those findings. We are not persuaded of Examiner error by Appellants’ inaccurate representation that Examiner has failed to provide any such rationale and has instead relied on general knowledge. (Reply Br. 2-A.) Finally, as to Appellants’ contention 4, we disagree. As the Examiner correctly notes, the mere span of many years between the oldest and the newest cited references does not, alone, suggest a “long felt but unsolved need for the claimed invention.” (Ans. 15 (citing App. Br. 11).) As the Examiner finds, and we agree, Appellants have made no showing “that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references.” (Ans. 15 (citing In re Wright, 569 F.2d 1124 (CCPA 1977).) 8 Appeal 2016-002291 Application 13/479,974 For the foregoing reasons, we are not persuaded of error in the Examiner’s rejection of independent claim 1, or of claims 2—4, 6—9, 13, 15— 17, 19, and 21—23, which are not separately argued. CONCLUSION The Examiner did not err in rejecting claims 1—4, 6—9, 13, 15—17, 19, and 21—23 as being unpatentable under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 1—4, 6—9, 13, 15—17, 19, and 21— 23 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)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation