Ex Parte Warnken et al

Patent Trial and Appeal Board

Nov 12, 2013

12056803 (P.T.A.B. Nov. 12, 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.
12/056,803 03/27/2008 Christoph Warnken LEAR 44967 PUSP 1203
34007 7590 11/12/2013
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
11/12/2013 PAPERPAPER
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 CHRISTOPH WARNKEN, ANDREAS THIEX,
OLIVER KLIER, and MARTIN STANNER
____________________

Appeal 2012-001000
Application 12/056,803
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/056,803

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STATEMENT OF THE CASE
Christoph Warnken et al. (Appellants) appeal under 35 U.S.C. § 134
from a rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A seat back for a rear seat of an automotive
vehicle, the seat back comprising:

a plate member; and

a one-piece stamping attached with the plate
member, the one-piece stamping including upper
and lower transverse portions and left and right
side portions extending between the transverse
portions, at least one of the portions including a
trim channel formed therein.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fredrick
Tadokoro
US 5,671,976
US 5,810,446
Sep. 30, 1997
Sep. 22, 1998
Behrens US 2006/0175887 A1 Aug. 10, 2006

REJECTIONS
The Appellants seek our review of the rejections of:
claims 6-10 under 35 U.S.C. § 102(a) as anticipated by Behrens; and
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claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Behrens and
either Tadokoro or Fredrick.

ANALYSIS
Anticipation
The Examiner finds that Behrens discloses, inter alia, a “back panel
(2), structural member (4, 5, 6, 7), opposing sections (4, 5) each forming a
body portion . . . with a radius defining a curved portion (see Figure 4).”
Ans. 4-5.
The Appellants argue that “Behrens’ hat-shaped sections do not have
a body portion being formed with a radius defining a curved portion of the
perimeter of the structural member” because “Behrens’ Figure 4 is a cross-
sectional view of the hat-shaped section 4” and “does not show the perimeter
of Behrens’ rear back rest frame l.” App. Br. 3. The Appellants also argue
that the “perimeter of Behrens’ rear back rest frame 1, as shown in Figure 1 .
. . , does not appear to have any curved portions.” Id. The Appellants
further argue that “Behrens’ hat-shaped sections are ‘manufactured from one
standard semi-finished product, for example an extruded profile or rolled
profile,’ . . . and then ‘cut to size,’ . . . as necessary” and that “[s]uch
manufacturing techniques preclude the formation of the claimed curved
portion of the perimeter of the structural member.” Id. at 4 (citing Behrens,
paras. [0013] and [0015]). The Appellants further argue that “Behrens
emphasizes that ‘[t]he inventive rear backrest frame further includes that the
hat-shaped sections are rectilinear in orientation’” and that “it is important in
Behrens that the hat-shaped sections are formed with straight lines.” Id.
(citing Behrens, para. [0014]).
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The Examiner responds that “the structural member (4, 5, 6, 7)
includes opposing sections (4, 5) at least partially defining a perimeter . . . of
the structural member (4, 5, 6, 7) along a surface of the back panel” and that
“each of the opposing sections ha[s] a body portion, wherein at least one of
the body portions is formed with a radius defining a curved portion of the
perimeter.” Ans. 6. The Examiner provides an annotated Figure 1 and 4 of
Behrens. Ans. 7-8. The Examiner’s annotated Figure 1 shows a “perimeter”
formed by outer edges of hat-shaped sections 4, 5, 6, and 7 of Behrens. Ans.
7. The Examiner’s annotated Figure 4 shows a “curved portion of the
perimeter.” Ans. 8. The Appellants reply that “the shape of Behrens’
perimeter does not have a curved portion because it is a rectangle.” Reply
Br. 2 (citing Examiner’s annotated Figure 1 of Behrens on page 7 of the
Answer).
The Appellants’ arguments are not persuasive. We agree with the
Examiner that sections 4 and 5 at least partially define a perimeter of
sections 4, 5, 6, and 7. See Ans. 6-7; see also Behrens, fig. 1. We also agree
with the Examiner that at least section 4 has a body portion formed with a
curved portion, as shown in Figure 4 of Behrens, that is part of the
Examiner’s perimeter. See Ans. 4-5 and 6-8. Claim 6 does not exclude the
Examiner’s perimeter, which, although apparently not curved when viewed
in Figure 1, includes a curved portion when viewed in Figure 4. Thus,
Behrens supports the Examiner’s finding regarding “a curved portion of the
perimeter.” Also, because the Examiner’s curved portion is formed from an
extruded or rolled profile, the Appellants’ argument that such manufacturing
techniques preclude forming a curved portion of the perimeter are
unpersuasive. See Behrens, para. [0015]. Furthermore, the disclosure that
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the sections are rectilinear in orientation does not persuasively show error in
the Examiner’s finding of a “curved portion of the perimeter,” as argued by
the Appellants. Thus, we sustain the Examiner’s rejection of claim 6.
The Appellants argue only that “[c]laims 7-10 are patentable because
they depend from claim 6.” App. Br. 4. Therefore, for the reasons discussed
supra, we sustain the Examiner’s rejection of claims 6-10 under 35 U.S.C.
§ 102(a) as anticipated by Behrens.
Unpatentability
The Examiner finds that Behrens “shows all claimed features” and
that “[e]ach of [Tadokoro and Fredrick] . . . teaches forming a one-piece
member as a one-piece stamping,” such as one-piece stamping 16 of
Tadokoro and one-piece stamping 20 or 22 of Fredrick. Ans. 5. The
Examiner concludes that it would have been obvious “to construct the one-
piece member of the primary reference as a one-piece stamping, as taught by
either of the secondary references.” Ans. 5-6. The Examiner states that the
proposed “modification provides an alternate, equivalent configuration for
the one-piece member, wherein the configuration is conventionally used in
the pertinent art” and “provides a member that performs equally as well as
that in the primary reference, while maintaining a one-piece configuration.”
Ans. 6; see also id. at 12.
The Appellants argue that the “Examiner’s proposal would defeat
Behrens’ stated objective ‘to provide a rear seat backrest frame that will
allow a broad range of variants and a secure mounting of the backrest
cushion and/or cover, and can be manufactured cost-effectively, flexibly and
easily’” because the “Examiner’s proposed stamping operations would
require dies specific to each size manufactured, resulting in unnecessary
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additional cost and complexity while reducing the manufacturing flexibility
important to Behrens.” App. Br. 5. (citing Behrens, para. [0010]).
The Examiner responds that there is “no evidence that the
modification of Behrens in view of either of the secondary references would
negate the provision of a rear seat backrest frame that allows a broad range
of variants and a secure mounting of the backrest cushion and/or cover, and
manufacturing cost-effectively, flexibly and easily.” Ans. 11. The
Examiner states that “[r]olling, extruding, stamping, etc., are all
conventional methods for shaping metal,” “[e]ach requires certain tools and
costs,” and “[e]ach provides manufacturing flexibility, as is evidenced by its
conventional and long time use in the pertinent art.” Id. The Examiner also
states that stamping “provides no more tooling or cost than extruding or
rolling,” “requires no degree of complexity above extruding or rolling,” and
“does not hinder cutting to size as necessary before assembling.” Id. The
Examiner further states that the claimed invention “is directed to an article,”
that “the process used to construct the article carries no patentable weight,”
and that the proposed combination does not change or redesign the structure
of Behrens. Ans. 11-12.
The Appellants reply that “Behrens’ hat-shaped sections are
‘manufactured from one standard semi-finished product, for example an
extruded profile or rolled profile,’ . . . and then ‘cut to size,’ . . . as necessary
before assembling” to reduce tooling, cost, and complexity. Reply Br. 3
(citing Behrens, paras. [0013] and [0015]). The Appellants further argue
that “[s]tamping operations would necessarily require dies specific to each
size manufactured, resulting in unnecessary additional cost and complexity
while reducing the manufacturing flexibility important to Behrens.” Id.
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The Appellants’ arguments are not persuasive. Our reviewing court
has recognized that a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another”). The Appellants’ asserted disadvantages for stamping the
sections of Behrens do not persuasively show error in the Examiner’s
proposed combination. Thus, we sustain the Examiner’s rejection of claim
1.
The Appellants contend only that “[c]laims 2-5 are patentable because
they depend from claim 1.” App. Br. 6. Accordingly, we sustain the
Examiner’s rejection of claims 1-5 under 35 U.S.C. § 103(a) as unpatentable
over Behrens and either Tadokoro or Fredrick.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-10 are
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)(iv).

AFFIRMED

Vsh