Ex Parte 5378043 et al

Board of Patent Appeals and Interferences

Aug 30, 2012

90009250 (B.P.A.I. Aug. 30, 2012)

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.
90/009,250 08/14/2008 5378043 LEAR02342RX 3855
34007 7590 08/31/2012
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/011,088 07/09/2010 5378043 10140/00601 6871
34007 7590 08/31/2012
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEAR CORPORATION1
Appellant, Patent Owner
____________________

Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,0882
Patent No. 5,378,0433
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Lear Corporation is the real party in interest (Appeal Brief (hereinafter
"App. Br.") 1).
2 These reexamination proceedings were merged in Decision Merging
Reexamination Proceedings mailed January 25, 2011.
3 Issued January 3, 1995 (hereinafter "'043 patent").
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

2
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a
Final Rejection of claims 2-9, 13-18, 20-31, 34, 35, 40, 41, 43, 44, 46-50,
54-68, 70-81, 83-85, 87-91 and 93-96 (App. Br. 2). Claims 1 and 10-12
have been canceled (App. Br. 2). Claims 19, 32, 33, 36-39, 42, 45, 51-53,
69, 82, 86 and 92 are objected to (App. Br. 2). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
The '043 patent is the subject of litigation entitled Lear Corporation v.
TS Tech USA Corporation et al., Case No. 2:09-cv-993 (SD Ohio) (App. Br.
2). In addition to the Appeal Brief, the Patent Owner also relies on a Reply
Brief. An oral hearing with the Patent Owner's representative was held at
the Board of Patent Appeals and Interferences on August 15, 2012.
The invention is directed to a vehicle seat and headrest arrangement in
which the headrest is pivotally attached to move forwardly toward the head
of the occupant upon a rear vehicle impact (Abst.). Representative
independent claim 2 reads as follows (App. Br., Claims App'x; amendments
incorporated, italics added for emphasis).

2. A vehicle seat and headrest arrangement comprising:
a seat bun frame having fore and aft ends;
a seatback frame joined to the bun frame adjacent the aft
end of the bun frame;
a headrest pivotally attached with the seatback frame
along a pivotal axis generally perpendicular to the fore and aft
direction whereby, upon a rear impact of a vehicle in which the
arrangement is mounted, the pivotal attachment allows the
headrest to move in a forward direction toward the head of an
occupant of the vehicle seat, wherein the headrest has a cushion
portion;
an impact target operatively associated with the cushion
portion and pivotally associated with the seatback frame,
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

3
wherein a force, in the aft direction from the rear impact, upon
the impact target causes the headrest to rotate forwardly; and
a spring operatively associated with the seatback frame
biasing the headrest against pivotal movement.

Claim 57 is also an independent apparatus claim while claim 95 is an
independent method claim. Each independent claim requires a "spring."
The Examiner rejected claims 2-9, 13-18, 20-31, 34, 35, 40, 41, 43,
44, 46-50, 54-68, 70-81, 83-85, 87-91 and 93-96 under 35 U.S.C. § 103(a) as
being unpatentable over Published Britain Patent Specification No.
1,391,644 to Mertens (hereinafter "Mertens '644") in view of Published
German Patent Application No. 2100676 to Mertens et al. (hereinafter
"Mertens '676").
The Examiner also rejected claims 2-9, 13-17, 20-29, 31, 41, 44, 54,
57-62, 63-67, 70-79, 81, 83 and 85 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mertens '676 alone.
We REVERSE.

ANALYSIS
As to the rejection based on the combination of Mertens '644 and
Mertens '676, the Examiner concluded that the claims would have been
obvious because "Mertens '676 provides motivation to one of ordinary skill
in the art for modifying the deformable members 32/302/32/302 of Mertens
'644 to be elastic in their deformation under customary loads, so that no
permanent deformation occurs during normal use of the seats, but gradual
and limited deformation is accommodated during a rear-end collision." (Ans.
9). The Examiner states that such modification merely combines prior art
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

4
elements according to known methods to yield predictable results, and
would make the seat more comfortable (Ans. 9). As to the second rejection,
the Examiner states that Mertens '676 alone discloses all of limitations of the
claims but to any extent that it fails to inherently disclose joining of the
seatback frame and the seat bun frame, such joining would have been
obvious (Ans. 44-45).
As noted, all of the claims at issue require a "spring," and both of the
Examiner's rejections relies on Mertens '676 for disclosing the required
"spring." (Ans. 7, 8, 48, 49). There is no dispute that the deformable
members 7, 77 plastically deform during a rear impact collision so as to act
as dampers. However, the Examiner finds that "the deformable members 7,
77 of Mertens '676 may be considered to define a spring, because it will
elastically deform under customary loads [i.e., non-rear impact loads]."
(Ans. 8, emphasis added; see also Ans. 27, 42-43). The Patent Owner
argues that the deformable members 7, 77 disclosed in Mertens '676 are not
springs, and thus, the rejections should be reversed (App. Br. 16-20; Ans. 6).
This is the dispositive issue in the present appeal.
In support of the assertion that the deformable members 7, 77 can be
considered to be springs and that they elastically deform under customary
loads, the Examiner observes that Mertens '676 teaches that elements other
than the deformable members should be as stiff as possible, but that "lower
deformation limit of all parts [including the deformable members] must be
designed such that no permanent deformation whatsoever occurs under
customary loads" (Ans. 7-8, quoting Mertens '676, Pg. 2). Hence, the
Examiner reasons that "[i]f the deformable members are designed so that
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

5
they do not undergo permanent deformation when subjected to customary
loads, any deformation that occurs under the loads of everyday use
necessarily will be elastic, not plastic" (Ans. 80), and further concludes that
from this, Mertens '676 suggests to one of ordinary skill in the art that
deformable members should exhibit an elastic deformation under customary
loads (Ans. 8; see also Ans. 82).
The Patent Owner disagrees and argues that deformable members 7,
77 are not springs because Mertens '676 "makes it clear that deformation
members 7, 77 are dampers, not springs." (App. Br. 16-17 and citations to
Mertens '676 therein). The Patent Owner contends that the claims address
"rear impact" load and not customary load, and under the broadest
reasonable interpretation and ordinary meaning, a "spring" cannot be
interpreted to be dampers such as deformable members 7, 77 that dissipate
energy (App. Br. 14-16; Reply Brief 4). The Patent Owner further argues
that "[a]ll structural elements elastically deform at some level [but] that does
not make everything a spring" and construing spring "to cover anything
elastic, or even worse, a damper -- the opposite of a 'spring' -- would render
the 'spring' limitation meaningless." (App. Br. 19). The Patent Owner also
points to the fact that Mertens '676 also uses the term "spring" for various
components "when an actual spring is contemplated." (App. Br. 17 and
citations to Mertens '676 therein).
We agree with the Patent Owner. The above cited teaching in
Mertens '676 does not support the Examiner's conclusion that elastic
deformation of the deformable members 7, 77 actually occurs under
customary loads. While deformation members 7, 77 clearly cannot be "as
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

6
stiff as possible" because they must, in fact, deform under rear impact
loading conditions in order to perform their disclosed function, there is no
indication that the deformation members 7, 77 deform under customary
loads. While the Examiner argues that elastic deformation under customary
loads must occur, the deformation members 7, 77 are just as likely to be
sufficiently stiff to not deform until application of rear-impact loads which
are necessarily substantially greater than customary loads. The Examiner's
conclusion that the deformation members 7, 77 elastically deforms under
customary loads is speculative and unsubstantiated.
To the extent that the Examiner's position is that the deformation
members 7, 77 must exhibit at least a small amount of elastic deformation
like all structural members (except for those made "as stiff as possible"), we
agree with the Patent Owner that such a position takes an unreasonably
broad interpretation of the recited "spring" limitation so as to improperly
render the limitation meaningless. In this regard, there is no dispute that
Mertens '676 discloses that the deformation members 7, 77 deform to absorb
rear impact energy and is referred to therein as "damping elements" (see
Mertens '676, claims 29, 32-35, 42, Pgs. 21, 25). In contrast, Mertens '676
actually utilizes the term "spring" to refer to springs in the seat disclosed
therein (Mertens '676, tension spring coils 140, spring 215, spring 269,
springs 827, and springs 837; see also App. Br. 17 and citations therein).
Correspondingly, Mertens '676 itself establishes that in the context of its
disclosure, the deformation members 7, 77 are damping elements and not
springs.
Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

7
The Examiner additionally points to the fact that Mertens '676 also
describes a schematic diagram using vibration equations "in order to record
the elastic portions" (Mertens '676, Pgs. 26-27, Fig. 1/8; Ans. 8). However,
the Examiner's reliance thereon is misguided in that the schematic diagram
models the entirety of the seating system, which would include the cushion
of seat that would clearly have vibrational/spring characteristics, and not
merely the rigid components of the seat frame.
As to the Examiner's reliance on claim 3 and portions of the
specification of the '043 patent as establishing that even the claimed spring
can function as a damper that dissipates energy (Ans. 81), we observe that
most springs deform when a force beyond their design limits is applied. It is
evident that claim 3 and the cited specification of the '043 patent is directed
to this known aspect of a spring, and not to establishing that the requirement
of a spring can be met by a device that simply plastically deforms (see also
App. Br. 20). As the Patent Owner argues, such claim and disclosure merely
requires the spring to be used both elastically and plastically during impact
(Reply Br. 4).
The arguments between the Patent Owner and the Examiner (App. Br.
21; Ans. 85-68) with respect to claims 30 and 80 that depend from claim 2
and 57, respectively, are moot.

ORDER
The Examiner's rejections are REVERSED.

Appeal 2012-008028
Reexamination Controls 90/009,250 and 90/011,088
Patent No. 5,378,043

8
REVERSED
ack

cc:

Patent Owner:
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075

Third Party Requester:
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038