Ex Parte Kors et al

Patent Trial and Appeal Board

Apr 13, 2017

12536043 (P.T.A.B. Apr. 13, 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.
12/536,043 08/05/2009 Christopher M. Kors TTC-75402/08cas 2585
63796 7590 04/17/2017
DINSMORE & SHOHL LLP
P.O. BOX 7021
TROY, MI 48007-7021
EXAMINER
APENTENG, JESSICA MCMILLAN
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER M. KORS and
JASON STADTHERR
Appeal 2015-002886
Application 12/536,043
Technology Center 2800
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of a rejection of claims 7—
15.1 Claims 1—6 were previously cancelled. Br. 2. Oral hearing was
requested and scheduled for February 13, 2017, but Appellants waived the
requested oral hearing on January 12, 2017. We have jurisdiction under
35 U.S.C. § 6(b).
1 In this Opinion, we refer to Appellants’ Appeal Brief (“Br.,” filed
September 18, 2014), the Final Office Action (“Final Act.,” March 18,
2014), the Examiner’s Answer (“Ans.,” mailed November 20, 2014), and the
Specification (“Spec.,” originally filed August 5, 2009 (as amended June 7,
2011 and December 12, 2012)).
Appeal 2015-002886
Application 12/536,043
We reverse and enter a new ground for rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
THE INVENTION
The invention relates to “a front bumper having a headlamp assembly
which controls the position of the bumper.” Spec. 11. More specifically,
“[a] protrusion extending from a bottom side of the headlamp housing
engages with a notch formed on the interior surface of the bumper to control
the position of the bumper fascia relative to the headlamp housing.” Spec.,
Abstract.
Claim 7, reproduced below, is illustrative with a disputed limitation in
italics:
7. A control device for an automotive vehicle, said
control device comprising:
a bumper fascia extending from one side of the vehicle to
an opposite side of the vehicle m a vehicle width direction, said
bumper fascia having an exterior surface and an interior
surface, said interior surf ace having a flange and a pair of
spaced apart walls, said flange extending generally normal from
said interior surface, said pair of walls extends outwardly from
said flange to define a notch between said pair of walls and said
flange, said flange and said pair of walls being formed
integrally as one piece with the bumper fascia; and
a headlamp housing holding a lens and a lamp unit, said
headlamp housing having a protrusion;
said protrusion formed integrally as one piece with a
bottom side of said headlamp housing, said protrusion extends
from said headlamp housing towards said interior surface of
bumper fascia, and said protrusion having a pair of spaced apart
side surfaces received within said notch between said pair of
walls to connect said headlamp housing and said bumper fascia
thereby restraining movement of said bumper fascia in said
vehicle width direction.
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Appeal 2015-002886
Application 12/536,043
THE REJECTIONS
Claims 7—11 and 13—15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hoffner et al. (US 2002/0117875 Al; pub. Aug. 29, 2002)
(“Hoffner”). Final Act 4-7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoffner and Schwab (US 2005/0190573 Al; pub. Sept. 1, 2005). Final
Act. 7—8.
ISSUE
Appellants’ arguments present the dispositive issue: Has the
Examiner erred by finding Hoffner discloses the above-identified disputed
limitation of claim 7?
ANALYSIS
The Anticipation Rejection
The Examiner finds, Hoffner discloses,
said flange 43 and said pair of walls ((see figure 2 where 43 A is
one wall and 43 B combined with 50 formed second wall)) being
formed integrally as one piece (pair of walls 43A and 438
combined with 50 and flange 43 are formed integrally as one
piece and are an integral part of the bumper fascia) with the
bumper fascia (19);
Final Act. 5. The Examiner explains “[i]t has been held that the term
‘integral’ is sufficiently broad to embrace constructions united by such
means as fastening and welding. In re Hotte, 111 USPQ 326, 328 (CCPA
1973).” Ans. 3.
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Application 12/536,043
Appellants argue, “as clearly illustrated in the figures and detailed in
the specification of the Hoffner reference, the bumper skin 19 is an entirely
separate element from the curved bracket 43.” Br. 6.
We are persuaded by Appellants’ argument that the Examiner erred.
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Here, although Appellants do not identify where in
Hoffner it is clearly illustrated and detailed that its bumper and bracket are
separate elements, it is the Examiner’s burden to identify where Hoffner
expressly or inherently describes that the bumper and bracket (read as the
recited fascia and flange, respectively) are ""formed integrally.” The
Examiner has not met that burden. We need not decide whether “integral”
and “formed integrally as a one piece” means something different under our
broadest reasonable interpretation standard. Regardless, the Examiner has
not shown Hoffner discloses (expressly or inherently) that the cited elements
of Hoffner (Fig. 2, elements 19, 43, 43A, 43B, 50) are formed integrally,
fastened, or welded in any manner.
For the above reason, we do not sustain the Examiner’s rejection of
independent claim 7 or claims 8—11 and 13—15, dependent therefrom.
The Obviousness Rejection
Claim 12 depends from claim 7 and is rejected as obvious over the
combined teachings of Hoffner and Schwab. The Examiner does not rely on
Schwab to cure the above-identified deficiency of Hoffner and, thus, we do
not sustain the rejection of claim 12 for the same reason as claim 7.
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Appeal 2015-002886
Application 12/536,043
Appellants raise additional issues in the Brief. We are persuaded of
error with regard to the identified issue discussed supra, which is dispositive
as to the rejection of all claims. Therefore, we do not reach the additional
issues.
NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
CLAIMS 7-15 REJECTED UNDER § 112, FIRST PARAGRAPH
The Specification must contain a written description of the invention
and the manner of making and using it. 35 U.S.C. § 112, first paragraph.
The test for written description is summarized in Purdue Pharma L.P. v.
FauldingInc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation
marks and citations omitted):
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide haec verba
support for the claimed subject matter at issue .... Nonetheless,
the disclosure must . . . convey with reasonable clarity to those
skilled in the art that. . . [the inventor] was in possession of the
invention .... Put another way, one skilled in the art, reading the
original disclosure, must immediately discern the limitation at
issue in the claims .... That inquiry is a factual one and must be
assessed on a case-by-case basis.
Claim 7 recites, inter alia, “said flange and said pair of walls being
formed integrally as one piece with the bumper fascia.” We find no
disclosure of this feature in Appellants’ Specification. In Appellants’
Appeal Brief, the Summary of Claimed Subject Matter section alleges this
feature is supported by Figures 1, 2, 5, and 8. Br. 3. Appellants do not
identify specific aspects of these figures that allegedly support this feature
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Appeal 2015-002886
Application 12/536,043
and we discern no support therefor. In particular, we note the disputed
limitation refers to the manner in which these various elements are
“formed.” Presuming “formed” to mean the manner in which these elements
are manufactured as a single integral piece or in some other manner joined
into one integral component,2 we find no supporting disclosure in the
original Specification, and Appellants have failed to identify in its Appeal
Brief support, with any specificity, to describe how the elements are so
formed.
Appellants specifically amended the paragraph 28 of the Specification
(June 7, 2011) to recite that, in the headlamp assembly, “protrusion 36 is
formed integrally as one piece with a bottom side 38 of the headlamp
housing 28.”3 Thus, Appellants recognized lack of explicit support for a
similar feature relating to the headlamp assembly but did not add any similar
support for this disputed limitation relating to the integral formation of the
flange, the walls, and the bumper fascia.
For the above reasons, we find independent claim 7 fails to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph
(pre-AIA). Claims 8—15 depend from claim 7 are rejected for the same
reason as they incorporate this same deficiency by virtue of their
dependency.
2 Should this Application proceed in further prosecution, we suggest the
Examiner consider whether “formed integrally as one piece” has a
sufficiently definite meaning under 35 U.S.C. § 112, second paragraph.
3 Should this Application proceed in further prosecution, we suggest the
Examiner consider whether this amendment was adequately supported by
the original Specification or, instead, should have been objected to as new
matter.
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Application 12/536,043
DECISION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 7—15.
We enter a new ground of rejection for claims 7—15 under 35 U.S.C.
§112, first paragraph (pre-AIA) for failing to comply with the written
description requirement.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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