Ex Parte Wittenzellner et alDownload PDFPatent Trial and Appeal BoardMar 13, 201712311009 (P.T.A.B. Mar. 13, 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. 12/311,009 07/27/2009 Xaver Wittenzellner 487.1118 5682 23280 7590 03/15/2017 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER STEELE, JENNIFER A ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 03/15/2017 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): ddk @ ddkpatent .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XAVER WITTENZELLNER, ALEXANDER REICHELT, HANS-JOACHIM BAMMANN, and ERWIN BLESSBERGER Appeal 2016-002589 Application 12/311,009 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and AVELYN M. ROSS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 17—21, 25—28, and 31—36. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 17 is illustrative of Appellants’ subject matter on appeal and set forth below (with text in bold for emphasis): Appeal 2016-002589 Application 12/311,009 17. A convertible top material comprising: an outer top cloth material being substantially watertight and weathering resistant, so to prevent ingress of water from an outside surface of the outer top material, an inner roof liner, an insulation ply disposed between the outer top material and the inner roof liner, wherein the insulation ply comprises a supporting layer and a foam material, wherein the insulation ply further comprises at least one sound-absorber film, wherein the insulation ply comprises a surface, the sound-absorber film being located on said surface of the insulation ply, said surface of the insulation ply facing one of the outer top cloth material and the inner roof liner, wherein the sound-absorber film provides for an acoustical insulation in a direction perpendicular to the surface. THE REJECTIONS 1. Claims 17—21, 25—28, and 31—36 are rej ected under 35U.S.C. §103 (a) as being unpatentable over Jarrard (US 6,871,898 B2, issued Mar. 29, 2005) in view of Nicolai (US 6,820,720 Bl, issued Nov. 23, 2004). 2. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jarrard in view of Nicolai and in further view of Wood (US 6,598,701 Bl, issued July 29, 2003). 3. Claims 28, 31,32, 33, and 36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schonenbach (US 2003/0052510 Al, published Mar. 20, 2003) in view of Nicolai. 2 Appeal 2016-002589 Application 12/311,009 4. Claims 17, 19, 21, 23, 24, and 26 are rejected under 35 U.S.C.§ 103(a) as being unpatentable over Juriga (US 5,258,585, issued Nov. 2, 1993) in view of Jarrard. 5. Claims 18, 20 and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Juriga, Jarrard, and Nicolai. 6. Claims 23 and 24 are rejected under 35 U.S.C. 112, 4th paragraph, as being of improper dependent form.1 7. Claims 23 and 24 are rejected under 35 USC §112, 2nd paragraph, for insufficient antecedent basis.2 ANALYSIS The specific claims identified hereafter are considered in this appeal, based upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014). We review the appealed 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, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. 1 Appellants do not address this rejection in the Appeal Brief. Accordingly, we summarily affirm Rejection 6. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that a ground of rejection is waived when an appellant fails to contest the rejection and that the Board is free to affirm such an uncontested rejection without considering the merits). 2 Appellants do not address this rejection in the Appeal Brief. Accordingly, we summarily affirm Rejection 7. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that a ground of rejection is waived when an appellant fails to contest the rejection and that the Board is free to affirm such an uncontested rejection without considering the merits). 3 Appeal 2016-002589 Application 12/311,009 Cir. 2011) (“it 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 persuaded that Appellants identified reversible error, and reverse each prior art rejection for the reasons expressed in the record by Appellants. We add the following primarily for emphasis. Rejections 1 and 2 Rejection 1 involves the combination of Jarrad in view of Nicolai and Rejection 2 involves the combination of Jarrad in view of Nicolai and further in view of Wood, and we select claim 17 for consideration herein. We can give particular attention to the combination of Jarrad and Nicolai in resolving the outcome determinative issues regarding Rejections 1 and 2. The Examiner relies upon Jarrard for teaching a soft cover for vehicles comprising certain layers (Nonfmal Act. 10—12),3 and relies upon Nicolai for teaching the use of a microperforated sheet absorber {Id. at 12). The Examiner states that microperforated sheets can be plastic sheets and a plastic sheet “is equated with a film”. The Examiner refers to column 1,11. 30-40 of Nicolai in this regard.4 Nonfmal Act. 12. The Examiner concludes that it would have been obvious to have employed a microperforated plastic 3 The Nonfmal Office Action referred to throughout this decision refers to the Nonfmal Office Action mailed on January 14, 2012. 4 Herein, Nicolai refers to German patent DE 197 54 107 Cl for disclosing “baffles structures built of layers of microperforated plastic sheets pending from a ceiling or a roof as so-called compact absorbers”. This disclosure does not indicate a flexible sheet or that a plastic sheet is equated with a film. 4 Appeal 2016-002589 Application 12/311,009 film layer as a sound absorber layer in the cover of Jarard to improve sound absorbance. Nonfmal Act. 12—13. With regard to the Examiner’s finding that microperforated sheets of Nicolai can be plastic sheets and a plastic sheet “is equated with a film”, Appellants argue that this finding is in error, and we agree, for the following reasons (see also footnote 4, supra). On page 14 of the Appeal Brief, Appellants state that the microperforation layer of Nicolai is an unfoldable hard top layer. In response, the Examiner states that “[i]t is reasonable to presume that the sound absorbent layers of Nicolai could be laid over another part”. Ans. 4. The Examiner admits that Nicolai does not explicitly teach whether the microperforation is foldable or unfoldable. Ans. 4. In reply, Appellants submit that the specific applications of the perforated sheet absorber disclosed in column 5, at lines 42 45 of Nicolai, indicate that the microperforated sheet absorber is not a flexible film. Reply Br. 2. Appellants also refer to Figure 2 of Nicolai for indicating that the microperforated sheet absorber is formed by a leather-coated plastic sheet, specifically ASA or PC, which is an impact-resistant polymerplastic, which Appellants submit is therefore not foldable. Reply Br. 2—3. After evidence or argument is submitted by the Appellants in response to the Examiner’s case, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985); In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985); In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984). In the instant case, in view of the above, a preponderance 5 Appeal 2016-002589 Application 12/311,009 of the evidence supports Appellants’ position regarding the proper interpretation of the teachings of Nicolas as they pertain to whether or not the microperforated sheets are flexible or foldable. As such, we also agree with Appellants that there is not suggestion to make the proposed modification of Jarrard according to Nicolai for the reasons presented by Appellants in the record. “If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). In view of the above, we reverse Rejections 1 and 2. Rejection 3 In this rejection, claims 28, 31, 32, 33, and 36 are rejected under 35 U.S.C. § 103 (a) as being unpatentable over Schonenbach in view of Nicolai. The Examiner relies upon Nicolai in a similar manner relied upon for Rejections 1 and 2 (discussed, supra). Nonfmal Act. 27—28. Appellants similarly argue that the proposed modification renders Schonenbach unsatisfactory for its intended purpose.5 Appeal Br. 22—23. On page 13 of the Answer, the Examiner responds by stating that Nicolai is silent as to whether the sound absorbing material is foldable. However, as discussed, supra, the preponderance of the evidence does not support the Examiner’s interpretation of Nicolai (that the microperforated sheet absorber is foldable), and hence, for the reasons discussed, supra, we also reverse Rejection 3. 5 Appellants mistakenly refer to Jarrard rather than Schonenbach when making this argument. Appeal Br. 22. The Examiner points this out on pages 12—13 of the Answer. 6 Appeal 2016-002589 Application 12/311,009 Rejection 4 In this rejection, claims 17, 19, 21, 23, 24, and 26 are rejected under 35 U.S.C.§ 103(a) as being unpatentable over Juriga in view of Jarrard. The Examiner’s position for this rejection is set forth on pages 29—35 of the Nonfmal Office Action. Therein, the Examiner states, inter alia, that Juriga teaches certain elements of the claims, but does not teach the outer top cloth being watertight and weathering resistant, but that it would have been obvious to have replaced scrim 38 of Juriga (a top surface of the headliner 20), with top layer 12 of Jarrard, to achieve waterproof properties. Nonfmal Act. 31. Appellants submit that “convertible top material” as recited in claim 17 should be interpreted as being a feature of claim 17, because it is necessary to give meaning to the claim. Appeal Br. 28. Appellants submit that their claimed subject matter thus is directed toward a top material of a convertible vehicle, and not simply any material, or any type of vehicle top material. Appellants argue that because headliner 20 of Juriga is not a “convertible top material”, one of ordinary skill would not have modified the headliner 20 of Juriga to form a convertible top material, claim 17 is patentable over Juriga and Jarrard. Id. In response, the Examiner acknowledges that while Juriga teaches a rigid foam, the claim phrase “convertible top material” of claim 17 does not require a material that is either foldable or flexible, and that convertible roofs can be foldable (as an alternative to being flexible). Ans. 16. The Examiner also states that the preamble recitation regarding the “convertible top material” does not provide structure, and is merely claiming a use. Id. 7 Appeal 2016-002589 Application 12/311,009 Claim 17 recites “[a] convertible top material” which is not an intended use (contrary to the Examiner’s stated position). With regard to the meaning of this phrase, it is well established that “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). In the instant case, paragraph [0008] of Appellants’ Specification discloses: [0008] We have found that this object is achieved by a convertible top material of the present invention and by a process of the present invention. A convertible top material according to the invention includes an outer top material, an inner roof liner, an insulation ply disposed between the outer top material and the inner roof liner, and at least one absorber film accommodated between the outer top material and the inner roof liner. The absorber film is a plastics film made of polyester at least and is attached to the insulation ply adjacent to the inner roof liner. This constitution and arrangement of the absorber film leads to effective acoustical insulation between the vehicle interior and the environment, as is documented by experimental tests. Paragraph [0017] discloses: [0017] In an advantageous development of the invention, a fabric backing may be provided between the outer top material and the inner roof liner. Such a fabric backing may consist of a knitted polyester material, which is inexpensive and has excellent folding properties [emphasis added]. Advantageously, the insulation ply is foamed onto the fabric backing, so that the fabric backing forms a supporting layer [emphasis added] for the insulation ply. The fabric backing may be disposed in the construction of the convertible top material either adjacent to the outer top material or adjacent to the inner roof liner. 8 Appeal 2016-002589 Application 12/311,009 In view of the above excerpts, the fabric backing (i.e., the supporting layer as recited in claim 17) has “excellent folding properties”. Since this supporting layer has excellent folding properties, it follows that the claimed convertible top material is foldable. It is within this context that we interpret the phrase “[a] convertible top material” claim 17. We thus agree with Appellants’ conclusion that the Examiner’s claim interpretation is flawed. As such, we also agree with Appellants that a prima facie case has not been met for the reasons stated by Appellants in the record. In view of the above, we reverse Rejection 4. Rejection 5 In this rejection, claims 18, 20 and 27 are rejected under 35 U.S.C. §103(a) as being unpatentable over Juriga, Jarrard, and Nicolai. Claims 18, 20, and 27 each depend upon claim 17. Because we reversed the rejection of claim 17 involving the combination of Juriga in view of Jarred, we also reverse Rejection 5. The Examiner does not rely upon Nicolai to cure the aforementioned deficiencies of the combination of Juriga in view of Jarrard. Rejections 6 and 7 Rejections 6 and 7 are summarily affirmed (see footnotes 1 and 2, supra). DECISION Rejections 1—5 are reversed. Rejections 6 and 7 are affirmed. 9 Appeal 2016-002589 Application 12/311,009 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. § 1.136(a). ORDER AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation