Ex Parte Patton et al

Patent Trials and Appeals Board

Jul 2, 2019

13814817 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/814,817 03/20/2013 Justin Shane Patton
119991 7590 07/05/2019
HONEYWELL/ALSTON-SCANNING & MOBILITY
115 Tabor Road
P.O. Box 377
Morris Plains, NJ 07950
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.
066849/522854 (H29105) 2122
EXAMINER
GUAN, GUANG H
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
patentservices-us@honeywell.com
usptomail@alston.com
SPSIP@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN SHANE PATTON and BRIAN C. MONTGOMERY
Appeal2018-007298
Application 13/814,817
Technology Center 3600
Before WILLIAM A. CAPP, LISA M. GUIJT, and ARTHUR M. PESLAK,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Auger
(US 2009/0173867 Al; published July 9, 2009) and Herzer2 (DE 1944293
Al; published Apr. 8, 1971). 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Honeywell International Inc. is identified as the real party in interest
Appeal Br. l.
2 We rely on the English language translation of Herzer provided in the
record.
3 Appeal is taken from the Final Office Action dated April 21, 2017.
Appeal2018-007298
Application 13/814,817
CLAIMED SUBJECT MATTER
Claims 1, 4, and 7 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. An energy absorber, comprising:
a monolithic length of a ductile material comprising a first
end and a second end, the monolithic length of the ductile
material comprising
a first connector passage in the first end,
a second connector passage in the second end,
at least a first longitudinally extending section that extends
continuously between the first end and the second end,
the first longitudinally extending section being deformed
over at least a portion thereof out of a plane running through the
first end and the second end,
a first discontinuous section extending longitudinally from
the first end toward the second end, and
at least a second discontinuous section extending
longitudinally from the second end toward the first end, the first
discontinuous section and the second discontinuous section
being connected such that a tensile force of a threshold
magnitude is required between the first end and the second end
to disconnect the first discontinuous section from the second
discontinuous section upon disconnection of the first
discontinuous section from the second discontinuous section, the
first longitudinally extending section being free to deform under
the tensile force to absorb energy.
ANALYSIS
Appellants argue independent claims 1-7 as a group. Appeal
Br. 5-12. We select claim 1 as representative, and claims 6-7 stand or fall
with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Regarding independent claim 1, the Examiner finds that Auger
discloses an energy absorber (i.e., safety device 200), comprising a structure
(i.e., bands 202a, 202b, mechanical fuse assembly 206, springs 210) with
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Appeal2018-007298
Application 13/814,817
first and second ends (i.e., bands 202a, 202b ), first and second connector
passages (i.e., holes 204), and a first longitudinally extending section (i.e.,
spring 210), which extends continuously between the first and second ends,
is deformed over at least a portion thereof out of a plane running through the
first and second ends, and is free to deform under the tensile force to absorb
energy, and also first and second discontinuous sections (i.e., arms 212,
216), as claimed. Final Act. 6 (citing Auger,r,r 32, 33, Figs. 6, 7).
The Examiner determines that Auger fails to disclose that the structure
is a monolithic length of ductile material, as claimed, and relies on Herzer
for teaching an energy absorber (i.e., fitting parts 1, fastening lugs 2,
material 3, ends 4, 5, side bends 6) comprising a monolithic length of a
ductile material with a first longitudinally extending section (i.e., 6a) and a
second longitudinally extending section (i.e., 6b ). Final Act. 7 ( citing
Herzer Fig. 1, as annotated by the Examiner). The Examiner's annotated
Figure 1 of Herzer is reproduced below.
6b--Second
l ongtud inau y
t5xtencfo,g Section
6a '" Fitst
Lon~J itudtnai !)'
Ext(~ndtng Seetkln
Figure 1 of Herzer "shows an expansion element made from embossed
metal," wherein "[s]ide bends 6 limit the exodus in the tendon position 7
[ during] the stretching process" (Herzer ,r 6), and wherein the Examiner has
identified one of side bends 6 (identified by the Examiner as "6a") as
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Application 13/814,817
corresponding to the claimed first longitudinally extending section, and the
other of side bends 6 (identified by the Examiner as "6b") as corresponding
to the claimed second longitudinally extending section (Final Act. 7).
The Examiner reasons, inter alia, that it would have been obvious to
replace the springs of Auger with the bends of Herzer to form Auger's safety
device (i.e., energy absorber) as a monolithic length of a ductile material,
because "the mere substitution of springs with bends is generally within the
level of ordinary skill in the art as Auger teaches that a variety of boom-
pivoting resisting elements may be used." Id. at 8 (citing Auger ,r 35).
Appellants argue that the Examiner improperly relied on hindsight.
Appeal Br. 6. We disagree, in that Herzer discloses a known resisting
element (i.e., side bends 6), and although Auger discloses embodiments
incorporating chain-link elements, springs, and dashpots as resisting
elements, Auger expressly discloses that "a variety of ... resisting elements"
may be used. Thus, the Examiner's proposed modification is supported by
Auger, such that the Examiner did not impermissibly rely on hindsight.
Notably, where "a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result." See
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007).
Appellants also argue that Figure 4 of Auger discloses an energy
absorber comprised of a monolithic length of a ductile material, and
therefore, the Examiner erred by finding that "Auger does not disclos[]e the
energy absorber (i.e., the embodiment in Figs. 6 and 7), wherein the
structure is a monolithic length of a ductile material." Appeal Br. 7
( emphasis omitted). Appellants further submit that the Examiner "cherry-
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Application 13/814,817
picked" from the disclosure of Auger, in combination with Herzer, to arrive
at the claimed invention. Id. at 8.
Appellants' argument fails to address the rejection as articulated by
the Examiner, in that the Examiner relies on Auger's embodiment as
depicted in Figures 6 and 7, and not on the embodiment as depicted in
Figure 4. See Ans. 5 ("the energy absorber ... in Figures 6 and 7 of Auger
is applied in the prior rejections"). Thus, Appellants' argument does not
apprise us of error in the Examiner's rejection.
Appellants further argue that the Examiner's rationale, namely, "to
allow the energy absorber to be formed from a single material" is
"unsupportable." Appeal Br. 8. Appellants submit that
if one skilled in the art were seeking to make an energy absorber
from "a monolithic length of a ductile material" based upon the
disclosure of Auger, one would clearly make it according to the
energy absorber 100 disclosed in Fig. 4 of Auger and would not
have any motivation to somehow utilize the structure disclosed
in Herzer to modify the energy absorber 200 shown in Fig. 6 of
Auger.
Id. at 10.
We are not persuaded by Appellants' argument. Rather, as discussed
supra, the Examiner's proposed modification is supported by sufficient
rational underpinning: the mere substitution of one element for another
known in the field, in accordance with Auger's express invitation. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
underpinning) cited with approval in KSR, 550 U.S. 398,418 (2007).
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Application 13/814,817
For the first time in the Reply Brief, Appe11ants argue that the
Examiner's proposed combination does not result in the claimed invention,
because
while [Herzer's side bends] 6 have a thickness across the plane
of material 3, their bending will occur within the plane of
material 3 (i.e., as material 3 and elements 6 are stretched, the
limiting elernents 6 do not bend back into the plane of material
3, but rather bend laterally inwardly toward the sides of material
3).
Reply Br. 2; cf claim l, supra ("the first longitudinally extending section
being deformed over at least a portion thereof out of a plane running through
the first end and the second end [of the monolithic length of ductile material]
... [ and] being free to deform under the tensile force to absorb energy").
Notwithstanding that Auger's energy absorber, as modified by Herzer,
results in at least a portion of the side bends being deformed out of a plane
running through Auger's bands 202a, 202b, and that the claims do not
require any bending back into any plane, Appellants' argument is untimely
and cannot be considered without good cause, which Appellants have not
shown. See 37 C.F.R. § 4I.41(b)(2) ("Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.'').
Accordingly, we sustain the Examiner's rejection of claim 1, and
claims 2_:"j faH therewith.
DECISION
The Examiner's decision rejecting claims 1-7 is AFFIRMED.
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Application 13/814,817
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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