Ex Parte Preisler et al

Patent Trial and Appeal Board

Jun 21, 2017

13479974 (P.T.A.B. Jun. 21, 2017)

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
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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).
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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
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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).
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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
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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
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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).)
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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
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