Ex Parte HATTORI et al

Patent Trial and Appeal Board

Jul 31, 2018

15295855 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/295,855 10/17/2016 Tatsuya HATTORI
39083 7590 08/02/2018
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 310
Washington, DC 20007
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5046-0074 4406
EXAMINER
DILLON, DANIEL P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATSUYA HATTORI and SUNAO FUJITA
Appeal2018-004729
Application 15/295,855
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-9. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a metallic decorative part for a vehicle display
device (independent claim 1) and a vehicle display device comprising, inter
alia, a metallic decorative part (independent claim 4). Claim 1 illustrates the
1 Appellant is the applicant, Y azaki Corporation, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed October 16,
2017 ("App. Br."), 2.
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Application 15/295,855
subject matter on appeal and is reproduced below with contested language
italicized:
1. A metallic decorative part for a vehicle display device, the
metallic decorative part comprising:
a substrate body molded with synthetic resin;
a metal thin film that is formed of metal and deposited on
a surface of the substrate body; and
a ridge that is formed with different surfaces intersecting
at a surface of the metal thin film in conformity with a shape of
the surface of the substrate body, wherein
the ridge functions as a boundary between different
regions, and is formed such that a curvature radius of a corner
that forms an apex of the ridge is greater than O and equal to or
smaller than 28.0 µm.
App. Br. 16 (Claims Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 3, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered January 25, 2018 ("Ans."):
I. Claims 1-5 under 35 U.S.C. § 103 as unpatentable over Sakurai
(US 2013/0040090 Al, published February 14, 2013); and
II. Claim 6-9 under 35 U.S.C. § 103 as unpatentable over Sakurai
in view of Sugimoto (US 2002/0189526 Al, published December 19, 2002).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1-9 under 3 5 U.S. C. § 1 0 3 for the reasons set forth in the Final
Action, the Answer, and below.
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Application 15/295,855
Rejection I
Appellant argues claims 1-5 as a group on the basis of limitations
common to independent claims 1 and 4. App. Br. 10-15. Therefore,
consistent with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as
representative, and decide the appeal as to claims 1-5 based on claim 1
alone.
Sakurai discloses metallic-toned dial plate 7 comprising resin-made
main body 71 and metallic layer 72 formed on the front side surface of main
body 71. ,r,r 12-14, 53; Fig. 4. Sakurai discloses that the front side of main
body 71 includes first design face 71 c formed on a plane surrounded by
circular convex 71 b, and second design face 71 d formed on an upper surface
of convex 71 b substantially parallel to first design face 71c. ,r,r 53, 54;
Fig. 4. Sakurai discloses that convex 71 b includes first inwardly inclined
face 71e and outwardly inclined face 71f that extend toward second design
face 71d. ,r 55; Fig. 4. Sakurai discloses that convex 71b further includes a
"curved face" connecting portion 7 lm positioned between first inwardly
inclined face 71e and second design face 71d, and a "curved face"
connecting portion 71 n positioned between outwardly inclined face 71 f and
second design face 71d. ,r 59; Figs. 4, 6A, 6B. Sakurai discloses that when
the radii R of connecting portions 71 m, 71 n "become as small as
possible ... the high class feeling is further improved." ,r 59. Sakurai
discloses that in the embodiment of Sakurai' s invention illustrated in
Figure 6A, the radii R of connecting portions 71 m, 71 n are equal to or lower
than 0.2 mm. ,r 59.
The Examiner finds that surfaces 71 c-71 j of metallic-toned dial
plate 7 illustrated in Figure 4 of Sakurai correspond to the ridge recited in
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Application 15/295,855
claims 1 and 4. Final Act. 3. The Examiner finds that second design face
71d is the apex, i.e., the highest point, of this ridge, and the rounded comer
where first inwardly inclined face 71e and second design face 71d meet
(connecting portion 71m) is part of, or forms, the apex of the ridge. Ans. 6;
Sakurai Fig. 6A. The Examiner determines that the claim only requires that
the comer farms an apex of the ridge; it does not require that the comer is
the apex of the ridge. Ans. 6.
The Examiner finds that Sakurai teaches that the comer 71 m has a
radius of curvature, and when the radius becomes as small as possible,
and/or is substantially zero, the high class feeling of the metallic-toned dial
plate is improved. Ans. 6-7 (citing Sakurai ,r,r 59-60, 76). Relying on
Sakurai' s embodiment in which the radii R of connecting or comer portions
71m, 71n are equal to or lower than 0.2 mm (discussed above), the Examiner
determines that "although Sakurai fails to teach the specific range as cited in
independent claims 1 and 4, Sakurai does teach an overlapping range and
provides reason to minimize the curvature of radius of the comers in order to
improve the high class feeling of the product." Ans. 7.
Appellant argues that "Sakurai' s disclosure fails to support the Office
Action's assertion that any of Sakurai' s connecting portions 71 m, 71 n
constitutes a comer that forms an apex of a ridge." App. Br. 11. Appellant
contends that second design surface 71 d, which is flat, is the apex of convex
71b, and asserts that neither of the connecting portions 71m, 71n is therefore
an apex of convex 71 b. Id. Appellant asserts that because "the apex (i.e.,
the second design surface 71 d) of the convex 71 b is a flat surface, the apex
does not have a radius of curvature." Id.
Claim 1 recites "a ridge that is formed with different surfaces
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Application 15/295,855
intersecting at a surface of the metal thin film in conformity with a shape of
the surface of the substrate body, wherein the ridge functions as a boundary
between different regions, and is formed such that a curvature radius of a
corner that farms an apex of the ridge is greater than O and equal to or
smaller than 28.0 µm." Claim 1 (emphasis added).
As discussed above, the Examiner finds that surfaces 71c-71j of
metallic-toned dial plate 7 illustrated in Figure 4 of Sakurai correspond to
the ridge recited in claim 1. Connecting portion 71 m (comer) forms an apex
of this "ridge" where inclined face 71 e and second design face 71 d intersect
because this comer and comer 71 n contribute to form the highest point of
the ridge.
As also discussed above, the Examiner correctly finds that Sakurai
discloses an embodiment in which the radii R of connecting ( or comer)
portions 71 m, 71 n are equal to or lower than O .2 mm, which encompasses
the range of equal to or smaller than 28.0 mm recited in claims 1 and 4,
rendering the recited range prima facie obvious. In re Peterson, 315 F .3d
1325, 1329-30 (Fed. Cir. 2003)("In cases involving overlapping ranges, we
and our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness .... Selecting a narrow
range from within a somewhat broader range disclosed in a prior art
reference is no less obvious than identifying a range that simply overlaps a
disclosed range. In fact, when as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more compelling than
in cases of mere overlap.") Because Appellant does not direct us to any
persuasive evidence demonstrating the criticality of the range recited in
claims 1 and 4, Appellant's arguments are unpersuasive of reversible error in
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the Examiner's rejection. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.).
Appellant argues in the Reply Brief that the definition of "form" is "to
combine or create something," "to give a particular shape to," or "to serve to
make up or constitute," which does not support the Examiner's assertion
"that the alleged comer 71m forms the alleged apex 71 d because the alleged
comer 71m is at, or is a part of, the apex." Reply Br. 3--4 (citing "New
Oxford American Dictionary" and "The Merriam-Webster Dictionary").
Appellant contends that "it is improper to assert that the alleged comer
71 [ m] forms the alleged apex 71 d because the alleged apex 71 d extends
beyond the alleged comer 71m." Reply Br. 4.
However, Appellant's reading of the claim is too narrow and does not
take into consideration the Examiner's explicit finding that rounded comer
or connecting portion 7 lm is part of the apex of a ridge (Ans. 6),
corresponding to forming the apex of a ridge according to the definition of
"form" provided by Appellant of "to combine or create something," "to give
a particular shape to," or "to serve to make up or constitute." In other
words, connecting portion 71m (comer) combines with first inwardly
inclined face 71 e and second design face 71 d to create or give shape to a
"ridge," and connecting portion 71m makes up or constitutes the apex of this
"ridge." The problem here is one of claim breath, a problem easily solved
by amending the claim to more specifically claim the structure recited in the
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Specification.
Appellant's arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner's rejection of claims 1-5 under
35 U.S.C. § 103.
Rejection II
To address this rejection, Appellant relies on the arguments made for
Rejection I ( discussed above), and argues that the additional references
applied in this rejection (Sugimoto) fails to cure the deficiencies of. App.
Br. 13-14. Because we are unpersuaded of reversible error in the
Examiner's rejection of claims 1 and 4 for the reasons discussed above,
Appellant's position as to this rejection is also without merit.
DECISION
We affirm the Examiner's rejections of claims 1-9 under 35 U.S.C.
§ 103.
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
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