Ex Parte Glasgow et al

Board of Patent Appeals and Interferences

Aug 27, 2012

11872063 (B.P.A.I. Aug. 27, 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.
11/872,063 10/15/2007 Scott C. Glasgow SHA001 P426 8136
277 7590 08/27/2012
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
BLACK, MELISSA ANN
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
08/27/2012 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 SCOTT C. GLASGOW and
THOMAS J. JOHNSON
____________________

Appeal 2010-008803
Application 11/872,063
Technology Center 3600
____________________

Before: KEN B. BARRETT, BRETT C. MARTIN,
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Scott C. Glasgow and Thomas J. Johnson (Appellants) appeal under
35 U.S.C. § 134(a) from a decision finally rejecting claims 1-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
According to Appellants, the claimed invention relates “to a B-shaped
beam with one or more ribs formed integrally into its front wall over its tube
sections for improved actual bending strength, improved front wall stability
and overall beam stability, and improved consistency and efficiency of
impact energy absorption.” Spec. 1, para. [0002]. Claim 1, reproduced below
with emphasis added, is illustrative of the claimed subject matter.
1. A bumper adapted for attachment to a
vehicle front or rear end, comprising:
a reinforcement beam formed from a sheet
of material and including, when oriented to a
vehicle-mounted position, a vertically-extending
front wall, two vertically-extending rear walls, a
pair of vertically-spaced middle horizontal walls,
top and bottom horizontal walls, and mounting
brackets secured to the rear walls and adapted for
mounting to a vehicle; the top and bottom
horizontal walls combining with the middle
horizontal walls and the front wall and the rear
walls to define an upper tube section and a lower
tube section spaced from the upper tube section, a
majority of the front wall being vertically-linear in
a transverse vertical cross section but including a
longitudinally-extending channel-shaped rib
formed integrally into an unsupported portion of
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the front wall over at least one of the upper and
lower tube sections, the rib acting to reinforce and
stabilize the front wall and hence acting to
generally stiffen and strengthen the reinforcement
beam.

Evidence
The Examiner relies upon the following prior art references:
Trancart
Heatherington
Baccouche
US 2004/0130166 A1
US 6,971,691 B1
US 7,210,717 B1
Jul. 8, 2004
Dec. 6, 2005
May 1, 2007

Rejections
The Examiner makes the following rejections:
I. Claims 1-12 and 14-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baccouche and Trancart.
II. Claims 13 and 21-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baccouche, Trancart, and Heatherington.

OPINION
Independent claim 1 is directed to “[a] bumper adapted for attachment
to a vehicle[.]” The Examiner found all limitations of claim 1 disclosed by
Baccouche except for “a longitudinally extending channel-shaped rib formed
integrally into an unsupported portion of the front wall over at least one of
the upper and lower tube sections, the rib acting to reinforce and stabilize the
front wall and hence acting to generally stiffen and strengthen the
reinforcement beam.” Ans. 3. The Examiner found this limitation disclosed
by Trancart in what Trancart refers to as “rigidification strips.” Ans. 4;
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Trancart 3, para. [0060]. The Examiner then concluded that “[i]t would have
been obvious to one with ordinary skill in the art at the time the invention
was made to add the longitudinally-extending channel-shaped ribs [i.e.,
“rigidification strips] as taught by Trancart et al[.] on the device of
Baccouche et al[.] in order to rigidify the front wall of the bumper beam.”
Ans. 4.
An appellant may attempt to overcome an examiner’s obviousness
rejection on appeal to the Board by submitting arguments and/or evidence to
show that the examiner made an error in either (1) an underlying finding of
fact upon which the final conclusion of obviousness was based, or (2) the
reasoning used to reach the legal conclusion of obviousness. Similarly, the
applicant may submit evidence of secondary considerations of non-
obviousness. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”) (quoting
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in part on
other grounds, KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 422 (2007)).
Appellants do not appear to contest (and, if so, do not persuasively
contest) the underlying findings of fact that all limitations of claim 1, save
the longitudinally extending channel-shaped rib, are disclosed by Baccouche
or that the rib is disclosed by Trancart. See, e.g., App. Br. 6-7. We agree
with and adopt these factual findings.
Appellants attack the reasoning the Examiner used to incorporate the
Trancart rib into Baccouche (i.e., to increase strength), stating “Trancart
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‘166 does call his channel-shaped rib a “rigidification” member . . . but
Trancart does not discuss any effect on beam strength by making such a
change.” App. Br. 9 (ellipses in original). The Examiner succinctly
responds that “Trancart calls this a rigidification strip in the front wall and
therefore it would be obvious that its job is to strengthen the front wall of the
bumper beam.” Ans. 7. We find the Examiner’s reasoning persuasive.
Appellants also attack the proposed combination by arguing that it
addresses a problem that was unknown until Appellants came along. Reply
Br. 1. More specifically, Appellants state:
skilled artisans did not discover nor realize how serious the
drop off was for actual beam bending strength versus
theoretical beam bending strength. Still further, they did not
discover or contemplate that this huge difference in theoretical
versus actual bending strength could be substantially reduced
by the addition of channel-shaped ribs in a front wall of a beam
having spaced apart tubes.

Reply Br. 1.
The reasoning articulated by the Examiner in combining Baccouche
and Trancart, however, is not premised on addressing the “huge difference in
theoretical versus actual bending strength” that Appellants claim to have
discovered. It is premised on a broader motivation in the art to strengthen
the front wall of the bumper. Ans. 4, 7. As stated above, we find the
Examiner’s reasoning in this regard to be persuasive.
Indeed, Appellants’ own expert declarants, Douglas K. Bringhurst and
Darin Evans, testified to the existence of this broader motivation in the art.
Bringhurst Dec. 2, para. 6 and Evans Dec. 3, para. 6 (each offering his
testimony “based on years of efforts to improve impact strength” of B beams
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used for bumpers); Bringhurst Dec. 3, para. 8 (“During the years 1993 to
2006, I saw constant efforts of bumper design engineers . . . to improve B
beam strengths[.]”); Id. 4, para. 10 (“[T]here has been constant pressure to
improve the strength, strength-to-weight ratio, resistance to premature
buckling, and overall impact efficiency of beams in bumper systems without
adversely affecting weight and cost.”).1 Mr. Bringhurst further concedes
that “improvements of only 1% to 2% can be important in bumper systems.”
Id. 5, para. 16.
Appellants also argue that Baccouche and Trancart teach away from
the claimed invention. App. Br. 8-10. In that regard, Appellants point out
that Trancart employs three horizontal walls instead of four horizontal walls
as in Baccouche and claim 1. App. Br. 8. But this is not a teaching away.
Just because each reference teaches different features – here, a different
number of horizontal walls – does not mean that they teach away from the
claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed).
Appellants do not identify any actual teaching away by Baccouche or
Trancart, and we do not find persuasive their argument that “it is counter-
intuitive to take structure from a three-horizontal-wall beam and put it into a
four-horizontal-wall beam.” See Reply Br. 3. This is particularly so because

1 We have fully considered the declarations but do not find them to be
persuasive on any pertinent factual issues.
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the structure being taken from Trancart is from its front wall and not from
the horizontal walls upon which Appellants’ distinction is based.
Appellants also point out that Trancart’s outermost horizontal walls
are curved, which adds weight and weakens the structure, thus resulting in a
“very confusing disclosure.” App. Br. 9. This argument is not
commensurate with the scope of claim 1, which does not prohibit curvature
and does not set forth weight and strength limits.
Additionally, even if claim 1 required non-curved horizontal walls,
Trancart would still not teach away from the claimed invention. Indeed,
Appellants have not identified any actual teaching away by Trancart of using
non-curved horizontal walls. See In re Fulton, 391 F.3d at 1201. It is true
that Trancart uses curved horizontal walls in the embodiment relied upon by
the Examiner for her rejection. But Trancart does not disparage or criticize
non-curved horizontal walls. In fact, Trancart employs non-curved
horizontal walls in other embodiments. And there is nothing confusing
about the disclosure in this regard. Trancart clearly explains the purpose of
the curvature when employed – it “makes it easier [for the bumper] to
deform on impact and provides a large capacity for energy absorption.”
Trancart 3, para. [0062]. Weakening the horizontal walls so that they can
absorb energy in a collision does not teach away from strengthening the
front wall. Appellants’ own experts concede that “high impact/bending
strength and high energy absorption” are both desired in bumper design.
Bringhurst Dec. 3, para. 7; Evans Dec. 3, para. 7.
We also do not find persuasive Appellants’ arguments that Baccouche
and Trancart are not combinable on their face, that it is not clear how they
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would be combined, or that the resulting combination would not arrive at the
claimed invention. The Examiner’s rejection adequately addresses all of
these arguments. See Ans. 3-4.
Appellants also argue the presence of secondary considerations of
unexpected results, long-felt but unresolved need, and commercial success.
E.g. App. Br. 15-16 and 19-20. We have considered these arguments (and
the declarations) but we do not find them to be persuasive, particularly in
light of the strong prima facie case of obviousness set forth by the Examiner.
With respect to unexpected and surprising results, the argument is
conclusory with Appellants merely stating: “Virtually every OEM engineer
(including advanced engineering teams at GM, Toyota, and Honda) that has
witnessed such a comparison [with and without the ribs] has commented on
how unexpected and surprising the results are.” App. Br. 15. Further the
argument is not commensurate with the claim scope. Claim 1 is not directed
to a bumper having a rib that improves actual strength from X% of
theoretical strength to Y% of theoretical strength. It is directed to a bumper
having a rib that strengthens the beam. Some increase in strength certainly is
to be expected based on the express teaching of Trancart, and Appellants
concede that “improvements of only 1% to 2% can be important in bumper
systems.” Bringhurst Dec. 5, para. 16.
With respect to long-felt but unresolved need, the argument is
conclusory with Appellants stating:
There clearly was a long-felt need which was recognized and
persistent and not solved by others (M.P.E.P. 716.04(b)(I)).
Many factors contributed to the presence of the long-felt need,
as noted in the Expert Declarations and were considered
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(M.P.E.P, 716.04(b)(III), including skepticism of experts
(M.P.E.P. 716.05).

App. Br. 20. Appellants do not definitively identify the long-felt but
unresolved need that is allegedly addressed by their claimed invention.
Instead, they attempt to support their argument by repeating their previous
arguments about how unexpected and surprising their claimed invention was
to industry participants. Id. To the extent that the long-felt but unresolved
need is the ever constant drive for better bumpers (see, e.g., Bringhurst Dec.
3-4, paras. 8 and 10), the argument is not persuasive as there is no evidence
in the record that further bumper engineering has now ceased with the
advent of Appellants’ solution. To the extent that the long-felt but
unresolved need is the desire to address the huge drop off in actual versus
theoretical weight, the argument is not persuasive as Appellants expressly
argue that no one even knew about the existence of such a problem.
With respect to commercial success, we note Appellants’ claims
regarding winning back contracts and B beams (with the ribs) again
becoming popular with the automakers (App. Br. 19-20), but we are not
persuaded that there is a sufficient nexus between the claimed invention and
the alleged commercial success. It may very well be that the automakers
returned to or stuck with B beams regardless of the ribs because the
alternatives were so unappealing. See App. Br. 17 (Several major
automakers “declared that they were heading [sic, in] a different direction
[from B beams, which at the time did not have ribs], i.e., toward aluminum .
. . despite how expensive and costly those new development programs would
be.”) (emphasis added). We are also not persuaded that the alleged
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commercial success, even if it were driven wholly by the ribs, could rebut
the strong prima facie showing of obviousness set forth in the Examiner’s
rejection.
For the foregoing reasons, we sustain the Examiner’s decision to
reject claim 1.
Claims 2-12 and 14-20 are not separately argued from claim 1. Thus,
in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as
representative of the group and treat those claims as falling with
representative claim 1. Hence, we also sustain the decision to reject claims
2-12 and 14-20.
Although claims 13 and 21-24 are separately argued from claim 1, the
arguments are the same. Hence, we also sustain the decision to reject claims
13 and 21-24.
DECISION
The Examiner’s decision to reject claims 1-24 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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