11022701 (B.P.A.I. Mar. 8, 2012)

Ex Parte Ota et al

Board of Patent Appeals and InterferencesMar 8, 2012

11022701 (B.P.A.I. Mar. 8, 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. 11/022,701 12/28/2004 Tetsuyuki Ota W0200.0131/P131 9232 24998 7590 03/08/2012 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER VO, HAI ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 03/08/2012 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 TETSUYUKI OTA, Masahiko Hara, and Tatsushi Ohno ________________ Appeal 2010-007748 Application 11/022,701 Technology Center 1700 ________________ Before FRED E. McKELVEY, MARK NAGUMO, and JEFFREY B. ROBERTSON, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007748 Application 11/022,701 2 A. Introduction1 Tetsuyuki Ota, Masahiko Hara, and Tatsushi Ohno (“Ota”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-5 and 14-16.3 We have jurisdiction. 35 U.S.C. § 6. We REVERSE. The subject matter on appeal relates to a laminated article intended for use as a component of the interior of an automobile, such as a door trim. (Spec. 1, 1st para.) The laminates are said to be light in weight, to hold their shape well, and to have excellent appearance and touch. (Id. at 3, 2d full para.) The light weight is obtained by providing a resin rib for rigidity, and a resin foam substrate that can be shaped. The appearance and touch are obtained in part by providing a breathable decorative surface that may be multilayered. To prevent shrinkage deformation (e.g., sag) of the resin foam substrate during and after processing (e.g., molding and laminating) at high temperatures, a “drawdown restraining layer,” typically in the form of a nonwoven fabric, is provided between the decorative surface member and the resin foam substrate. (Id. at 12.) The drawdown restraining layer is also said to maintain substantial uniform thickness of the product. (Id. at 13, ll. 1-2.) 1 Application 11/022,701, Automotive Interior Component and Manufacturing Method Thereof, filed 28 December 2004. The specification is referred to as the “701 Specification,” and is cited as “Spec.” The real party in interest is listed as Kasai Kogyo Co., Ltd. (Appeal Brief, filed 27 January 2009 (“Br.”), 2.) 2 Office action mailed 27 May 2008 (“Final Rejection”; cited as “FR”). 3 Copending claims 11-13 have been withdrawn from consideration and are not before us. (FR 1; Br. 3.) Appeal 2010-007748 Application 11/022,701 3 Claim 1 is representative and reads: 1. An automotive interior component that entirely or partly includes a laminated assembly comprising: a resin foam substrate that is formed into a desired shape and has a shape-holding property; a resin rib in a predetermined pattern shape integrally laminated on a rear surface of the resin foam substrate; a breathable decorative member attached to a front surface of the resin foam substrate, the decorative member being made with a breathable material or breathable structure having a non- breathable material with pinholes; and a drawdown restraining layer formed between the resin substrate and the decorative member, the drawdown restraining layer capable of restraining a drawdown of the resin foam substrate that has been heated and softened. (Claims App., Br. 15; paragraphing, indentation, and emphasis added.) Independent claim 14 is similar. The Examiner maintains the following grounds of rejection:4 A. Claims 1 and 14 stand rejected under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) in view of the teachings of Hanada.5 B. Claims 2-5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Hanada and Usui 195.6 4 Examiner’s Answer mailed 21 April 2009 (“Ans.”). 5 Satoshi Hanada and Nobuhiro Usui, Process for Producing a Thermoplastic Resin-Molded Article, U.S. Patent 6,565,795 B1 (20 May 2003). 6 Nobuhiro Usui and Takeo Kitayama, Process for Producing a Skin Material-Laminated Foamed Thermoplastic Resin Molding, U.S. Appeal 2010-007748 Application 11/022,701 4 C. Claim 4 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Hanada and Gray.7 D. Claims 1, 2, 14, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the teachings of Usui 195. E. Claims 1, 2, 14, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Usui 6728 and Usui 195. F. Claims 1-5 and 14-16 stand rejected under obviousness-type double patenting in view of Ota,9 copending application 10/229,211, claims 1, 3-7, 9, and 17-24, in view of Usui 195. B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Claimed Invention Figure 18, shown on the following page, illustrates critical steps in the formation of an embodiment of the claimed component. The component comprises a resin foam substrate S adhered to a drawdown restraining Patent 6,660,195 B2 (9 December 2003), based on an application filed 1 March 2001. 7 John D. Gray, Method for Forming Design in a Layered Panel Using a Laser, U.S. Patent 6,633,019 B1 (14 October 2003), based on an international application filed 3 February 2000. 8 Nobuhiro Usui, Foamed Thermoplastic Resin Molding with a Functional Component, U.S. Patent Application Publication 2003/0165672 A1 (4 September 2003), based on an application filed 4 February 2003. 9 Application 10/229,211, filed 28 August 2002, issued 29 June 2010 as U.S. Patent 7,744,983 B2 to Tetsuyuki Ota et al., Laminated Structure and Method for Manufacturing the Same. Claim 1 of the patent appears to be substantially the same as claim 1 of the application as applied by the Examiner and as argued by Ota in the Brief. App App layer heate heate deco betw reces {F As s eal 2010-0 lication 11 26, which d between d, compri rative mem een upper sed area 4 ig. 18 sho betw hown in th {The Fig. 07748 /022,701 in turn is heating p ses breath ber and t mold part 23a. (Spe ws a mold een the d e detail fro 19 detail i covered b lates 50. D able outer he heated r 41 and low c. 42.) {Fig. 18 i ing proces ecorative m Fig. 19 llustrates t 5 y a hot me ecorative layer 23a esin foam er mold p s shown b s with a d layer 23 an , below, he origin o lt layer 24 member 2 and cushio substrate art 42, wh elow} rawdown r d the foam f the draw . That ass 3, which n layer 23 assembly ich contai estraining layer S} down pro embly is is not b. The are placed ns layer 26 blem} Appeal 2010-007748 Application 11/022,701 6 heated resin foam substrate S lies over recess 423a in lower mold 42. The softened resin has a tendency to sag, which is counteracted in Fig. 19 by air flow through channels 72. In the embodiment shown in Figure 18, supra, heated and softened resin foam substrate S is supported from above by nonwoven layer 26. In other words, layer 26 restrains drawdown of the foam resin substrate S into recess 423a. Breathable decorative layer 23 is adhered to the resin foam substrate assembly by closing the press. A resin rib is formed on the rear of substrate S by injecting a resin via passage 43a into recess 423a. (Spec. 42-43.) To summarize: On the front surface of the shaped resin foam substrate is a drawdown restraining layer, on top of which is a breathable decorative member. On the rear side of the shaped resin foam substrate is an integrally laminated rib. In embodiments, the breathable decorative layer may comprise multiple layers, such as a top layer and a cushioning layer (claims 2 and 15), or a top layer, a cushioning layer, and a rear-surface nonwoven layer (claims 3 and 16). Hanada: Rejections A and C Ota argues the Examiner misinterprets Hanada as disclosing or suggesting that porous layer 5, which the Examiner reads on the drawdown restraining layer, can be between the breathable decorative member and the resin foam substrate. (Br. 7-8.) Rather, Ota argues, Hanada Fig. 4, the only figure that shows both a skin material and a porous layer, shows porous layer 5 on one side of foamed layer 2, and skin material 4 on the opposite side of foamed layer 2. Appeal 2010-007748 Application 11/022,701 7 The Examiner responds, referring to Fig. 5, that the claim is met because Hanada teaches that the porous layer is provided on both sides of the foam substrate. (Ans. 3, citing Hanada col. 5, lines 15-20.) In Hanada’s words, “[t]he molded article of the present invention may be constituted such that the functional member is fused via a porous layer arranged on one or both sides of the foamed sheet made of thermoplastic resin, to the foamed sheet of thermoplastic resin.” (Hanada, col. 5, ll. 16-20.) In this passage, Hanada describes how the functional member— i.e., the structural support rib—is fused to the foamed resin sheet via a porous layer. In other words, Hanada describes the porous layer as being only between the resin foam substrate and the resin rib. The Examiner has not directed our attention to disclosure by Hanada of a porous layer between the skin layer and the resin foam substrate. Nor has the Examiner explained how the arrangement shown in Fig. 5 effectively discloses such an arrangement. Accordingly, we REVERSE the rejection of claims 1 and 14 as anticipated or obvious in view of Hanada. The Examiner’s reliance on Gray for teachings of certain structures that, in the Examiner’s view, render the subject matter of claim 4 obvious when combined with the teachings of Hanada, does not cure the deficiencies of Hanada. We therefore REVERSE the rejection of claim 4. Hanada and Usui 195: Rejection B The Examiner finds that Usui 195 teaches a breathable skin material. The Examiner concludes that it would have been obvious “to use the skin Appeal 2010-007748 Application 11/022,701 8 layer of Hanada with a specific combination as taught by Usui ‘195 motivated by the desire to [impart] a proper soft feeling and formability to the skin material.” (FR 4; Br. sentence bridging 4-5.) In particular, the Examiner finds that the three-layer skin material described at Usui column 8, lines 47-52 meets the requirements of these claims. This skin material comprises a 0.2-mm thick non-woven fabric as a backing material, on which is laminated a 3-mm thick polyurethane foamed layer, that is in turn covered by a 0.5-mm thick polyvinyl chloride sheet. (Usui col. 8, ll. 47-52.) As Ota points out (Br. 9), Usui 195 does not indicate that the polyvinyl chloride sheet is breathable, or that it has pinholes. The Examiner finds that “the panel [i.e., the laminated article] is suitable as a seat back which requires a breathable material to provide air circulation through the skin material.” (Ans. 7, ll. 10-11.) However, as Ota also points out (Br. 9), the Examiner cites no evidence in the record to support this finding. The Usui 195 list of suitable uses of the laminate “include[s] instrument panels, seat backs, partition boards, console boxes, and door trims.” (Usui 195 col. 7, ll. 1-3.) While breathable surfaces are not necessarily incompatible with these structures, it is not apparent that any of these structures requires a breathable surface. In this regard, Ota argues further that Usui 195 does not seek to provide a skin member that corresponds to the “breathable decorative member” recited in the appealed claims. (Br. 9.) More particularly, Ota argues that the method taught by Usui 195 to form the laminated structures results in a surface layer that is not breathable. Usui 195 teaches that the foamed resin structure is formed in situ. That is, a skin material is App App intro The resin mate comp cool the c layer back so th prod the m foam an in {Fig {Fig eal 2010-0 lication 11 duced aga mold is clo containin rial. (Id. a ressed to ed to form ompressio . At the s of the lam e mold cav uct. (Id. a old “caus ed layer” Figure 6 terior pan .6(b) is sho . 6(b) show 07748 /022,701 inst one si sed, and a g a foamin t col. 7, l. a predeter a skin lay n step cau ame time, inated stru ity cleara t ll. 25-26. es the resi (id. at ll. 2 (b), reprod el for an au wn below s a cross de of an op predeterm g agent is 66, throug mined thic er. (Id. at ses the bon more resin cture. (Id nce is the ) In the w n between 6-28), yiel uced belo tomobile } and 9 lower causin (Usui section of 9 en mold. ined amo injected in h col. 8, l. kness, and col. 8, ll. 1 ding of th is added . at ll. 21- predeterm ords of Us the skin la ding the f w left, sho formed by Mo ag mat adde cools form. Par s the press g the cent 195 col. 7 panel P} (Usui 195 unt of mol to the mo 15.) The the surfac 6-21.) Ac e skin ma to form a r 24.) The m ined thickn ui 195, th yers to fo inal produ ws a magn the Usui lten resin ent is injec erial 16. A d to form , skin laye tial openin ure on the er region , ll. 16-18 col. 7, ll. ten thermo ld against resin is th e of the re cording to terial and t ib membe old is the ess of the e partial op am, formin ct, shown ified cros 195 proces containing ted agains dditional rib 7, and rs 14, 3 [si g of the m still-hot a 8, 11 to fo ; cf. col. 8, 61-65.) plastic the skin en sin is Usui 195 he resin r on the n opened molded ening of g a in Fig. 6b. s section o s. a foamin t skin resin is as the resi c: 13], 10, old rticle, am. ll. 16-30. , f g n ) Appeal 2010-007748 Application 11/022,701 10 Ota argues that, “if the ‘skin material’ of Usui ‘195 were breathable, the compression step would press resin through the non-woven fabric, into the open cells of the polyurethane foam layer, and ultimately through the breathable surface layer of Usui ‘195.” (Br. 10, 1st full para.) The Examiner responds that Ota’s arguments are not commensurate in scope with the claims because “[n]othing in claims 2 and 3 is specific in that every individual layer of the decorative member is breathable.” (Ans. 10, ll. 10-11.) The difficulty with this response is that, in ordinary speech, it is vital that the surface layer of a breathable member be breathable. A sheet of plastic, such as polyvinyl chloride, is not typically porous unless it is made so during manufacture or afterwards by puncturing. Moreover, the open cell foams and the nonwoven fabric layer cited by the Examiner (e.g., Ans. 10, ll. 14-17) would be expected to be flooded with molten resin, which, according to Usui 195 (Usui 195 col. 7, ll. 16-21), cools and hardens to form a skin layer. The Examiner has not explained how these layers can form a “breathable layer.” The weight of the evidence on these issues favors Ota. Accordingly, we REVERSE the rejection of claims based on Hanada and Usui 195. Rejection D: Usui 195 The Examiner (Ans. 5-6) found that the structure illustrated by Usui 195 Fig. 6(b) and having the “skin layer” [sic: “skin material”] described by Usui 195 at column 8, lines 47-52, reads on the structures required by appealed claims 1, 2, 14, and 15. In particular, the Examiner Appeal 2010-007748 Application 11/022,701 11 finds that the top PVC layer and the intermediate polyurethane foam layer together read on the breathable decorative member (Ans. 5, last two lines) [the breathable layer and the cushioning layer recited in claims 2 and 15, and in claims 3 and 16], while the nonwoven fabric layer reads on the drawdown restraining layer [as recited in claims 3 and 16]. The Examiner finds further that “[t]he skin layer 14 reads on the claimed hot melt resin film” (Ans. 6, ll. 3-4), apparently referring to the “hot melt web is laminated on the rear surface of the decorative member” recited in claim 5. The difficulty with these findings, as discussed supra, is the lack of evidence that the outermost layer 16 of panel P, as made and described by Usui 195, is breathable.10 Accordingly, we REVERSE the rejections in view of Usui 195. 10 We commend the Examiner’s recognition that the nonwoven fabric layer corresponds, potentially, to the drawdown restraining layer. We also note, in the Final Rejection, that the Examiner identified skin layer 14 as corresponding either to a hot melt adhesive layer or to the drawdown restraining layer. (FR. 4, ll. 3-4.) While the Examiner, in the Answer, appears to have backed away from the identification of skin layer 14 as a drawdown layer, perhaps because the presence of the nonwoven layer on the back of the skin material (which was also noted in the Final Rejection; see id. at ll. 4-8), it is not clear that the first interpretation should be discarded. The drawdown restraining layer is functionally named and defined: it is any layer that can restrain the foam layer from “drawing down” (sagging). The presence of any material that is wetted by the foam, or that adheres to the foam, even slightly, might well diminish the tendency of the foam, when heated and softened, to sag into a recess or to condense under its own weight. This introduces a curious product-by-process-of-manufacture character to the present claims to a product. The Examiner and Ota have not fully explored this issue. In the present posture of the case, we need not, and therefore do not resolve it. Appeal 2010-007748 Application 11/022,701 12 Rejections E and F In Rejection E, the Examiner, relying on Fig. 1(b) and paragraphs [0051] and [0052], finds that Usui 672 describes a laminated component that describes all the limitations of claim 1, 2, 14, and 15, but for the presence of “a drawdown restraining layer on a surface between the foam [body] and skin layer.” (Ans. 7, ll. 1-2.) In Rejection F, the Examiner relied on certain claims of then copending application 10/229,291, which has since issued as Ota 983, for all limitations of claims 1-5 and 14-16 but for “a drawdown restraining layer on a surface between the foam [body] and skin layer.” (Ans. 8, 2d full para.) The Examiner finds that Usui 195 describes structures having a breathable skin layer and a drawdown restraining layer to make up for the deficiencies of the primary references. For the reasons given supra, the Examiner’s finding regarding the breathable skin layer is not supported by the evidence. Accordingly, we REVERSE Rejections E and F. C. Order We REVERSE the rejection of claims 1 and 14 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) in view of the teachings of Hanada. We REVERSE the rejection of claims 2-5, 15, and 16 under 35 U.S.C. § 103(a) in view of the combined teachings of Hanada and Usui 195. Appeal 2010-007748 Application 11/022,701 13 We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) in view of the combined teachings of Hanada and Gray. We REVERSE the rejection of claims 1, 2, 14, and 15 under 35 U.S.C. § 103(a) in view of the teachings of Usui 195. We REVERSE the rejection of claims 1, 2, 14, and 15 under 35 U.S.C. § 103(a) in view of the combined teachings of Usui 672 and Usui 195. We REVERSE the rejection of claims 1-5 and 14-16 under obviousness-type double patenting in view of copending application 10/229,211 (now U.S. Patent 7,744,983), claim 1, in view of Usui 195. REVERSED