Ex Parte Schoemann et al

Board of Patent Appeals and Interferences

Nov 8, 2010

10709382 (B.P.A.I. Nov. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL P. SCHOEMANN,
JOHN D. YOUNGS, and MARK HEINZE
____________

Appeal 2009-004371
Application 10/709,382
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Michael P. Schoemann et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting:
(1) claims 1, 2, 8-10, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Stein (U.S. Patent No. 6,821,465 B1, issued
Nov. 23, 2004) and Io (Japanese Patent Application Publication
No. JP 2000-264361 A, published Sep. 26, 2000); and
(2) claims 22-26 under 35 U.S.C. § 103(a) as
unpatentable in view of Stein, as applied to claim 1, and the
“ordinary skill in the art.” Ans. 4.

Appellants cancelled claims 3-7, 11-14, and 16-21. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

The Invention
The claims on appeal relate to door trim panel including a dual density
bolster armrest and integrated components.
Claims 1, 9 and 22, reproduced below, are representative of the
subject matter on appeal.
1. A door trim panel, comprising:
a cover stock;
an armrest coupled to the cover stock and
having a first density;
an upper energy absorber disposed above the
armrest and having a second density higher than
the first density; and
a lower energy absorber disposed below the
armrest and having a third density higher than the
first density,
wherein the armrest, upper energy absorber
and lower energy absorber are formed from a
polyolefin bead foam.

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9. A vehicle, comprising:
a body including a door; and
a door trim panel, the door trim panel
including a cover stock, an armrest coupled to the
cover stock and having a first density, an upper
energy absorber disposed above the armrest and
having a second density higher than the first
density, and a lower energy absorber disposed
below the armrest and having a third density
higher than the first density,
wherein the armrest, upper energy absorber
and lower energy absorber are formed from a
polyolefin bead foam.

22. A door trim panel, comprising:
a cover stock;
an armrest coupled to the cover stock and
having a first density;
an upper energy absorber disposed above the
armrest and having a second density higher than
the first density, and
a lower energy absorber disposed below the
armrest and having a third density higher than the
first density and less than the second density
wherein the armrest, upper energy absorber
and lower energy absorber are formed from a
polyolefin bead foam.

DISCUSSION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner fail to provide some articulated reasoning with
some rational underpinning for the obviousness rejection of claims 1, 2, 8-
10, and 15?
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(2) Did the Examiner err in concluding that claims 22-26 are
unpatentable under 35 U.S.C. § 103(a) in view of Stein and the “ordinary
skill in the art”?
Analysis
Issue 1
Appellants contend that the Examiner’s rejection of independent
claims 1 and 9 should be reversed since the Examiner failed to establish a
prima facie case of obviousness because Io does not teach or suggest a
modification of Stein that would result in the claimed invention. App. Br. 7-
8. More particularly, Appellants contend that combining Stein and Io in the
manner suggested by the Examiner is improper as stretching the application
of obviousness to unacceptable extremes. App. Br. 8. Appellants also
contend that Stein does not disclose “the type of materials that may be used
for the high density polymeric material” and “[n]othing in Stein teaches or
suggests that the high density polymeric material is the same as the low
density region or that the high density region is . . . a polyolefin bead foam.”
App. Br. 9. Appellants also contend that “the Examiner has failed to state
why it would have been obvious for one skilled in the art to incorporate the
polyolefin bead foam of a window sash protection member into a section of
a door trim panel ‘to provide the door trim panel to include the armrest with
energy absorbers with excellent shock absorbing buffer taught by [Io]’.”
App. Br. 10-11. Appellants also contend that “even assuming that is was
proper to combine the references in the manner suggested by the Examiner,
there is still no specific teaching or suggestion that the Examiner can point to
that would motivate one of ordinary skill in the art to form the upper, lower,
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and intermediate[s] sections of Stein from the same material,” except a
hindsight reconstruction. App. Br. 11.
The Examiner’s position is that Stein discloses the invention
substantially as claimed, but Stein fails to explicitly disclose that the foam is
polyolefin bead foam. Ans. 4. The Examiner concludes that it would have
been obvious to one having ordinary skill in the art to modify Stein to
include the foam to be polyolefin bead foam as taught by Io “to provide the
door trim panel to include the armrest with energy absorbers with excellent
shock absorbing buffer taught by [Io].” Id. In response to Appellants’
argument that there is no suggestion to combine the references, the
Examiner maintains that “polyolefin bead foam is used to provided [sic] an
armrest with excellent shock absorbing properties as taught by [Io].” Ans. 5.
The Examiner also maintains that the conclusion of obviousness is not based
upon improper hindsight reasoning. Ans. 6.
The Federal Circuit has stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). It is improper to base a conclusion of obviousness upon facts
gleaned only through hindsight. “To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.”
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
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(citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).
We agree with the Appellants that the Examiner has not established a
prima facie case of obviousness. The Examiner has failed to articulate a
reason with some rational underpinning in order to support the modification
of Stein by the teachings of Io. The Examiner’s rationale of “to provide the
door trim panel to include the armrest with energy absorbers with excellent
shock absorbing buffer taught by [Io]” does not articulate sufficient
reasoning with some rational underpinning as to why one of ordinary skill in
the art would consider modifying the high density polymeric material 16 of
Stein with the polyolefin bead foam of the protective layer A for sashes of
Io. More particularly, the Examiner has not explained why replacing the
high density polymeric material 16 of Stein with the polyolefin bead foam of
Io would necessarily meet the claim limitations of the third density of the
lower energy absorber and the second density of the upper energy absorber
being higher than the first density of the armrest as recited in claims 1 and 9,
especially since Stein already discloses a door trim panel with a shock
absorbing structure in which the armrest 14 is made from a low density
material such as expanded polypropylene (Stein, col. 6, ll. 10-11), i.e., a
polyolefin bead foam. Thus, absent hindsight, we see no reason, and the
Examiner has not provided an adequate articulation of a reason, why a
person of ordinary skill in the art would have been led to modify Stein by the
teachings of Io in the manner suggested by the Examiner.
In view of the foregoing, we do not sustain the rejection of claims 1,
2, 8-10, and 15 under 35 U.S.C. § 103(a) as unpatentable over Stein and Io.
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Issue 2
Appellants contend that although the Examiner acknowledged that
Stein does not disclose both the high and low density material regions to be
formed from polyolefin bead foam, the Examiner failed to address how this
deficiency was overcome in the rejection of claims 22-26 (in contrast, to the
rejection of claims 1, 2, 8-10, and 15 where Io was applied in an attempt to
remedy the deficiency). App. Br. 13. Appellants also contend that the
Examiner acknowledged that Stein does not disclose varied ranges of
densities for the first, second, and third densities. Id. Appellants contend
that the Examiner fails to provide any evidence, such as a case citation, to
support his conclusion that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to provide varied ranges of
densities since it has been held to be within the general skill of a worker in
the art to use the available foam with required density as specified by the
design specification which would provide the desired level of protection for
the passengers in the event of a side impact. App. Br. 13-14. Appellants
also contend that the Examiner is defining the problem in terms of its
solution and thus, is using improper hindsight in the selection of the prior art
references for obviousness. App. Br. 14. Appellants contend that the
present invention does not just arbitrarily assign different density ranges to
various components, but instead optimizes the second density of the upper
energy absorber and the third density of the lower energy absorber for male
and female passengers, respectively. Id. Appellants also contend that Stein
does not address or in any way discuss that the two high density material
regions may be formed from not only the same material, but also from a
polyolefin bead foam of two different densities. Id.
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The Examiner’s position is that Stein discloses the invention
substantially as claimed, except that Stein fails to disclose varied ranges of
densities for the first, second, and third densities. Ans. 5. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time the invention was made “to provide varied ranges of densities for
the first, second and third densities, since it has been held to be within the
general skill of a worker in the art to use the available foam with required
density as specified by the design specification which would provide the
desire[d] level of protection for the passengers in the event of a side impact.”
Id.
In rejecting claims as unpatentable on the basis of obviousness, the
Examiner must provide “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l.
Co. v. Teleflex, Inc., 550 US. 398, 418 (2007). Moreover, rejections based
on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
We agree with Appellants that the Examiner’s conclusion of
obviousness is based upon improper hindsight reasoning. The Examiner has
failed to make any factual findings with respect to where Stein discloses the
use of polyolefin bead foam for the armrest, upper energy absorber, and
lower energy absorber. The Examiner has also failed to provide any
authority for his generalized statement that it has been held to be within the
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general skill of a worker in the art to use the available foam with required
density to provide the desired level of protection for the passengers in the
event of a side impact. Accordingly, we find the Examiner’s legal
conclusion of obviousness is not supported by facts and thus, cannot stand.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 22-26 under 35 U.S.C. § 103(a) as unpatentable in view of Stein,
as applied to claim 1, and the “ordinary skill in the art.”

CONCLUSIONS
The Examiner erred in combining Stein and Io to reject claims 1, 2, 8-
10, and 15 under 35 U.S.C. § 103(a) as unpatentable because the Examiner
failed to provide an articulated reasoning with some rational underpinning
for the rejection.
The Examiner erred in combining Stein and the “ordinary skill in the
art” to reject claims 22-26 as unpatentable under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1, 2, 8-10, and 15
under 35 U.S.C. § 103(a) as unpatentable over Stein and Io and the
Examiner’s rejection of claims 22-26 under 35 U.S.C. § 103(a) as
unpatentable in view of Stein, as applied to claim 1, and the “ordinary skill
in the art.”

REVERSED

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