Jose Alfredo Peregrina Loera et al.

Patent Trials and Appeals Board

Jul 26, 2019

14933187 - (D) (P.T.A.B. Jul. 26, 2019)

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.
14/933,187 11/05/2015 Jose Alfredo Peregrina Loera 83590497 3500
121691 7590 07/26/2019
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
HANSEN, JAMES ORVILLE
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
07/26/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSÉ ALFREDO PEREGRINA LOERA,
FRANCISCO RONQUILLO, OMAR ANTONIO RAMIREZ,
and FRANCISCO JAVIER FERREIRA
____________

Appeal 2019-000858
Application 14/933,1871
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated June 1, 2017, hereinafter “Final
Act.”) rejecting claims 1, 3–11, 13, 14, 17, and 18.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 Ford Global Technologies, LLC is the applicant and is identified as the real
party in interest in Appellants’ Appeal Brief (filed Nov. 29, 2017,
hereinafter “Appeal Br.”). Appeal Br. 3.
2 Claims 2 and 12 are canceled. Appeal Br. 15, 16. Claim 19 is allowed,
whereas claims 15 and 16 are objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
Appeal 2019-000858
Application 14/933,187
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SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

INVENTION
Appellants’ invention is directed to “a drawer assembly incorporating
an integral latch mechanism.” Spec. para. 1.
Claims 1 and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A drawer assembly, comprising:
a drawer including a latch; and
a bezel including an integral spring, said drawer being
recessed in said bezel and held in a closed
position by engagement of said spring with said latch, wherein said bezel
and said integral spring are formed from a single piece of material.

REJECTION
The Examiner rejects claims 1, 3–11, 13, 14, 17, and 18 under
35 U.S.C. § 103 as being unpatentable over De Boer (US 3,600,051, iss.
Aug. 17, 1971)).

ANALYSIS
Claims 1, 3–11, 13, and 14
The Examiner finds that “De Boer teaches . . . [the] basic inventive
claimed drawer assembly,” as called for by independent claim 1, “but De
Boer does not show the bezel and spring as being formed from a single piece

allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim. Appeal Br. 5. Claims 15, 16, and
19 are not part of the instant appeal.
Appeal 2019-000858
Application 14/933,187
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of material (plastic or composite).” Final Act. 2. Thus, the Examiner
determines that
[I]t would have been obvious to a person of ordinary skill
in the art at the time the invention was made to modify
the structure of the prior art in order to incorporate an
“integral” arrangement as dictated by the needs or
preferences of a user, since it has been held that forming
in one piece an article which has previously been formed
in two or more pieces and put together involves only
routine skill in the art.

Id. (citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)). In addition, the
Examiner further concludes that
[I]t would have been obvious to a person of ordinary skill
in the art at the time the invention was made to utilize a
varying array of known materials for the manufacture of
the integral bezel and spring structure (such as forming
both the bezel and spring structure out of a plastic
material for example) depending upon the personal
preferences of the designer and/or the designated
environment for the finished product since it has been
held to be within the general skill of a worker in the art to
select a known material on the basis of its suitability for
the intended use as a matter of obvious design choice.

Id. at 3 (emphasis added) (citing Sinclair & Carroll Co. v. lnterchemical
Corp., 325 U.S. 327 (1945); and In re Leshin, 227 F.2d 197 (CCPA 1960)).
Appellants argue that the Examiner’s reliance on In re Larson as a per
se rule is improper. See Appeal Br. 11–12 (citing MPEP § 2144).
Appellants further explain that because De Boer specifically discloses
making mounting member 12 (bezel)3 from a metallic stamped sheet
material and skid formations 31 (spring) from a thermosetting plastic sheet

3 Parenthetical nomenclature refers to the claim language.
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Application 14/933,187
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material, the Examiner’s modification to make De Boer’s mounting member
12 (bezel) and skid formations 31 (spring) from the same material is
“absolutely contraindicated.” Id. at 11 (underlining omitted); see also Reply
Brief (filed Nov. 13, 2018, hereinafter “Reply Br.”) 2.
We do not agree with the Examiner’s application of In re Leshin in
the rejection of independent claim 1, namely, that every claim feature
involving a selection of materials is per se obvious. Rather, Leshin provides
support for the principle that choosing a material to make a structure
involves only routine skill in the art when such choice is based upon the
material’s suitability for its intended use. See In re Leshin, 227 F.2d at 199.
Moreover, we note that our reviewing court has held that material choice is
not a mechanical rule, and that the language in Leshin was not intended to
short circuit the determination of obviousness mandated by 35 U.S.C.
§ 103. See In re Wright, 343 F.2d 761, 769–70 (CCPA 1965); see also In
re Ochiai, 71 F.3d 1565, 1570 (Fed. Cir. 1995) (the use of per se rules is
improper in applying the test for obviousness under 35 U.S.C. § 103 since
such rules are inconsistent with the fact-specific analysis of claims and
prior art mandated by section 103).
Here, the Examiner has not established sufficiently that it would have
been obvious to a person of ordinary skill in the art to make both mounting
member 12 (bezel) and skid formations 31 (spring) of De Boer from the
same material, let alone “a single piece of material,” as recited in claim 1.
More specifically, the Examiner does not make any findings regarding the
suitability of the material used to make De Boer’s mounting member 12
(bezel) and plate members 24, which include skid formations 31 (spring).
Stated differently, as De Boer discloses using different materials to make
Appeal 2019-000858
Application 14/933,187
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mounting member 12 (bezel) and plate members 24,4 the Examiner’s mere
reliance on Leshin does not sufficiently explain whether the modification to
De Boer to make both mounting member 12 (bezel) and skid formations 31
(spring) from the same material would be suitable when considering their
respective use. As such, the Examiner’s determination of obviousness is not
supported by sufficient explanation or citation to reflect a rational
relationship between choosing the same material to make both mounting
member 12 (bezel) and skid formations 31 (spring) of De Boer and the
suitability of making such a choice in the context of De Boer’s structure.
In conclusion, for the foregoing reasons, the Examiner fails to
articulate a sufficient reason with rational underpinnings to modify the
structure De Boer, and, thus, to arrive at the subject matter of claims 1, 3–11,
13, and 14. We therefore do not sustain the rejection of these claims as
unpatentable over De Boer.

Claims 17 and 18
The Examiner finds that De Boer “does not specifically state a
‘method’ of manufacturing a drawer assembly.” Final Act. 5. Nonetheless,
the Examiner determines that
[I]t would have been obvious to a person of ordinary skill
in the art before the effective filing date of the claimed
invention to mold a drawer and a bezel to be unitary in
construction and then assemble into a drawer assembly as
prescribed by applicant’s method because the normal
assembly (or normal use) of De Boer’s structure as

4 De Boer discloses using a thermosetting plastic to make plate members 24,
which include skid formations 31 (spring), and sheet metal to make mounting
member 12 (bezel). See De Boer, col. 2, ll. 39, 64–65.
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modified would inherently encompass the steps as set
forth.

Id.
We appreciate the Examiner’s position that assembling a molded
drawer and a molded bezel would encompass a step of “sliding said drawer
into said bezel.” See Appeal Br. 17 (Claims App.). However, the Examiner
does not provide an adequate explanation of why a skilled artisan would
modify De Boer’s stamping process to mold mounting member 12 (bezel)
and receptacle member 14 (drawer), as called for by claims 17 and 18. See
De Boer, col. 2, ll. 12–14, 39.
Conclusory statements are not enough to satisfy the Examiner’s
burden to provide a reasoned explanation. In re Van Os, 844 F.3d 1359,
1361 (Fed. Cir. 2017). That is, the Examiner must adequately explain why a
person of ordinary skill in the art would modify the prior art references to
create the claimed invention. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
2000). Here, the Examiner merely states that De Boer “does not specifically
state a ‘method’ of manufacturing a drawer assembly” and then summarily
concludes that it would have been obvious to a skilled artisan “to mold a
drawer and a bezel to be unitary in construction.” Final Act. 5. As such, the
Examiner has failed to provide a sufficient reasoning with rational
underpinning as to why a person of ordinary skill in art would modify De
Boer’s stamping process to mold mounting member 12 (bezel) and
receptacle member 14 (drawer).
Accordingly, we also do not sustain the rejection of claims 17 and 18
under 35 U.S.C. § 103 as unpatentable over De Boer.

Appeal 2019-000858
Application 14/933,187
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NEW GROUND OF REJECTION
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
De Boer.
De Boer discloses an ash receptacle 10 (drawer assembly) including
ash receptacle member 14 (drawer) having groove 21 (latch) stamped in
sidewalls 16, mounting member 12 (bezel), and plate members 24 with skid
formations 31 (spring) formed thereon, wherein plate members 24 are fixed
to mounting member 12 (bezel) with screws 26. De Boer, col. 2, ll. 3–7, 32–
36, 44–46, 49–51, 64–69, Fig. 3. De Boer further discloses closing ash
receptacle 10 (drawer assembly) by sliding receptacle member 14 (drawer)
rearwardly into mounting member 12 (bezel) such that skid formations 31
(spring) and groove 21 (latch) are lined up. Id., col. 3, ll. 1–6. According to
De Boer, when skid formations 31 (spring) and groove 21 (latch) line up,
skid formations 31 (spring) are flexed (biased) against groove 21 (latch) so
as to exert frictional restraining action to open and close receptacle member
14 (drawer). Id., col. 3, ll. 8–11.
However, because De Boer’s skid formations 31 (spring) are part of
plate members 24, which are screwed into mounting member 12 (bezel),
mounting member 12 (bezel) is not “integral” with skid formations 31
(spring) such that they “are formed from a single piece of material,” as
called for by claim 1. Nonetheless, making mounting member 12 (bezel)
and skid formations 31 (spring) from a single piece of material would have
been obvious to a person of ordinary skill in the art because forming in one
piece an article which has previously been formed in two or more pieces and
put together involves only routine skill in the art. See In re Larson, 340 F.2d
965, 968 (CCPA 1965). Here, a skilled artisan would have readily known to
shape skid formations 31 (spring) in sidewalls 23 of stamped mounting
Appeal 2019-000858
Application 14/933,187
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member 12 (bezel) such that mounting member 12 (bezel) and skid
formations 31 (spring) “are formed from a single piece of material.” Such a
construction would have been obvious to the skilled artisan because the
modification would not alter the function of De Boer’s ash receptacle 10 as
the resulting skid formations 31 (spring) of mounting member 12 (bezel)
would still line up with groove 21 (latch) to provide frictional restraining
during the opening and closing of receptacle member 14. Moreover, the
modification would reduce the number of components of De Boer’s ash
receptacle 10, by eliminating the need for plate members 24 and screws 26,
which in turn provides the well known advantage of improved reliability as
less components can potentially fail during operation.
Although we decline to reject claims 3–11, 13, 14, 17, and 18 under
our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that
our decision does not mean the remaining claims are patentable. Rather, we
leave the patentability determination of these claims to the Examiner.

SUMMARY
The Examiner’s decision to reject claims 1, 3–11, 13, 14, 17, and 18
under 35 U.S.C. § 103 as unpatentable over De Boer is reversed.
We enter a new ground of rejection of claim 1 under 35 U.S.C. § 103
as unpatentable over De Boer.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides (emphasis added):
When the Board enters such a non-final decision,
the appellant, within two months from the date of
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Application 14/933,187
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the decision, must exercise one of the following
two options with respect to the new ground of
rejection to avoid termination of the appeal as to
the rejected claims:

(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
[E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
[E]xaminer, overcomes the new ground of
rejection designated in the decision. Should the
[E]xaminer reject the claims, appellant may again
appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th ed.
2018).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)