11161445 (B.P.A.I. Jun. 17, 2009)

Ex Parte Davis et al

Board of Patent Appeals and InterferencesJun 17, 2009

11161445 (B.P.A.I. Jun. 17, 2009)

2 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOSEPH J. DAVIS JR., GARY SADEK and MICHAEL J. HIER ____________________ Appeal 2008-005985 Application 11/161,445 Technology Center 3600 ____________________ Decided:1 June 17, 2009 ____________________ Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY and MICHAEL W. O’NEILL, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or the Notification Date (electronic delivery). Appeal 2008-005985 Application 11/161,445 2 STATEMENT OF THE CASE 1 The Appellants appeal under 35 U.S.C. § 134 (2002) from the final 2 rejection of claims 1-10 under the judicially created doctrine of obviousness-3 type double patenting as being unpatentable over claims 1-5 and 7-11 of US 4 6,942,243 B2 (issued); and from the final rejection of claims 1 and 6-10 5 under 35 U.S.C. § 103(a) (2002) as being unpatentable over Nelson (US 6 5,154,444, issued Oct. 13, 1992) and DiSalvo (US 4,989,896, issued Feb. 5, 7 1991).2 We have jurisdiction under 35 U.S.C. § 6(b) (2002). 8 We AFFIRM. 9 Claim 1 is the sole independent claim on appeal: 10 11 1. An instrument panel air bag 12 deployment door mechanism for a vehicle 13 comprising: 14 a molded plastic instrument panel retainer 15 having an internal surface adjacent to which an air 16 bag is stored prior to deployment and an outer 17 surface that faces the passenger compartment of 18 the vehicle; 19 a foam layer disposed on the outer surface of 20 the instrument panel retainer; 21 a pliant external layer overlaying the foam 22 layer; 23 a deployment door molded integral with the 24 instrument panel retainer, the deployment door 25 having a physical attachment of a selected strength 26 to the remainder of the instrument panel retainer so 27 that the physical connection between the 28 deployment door and the instrument panel retainer 29 is severed upon the application of sufficient force 30 from an inflating air bag; and 31 2 In the Answer the Examiner withdrew a rejection of claims 2-5 under § 103(a) as being unpatentable over Nelson and DiSalvo. (Ans. 2). Appeal 2008-005985 Application 11/161,445 3 a tear initiator molded integral with the 1 molding of the deployment door, the tear initiator 2 having a base flexibly attached to the deployment 3 door and a free end adjacent to one edge of the 4 deployment door, the free end having a pointed 5 piercing portion that extends normally towards the 6 external layer, the tear initiator further having an 7 actuator portion that protrudes towards a stored air 8 bag such that an inflating air bag contacts the 9 actuator portion and pivots the tear initiator 10 relative to the door causing the pointed piercing 11 portion to pierce through the foam layer and the 12 external layer prior to severing the physical 13 connection between the deployment door and the 14 instrument panel retainer. 15 16 ISSUES 17 The Appellants argue the rejections of claims 1-10 for obviousness-18 type double patenting as a group. (App. Br. 4-5). Independent claim 1 is 19 representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 20 Appealed claim 1 differs from claim 1 of US 6,942,243 B2 in that 21 appealed claim 1 does not require a groove provided at the base of the tear 22 initiator to facilitate flexing of the tear initiator relative to the deployment 23 door. Hence, the Examiner finds that appealed claim 1 is generic to claim 1 24 of US 6,942,243 B2. (Ans. 4). The Appellants do not assert any special 25 circumstance which might justify applying a two-way test for obviousness-26 type double patenting or that a terminal disclaimer has been filed in the 27 underlying application. (See App. Br. 4-5). Instead, the Appellants argue 28 that one of ordinary skill in the art would not have recognized that a base of 29 a tear initiator molded integral with a deployment door might be flexibly 30 Appeal 2008-005985 Application 11/161,445 4 attached to the deployment door without cutting, grooving or serially 1 perforating the panel. (Id.) 2 The issues raised in this appeal include: 3 Have the Appellants shown that the Examiner erred in 4 finding that appealed claim 1 is generic to claim 1 of US 5 6,942,243 B2, or in concluding as a consequence that appealed 6 claim 1 is unpatentable due to obviousness-type double 7 patenting? 8 The Appellants argue the rejections of claims 1 and 6-10 under 9 § 103(a) as a group. (App. Br. 5-6). Independent claim 1 is representative 10 of the group. 37 C.F.R. § 41.37(c)(1)(vii). The Appellants contend that 11 neither Nelson nor DiSalvo discloses an entire tear initiator including a 12 flexible base, a piercing portion, and an actuator portion which is molded 13 integrally with a deployment door. (App. Br. 5-6). 14 The issues raised in this appeal also include: 15 Have the Appellants shown that the Examiner failed to 16 articulate reasoning with some rational underpinning sufficient 17 to support the conclusion that Nelson and DiSalvo would have 18 provided one of ordinary skill in the art reason to integrally 19 mold an instrument panel air bag deployment door mechanism 20 including a tear initiator which has a flexible base, a piercing 21 portion, and an actuator portion with a deployment door? 22 23 24 25 Appeal 2008-005985 Application 11/161,445 5 FINDINGS OF FACT 1 The record supports the following findings of fact (“FF”) by a 2 preponderance of the evidence. 3 1. Claim 1 of US 6,942,243 B2 recites: 4 1. An instrument panel air bag 5 deployment door mechanism for a vehicle 6 comprising: 7 a molded plastic instrument panel retainer 8 having an internal surface adjacent to which an air 9 bag is stored prior to deployment and an outer 10 surface that faces the passenger compartment of 11 the vehicle; 12 a foam layer disposed on the outer surface of 13 the instrument panel retainer; 14 a pliant external layer overlaying the foam 15 layer; 16 a deployment door molded integral with the 17 instrument panel retainer, the deployment door 18 having a physical attachment of a selected strength 19 to the remainder of the instrument panel retainer so 20 that the physical connection between the 21 deployment door and the instrument panel retainer 22 is severed upon the application of sufficient force 23 from an inflating air bag; and 24 a tear initiator molded integral with the 25 molding of the deployment door, the tear initiator 26 having a base flexibly attached to the deployment 27 door and a free end adjacent to one edge of the 28 deployment door, the free end having a pointed 29 piercing in portion that extends normally towards 30 the external layer, the tear initiator further having 31 an actuator portion that protrudes towards a stored 32 air bag such that an inflating air bag contacts the 33 actuator portion and pivots the tear initiator 34 causing the pointed piercing portion to pierce 35 through the foam layer and the external layer prior 36 Appeal 2008-005985 Application 11/161,445 6 to severing the physical connection between the 1 deployment door and the instrument panel retainer, 2 wherein a groove is provided at the base of the 3 tear initiator to facilitate flexing of the tear 4 initiator relative to the deployment door. 5 (Emphasis added). 6 2. The “wherein” clause of claim 1 of US 6,942,243 B2 italicized 7 in FF 1 does not appear in appealed claim 1. The Appellants do not identify 8 any other distinction between appealed claim 1 and claim 1 of US 6,942,243 9 B2 bearing on the issue of whether appealed claim 1 is unpatentable due to 10 obviousness-type double patenting over claim 1 of US 6,942,243 B2. 11 3. Any instrument panel air bag deployment door mechanism 12 including each and every element of claim 1 of US 6,942,243 B2 would also 13 include each and every element of appealed claim 1. 14 4. Nelson discloses a door assembly including a molded plastic 15 instrument panel retainer 34 having an internal surface adjacent to which an 16 air bag is stored prior to deployment and an outer surface that faces the 17 passenger compartment of the vehicle (Nelson, col. 3, ll. 54-60 and Fig. 2); a 18 foam layer 38 disposed on the outer surface of the instrument panel retainer 19 (Nelson, col. 3, ll. 61-67 and Fig. 2); and a pliant external layer 32 20 overlaying the foam layer 38 (id.; Nelson, col. 3, ll. 45-50). 21 5. Nelson’s door assembly also includes diagonally arranged cross 22 openings 34a-34d forming the sides of four triangular flaps 36, 38, 40, 42 23 molded integrally with the instrument panel retainer 34. (Nelson, col. 4, ll. 24 3-7 and 17-23; see also id., Fig. 4). The apex of each triangular flap 36, 38, 25 40, 42 has an integral pointed cutting portion 36a, 38a, 40a, 42a to pierce 26 Appeal 2008-005985 Application 11/161,445 7 the foam layer 38 and the external layer 32 when the flap 36, 38, 40, 42 is 1 pivoted outwardly. (Nelson, col. 4, ll. 11-17 and Fig. 4). 2 6. Nelson discloses that the triangular flaps 36, 38, 40, 42 serve as 3 both deployment doors (see Nelson, col. 4, ll. 47-53) and tear initiators (see 4 id., col. 4, ll. 11-17) for the door assembly. 5 7. DiSalvo discloses a closure for a deployment opening for an 6 automotive air bag system including upper and lower doors 14a, 16a and an 7 unbroken external layer 94 outside the upper and lower doors 14a, 16a. 8 (DiSalvo, col. 1, ll. 7-10; col. 3, ll. 48-54; col. 4, ll. 27-29 and 51-53). 9 8. DiSalvo’s closure also includes a piercing piece or tear initiator 10 110 having a series of piercing point elements 112 registered with slots 100, 11 106 in the upper and lower doors 14a, 16a. (DiSalvo, col. 4, ll. 53-59). 12 Figures 5 and 8 of DiSalvo depict the piercing point elements 112 extending 13 normally towards the external layer 94. 14 9. DiSalvo’s piercing piece 110 includes a plunger backing 15 portion or actuator portion 114 protruding backwardly so that an air bag 16 expanding behind the upper and lower doors 14a, 16a engages and advances 17 the piercing piece 110 before the air bag engages the plastic stiffener 86, 88. 18 (DiSalvo, col. 4, ll. 60-63; see also id., Fig. 5). 19 10. DiSalvo discloses that an air bag expanding behind the upper 20 and lower doors 14a, 16a contacts the plunger backing portion 114 and 21 pivots the piercing piece 110 relative to the upper door 14a so as to cause the 22 piercing point elements 112 to pierce through the external layer 94 prior to 23 engaging the upper door 114. (DiSalvo, col. 4, ll. 60-66). 24 Appeal 2008-005985 Application 11/161,445 8 PRINCIPLES OF LAW 1 The judicial doctrine of obviousness-type double patenting precludes 2 an applicant from extending the term of protection for a patented invention 3 by claiming an obvious variant of the patented invention in a subsequent 4 patent application. See In re Longi, 759 F.2d 889, 892 (Fed. Cir. 1985). 5 6 Generally, an obviousness-type double 7 patenting analysis entails two steps. First, as a 8 matter of law, a court construes the claim in the 9 earlier patent and the claim in the later patent and 10 determines the differences. Second, the court 11 determines whether the differences in subject 12 matter between the two claims render the claims 13 patentably distinct. A later claim that is not 14 patentably distinct from an earlier claim in a 15 commonly owned patent is invalid for obvious-16 type double patenting. 17 18 Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001) 19 (internal citations and footnote omitted). If a claim in a patent application is 20 generic to the subject matter of a claim in a co-owned issued patent, the 21 claim in the patent application is subject to rejection for obviousness-type 22 double patenting unless a terminal disclaimer is filed. See In re Goodman, 23 11 F.3d 1046, 1053 (Fed. Cir. 1993). 24 A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 25 “the differences between the subject matter sought to be patented and the 26 prior art are such that the subject matter as a whole would have been obvious 27 at the time the invention was made to a person having ordinary skill in the 28 art to which said subject matter pertains.” In Graham v. John Deere Co., 29 Appeal 2008-005985 Application 11/161,445 9 383 U.S. 1 (1966), the Supreme Court set out factors to be considered in 1 determining whether claimed subject matter would have been obvious: 2 3 Under § 103, the scope and content of the prior art 4 are to be determined; differences between the prior 5 art and the claims at issue are to be ascertained; 6 and the level of ordinary skill in the pertinent art 7 resolved. Against this background, the 8 obviousness or nonobviousness of the subject 9 matter is determined. 10 11 Id., 383 U.S. at 17. 12 13 ANALYSIS 14 Appealed claim 1 is generic to claim 1 of US 6,942,243 B2. That is, 15 any instrument panel air bag deployment door mechanism including each 16 and every element of claim 1 of US 6,942,243 B2 would also include each 17 and every element of appealed claim 1. Appealed claim 1 is not limited to 18 an instrument panel air bag deployment door mechanism including a tear 19 initiator having a base flexibly attached to the deployment door without 20 cutting, grooving or serially perforating the panel. Even assuming for 21 purposes of this appeal that one of ordinary skill in the art would not have 22 recognized that a base of a tear initiator molded integrally with a deployment 23 door might be flexibly attached to the deployment door without cutting, 24 grooving, or serially perforating the panel, appealed claim 1 is still 25 sufficiently broad to encompass a mechanism including a cut, a groove, or 26 serial perforations in the panel. That is, appealed claim 1 is sufficiently 27 broad to include any mechanism within the scope of claim 1 of US 28 Appeal 2008-005985 Application 11/161,445 10 6,942,243 B2. Under the law as set out by our reviewing court in Goodman, 1 the Examiner correctly concluded that appealed claim 1 is unpatentable over 2 claim 1 of US 6,942,243 B2 under the doctrine of obviousness-type double 3 patenting. 4 In Nelson’s instrument panel air bag deployment door mechanism, the 5 flap 36 and its integral pointed cutting portion 36a are molded integrally as a 6 single piece. (FF 5). Portions of the flap 36 serve as a deployment door and 7 as a tear initiator. (FF 6). Since appealed claim 1 does not recite a groove 8 provided at the base of the tear initiator to facilitate flexing of the tear 9 initiator relative to the deployment door, one need not identify a groove or 10 other line of weakness to delimit the base of the tear initiator from the 11 adjoining portion of the deployment door. Therefore, Nelson discloses a tear 12 initiator molded integrally with the molding of a deployment door. 13 DiSalvo discloses a tear initiator having a series of piercing point 14 elements extending normally towards an external layer, and an actuator 15 portion protruding backwardly toward a stored air bag. (FF 8-9). DiSalvo 16 discloses that an air bag expanding behind upper and lower doors contacts 17 the actuator portion and pivots the piercing point elements relative to the 18 upper door so as to cause the piercing point elements to pierce through the 19 external layer. (FF 10). The Examiner correctly concludes (see Ans. 6) that 20 it would have been obvious to improve Nelson’s door assembly by means of 21 the improvement taught by DiSalvo, namely, by substituting a series of 22 piercing point elements extending normally towards an external layer and an 23 actuator portion protruding backwardly toward a stored air bag, for the flat 24 inner end portion and integral cutting portion 36a of the flap 36 of Nelson. 25 Appeal 2008-005985 Application 11/161,445 11 One of ordinary skill in the art would have possessed the skill to 1 implement this improvement, which would have constituted no more than a 2 change in the profile in which Nelson’s flap 36 was molded. The Examiner 3 is also correct in finding that the teachings of Nelson and DiSalvo would 4 have sufficed to enable one of ordinary skill in the art to reasonably predict 5 the success of the improvement in “optimiz[ing] the tear initiator 6 performance during inflation of the airbag.” (See Ans. 6). Since the 7 improvement could have been implemented by means of no more than a 8 change in the profile in which Nelson’s flap 36 was molded, the 9 improvement would have resulted in a tear initiator like Nelson’s integrally 10 molded with the molding of the deployment door. 11 12 CONCLUSIONS 13 The Appellants have not shown that the Examiner erred in finding that 14 appealed claim 1 is generic to claim 1 of US 6,942,243 B2, or in concluding 15 as a consequence that appealed claim 1 is unpatentable due to obviousness-16 type double patenting over claim 1 of US 6,942,243 B2. Likewise, the 17 Appellants have not shown that the Examiner erred in rejecting appealed 18 claims 2-10 under the doctrine of non-statutory obviousness-type double 19 patenting as being unpatentable over claims 2-5 and 7-11, respectively, of 20 US 6,942,243 B2. 21 The Appellants have not shown that the Examiner failed to articulate 22 reasoning with some rational underpinning sufficient to support the 23 conclusion that Nelson and DiSalvo would provided one of ordinary skill in 24 the art reason to integrally mold an instrument panel air bag deployment 25 Appeal 2008-005985 Application 11/161,445 12 door mechanism including a tear initiator which has a flexible base, a 1 piercing portion and an actuator portion with a deployment door. Therefore, 2 the Appellants have not shown that the Examiner erred in rejecting 3 representative claim 1 or grouped claims 6-10 under § 103(a) as being 4 unpatentable over Nelson and DiSalvo. 5 6 DECISION 7 We AFFIRM the rejection of claims 1-10. 8 No time period for taking any subsequent action in connection with 9 this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37 10 C.F.R. § 1.136(a)(1)(iv) (2007). 11 12 AFFIRMED 13 14 15 16 mls 17 18 19 BROOKS KUSHMAN P.C. 20 INTL. AUTMOOTIVE COMPONENTS GROUP 21 1000 TOWN CENTER 22 TWENTY-SECOND FLOOR 23 SOUTHFIELD, MI 48075 24