Morlet Ugalde, Gian Carlo et al.

Patent Trials and Appeals Board

Jan 14, 2020

14941268 - (D) (P.T.A.B. Jan. 14, 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.
14/941,268 11/13/2015 Gian Carlo Morlet Ugalde 83592556 6048
121691 7590 01/14/2020
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
EXAMINER
PEDDER, DENNIS H
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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 GIAN CARLO MORLET UGALDE,
DAVID CONEJOS CARRASCO,
SANTIAGO MANUEL PARRA BECERRA, and
PABLO NADERPOUR PENALVER
Appeal 2019-001686
Application 14/941,268
Technology Center 3600
Before MICHAEL J. FITZPATRICK, JEREMY M. PLENZLER, and
BRANDON J. WARNER, Administrative Patent Judges.
PLENZLER, 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 1–12, 14, 17, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Br. 3.
Appeal 2019-001686
Application 14/941,268

2
CLAIMED SUBJECT MATTER
The claims are directed to a vehicle trim piece. Claims 1 and 14,
reproduced below, are illustrative of the claimed subject matter:
1. A motor vehicle trim piece[, comprising]:
a cutout portion for receiving a vehicle member slidably
therethrough; and
a flexible overlapping interlocking joint for securing the
cutout portion around the vehicle member.
14. An overlapping interlocking joint in a motor vehicle trim
piece, comprising:
a flanged male portion; and
a cooperating female portion, wherein the cooperating
female portion is provided as a closed receiver defined within
an interior of the motor vehicle trim piece.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kubicek US 3,059,635 Oct. 23, 1962
Krajenke US 8,613,478 B2 Dec. 24, 2013
Heinze US 2008/0073933 A1 Mar. 27, 2008
Admitted Prior Art (Appellant’s Figures 1A–C)
REJECTIONS2
Claims 14, 17, and 20 are rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Heinze.
Claims 1–3, 5–9, 11, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Admitted Prior Art.

2 Claims 18 and 19 have been cancelled. Appeal Br. 6. Accordingly, the
rejection of claims 18 and 19 under 35 U.S.C. § 112(d) has been withdrawn.
Ans. 6.
Appeal 2019-001686
Application 14/941,268

3
Claims 1–12, 14, 17, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Krajenke and Kubicek.
OPINION
Anticipation–Heinze (claims 14, 17, and 20)
With respect to claim 14, Appellant acknowledges the Examiner’s
finding that “Heinze discloses ‘an overlapping joint in a vehicle door trim
12, 14 with flanged male portion 56 with flanges 60, figure 4c inserted into
closed (perimeter) female portion 54 within an interior portion 12 of the trim
piece.’” Appeal Br. 14 (citing Final Act. 2). Appellant contends that
“kitting pin 56 (cited as the claimed flanged male portion) is not flanged as
the Examiner contends” because “kitting pin flash 60 is a separate element
and, therefore, kitting pin 56 is not a flanged male portion as the Examiner
contends.” Id. at 15.
The Examiner responds that Appellant’s contention is “incorrect as
the pins are molded and the flash 60 is a component of the molded pin.”
Ans. 7. In its Reply Brief, Appellant does not dispute that knitting pin 56
has a flanged portion 60, acknowledging that “Heinze discloses that the
‘[k]itting pins 56 are molded perpendicular to die draw in the parting line of
its tool’” and “[k]itting pin flash 60 may be approximately 1 mm and, when
inserted into a kitting pin hole 54, may provide friction retention further
holding arm rest 14 in place relative to upper bolster 12.” Reply Br. 4
(alterations in original) (citing Heinze ¶ 35). Rather, for the first time,
Appellant contends that the Examiner’s findings regarding Heinze are
deficient because “it is silent regarding an overlapping interlocking joint.”
Id. We are not apprised of error because the rejection is effectively now
Appeal 2019-001686
Application 14/941,268

4
unrebutted. We need not consider Appellant’s new argument presented for
the first time in the Reply Brief. See 37 C.F.R. § 41.41(b)(2).
Nevertheless, the new argument is unpersuasive of Examiner error.
The feature now argued by Appellant (i.e., the “overlapping interlocking
joint”) is found only in the preamble, and is not limiting on the structure
recited in the claim.
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting
when the claim body describes a structurally complete invention such that
deletion of the preamble phrase does not affect the structure or steps of the
claimed invention.” Id. at 809. One guidepost for determining the effect of
a preamble on claim scope is whether the preamble language provides
antecedent basis for any limitation in the body of the claim. Id. at 808.
Here, the preamble does not provide antecedent basis for any claim term,
and understanding the claim does not require reliance on the preamble.
Accordingly, we are not apprised of error in the rejection of claim 14.
Appellant does not provide separate argument for claims 17 and 20, which
depend from claim 14.
Obviousness–Admitted Prior Art (claims 1–3, 5–9, 11, and 12)
Appellant argues claims 1–3, 5–9, 11, and 12 as a group. Appeal Br.
9–12. We select claim 1 as representative. Claims 2, 3, 5–9, 11, and 12
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant
contends that the Examiner’s rejection based on admitted prior art is
deficient because that prior art does not include an “overlapping interlocking
Appeal 2019-001686
Application 14/941,268

5
joint” (id. at 10) and because “the Examiner fails to articulate any reason
based on a rational underpinning as to why it would have been obvious to
modify the prior art discussed in Appellant’s specification to eliminate any
gaps” (id. at 11).
Before addressing Appellant’s contentions regarding the “overlapping
interlocking joint,” we need to understand what that language means.
Appellant tells us that a “conventional mating puzzle feature . . . is not a
flexible overlapping interlocking joint” because “these conventional mating
puzzle features do not properly mate and may separate slightly, which leave
unsightly gaps.” Appeal Br. 10 (citing Spec. ¶ 5). Appellant, however,
further explains that an “overlapping interlocking joint,” is not the same “as
an ‘overlap 220’ discussed in Appellant’s Specification, ¶ [0022].” Id. at 11.
Appellant explains that the “overlap 220” may include “a full lap joint or a
partial lap joint.” Id. (citing Spec. ¶ 22). Accordingly, Appellant contends
that an “overlapping interlocking joint” does not actually require an overlap
of the joint members as commonly understood with respect to a full or
partial lap joint. Rather, Appellant contends that the claim requires an
interlocking joint that does not leave unsightly gaps. See Reply Br. 2
(“[T]he prior art joint discussed in Appellant’s specification is not a flexible
overlapping interlocking joint because it does not properly mate and may
separate slightly, which leave unsightly gaps.”).
The difference between the admitted prior art shown in Appellant’s
Figure 1C, reproduced below, and the claims, according to Appellant, is that
the claim precludes gap (G).
Appeal 2019-001686
Application 14/941,268

6

Figure 1C is “an isolated view of a mating puzzle feature for the [prior art]
trim piece.” Spec. ¶ 14. That is, there is not an overlap, but, rather, an
abutment where gap (G) exists according to Appellant’s construction of the
claim.
Even if we were to accept Appellant’s construction of the claim
phrase, that would not apprise us of Examiner error because the Examiner
explains that “it would have been obvious . . . to eliminate the gap ‘G’ by
simply forming the joint 112 at a more interior portion of the trim piece, to
the left in figure 1C” (Final Act. 5), which leads us to Appellant’s
contentions disputing the Examiner’s rationale. Appellant’s contention that
the Examiner has provided no rationale is unpersuasive because the
Appeal 2019-001686
Application 14/941,268

7
Examiner provides rationale for modifying the joint shown in Figure 1C
(i.e., “it would have been obvious” to “form[] the joint 112 at a more interior
portion of the trim piece” in order “to eliminate the gap ‘(G)’”). Final Act.
5.
For at least these reasons, we are not apprised of error in the rejection
of claims 1–3, 5–9, 11, and 12.
Moreover, we note that the claim does not require an elimination of
gap (G) in Figure 1C. As Appellant contends above, no overlap (i.e., lap
joint) is required by the claims. See, e.g., Appeal Br. 10. To the extent the
term “overlapping” even limits the claim, it simply appears to require some
form of abutment. We are apprised of no reason to limit the claim in a
manner requiring abutment along the entire extent of the joint as Appellant
contends. Accordingly, Figure 1C, itself, appears to show every limitation
recited in claim 1.
Obviousness–Krajenke and Kubicek (claims 1–12, 14, 17, and 20)
Appellant argues claims 1–12, 14, 17, and 20 as a group. We select
claim 1 as representative. Claims 2–12, 14, 17, and 20 stand or fall with
claim 1. Appellant acknowledges that “the Examiner relies upon Krajenke
for disclosing all the recited elements except for an interlocking joint,” and
that “[t]he Examiner points to Kubicek for supplying the missing teaching
and concludes ‘it would have been obvious . . . to provide in Krajenke . . .
the interlocking joint as taught by Kubicek in order to ensure retention of the
trim piece around the vehicle hinge element.’” Appeal Br. 12 (quoting Final
Act. 6). Appellant contends that: (1) “Kubicek [does not] disclose a flexible
overlapping interlocking joint as the Examiner contends,” (2) “the Examiner
fails to provide any reason based on a rational underpinning for combining
Appeal 2019-001686
Application 14/941,268

8
the references,” and (3) Kubicek is non-analogous art. Appeal Br. 12–14.
Appellant does not dispute the Examiner’s findings related to Krajenke.
The Examiner finds that Kubicek teaches “adjustable collars to secure
the collar’s overlapping flexible flanges 540b/560 (figure 10) with male
flange 68 and closed (interior located) female portion 66 in order to lock the
flanges together.” Final Act. 5–6. Appellant contends that, “while the
segments 540 overlap each other via the ears 560, they do not interlock as
the claimed flexible overlapping interlocking joint,” and “[i]nstead, a
separate pin 68 is used in Kubicek to pass through openings 66 in segment
540b in order to make slight adjustments in the size of neck opening 40.”
Appeal Br. 12–13 (citing Kubicek, 7:24–42). The Examiner responds that
“the claims are open ended as to what constitutes the overlapping
interlocking joint” (i.e., the claim is not limited to only 2 elements, such as
segments 540 and ears 560, forming the interlocking joint). Ans. 7. The
Examiner has the better position.
In the Reply Brief, Appellant acknowledges that “there is not any
special meaning to the terms overlapping and interlocking and both have
well-known meanings,” explaining that “overlap means to extend over so as
to cover partly and interlock means to lock together or to connect so that the
motion or operation of any part is constrained by another.”3 Reply Br. 3.
Regardless of whether Kubicek’s pin forms a separate element, there can be

3 Appellant appears to take a different position as to what constitutes an
“overlapping” joint with respect to this rejection than that discussed above
relative to the rejection based on Admitted Prior Art. Compare Appeal Br.
10, with Reply Br. 3. Nevertheless, we need not address this apparent
inconsistency because there is no dispute with respect to the “overlapping”
feature recited in the claims in this ground.
Appeal 2019-001686
Application 14/941,268

9
no dispute that when the pin passes through openings in the adjacent
segments it interlocks those segments together. Appellant does not clearly
articulate any more limited structural requirements mandated by the claim,
let alone provide evidence to support such a position. Accordingly, we are
not apprised of error in the Examiner’s findings related to Kubicek.
Appellant’s sole contention regarding the Examiner’s rationale for
modifying Krajenke’s teachings is that “Krajenke is completely silent
regarding locking the flanges together in light of the need for the closeout
panel to close out the oversized aperture, the only motivation in the record
for combining those references in the manner proposed by the Examiner is
found in the present application.” Appeal Br. 13. This, too, is unpersuasive
because there is no requirement that the references themselves provide
motivation for the proposed modifications. The Examiner reasons that “[i]t
would have been obvious . . . to provide” an “interlocking joint . . . in order
to ensure retention of the trim piece around the vehicle hinge element.”
Final Act. 6. Contrary to Appellant’s contention, this reason is not based
solely on Appellant’s Specification, as it is the basic function of an
interlocking joint (i.e., it secures parts together).
We are also not apprised of error in the Examiner’s determination that
Kubicek is analogous art. “A reference qualifies as prior art for an
obviousness determination under § 103 only when it is analogous to the
claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
Appeal 2019-001686
Application 14/941,268

10
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
The Examiner focuses on the Kubicek being reasonably pertinent to
the problem with which the inventor was involved. See Final Act. 6–7
(“[T]he inventor faced with the placement of a collar around a vehicle hinge
member retained solely by the elasticity of the collar’s material would have
looked to prior art collar solutions to ensure retention under conditions such
as extreme cold affecting elasticity.”). Appellant acknowledges the
Examiner’s position, and simply states that “the Examiner ignores that the
claimed invention is not directed to collars and, therefore, it fails ‘to explain
why an inventor seeking to solve the identified problem would have looked
to the reference in an attempt to find a solution to the problem.’” Appeal Br.
14. This does not identify error because it addresses only the field of
endeavor, but not the problem with which the inventor was involved.
Notably, Appellant does not dispute, or even address, the Examiner’s
characterization of the problem or why Kubicek is reasonably pertinent to
that problem. Accordingly, we are not apprised of error.
CONCLUSION
The Examiner’s rejections are affirmed.
Appeal 2019-001686
Application 14/941,268

11
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14, 17, 20 102(a)(2) Heinze 14, 17, 20
1–3, 5–9,
11, 12
103 Admitted Prior Art 1–3, 5–9,
11, 12

1–12, 14,
17, 20
103 Krajenke, Kubicek 1–12, 14,
17, 20

Overall
Outcome
1–12, 14,
17, 20

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