Ex Parte Grgac et al

Patent Trial and Appeal Board

Aug 31, 2016

11644209 (P.T.A.B. Aug. 31, 2016)

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.
11/644,209 12/22/2006 Steven Grgac DEC-00064 (705714US) 5950
30853 7590 09/01/2016
WARN PARTNERS, P.C.
PO BOX 70098
ROCHESTER HILLS, MI 48307
EXAMINER
MAYE, AYUB A
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
09/01/2016 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 STEVEN GRGAC, DAVID D. ROUISON, and
MARTIN MCLEOD
____________

Appeal 2014-005855
Application 11/644,2091
Technology Center 3700
____________

Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Steven Grgac et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s Final decision rejecting claims 18, 19, 22, 26, 27, and 31,
which constitute all the claims pending in this application.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 According to Appellants, the real party in interest is Magna
International Incorporated. Appeal Br. 4 (filed July 29, 2013).
2 Claims 1–17, 20, 21, 23–25, and 28–30 have been canceled. Appeal
Br. 16–18 (Claims App.).
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INVENTION
Appellants’ invention relates to “the use of resistive implant welding
for structural welds in automotive applications.” Spec. ¶ 1.
Claims 18 and 27 are independent. Illustrative claim 18 reads as
follows:
18. A moulded tailgate made of polymer material for a pick-
up truck comprising:
a first portion made of polymer material having one or
more tailgate flanges made of polymer material extending from
the first portion;
a second portion made of polymer material and forming a
reinforcement sheet placed across the one or more tailgate
flanges; and
a conductor placed along a contact area between the one
or more tail gate flanges and said second portion; and
a weld line created along a surface area of the conductor
between said one or more tailgate flanges and said second
portion, wherein a combined structure made of polymer material
including said first portion, said second portion, said one or more
tail gate flanges and said weld line form a moulded tailgate for
a pick-up truck designed to withstand forces equal to or greater
than 2,200 lbs.
Appeal Br. 16 (Claims App.) (emphasis added).

REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected dependent claim 19 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
Appellants regard as the invention.
II. The Examiner rejected claims 18 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Roehr (US 2003/0155066 A1,
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pub. Aug. 21, 2003) and Lambing (US 5,225,025, iss. July 6,
1993).
III. The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Roehr, Lambing, and Komatsu (US
6,776,449 B2, iss. Aug. 17, 2004).
IV. The Examiner rejected claims 19 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Roehr, Lambing, and Wyke (US
6,316,751 B1, iss. Nov. 13, 2001).
V. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Roehr, Lambing, Komatsu, and Wyke.

ANALYSIS
Rejection I – Indefiniteness
The Examiner rejects claim 19 as indefinite because it recites “said
fusion component” without providing an antecedent basis to which that
limitation is referring. Appellants do not argue that the rejection was in
error. Appeal Br. 7. Instead, Appellants sought to amend claim 19, after the
Final Office Action, to remove the “said fusion component” language. Id.
There is no indication the Examiner accepted and entered Appellants’
proposed amendment to claim 19.3 See Adv. Act (filed May 10, 2013); see
also Ans. 2–6. Appellants request reconsideration of the Examiner’s refusal
to enter the proposed amendment. Appeal Br. 7. However, this is a
petitionable issue, not an appealable issue. See 37 C.F.R. § 1.127 (“From

3 We note claim 19 in the Claims Appendix does not include the phrase
“said fusion component,” although the amendment was not entered. Appeal
Br. 16 (Claims App.).
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the refusal of the primary examiner to admit an amendment, in whole or in
part, a petition will lie to the Commissioner under § 1.181.”). Therefore,
considering claim 19 without Appellants’ proposed amendment, we sustain
the indefiniteness rejection because Appellants do not apprise us of any error
in the Examiner’s analysis.

Rejections II–V Obviousness
Addressing the Examiner’s Rejections II–V, Appellants focus on a
single claim element recited in independent claims 18 and 27. Appeal Br.
7–14. Specifically, Appellants challenge whether the Examiner has
established a prima facie case that the prior art references disclose “a molded
tailgate for a pick-up truck designed to withstand forces equal to or greater
than 2,200 lbs.” Id. at 10–11. According to Appellants,
[t]he proposed combinations of Roehr in view of Lambing, or
Roehr in view of Lambing and further in view of Wyke, or Roehr
in view of Lambing and further in view of Komatsu, or Roehr in
view of Lambing and Komatsu and further in view of Wyke all
fail to teach or suggest a molded tailgate for a pick-up truck
designed to withstand forces equal or greater than 2,200 lbs.
Id. at 11. Appellants clarify in the Reply Brief that “it is their position that a
prima facie case of obviousness has not been met because the references do
not teach or suggest all of the claim limitations, not whether or not there is a
motivation to combine Roehr with the various combination of references.”
Reply Br. 1–2. The following analysis, which focuses on Rejection I,
therefore applies equally to Rejections II–V.
The Federal Circuit “has repeatedly noted, the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal
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quotes and citations omitted). By clearly articulating a reasoned basis that
the Examiner perceives properly supports rejecting a claim, the initial
burden of production is deemed satisfied, because Appellants have been
properly notified and are able to respond. Id. “After a prima facie case of
obviousness has been established, the burden of going forward shifts to the
applicant.” In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In other
words, once the Examiner has clearly articulated a reasoned basis for
rejecting a claim, “the burden of coming forward with evidence or argument
shifts to the [Appellant].” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
In this case, the Examiner finds Roehr’s disclosure of “molding
machine tonnage ranging from 800 tons to 1100 tons” evidences the
limitation Appellants argue is missing – namely, “a moulded tailgate for a
pick-up truck designed to withstand forces equal to or greater than 2,200
lbs.” Final Act. 3, 6 (citing Rohr ¶¶ 22–25). The Examiner finds Roehr’s
disclosure for the molding machine tonnage evidences “the molded tailgate
of Roehr can handle and withstand forces equal to or greater than 2,200 lbs.”
Ans. 2. In the Advisory Action, the Examiner explains,
Roehr discloses tailgate pick up truck formed of high strength
sandwiched polymer material with a woven fiberglass mat
reinforcing which are bonded together in order to provide one
structural unit produces a tailgate of greater strength than is
normally obtained in a plastic object of this size, and the
manufacturing parameters for this compression molded process
with this thermoplastic material may be, Molding machine
tonnages ranging from 800 tons to 1100 tons, and since the claim
states that forces equal to or greater than 2,200 lbs., therefore,
Roehr system capable of withheld forces greater than 2,200 lbs.
. . .
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Adv. Act. 1. The above analysis establishes a prima facie case because the
Examiner notifies Appellants of the basis for finding Roehr discloses a
tailgate capable of withstanding forces equal to or greater than 2,200 lbs.
and, as such, Appellants are able to respond appropriately to demonstrate
error.
In response, Appellants fail to rebut properly the Examiner’s position
by providing contrary evidence, technical reasoning, or other means of
persuasion. Appellants assert “[t]he proposed combinations of references at
best show an unformed part that is formed within a cavity using compression
tonnage, but do not show a molded tailgate designed to withstand forces
equal to or greater than 2,200 lbs.” Appeal Br. 10. According to Appellants,
“[j]ust because polymer portions of Roehr are compressed in a mold at the
stated tonnage does not correlate or amount to teaching or suggesting that
the end structure is capable of withstanding 2,200 lbs.” Id. at 12.
Furthermore, “the tailgate is not fully formed so it is incorrect to take the
position that the compression forces in the references are indicative of the
strength of the end product.” Id. at 13.
The above positions, however, are conclusory assertions missing
evidentiary support and technical reasoning. Appellants’ conclusory
remarks cannot take the place of evidence in the record and/or a reasoned
analysis based on evidence in the record. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). At a minimum, absent any evidence or technical reasons to
the contrary, the Examiner reasonably inferred Roehr’s tailgate could
withstand at least 1/800th of the force actually applied to the tailgate during
the manufacturing process.
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Furthermore, we note Appellants’ Specification states prior tailgates
formed of thermoplastic composites used “adhesives specially formulated to
have [a] high weld strength.” Spec. ¶ 2 (emphasis added). Describing the
invention, Appellants state, “[t]he weld line formed between the first
portion 18 and second portion 20 will have a high weld strength, that has
been shown to be equal or greater than the type of weld obtained using
adhesive or mechanical fasteners.” Id. ¶ 15. The selection of 2,200 lbs. as
the amount of force a tailgate must withstand is “merely [an] exemplary
number” because the amount of force the tailgate can withstand (more or
less than 2,200 lbs.) is a design variable. Id. ¶ 16. Although the
Specification states, “depending on the specification the load can be greater
or lesser [than 2,200 lbs.],” we note the Specification does not explain, in
any depth, the particular alterations that are necessary to change the load;
presumably, because such detail is unnecessary for a skilled artisan. Id.
Given the above background and given Appellants do not challenge the
Examiner’s findings that the cited prior art combinations disclose all of the
claimed structural elements, except for the ability of the moulded tailgate to
withstand 2,200 lbs., the Examiner correctly determined designing the
tailgate to withstand 2,200 lbs. of force “involves only routine skill in the
art” and is, therefore, unpatentable. Adv. Act. 1.
For the foregoing reasons, Appellants have not persuasively
demonstrated that the Examiner failed to make a prima facie case the prior
art discloses, “a moulded tailgate for a pick-up truck designed to withstand
forces equal to or greater than 2,200 lbs.,” or (even if not disclosed)
designing such a tailgate involves only routine skill in the art. Because
Appellants’ arguments against Rejections II–V rely on us reaching a
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contrary conclusion, we sustain the Examiner’s obviousness rejections of
claims 18, 19, 22, 26, 27, and 31.

DECISION
We affirm the Examiner’s decision to reject claim 19 as indefinite.
We affirm the Examiner’s decision to reject claims 18, 19, 22, 26, 27,
and 31 as obvious.
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