Ex Parte Asplund et al

Patent Trial and Appeal Board

Jul 1, 2014

12309988 (P.T.A.B. Jul. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/309,988 02/05/2009 Mattias Asplund HT-145 7138
7590 07/02/2014
Mark P. Stone
Attorney at Law
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
CHENEVERT, PAUL A
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
07/02/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTIAS ASPLUND and LARS KARLANDER
____________

Appeal 2012-006013
Application 12/309,988
Technology Center 3600
____________________

Before: LYNNE H. BROWNE, JILL D. HILL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mattias Asplund and Lars Karlander (Appellants) appeal under
35 U.S.C. § 134(a) from the rejection of claims 1–10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

Appeal 2012-006013
Application 12/309,988

2
CLAIMED SUBJECT MATTER
The claims are directed to a bumper beam for a vehicle having, among
other things, a single transverse metal bulkhead in each attachment region.
Claim 1 is reproduced below:
1. A bumper beam for a vehicle, which at least in attachment
regions (20) of said bumper beam is of generally U-shaped cross-section
with the crown (12-16) pointing outwards, characterised in that the crown
has a larger profile height than profile width at the attachment regions and a
smaller profile height than profile width at a longitudinal central portion of
said bumper beam such that the profile height of the bumper beam is larger
at the attachment regions than at the longitudinal center, and said bumper
beam has in each said attachment region (20) a single transverse metal
bulkhead (25) fastened between the sides (12,13) of the crown and running
generally in the longitudinal direction of the vehicle.

PRIOR ART
The Examiner relies on the following evidence:
Kalitta
Klie
Heatherington
Mooijman
Muskos

US 3,790,200
US 4,142,753
US 6,986,536 B1
US 7,044,515 B2
US 7,316,432 B2

Feb. 5, 1974
Mar. 6, 1979
Jan. 17, 2006
May 16, 2006
Jan. 8, 2008

GROUNDS OF REJECTION
Claims 1–3 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klie in view of Muskos, Mooijman, and Heatherington.
Ans. 5.
Claims 4–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klie in view of Muskos, Mooijman, Heatherington, and
Kalitta. Ans. 7.

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Application 12/309,988

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OPINION
Appellants only argue claim 1. App. Br. 4. Thus, our resolution of
the issues raised regarding claim 1 is dispositive as to all of the claims and
rejections involved in this Appeal.
The Examiner finds that the combination of Klie, Muskos, and
Mooijman teaches every limitation of claim 1 except for a “single”
transverse metal bulkhead. The Examiner finds that Heatherington discloses
a single transverse metal bulkhead, and that it would have been obvious to
employ Heatherington’s single transverse metal bulkhead in the bumper
beam of Klie (as modified by Muskos and Mooijman) to add reinforcement
to the bumper beam in each attachment region. Ans. 7.
Appellants argue that Heatherington does not disclose a “single”
transverse metal bulkhead. Appellants point out that Heatherington’s Figure
1 is a cut-away, so there may be additional bulkheads in the regions of the
beam that are not shown. App. Br. 5. With respect to Heatherington’s
disclosure of “adding reinforcements such as bulk heads” to stabilize the
legs of the front section (col. 2, ll. 18–24), Appellants contend that this
description “is, at best, ambiguous” as to whether there is a single transverse
metal bulkhead. App. Br. 6.
The Examiner responds that “Appellants have not shown criticality
for ‘one and only one’” bulkhead and that “it would be obvious to one
skilled in the art at the time the invention was made to select the proper
number of bulkheads in the attachment area in order to ‘tune’ the bumper
beam to the appropriate crumple characteristic desired.” Ans. 9.
We agree with Appellants that Heatherington is ambiguous as to the
number of bulkheads. Although Figure 1 depicts one reinforcement, a
Appeal 2012-006013
Application 12/309,988

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skilled artisan would not necessarily understand this illustration to teach a
beam with one and only one bulkhead because, as Appellants note, Figure 1
is a cutaway view. Moreover, Heatherington’s disclosure repeatedly
describes the reinforcements in the plural, and notes that “the process of
welding multiple reinforcements to an open beam can be difficult to
control.” Heatherington col. 2, ll. 31, 32.
Nevertheless, the cited references support the Examiner’s
determination that it would have been obvious for a skilled artisan to select
the number of bulkheads to achieve the desired strength characteristics,
including a single bulkhead in each attachment region. “[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily within the skill
of the art.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (quoting In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Further, a
“recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.” Applied Materials, 692 F.3d
at 1297.
Here, the cited references recognize that the spacing of bulkheads
affects the strength of the beam. For example, Klie teaches that “by varying
the spacing a, b, c of the reinforcing ribs 2 with respect to each other along
the length of the bumper, the denting effect of the profile member 10 may be
controlled.” Klie col. 3, ll. 25–29. Similarly, Mooijman describes a bumper
beam with a crush can that is “tunable”—that is, the characteristics of the
crush cans “can be selected to provide a desired operating result. . . .”
Mooijman col. 2, ll. 22–26. Among the characteristics that can be tuned is
the spacing of walls in the crush can. Mooijman describes that “positioning
walls 50, 52, 54 closer together results in increasing the stiffness of crush
Appeal 2012-006013
Application 12/309,988

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can 12. In addition, spacing of ribs 24 can be altered, i.e., beam 10 becomes
more stiff as ribs 24 are spaced closer together.” Mooijman col. 3, ll. 45–50.
Because the number of bulkheads is a direct, geometric result of their
spacing within a beam’s length, these teachings in the cited references
demonstrate a recognition of the relationship between the number of
bulkheads and the strength of a bumper beam.
“The outcome of optimizing a result-effective variable may still be
patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’” Applied Materials, 692 F.3d at 1297 (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955)). In their briefing, Appellants
point to page 3 of the Specification as disclosing the advantages of a single
transverse bulkhead. App. Br. 8; Reply Br. 2, 3 (quoting Spec. 3, ll. 17–32).
Yet these excerpts do not indicate that a single bulkhead provides benefits or
results that would be unexpected or different in kind compared to another
number of bulkheads. Indeed, the cited portions of the Specification do not
discuss the number of bulkheads, but instead emphasize the benefits that
flow from the location of a bulkhead close to the region of the beam’s
greatest web height. Spec. 3, ll. 17–19. Appellants do not dispute the
Examiner’s finding that Mooijman discloses placing a bulkhead in the
attachment region of the bumper beam, as recited in claim 1. Ans. 6.
Accordingly, the record supports the Examiner’s conclusion that Appellants
have failed to demonstrate the criticality of a single transverse bulkhead.
Therefore, we sustain the Examiner’s rejection of claim 1, as well as
dependent claims 2–10, which fall therewith.
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Application 12/309,988

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Because the reasoning relied on by the Board to sustain the rejection
of claims 1–10 differs somewhat from the reasoning relied on by the
Examiner, we designate our affirmance of the rejection of claims 1–10 as a
NEW GROUND OF REJECTION so as to provide Appellants with a full
and fair opportunity to respond to the thrust of the rejection.

DECISION
We AFFIRM the Examiner’s rejection of claims 1–10 and designate
this affirmance as a NEW GROUND OF REJECTION.
Pursuant to 37 C.F.R. § 41.50(b), WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, Appellants must exercise one of the
following two options with respect to the new grounds 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
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

Appeal 2012-006013
Application 12/309,988

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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)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

Tkl/rvb