FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Apr 3, 2020

15065490 - (D) (P.T.A.B. Apr. 3, 2020)

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.
15/065,490 03/09/2016 Robert Duane Bedard 83630972 5551
121691 7590 04/03/2020
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
YANG, ZHEREN J
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
04/03/2020 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DUANE BEDARD and
GEORGE DAVID KOCH SMITH
Appeal 2019-004107
Application 15/065,490
Technology Center 1700
Before JAMES C. HOUSEL, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–8. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Brief (“Appeal Br.”) filed November 30, 2018,
p. 3.
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We AFFIRM.2
CLAIMED SUBJECT MATTER
The invention is directed to a decorative structural plastic part
comprising a structural plastic layer, an in-mold-decoration (“IMD”), and an
IMD-compatible plastic layer between IMD and the structural layer, wherein
the structural layer and the IMD-compatible plastic layer have a mechanical
bond. Spec. ¶ 7. More particularly, Appellant discloses that this mechanical
bond may include interdigitating sections of the structural and
IMD-compatible layers, and further may form a dovetail connection. Id. ¶ 8.
Appellant discloses that the part may be an air register louver for a motor
vehicle. Id.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A decorative structural plastic part, comprising:
a structural plastic layer;
an in-mold-decoration (IMD)-compatible plastic layer;
a mechanical bond between said structural plastic layer
and said IMD-compatible plastic layer, wherein said
mechanical bond includes a first set of alternating first
projections and first channels in said structural plastic layer
and a second set of alternating second projections and second
channels in said IMD-compatible plastic layer formed by the
first set of alternating first projections and first channels,
wherein the structural plastic layer extends below the
mechanical bond; and

2 Our Decision additionally refers to the Specification (“Spec.”) filed March
9, 2016, the Examiner’s Final Office Action (“Final Act.”) dated June 28,
2018, the Examiner’s Answer (“Ans.”) dated March 25, 2019, and the Reply
Brief (“Reply Br.”) filed April 29, 2019.

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an IMD bonded to said IMD-compatible plastic layer.

Appeal Br. 16 (Claims Appendix).

Independent claim 8 recites a similar structure as claim 1, but
specifies that the part is an air register louver for a motor vehicle.
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Takenaka et al.
(“Takenaka”)
US 2003/0069339 A1 Apr. 10, 2003
Muggli et al. (“Muggli”) US 2005/0276945 A1 Dec. 15, 2005
Egerer et al. (“Egerer”) US 2008/0292851 A1 Nov. 27, 2008
Rottmann US 2016/0001638 A1 Jan. 07, 2016
Register Definition, AMERICAN HERITAGE DICTIONARY,
https://ahdictionary.com/word/search.html?q=register&submit.x=22&submit.y=29
(last visited June 08, 2017). (“AH Dictionary”)
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1, 3, and 8 under 35 U.S.C. § 102(a)(1) as anticipated
by or, in the alternative, under 35 U.S.C. § 103 as unpatentable over
Egerer;
2. Claims 1, 3, 4, and 8 under 35 U.S.C. § 103 as unpatentable
over Rottmann in view of Egerer and Muggli, and as evidenced by
AH Dictionary; and
3. Claims 5–7 under 35 U.S.C. § 103 as unpatentable over
Rottmann in view of Egerer and Muggli, and further in view of
Takenaka.
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OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s anticipation and
obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated anticipation and obviousness rejections for
substantially the fact findings, conclusions of law, and responses to
arguments well expressed by the Examiner in the Examiner’s Answer and
the Final Office Action, which we adopt as our own. We offer the following
for emphasis only.
Rejection 1: Anticipation/Obviousness by Egerer
The Examiner rejects claims 1, 3, and 8 under 35 U.S.C. § 102(a)(1)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Egerer. Specifically, the Examiner finds that Egerer
discloses a decorative structural plastic part comprising a structural plastic
layer (ductile insert 14), an IMD-compatible layer (support 12), and an IMD
(decorative layer 11), wherein layers 12 and 14 share a mechanical bond
forming a dovetail connection. Final Act. 2–3. Further, although Egerer
shows layer 14 with undercut apertures 17 (Egerer Figs. 1a, 1b, 4a–4c; ¶ 68),
the Examiner finds that Egerer teaches that layer 14 alternatively or
additionally may have undercut depressions, such that layer 14 has a portion
extending below the mechanical bond. Id. at 4–6. The Examiner determines,
therefore, that Egerer anticipates or renders obvious claims 1 and 3. Id. at 6.
With regard to claim 1, Appellant argues that Egerer’s ductile insert
14 is not a plastic layer. Appeal Br. 10. Appellant asserts that Egerer refers
to element 14, not as a layer, but as an insert. Id. Moreover, Appellant
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asserts that Egerer fails to refer to a mechanical bond as disclosed and
claimed, but merely discloses that molding compound forming layer 12
penetrates undercut apertures in insert 14 for firmly connecting insert 14 to
layer 12. Id. Appellant contends, therefore, that Egerer does not contemplate
that this firm connection is a mechanical bond. Id. Moreover, Appellant
argues that Egerer’s insert is merely embedded in the support such that “it is
not evident that the support has any second set of alternating second
projections and second channels.” Id. Appellant also contends that Egerer’s
depressions 17 are at the bottom of the inserts 14 such that the inserts cannot
possibly extend below them, i.e., below where the firm connection is
formed. Id. at 11.
Appellant’s arguments are not persuasive of reversible error. As the
Examiner responds (Ans. 6), there is nothing that structurally or functionally
distinguishes the recited structural plastic layer in claim 1 over Egerer’s
ductile insert. That Egerer shapes ductile insert 14 from a sheet form does
not somehow transform this insert such that it is no longer a layer, as
Appellant appears to suggest (Reply Br. 3). Indeed, this is especially true in
the embodiment on which the Examiner relies in which insert 14 has
depressions rather than apertures 17.
In addition, as the Examiner further responds (Ans. 7), there is
nothing that structurally or functionally distinguishes the recited mechanical
bond formed by the interdigitating projections and channels of claim 1 and
Egerer’s dovetail connection formed by the molding material for layer 12
penetrating the depressions of insert 14. It is immaterial that Egerer does not
describe this firm connection as a “mechanical bond” because such would
have been readily apparent or, indeed, at once envisaged by one of ordinary
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skill in the art. That Egerer embeds insert 14 into layer 12 does not somehow
eviscerate the readily apparent mechanical bond formed between the
undercut of Egerer’s apertures 17 or depressions and the penetrating
molding compound of layer 12, as Appellant appears to suggest (Reply Br.
3). Further, with regard to the complementary projections and channels of
IMD-compatible layer 16, we note that, like Appellant, Egerer forms these
complementary projections and channels in-mold. Compare Appellant’s Fig.
4d with Egerer’s Figure 4c.
Further, as the Examiner responds (Ans. 5–6, 7–8), Appellant’s
argument—that Egerer fails to teach a structural plastic layer that extends
below the mechanical bond—fails to address the Examiner’s finding that
Egerer teaches that insert 14 may have, alternatively or additionally to
apertures 17, a plurality of depressions with the same undercut dovetail
projections. Egerer ¶ 49. As the Examiner finds, in this alternative
embodiment, insert 14 would necessarily extend below the mechanical bond
because there would be insert material underneath the depressions. In
rebuttal to the Examiner’s finding, Appellant ignores this embodiment,
instead focusing on Egerer’s figures (Reply Br. 3), which illustrate insert 14
with apertures, not the depressions of this alternative embodiment. Thus,
Appellant fails to identify error in the Examiner’s findings in this regard.
With regard to claim 8, the Examiner states that “the recitation ‘air
register louver for a motor vehicle’ has not been given patentable weight
because [this] recitation occurs in the preamble [only].” Final Act. 6.
Appellant argues that “Egerer also fails to even remotely contemplate an air
register louver for a motor vehicle.” Appeal Br. 13. Appellant asserts that
merely because this recitation is in the claim’s preamble, this fact alone does
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not require that it be given no patentable weight. Reply Br. 4. Appellant
urges that the preamble of claim 8 is expressly relied on to distinguish over
Egerer. Id.
While we agree with Appellant that merely because a recitation is
present only in the preamble of a claim does not itself support according this
recitation no patentable weight, we hold the Examiner’s error in doing so
harmless. We first note that Appellant fails to recite, argue, or disclose any
limiting definition of an air register louver of a motor vehicle. Appellant
does provide an illustrated example of an air register louver. Spec. ¶ 25;
Fig. 3. However, Appellant does not define the structural contours of what
an air register louver of a motor vehicle is, so as to distinguish an air register
louver from other molded parts, such as decorative and/or trim parts for
motor vehicles, contemplated by Egerer. Egerer ¶ 3. Thus, when proper
patentable weight is accorded to Appellant’s preambular recitation of “air
register louver for a motor vehicle,” we arrive at the same finding of
anticipation (and conclusion of obviousness) by Egerer as the Examiner.
Accordingly, we sustain the Examiner’s anticipation and obviousness
rejections of claims 1, 3, and 8 based on Egerer.
Rejections 2 and 3: Obviousness over Rottmann, Egerer, and Muggli
The Examiner rejects claims 1, 3, 4, and 8 under 35 U.S.C. § 103 as
unpatentable over Rottmann in view of Egerer and Muggli. The Examiner
further rejects claims 5–7 under 35 U.S.C. § 103 as unpatentable over
Rottmann in view of Egerer and Muggli, and further in view of Takenaka. A
complete statement of these rejections is set forth in the Examiner’s Answer.
Ans. 7–11.
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Appellant does not argue the claims under these rejections separately.
In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as
representative, with which claims 3–8 stand or fall.
Appellant repeats the arguments with regard to Egerer (Appeal Br.
13), which as discussed above, are not persuasive of reversible error.
In addition, Appellant argues that the Examiner fails to articulate any
reason based on a rational underpinning for combining the references in this
rejection. Appeal Br. 13, 14. Appellant contends that, although the Examiner
notes that (1) Rottmann and Egerer are both concerned with the production
of a decorative plastic part used in a vehicle and (2) Egerer and Muggli are
directed to methods of improving bonding between layers, “this does not
qualify as an articulated reason for making the combination.” Id. at 14.
Appellant urges that the Examiner fails to provide any substantial evidence
that an ordinary artisan would have been prompted to combine the elements
in these references as the Examiner proposes. Id.
We disagree. The Examiner provided substantial evidence in support
of the Examiner’s conclusion of obviousness from the three applied
references. In addition, as the Examiner responds (Ans. 9–10), the Examiner
articulates multiple reasons based on rational underpinning for combining
the references as set forth in the rejection. The Examiner finds (Ans. 8, 9–
10), and Appellant does not dispute, that both Rottmann and Egerer are
concerned with the production of a decorative plastic part used in a vehicle.
In this regard, the Examiner further explains that the ordinary artisan would
have been motivated to use Egerer’s production process for forming vehicle
decorative and/or trim parts to produce Rottmann’s air register louver for a
motor vehicle. Id. at 8. The Examiner explains that this position is consistent
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with the rationale for supporting obviousness where one reference
demonstrates use of a particular material for a particular intended use is then
used to produce a product of another reference. Id. In this case, the Examiner
explains that use of Egerer’s materials would have been selected to provide
improved strength and elasticity for Rottmann’s product while simplifying
the production process. Id. We find this especially persuasive since
Rottmann does not itself teach a process for manufacturing the disclosed
product. Therefore, Appellant’s argument fails to respond to, or otherwise
identify error in, the Examiner’s findings and articulated reasoning in
support of the obviousness conclusion.
Accordingly, we sustain the Examiner’s obviousness rejections of
claims 1 and 3–8.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner’s Answer, the decision of the
Examiner rejecting claims 1 and 3–8 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 3, 8 102(a)(1)/103 Egerer 1, 3, 8
1, 3, 4, 8 103 Rottmann, Egerer,
Muggli, AH
Dictionary
1, 3, 4, 8
5–7 103 Rottmann, Egerer,
Muggli, Takenaka
5–7
Overall
Outcome
1, 3–8
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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED