Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11601137 (B.P.A.I. Jul. 23, 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.
11/601,137 11/17/2006 Hans Bodin HT-112-1 5777
7590 07/24/2012
Mark P. Stone
Attorney at Law
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
CHANG, RICK KILTAE
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
07/24/2012 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 HANS BODIN and MARTIN JONSSON
____________

Appeal 2010-000243
Application 11/601,137
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hans Bodin and Martin Jonsson (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejection of claims 16-23 and 29.
Appellants cancelled claims 1-15. The Examiner withdrew claims 24-28
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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The Claimed Subject Matter
The claimed subject matter is directed to a method to make a vehicle
door. Title. Independent Claims 16 and 29, reproduced below, are
representative of the subject matter on appeal.
16. A method of manufacturing a vehicle
door, the steps of said method including hot
stamping a sheet steel blank into a form of a
supportive door frame that includes a waist rail
(14) and a side impact guard (22) formed integrally
therewith; and hardening the formed door frame
while it remains in forming tools and, when
finishing the door, fastening an outer panel (31) on
the supportive door frame such that the side impact
guard (22) of said frame is positioned directly
adjacent the outer panel (31) with no intermediate
structural components disposed therebetween.

29. A method of manufacturing a vehicle
door, said method comprising the steps of hot
stamping a sheet steel blank into the form of a
supportive door frame which comprises a ring
shaped hat beam having a crown facing in towards
the vehicle interior and side flanges of varying
widths; hardening the formed door frame while it
remains in forming tools; and, when finishing the
door, fastening an outer panel on an outer one of
the side flanges.

The Rejections
The following Examiner’s rejections are before us for review:
(1). Claims 16-23 are rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in the
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relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.
(2). Claim 29 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
(3). Claims 16, 17, 23, and 29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Weber (US 6,302,473 B1, issued Oct. 16, 2001) and
Jonsson (US 6,267,438 B1, issued Jul. 31, 2001).
(4). Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weber, Jonsson, and Fields (US 6,479,786 B1,
issued Nov. 12, 2002).
(5). Claims 20-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Weber, Jonsson, and Aros (US 5,750,236, issued May 12,
1998).

OPINION
At the outset, we note that Appellants have conflicting statements in
their Appeal Brief as to whether the rejections of dependent claims 17-23 are
being appealed. Appellants specifically state that
[t]he rejection of Independent Claims 16 and 29 as
being obvious over the Weber and Jonsson patents,
and the rejection of Independent Claims 16 and 29
under 35 U.S.C. 112, first paragraph, are the only
issues being presented for review in the present
appeal.
App. Br. 5. Emphasis omitted. However, Appellants also state that
“[a]ppealed Dependent Claims 17-23 are believed to be allowable, at least
for the same reasons as appealed parent Independent Claim 16.” App. Br.
13. As it appears that Appellants are arguing the rejections of the dependent
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claims based upon the outcome of the rejections of independent parent claim
16, we will treat dependent claims 17-23 as being appealed by Appellants.
Rejection (1) – Lack of Written Description
under 35 U.S.C. § 112, first paragraph

The Examiner finds that claim 16’s recitation of “with no intermediate
structural components disposed therebetween” is a negative limitation which
does not have basis in the original disclosure.1 Ans. 3.
Appellants contend that original Drawing Figure 5 provides support
for the negative limitation of claim 16, because it depicts “an embodiment of
the invention in which the side impact guard 22 is attached to the outer door
panel 31, as for example, by an adhesive material which can be applied to
the cover 23 forming part of the side impact guard.” App. Br. 11.
Appellants assert that since Figure 5, which is part of the original disclosure,
clearly illustrates that “no intermediate structural components are disposed
between the side impact guard [22] of the door frame and the outer door
panel [31],” Appellants have support for the negative limitation in claim 16.
Id.
We agree with Appellants. Original Drawing Figure 5 depicts a
somewhat exploded cross-sectional view taken through line 5-5 of Figure 2.
Spec. 2, l. 262 and Figs. 2 and 5. An outer panel 31 is shown on the right-
hand side of Figure 5 and attached to the approximate middle of the inside
surface of the outer panel 31 is a side impact guard 22. See Fig. 5. There

1 For this proposition, the Examiner cites to Ex parte Grasselli, 231 USPQ
393(BPAI 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).
2 We note that the Specification states that “Figure 5 is a sectioned view
taken on the line 5-5 in Figure 1.” However, Figure 1 does not include a line
5-5 and instead, Figure 2 shows a line 5-5.
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are no intermediate members shown between the outer panel 31 and the side
impact guard 22. See Fig. 5. Thus, original Drawing Figure 5 supports the
limitation in claim 16 that there are “no intermediate structural components
disposed” between the side impact guard 22 and the outer door panel 31.
Accordingly, we do not sustain the Examiner’s rejection of claim 16,
and claims 17-23 dependent thereon, under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the Specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventors, at the time the application was filed, had possession of the
claimed invention.
Rejection (2) – Lack of Enablement under 35 U.S.C. § 112, first paragraph
The Examiner finds that claim 29’s failure to recite the essential
subject matter of “the door frame is suitably manufactured by hot stamping a
sheet steel blank to form a supportive door frame that has a waist rail and a
side impact guard beam integral therewith” constitutes a lack of enablement.
Ans. 3.
Appellants contend that although in the preferred embodiment, the
door frame is manufactured by hot stamping a sheet steel blank to form a
supportive door frame that has a waist rail and a side impact guard beam
integral therewith, “there is nothing in the Specification indicating that the
formation of the waist rail and the side impact guard integral with the
supportive door frame is essential to the invention.” App. Br. 12.
We agree with Appellants. Although the Specification gives an object
of the invention and states that this object can be achieved with “a vehicle
door in which the waist rail and the side impact guard are both produced
integrally with the supporting door frame” (see Spec. 1, l. 26 through Spec.
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2, l. 1), the Specification also states that “[t]he frame is hot stamped from a
flat steel sheet to obtain a ring-shaped hat-beam 13-16 that includes a crown
12 and side flanges 17, 18 of varying widths” which supports the recitation
in claim 29 (see Spec. 3, ll. 4-5). The Examiner’s finding that it is essential
for the door frame be manufactured by hot stamping a sheet steel blank to
form a supportive door frame that has a waist rail and a side impact guard
beam integral therewith is not supported by the original disclosure.
Although it may be preferred to manufacture the door frame so that the waist
rail and side impact beam are integral therewith, it is not essential that the
door frame be manufactured in this way.
Accordingly, we do not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Rejection (3) – Obviousness based on Weber and Jonsson
Independent claim 16 and dependent claims 17 and 23
The Examiner finds that Weber substantially discloses the subject
matter of independent claim 16, “except for hot stamping a sheet steel blank
into the form of a supportive door frame and hardening the formed door
frame while it remains in forming tools.” Ans. 4. The Examiner also finds
“Jonsson discloses that in a single hot stamping/hardening operation a sheet
steel blank is formed into an integral, one-piece beam and a cross beam (col.
3, l[l.] 1-30).” Id. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art “to modify Weber by performing a single
stamping/hardening operation to a sheet steel blank, as taught by Jonsson,
for the purpose of forming a multi-piece door frame as an integral, one-piece
door frame.” Ans. 4-5.
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Appellants contend that “the Weber crash bar 36 is not formed
integrally with the door frame and the waist rail, but is separately fastened to
the door frame by fastening points” and “the waist rail disclosed by Weber,
which is identified in the Final Action by reference numerals 1-3, is also not
integrally formed with the door frame or the crash bar 36” so that “there is
no teaching or suggestion in the Weber patent to integrally form together a
supportive door frame, a side impact guard, and a waist rail, in accordance
with the method as expressly defined by appealed [i]ndependent [c]laim 16.”
App. Br. 7. Emphasis omitted. Appellants also contend that “Jonsson
clearly does not teach or suggest a method of forming a supportive door
frame including a waist rail, and a side impact guard formed integrally
therewith, as expressly recited in appealed [i]ndependent [c]laim 16.” App.
Br. 8. Emphasis omitted.
One cannot show nonobviousness by attacking references individually
where the rejections are based on a combination of references. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 426 (CCPA 1981). Since Appellants’ contentions only argue Weber
and Jonsson separately, but do not address the Examiner’s combination of
Weber and Jonsson, we are not persuaded by Appellants’ contentions of
error in the Examiner’s rejection.
Appellants also contend claim 16 recites that “the side impact guard
(22) of said frame is positioned directly adjacent the outer panel (31),” and
this is contrary to the
disclosure of the Weber patent requir[ing] that the
crash bar 36 (which corresponds to [Appellants’]
side impact guard) . . . be fastened to the inner (not
outer) door panel fastening points 36ʹ which are
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provided for the purpose of fastening the crash bar
to the inside door panel (See Column 3, lines 5-8
of the Weber Specification).
App. Br. 8. Emphasis omitted.
We are not persuaded by Appellants’ contention. Although we
appreciate the use of the term “directly,” Appellants have admitted that “the
recitation that the side impact guard is positioned adjacent to the outer door
panel means that the side impact guard is close to, but not necessarily
required to touch or be fastened to, the outer door panel.” App. Br. 8; see
also, Spec. 7, ll. 9-17. Therefore, the fact that Weber’s side impact guard
(crash bar 36) is fastened to the inner, not outer, door panel at fastening
points 36ʹ is not dispositive of whether Weber meets claim 16’s language.
Weber’s Figure 5, which is a cross-sectional view through line B-B of
Figure 3, shows that the crash bar 36 is close to the outside panel 31 of the
door. See Weber, col. 1, ll. 66-67, col. 3, ll. 49-50, and Figs. 3 and 5. Based
on the disclosure of Weber’s Figure 5, we agree with the Examiner that
crash bar 36 meets claim 16’s language of being “positioned directly
adjacent the outer panel,” by virtue of being close to the outside panel 31.
Appellants also contend that there is “no suggestion or motivation in
the prior art itself, or within the common knowledge of a person of ordinary
skill in the relevant art, to combine Weber and Jonsson in any ma[nn]er
rendering the method of appealed [i]ndependent [c]laim 16 obvious” so that
the Examiner used impermissible hindsight. App. Br. 8-9. Emphasis
omitted.
We cannot agree with Appellants’ contention. As Jonsson teaches
using hot stamping/hardening in an automotive setting to integrally form a
hat profile beam into a one-piece structure (Jonsson, col. 3, ll. 4-6), the
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Examiner’s articulated reason for combining Weber and Jonsson, i.e., “for
the purpose of forming a multi-piece door frame as an integral, one-piece
door frame” (see Ans. 5) has rational underpinning. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”). Thus, we
are not persuaded that the Examiner’s rejection combining Weber and
Jonsson is an impermissible hindsight reconstruction.
Finally, Appellants also contend that “the disclosure by Jonsson of
integrally forming certain components teaches against the express disclosure
of Weber which is to form an assembled product by separately producing
and separately attaching different components together.” App. Br. 8.
Emphasis omitted.
We are not persuaded by Appellants’ contention because in order to
“teach away” a reference must “criticize, discredit, or otherwise discourage
the solution claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Weber’s mere preference for assembling his product by separately producing
and separately attaching different components together does not criticize,
discredit, or otherwise discourage the solution claimed of integrally forming
hat profile beams into a one-piece structure as taught by Jonsson.
In view of the foregoing, we sustain the Examiner’s rejection of claim
16, and claims 17 and 23 dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Weber and Jonsson.
Independent claim 29
The Examiner finds that
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Weber discloses the step[] of forming the frame
(Fig. 3) as a ring-shaped hat beam (2 (Fig. 5), 35ʹ
(Fig. 5), bottom and sides of the door in Fig. 3 to
form a ring-shaped hat beam; facing in towards the
vehicle interior) that has side flanges (the ends of
2, 35ʹ facing 31) of varying widths (lengths are
different).
Ans. 5.
Appellants contend that “[t]here is nothing in the Weber patent that
discloses that the door frame is formed from a ring-shaped hat beam, or any
hat beam having side flanges of varying width.” App. Br. 9. Emphasis
omitted.
We agree with Appellants. Weber’s Figure 3 “is a diagrammatic
elevational view of an inner surface of an inside panel [10] of a vehicle left
door.” Weber, col. 1, ll. 62-63, col. 2, ll. 54-55, and Fig. 3. Figure 3 depicts
the door as including a separate elongated profiled part 1, which is located
below panel cut-out 32 provided for a door glazing or window, and a
separate lateral crash bar 36, which is located at a mid-level between hinges
35 and 35ʹ, extends across the entire width of the inside panel 10, and is
fastened to the inside panel 10 by means of fastening points 36ʹ. Weber, col.
2, ll. 56-59, col. 3, ll. 5-9, and Fig. 3. The elongated profiled part 1 includes
a pot-shaped portion on its left-hand side. Weber, col. 2, ll. 10-11 and Fig.
3. Neither the Examiner’s finding that pot-shaped portion 2, door hinge 35ʹ,
and the bottom and sides of the door in Figure 3 form claim 29’s “ring
shaped hat beam,” nor the Examiner’s finding that the ends of pot-shaped
portion 2 and door hinge 35' constitute claim 29’s “side flanges of varying
widths,” is supported by a preponderance of the evidence.
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Accordingly, we do not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 103(a) as unpatentable over Weber and Jonsson.
Rejections (4) and (5) – Obviousness based on
Weber, Jonsson, and Fields and Weber, Jonsson, and Aros, respectively

Appellants have not presented any arguments against the Examiner’s
rejections of claims 18-22, other than to say “Appealed Dependent Claims
17-23 are believed to be allowable, at least for the same reasons as appealed
parent Independent Claim 16.” Since we sustained the Examiner’s rejection
of independent claim 16 as unpatentable over Weber and Jonsson and since
Appellants have not presented separate arguments against the rejections of
claims 18-22, we summarily sustain the Examiner’s rejections of claims 18
and 19 under 35 U.S.C. § 103(a) as unpatentable over Weber, Jonsson, and
Fields, and of claims 20-22 under 35 U.S.C. § 103(a) as unpatentable over
Weber, Jonsson, and Aros. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002)
(holding that Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the Appellant failed to contest the rejection
on appeal.).

DECISION
We reverse the Examiner’s rejections of: claims 16-23 under 35
U.S.C. § 112, first paragraph, as containing subject matter which was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors, at the time the application was
filed, had possession of the claimed invention; claim 29 under 35 U.S.C. §
112, first paragraph, as failing to comply with the enablement requirement;
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and claim 29 under 35 U.S.C. § 103(a) as unpatentable over Weber and
Jonsson.
We affirm the Examiner’s rejections of: claims 16, 17, and 23 under
35 U.S.C. § 103(a) as unpatentable over Weber and Jonsson; claims 18 and
19 under 35 U.S.C. § 103(a) as being unpatentable over Weber, Jonsson, and
Fields; and claims 20-22 under 35 U.S.C. § 103(a) as unpatentable over
Weber, Jonsson, and Aros.
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-IN-PART

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