Ex Parte Preisler et al

Patent Trial and Appeal Board

Dec 29, 2017

14632238 (P.T.A.B. Dec. 29, 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.
14/632,238 02/26/2015 Darius J. Preisler GIPH 0136 R 2343
22045 7590 01/03/2018
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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 2018-000871
Application 14/632,238
Technology Center 3900
Before ANNETTE R. REIMERS, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
Darius J. Preisler and Christopher A. Heikkila (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s final decision rejecting reissue
claims 1—21 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. Appellants’ current application
seeks to reissue U.S. Patent 8,690,233 B2 (“the ’233 patent”), issued April 8,
2014, which issued from U.S. Patent Application Serial No. 13/453,201,
filed April 23, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2018-000871
Application 14/632,238
CLAIMED SUBJECT MATTER
Appellants’ reissue claims relate to a carpeted automotive vehicle load
floor having sandwich-type composite panels with cellular cores, and a top
covering layer bonded to the panels, except where the top covering layer
forms a living hinge. ’233 Patent, Abstract, 1:6—10. The Specification
describes prior art cold-pressed sandwich-type panels with cellular cores and
how they are formed, stating that cold-pressed panels disadvantageously
required a subsequent operation to form hinges therebetween. Id. at 1:14—
58. The Specification then describes prior art sandwich-type composite
panels made from thermoplastic materials and having certain integrally
formed living hinges that are disadvanteously less robust for extended use.
Id. at 1:59-2:16.
Independent claim 1, reproduced below with annotations indicating
the proposed amended claim scope, illustrates the appealed subject matter.
1. A carpeted automotive vehicle load floor
comprising:
a composite panel having first and second reinforced
[thermoplastic skins and a [thermoplastic cellular core
disposed between and bonded to the skins, the first skin having
a top surface;
a cover having top and bottom surfaces and spaced apart
from the composite panel; and
a substantially continuous top covering layer bonded to
the top surface of the panel and the top surface of the cover to at
least partially form a carpeted load floor having a carpeted
cover, wherein an intermediate portion of the top covering layer
between the cover and the panel is not bonded to either the
panel or the cover to form a living hinge which allows the
carpeted cover to pivot between different use positions relative
to the rest of the load floor.
Appeal Br. 19 (Claims App.) (emphasis added).
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Appeal 2018-000871
Application 14/632,238
REJECTION
Claims 1—21 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Final Act. 3.
ISSUES
The Examiner determines that the broad concept of the composite
panel comprising plastic skins and a plastic cellular core was not described
in the ’233 Patent sufficiently to reasonably convey to one skilled in the
relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention. Final Act. 3. According to the
Examiner, “a review of the Specification indicates that the first and second
skins and core are only described as being formed from thermoplastic
materials and are not described as being formed generally from plastic
materials.” Id. at 4 (citing ’233 Patent 1:25—28, 2:30-32, 2:59-60, 3:3—6,
3:28-29, 4:35^10, 4:42-A5, 5:9-14, 5:19-21, 5:37-39). The Examiner also
finds that the Specification only supports the claiming of thermoplastics,
because it “describes a method of forming the vehicle load floor by applying
heat and forming the composite stack, which is a thermoplastic method,”
such that Applicant cannot claim the full range of plastics, “which would
include thermosetting as well as thermoplastics.” Id. (citing ’233 Patent
5:30-47). The Examiner contends that Appellants’ consistent reference to
the material as “thermosplastic” indicates that the material being specifically
thermoplastic is critical to the invention, despite thermoplastic and
thermosetting materials being “known for use in forming automotive load
floors, which is supported by Exhibits A-G to the Preisler declaration.” Id.
at 6 (citing In re Curtis, 354 F.3d 1347, 1358 (Fed. Cir. 2004) (“A patentee
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Application 14/632,238
will not be deemed to have invented species sufficient to constitute the
genus by virtue of having disclosed a single species when ... the evidence
indicates ordinary artisans could not predict the operability in the invention
of any species other than the one disclosed.”)).
According to Appellants, the disclosure of a species (e.g.,
thermoplastics) can support claiming of a genus (e.g., plastics) where
“(1) the disclosed species is not critical to the invention” (Appeal Br. 8
(citing Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988)), and “(2) it was
well-known in the art that alternative species could be used with the
invention” (id. (citing Streck, Inc. v. Research & Diagnostic Sys., Inc., 665
F.3d 1269, 1285 (Fed. Cir. 2012)). During reissue prosecution, Appellants
submitted a declaration of inventor Darius J. Preisler setting forth, inter alia,
that multiple types of plastics, including thermoplastics and thermosets,
where known for use in automotive load floors prior to the filing date of the
’233 patent, and affirmatively stating that the specific type of plastic from
which the skins and core of the sandwich-type panels are fabricated is not
critical to the invention of ’233 Patent. Appeal Br. 9—11 (citing Preisler
Deck 11 15, 21, 24—26, 28).
Appellants argue that “[t]he facts of In re Curtis are materially
different than those before the Board on this appeal,” because the Curtis
patent very clearly indicated that the subject matter that the patentee sought
to remove from the claims (i.e., microcrystalline wax) was “important to
patentability” and had no known alternatives. Appeal Br. 12. In the present
case, Appellants argue, “thermoplastic and thermoset materials were known,
predictable options for forming an automotive load floor,” and “the specific
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Appeal 2018-000871
Application 14/632,238
type of plastic from which the skins and core of the sandwich-type panels
are fabricated is not critical to the invention.” Id. at 16.
The Examiner responds that, in the ’233 Patent, “every time the first
and second skins 16 and 18 and core 20 are referenced, they are only
described as being formed from thermoplastic materials and are never
described as being formed generally from plastic materials or being formed
from any materials other than thermoplastic materials.” Ans. 5 (citing ’233
Patent 3:25-30, 4:35^10, 5:18-25).
Appellants reply that, inter alia, “[t]he inventor’s sworn statement in
the reissue declaration supersedes and refutes any contention there was a
clear and deliberate choice to limit the claim scope to thermoplastic
materials in the as-filed application.” Reply Br. 3.
The Examiner has the better argument. The issue before us is whether
the broad concept of the composite panel comprising plastic skins and a
plastic cellular core was described in Appellants’ Specification sufficiently
to reasonably convey to one skilled in the relevant art that the inventors, at
the time the application was filed, had possession of the claimed invention.
We agree with the Examiner that the first and second skins 16 and 18, and
the core 20, are only described as being formed specifically from
thermoplastic materials, rather than from another material or generally from
plastic. Ans. 5. Thus, regardless of the predictability of results of
substituting alternatives, or the actual criticality of thermoplastics in the
overall invention, Appellants’ Specification, as a whole, indicates to one
skilled in the art that the inventors had possession only of the skins and core
comprising specifically thermoplastic. This determination is not refuted by
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Application 14/632,238
any sworn statement by the inventor(s) regarding possession of a broader
claim scope.
Regarding the claim language of US Patent No. 8,764,101 to Saur
(Appeal Br. 16—17), we are aware of no precedent that the patenting of broad
claim scope evidences patentability of similarly broad claim scope in other
patent documents.
Thus, for the reasons explained above, we discern no error in the
Examiner’s determination that the reissue claims fail to comply with the
written description requirement, because plastic skins and a plastic cellular
core were not described in Appellants’ Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the
time the application was filed, had possession of the claimed invention.
DECISION
We AFFIRM the rejection of claims 1—21 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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