11061549 (P.T.A.B. Feb. 14, 2013)

Ex Parte Soejima

Patent Trial and Appeal BoardFeb 14, 2013

11061549 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/061,549 02/18/2005 Naoki Soejima 086142-0744 1654 22428 7590 02/14/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER JOHNSON, CHRISTINA ANN ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 02/14/2013 PAPER 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 NAOKI SOEJIMA ____________ Appeal 2011-000339 Application 11/061,549 Technology Center 1700 ___________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000339 Application 11/061,549 2 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 6, and 9 under 35 U.S.C. § 103(a) as unpatentable over the combined prior art of Bauer1, Ikawa2, and Honma3; and claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Bauer, Ikawa, Honma, and Mukai4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the subject matter on appeal5: 1. A method of manufacturing a cover for a vehicle airbag, wherein the cover includes a linear groove having a depth in a range of the plate thickness of the cover is formed by an ultrasonic processing mechanism, the method comprising: teaching data to the ultrasonic processing mechanism by moving a member of the ultrasonic processing mechanism along a teaching line corresponding to the linear groove, wherein the teaching line is formed in an airbag cover supporting surface of an airbag cover supporting jig to obtain profiling data; wherein the teaching step further comprises modifying the profiling data with respect to a thickness of the airbag cover and teaching the modified profiling data to the ultrasonic processing mechanism; and forming the linear groove in the airbag cover by controlling the ultrasonic processing mechanism on the basis of the modified profiling data taught in the teaching step, wherein 1 US 5,883,356 issued Mar. 16, 1999. 2 EP 1 162 054 A1 published Dec. 12, 2001. 3 US 5,981,966 issued Nov. 9, 1999. 4 US 5,495,090 issued Feb. 27, 1996. 5 Appellant only present arguments to claim 1 (generally Briefs). Appeal 2011-000339 Application 11/061,549 3 the airbag cover supporting jig is configured to support the airbag cover during the step of forming the linear groove in the airbag cover; wherein the teaching step is performed prior to the forming step. ANALYSIS We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. It is well established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is likewise well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. Id. at 421 (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellant’s arguments that the prior art does not teach or suggest the claimed invention, in part because Bauer does not disclose that its teaching line is formed in the surface of a supporting jig, and that Honma does not remedy this deficiency because it is not directed to manufacturing an airbag (App. Br. 3-4; Reply Br. 1-3), are unavailing since they fail to consider the Appeal 2011-000339 Application 11/061,549 4 prior art as a whole (see, e.g., Ans. 7, 8). In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellants have not specifically disputed the Examiner’s determination that Bauer discloses teaching data by tracing a groove formed in a workpiece (Ans. 7-8; Reply Br. 2); or that Honma discloses “it is known to teach profiling data by tracing the workpiece support (i.e., jig) (column 2, lines 6-55)” as opposed to the workpiece itself (Ans. 4, App. Br. generally; Reply Br. 3). See also Honma, col. 1, ll. 45-57 (describing known use of an auto-teaching method in which a teaching operation is performed using a jig). In this regard, a preponderance of the evidence supports the Examiner’s determination that the claimed invention merely applies a known alternative technique of using a supporting jig versus the workpiece for obtaining profiling data to yield predictable results (Ans. 5, 7). See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellant has not adduced any persuasive technical reasoning or otherwise in response to the Examiner’s reasonable determination that the alternative placement of the teaching line in the workpiece of Bauer in a surface of a supporting jig, as exemplified in Honma to be a known alternative tracing the workpiece, would have been no more than the predictable use of a known prior art element/step for its known function in a Appeal 2011-000339 Application 11/061,549 5 method of teaching profiling data in manufacturing workpieces (see, e.g., Ans. 5, 7; generally App. Br.; Reply Br). Accordingly, the preponderance of the evidence supports the Examiner’s rejection of claims 1, 6, and 9. Appellant does not present any further arguments for the separate rejection of dependent claims 7 and 8 (App. Br. 4). Thus, we sustain the § 103 rejections of all the claims on appeal. DECISION The decision of the Examiner is 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). AFFIRMED bar