Ex Parte Wittenzellner et al

Patent Trial and Appeal Board

Mar 13, 2017

12311009 (P.T.A.B. Mar. 13, 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.
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.
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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).
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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
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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
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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.
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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.
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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.
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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.
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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
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