Ex Parte Brancaleone et al

Patent Trial and Appeal Board

Oct 24, 2017

14186378 (P.T.A.B. Oct. 24, 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.
14/186,378 02/21/2014 Robert Anthony BRANCALEONE 83401100 5288
28395 7590 10/26/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER CHENEVERT, PAUL A
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT ANTHONY BRANCALEONE,
MATTHEW AMMONS, and PRASHANT AGRAWAL
Appeal 2016-005322
Application 14/186,3781
Technology Center 3600
Before JOHNNY A. KUMAR, CATHERINE SHIANG,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—17. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. (App. Br. 2.)
Appeal 2016-005322
Application 14/186,378
THE INVENTION
Appellants’ disclosed and claimed inventions are directed to securely
attaching a mirror assembly to a vehicle door. (Abstract.) Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A vehicle door assembly comprising:
an inner panel;
an outer panel attached to the inner panel to define an
internal cavity that extends about a window surround, the door
assembly further defining mirror attachment holes;
a plurality of cylindrical collars each defining a bore, and
disposed within the internal cavity; and
a mirror assembly including a plurality of fasteners
extending therefrom through the bores to secure the mirror
assembly on the door assembly.
REJECTIONS
The Examiner rejected claims 1—4, 6—10, and 12—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Futterer (DE 10 2006 0258 109 Al, pub.
Dec. 9, 2006), Suzuki et al. (US 2004/0129853 Al, pub. July 8, 2004,
hereinafter “Suzuki”), and Hattori (US 2002/0085296 Al, pub. July 4, 2002).
(Final Act. 2—6.)
The Examiner rejected claims 5 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Futterer, Suzuki, Hattori, and “obvious common
knowledge.” (Final Act. 6—7.)
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Application 14/186,378
ISSUES ON APPEAL
Appellants’ arguments present the following issues:2
Issue One: Whether the Examiner erred in finding the combination of
Futterer, Suzuki, and Hattori teaches or suggests all of the limitations of
claims 1—4, 6—10, and 12—17. (App. Br. 4—9.)
Issue Two: Whether the Examiner erred in finding the combination of
Futterer, Suzuki, Hattori, and obvious common knowledge teaches or
suggests the additional limitation of dependent claims 5 and 11. (App. Br.
9-10.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner errs. Except with respect to claims 4, 10, and
14, we disagree with Appellants’ arguments, and we adopt as our own (1) the
pertinent findings and reasons set forth by the Examiner in the Action from
which this appeal is taken (Final Act. 2—7) and (2) the corresponding reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 2—6). We concur with the applicable
conclusions reached by the Examiner and emphasize the following.
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Nov. 30, 2015, hereinafter
“App. Br.”); the Reply Brief (filed Apr. 21, 2016, hereinafter “Reply Br.”);
the Final Office Action (mailed July 7, 2015, hereinafter “Final Act.”); and
the Examiner’s Answer (mailed Apr. 6, 2016, hereinafter “Ans.”) for the
respective details.
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Appeal 2016-005322
Application 14/186,378
Issue One
In rejecting the claims, the Examiner relies on the disclosure in
Fiitterer of a mounting an exterior mirror to the door of a motor vehicle in
which the door has an inner panel attached to an outer panel to form an
internal cavity, with the mirror assembly fastened to the door via a threaded
bolt through a collar disposed within the internal cavity. (Final Act. 2—3; see
also Fiitterer Figs. 1, 2.) The Examiner also relies on the disclosure in
Suzuki of a mirror assembly attached to a vehicle door with three bolts
screwed into threaded holes in cylindrical bosses (i.e., protuberances) of a
mirror mounting plate. (Final Act. 3^4; see also Suzuki Fig. 7, 75, 80,
81, and 90.) The Examiner further relies on the disclosure in Hattori of a
mirror assembly for a vehicle in which the mirror has threaded bolts
extending from bosses affixed to its base for attaching to the vehicle. (Final
Act. 6; see also Hattori Fig. 2,143.)
Claim 1 requires:
a plurality of cylindrical collars each defining a bore, and
disposed within the internal cavity; and
a mirror assembly including a plurality of fasteners
extending therefrom through the bores to secure the mirror
assembly on the door assembly.
Independent claim 13 has commensurate limitations. With respect to these
limitations, Appellants argue the “disclosure of Fiitterer provides neither
cylindrical collars nor fasteners extending from the mirror that extend
through the collars. (App. Br. 4.) If Appellants mean that Fiitterer does not
disclose a plurality of cylindrical collars and fasteners, this statement is
technically correct — however, as discussed above, Fiitterer explicitly
discloses a single collar and fastener. (Emphasis added.) The Examiner,
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Application 14/186,378
noting this, relies on the disclosure of Suzuki, which has three bolts screwed
into the threaded bosses for attaching the mirror to the vehicle, as teaching
or suggesting, in combination with Futterer, the required plurality of
cylindrical collars and fasteners.3 (Final Act. 3—4.)
Appellants also argue the threaded bosses of Suzuki are not collars,
and are not disposed within an internal cavity of the door. (App. Br. 5.)
However, as discussed above, Futterer discloses a collar within the internal
cavity of the door — and furthermore Suzuki, in combination with Futterer,
teaches or suggests a plurality of those components. (Ans. 2—3; see also
Final Act. 3—4.) Non-obviousness cannot be established by attacking
references individually where, as here, the ground of unpatentability is based
upon the teachings of a combination of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the test for obviousness is
whether the combination of references, taken as a whole, would have
suggested the patentee’s invention to a person having ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, we are not
persuaded the Examiner errs in finding the combination of Futterer and
Suzuki teach or suggest the plurality of cylindrical collars and fasteners as
required by the claims. (Ans. 2—4.)
3 The Examiner states that Futterer does not explicitly disclose a cylindrical
collar, and further relies on Suzuki for that aspect of the claims based on the
cylindrical shape of the bosses. (Ans. 2—3 (emphasis added); see also Final
Act. 3—4.) We agree that the combination teaches or suggests this limitation.
This is confirmed by Figure 2 of Futterer which, because it is a cross
sectional diagram, does not explicitly show a cylindrical collar shape,
nonetheless strongly suggests that is the case.
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Application 14/186,378
Appellants further argue error in the Examiner’s reliance on Hattori as
teaching or suggesting fasteners extending from the mirror assembly,
because Hattori does not disclose cylindrical collars disposed within an
internal cavity of a door structure. (App. Br. 6.) However, Appellants again
are unpersuasively attacking a reference individually, whereas the Examiner
relies on the combination of references, including reliance on Futterer and
Suzuki with respect to the collar limitation as discussed above.
With respect to independent claim 8, which requires “the collar
receiving a threaded stud extending from an outside mirror protruding
inwardly through each of the outer panel, the collar, and the inner panel,”
Appellants argue the combination of Futterer, Suzuki, and Hattori does not
teach or suggest this limitation. (App. Br. 7.) Appellants’ argument is
conclusory and unpersuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (We note that “the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). In any event, as discussed above, Futterer
discloses a bolt that extends through the outer panel, the collar, and the inner
panel, while Hattori discloses the bolt extending from the mirror assembly,
which, in combination, supports the Examiner’s rejection of claim 8. (Final
Act. 3-6.)
For the same reason, dependent claims 6 and 15 are properly rejected.
Claim 6 requires “wherein each of the fasteners comprises a threaded stud,
and each threaded stud applies a clamp load across a collar in conjunction
with a retaining nut,” and claim 15 requires “wherein the mirror is retained
to the door structure by at least one threaded joint comprising a retaining nut
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Application 14/186,378
in cooperation with one of the plurality of threaded fasteners, and wherein
the threaded joint compressively sandwiches the plurality of collars between
the inner and outer panels.” Appellants argue the Examiner errs because the
references have “conflicting teachings,” or “structural conflicts,” in regard to
these limitations. (App. Br. 9.) Appellants rely on the fact that the threaded
bosses of Suzuki are located in the mirror assembly, with the bolts extending
from the door assembly, whereas the bolts of Hattori extend from the mirror
assembly into the door. (Id.) We are not persuaded of error. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). “Combining the teachings of references does not involve
an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965,
968 (CCPA 1973). We agree with the Examiner’s reasoning:
[I]t would have been obvious to a person of ordinary skill in the
art to modify the vehicle door assembly of Fiitterer, as
modified, to employ a plurality of attachment bolts extending
from the mirror, as taught by Hattori to reverse the attachment
method for a faster connection along the assembly line.
(Final Act. 6.)
Dependent claims 4, 10 and 14 additionally require the collars to be
welded to a door panel. Appellants argue none of the references disclose
such welding. (App. Br. 7—8.) The Examiner relies on the attachment of the
threaded bosses to the mounting panel in Suzuki as teaching or suggesting
attachment by welding. (Ans. 4; see also Suzuki Fig. 7.) However, Suzuki
discloses that those components are formed from synthetic resin. (Suzuki
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| 80.) The Examiner also states that the welding limitation should be
accorded less patentable weight because it is in the form of a method step.
(Ans. 4.) We are persuaded the Examiner errs in this analysis. (See Reply
Br. 3—4.) Unlike for claims 5 and 11, the Examiner does not rely on
“obvious common knowledge” for these rejections. Therefore, on this
particular record, we are constrained to not sustain the rejections of claims 4,
10, and 14.
Issue Two
In arguing the Examiner errs in rejecting claims 5 and 11 over
Futterer, Suzuki, Hattori, and “obvious common knowledge,” Appellants
repeat arguments made for independent claims 1 and 8. (App. Br. 9-10.)
Therefore, we sustain this rejection for the same reasons as discussed above.
CONCLUSIONS
For the reasons stated above, we sustain the obviousness rejections of
claims 1, 6, 8, and 13, and 15 over Futterer, Suzuki, and Hattori, and of
claims 5 and 11 over Futterer, Suzuki, Hattori, and obvious common
knowledge.
We also sustain the obviousness rejections of claims 2, 3, 7, 9, 12, 16
and 17 over Futterer, Suzuki, and Hattori, which rejections are not argued
separately with particularity. (App. Br. 6, 7.)
Also for the reasons stated above, we reverse the rejections of claims
4, 10, and 14.
DECISION
We affirm the Examiner’s obviousness rejections of claims 1—3, 5—9,
11-13, and 15-17.
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Application 14/186,378
We reverse the Examiner’s obviousness rejections of claims 4, 10,
and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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