Ex Parte Lazano et al

Patent Trial and Appeal Board

Sep 24, 2013

11891760 (P.T.A.B. Sep. 24, 2013)

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.
11/891,760 08/13/2007 Paul I. Lazano TRW(AP)8203 2203
26294 7590 09/25/2013
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
SAMPLE, DAVID R
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
09/25/2013 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 PAUL I. LAZANO, JUAN CHOW, RICARDO MARTINEZ,
EDGARDO SANCHEZ, LORENZO FELIX, LUIS A. VARGAS,
CARLOS A. PRIETO, VICTOR BECERRA, and DAVID A. GRILLI
____________

Appeal 2012-006484
Application 11/891,760
Technology Center 1700
___________

Before MARK NAGUMO, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006484
Application 11/891,760

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 16 are the only independent claims and are illustrative of
the subject matter on appeal (emphasis added):
1. A steering wheel comprising:
a steering wheel armature comprising at least one of a
rim portion and
a spoke portion; and
a composite portion formed by a composite material
molded onto at least one of the rim portion and spoke portion,
the composite material comprising a cellulose-based resin
matrix material, the composite portion having an outer surface
and wood grain impregnations molded on the outer surface, the
wood grain impregnations having a natural wood grain
appearance.

16. An article with a surface adapted to be a class A
surface in a vehicle, the article comprising:
a composite portion comprising a composite material, the
composite material comprising a cellulose-based material in a
weight percentage, the composite portion being sufficient to
accept wood stain;
a core portion insert molded in the composite material,
the composite portion having an outer surface and grooves
molded in the outer surface, the grooves being configured to
resemble a natural wood grain; and
a coating portion comprising at least one layer of at least
one of a wood stain and a glaze disposed on the outer surface of
the composite portion to give the composite portion a stained
natural wood appearance.
Appeal 2012-006484
Application 11/891,760

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The Examiner maintains, and Appellants appeal, the rejection
of claims 1-18 as unpatentable under 35 U.S.C. § 103(a) over Tanabe
(U.S. 2003/0075003 A1 published Apr. 24, 2003) in view of Nishibori
(U.S. 5,869,138 issued Feb. 9, 1999).
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). “[T]he [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988).
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ main argument in the Appeal Brief (and Reply Brief) is
that “[t]he molded composite material recited in claim 1 is structurally
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Application 11/891,760

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different than the glued halves disclosed in Tanabe” (App. Br. 14, Reply Br.
5). Similarly, Appellants argue that “[t]he insert molded construction recited
in claim 4 avoids [the problem of seams and woodgrains extending through
the seam] and provides structure not achieved by Tanabe” (App. Br. 22-23;
Reply Br. 7). Appellants contend that claims 1 and 4, which recite “molded
onto” and “insert molded” respectively, preclude a product with glued halves
such as Tanabe. This argument is unavailing.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
Appellants have not provided any specific definition to refute the
Examiner’s reasonable determination that the claim language of “molded
onto” that describes the relationship between a composite material having a
natural wood grain appearance and the rim or spoke portion of a steering
wheel does not preclude the structure “wherein the inner profile of the
composite portion matches the outer profile of the rim portion” as in Tanabe
(Ans. 9; compare, Appellants’ Fig. 3 which exemplifies the inner profile of
the composite material matching the outer profile of the rim portion).
Appellants also have not provided any specific definition or other
evidence to dispute the Examiner’s reasonable determination that the
structural limitation necessitated by the step of insert molding is “that some
portion of the composite material could have been molded against a portion
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Application 11/891,760

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of the underlying rim portion/core.” Ans. 10; see Reply Br. 7 (“The record
does not need to include a specific definition for terms that are capable of
instant recognition by an ordinarily skilled artisan. ‘Insert molded’ is such a
term.”). Appellants assert that “[t]he term [insert molded] indicates that the
article is at least partially surrounded by a homogeneous mass of the molded
material by placing the article in the mold prior to adding the molten
material.” App. Br. 23. Appellants also assert that insert molding produces
a construction that is “seamless.” Id. at 14-15, 23; Reply Br. 5-6. Contrary
to Appellants’ argument, Appellants do not specify in the claims that the
outer surface of the composite portion is seamless, and have provided no
evidence, or any persuasive line of technical reasoning, explaining why the
Examiner’s broadest reasonable interpretation is in error (Ans. 9-10; see
generally Briefs). Moreover, when the Examiner responds that seams may
be produced by mold halves from a molding process (Ans. 12), Appellants
do not dispute the Examiner’s position with evidence, but by charging the
Examiner is merely speculating (App. Br. 5).
Appellants’ argument that the synthetic wood board of Nishibori is
not explicitly indicated that it “may be used anywhere within a vehicle”
(App. Br. 20) or “on a steering wheel” (id.) does not limit Nishibori’s
teaching that such wood boards may be used in an automotive application
(Ans. 6; Nishibori, col. 1, ll. 42-51). It is well established that ordinary
creativity is presumed on the part of one of ordinary skill in the art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). Appellants have not adduced any
persuasive technical reasoning or evidence to refute the Examiner’s
reasonable determination that an artisan would have, using no more than
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ordinary creativity, used the synthetic wood board of Nishibori as a
decorative product inside an automobile, and that the use of such a synthetic
wood composite material would have been no more than the predictable use
of a known prior art element for its known function in Tanabe as modified
(see, e.g., Ans. 8). Appellants’ arguments that “Nishibori clearly shows
processes specific to producing boards only” (Reply Br. 6) and “Nishibori
can only produce boards” (id. at 7) fail to explain why one skilled in the art
having ordinary creativity would not have been able to use the composite
material of Nishibori for the composite material of Tanabe.
Accordingly, the preponderance of the evidence supports the
Examiner’s § 103 rejection on appeal.

DECISION
The decision of the Examiner 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).

AFFIRMED

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