Adrian Nania et al.

Patent Trials and Appeals BoardAug 21, 2019

14936824 - (D) (P.T.A.B. Aug. 21, 2019)

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. 14/936,824 11/10/2015 Adrian Nania 83591431 9597 121691 7590 08/21/2019 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 EXAMINER GORDON, MATHEW FRANKLIN ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 08/21/2019 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 ADRIAN NANIA and HOWARD PAUL TSVI LINDEN ____________ Appeal 2018-007962 Application 14/936,8241 Technology Center 3600 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by STAICOVICI, Administrative Patent Judge Opinion Concurring filed by CAPP, Administrative Patent Judge STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Oct. 2, 2017, hereinafter “Non-Final Act.”) rejecting claims 1–8 and 10–16.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 Ford Global Technologies, LLC is the applicant and is identified as the real party in interest in Appellant’s Appeal Brief (filed Feb. 28, 2018, hereinafter “Appeal Br.”). Appeal Br. 3. 2 Claim 9 is cancelled. Appeal Br. 20 (Claim App.) Appeal 2018-007962 Application 14/936,824 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention relates to a hands-free “approach activated closure entry system.” Spec. para. 2. Claims 1 and 8 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An approach activated closure entry system for a motor vehicle, comprising: a proximity sensor; a projector; a power operated closure; a sensing device for detecting an authorized user within a predetermined distance of said motor vehicle; and a controller configured to (a) project an image onto the ground when said motor vehicle is approached by said authorized user, (b) change said image when said approach activated closure entry system operation is initiated and (c) open said power operated closure in response to said authorized user stepping into said image for a predetermined period of time. REJECTIONS I. The Examiner rejects claims 1, 2, 4–10, 12, 13, 15, and 16 under 35 U.S.C. § 103 as being unpatentable over Tofilescu et al. (US 2015/0127193 A1; published May 7, 2015, hereinafter “Tofilescu”), Lee (US 2014/0156112 A1; published June 5, 2014), and Ammar et al. (US 9,321,395 B2; issued April 26, 2016, hereinafter “Ammar”). Appeal 2018-007962 Application 14/936,824 3 II. The Examiner rejects claims 3, 4, and 11–13 under 35 U.S.C. § 103 as being unpatentable over Tofilescu, Lee, Ammar and Dingman et al. (US 2010/0007463 A1; published Jan. 14, 2010, hereinafter “Dingman”). III. The Examiner rejects claim 14 under 35 U.S.C. § 103 as being unpatentable over Tofilescu, Lee, Ammar, Dingman, and Aycock (US 2013/0157640 A1; published June 20, 2013). ANALYSIS Rejection I The Examiner finds that Tofilescu discloses a system and method for activating a vehicle entry including, inter alia, a power operated closure and a controller configured to project an image onto the ground when an authorized user approaches the vehicle. Non-Final Act. 3 (citing Tofilescu, paras. 27–30). The Examiner further finds that Tofilescu does not disclose “a proximity sensor or a predetermined period of time or changing the image.” Id. Nonetheless, the Examiner finds that Lee discloses a hands-free tailgate system for a vehicle including a proximity sensor, a sensing device for detecting the presence of an authorized user within a predetermined distance of the vehicle, and opening a power operated closure when a user steps onto an image for a predetermined time. Id (citing Lee, paras. 24–26, 34–40). The Examiner then concludes that It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Lee with the system disclosed by Tofilescu in order to reduce construction cost through construction of a tailgate system using previously installed apparatuses in a Appeal 2018-007962 Application 14/936,824 4 vehicle and to safely open the tailgate by controlling opening of the tailgate using a moving pattern of the user. Id (citing Lee, para. 11). Appellant argues that the Examiner’s reasoning to combine the teachings of Tofilescu and Lee lacks rational underpinnings. See Appeal Br. 12. According to Appellant, “the Examiner fails to provide any substantial evidence why Tofilescu would look to Lee as it already discloses touch-less activation of a power entry system based on structured light detection.” Id. at 13. In response, the Examiner cites to Lee’s paragraph 11 and reiterates the reasoning noted above. See Ans. 4–5. As noted above, the Examiner provides two reasons why a skilled artisan would combine the teachings Tofilescu and Lee, namely: (1) “to reduce construction cost through construction of a tailgate using previously installed apparatuses in a vehicle;” and (2) “to safely open the tailgate by controlling [the] opening of the tailgate using a moving pattern of the user.” In regards to the first reason, we agree with Appellant that “the Examiner is merely speculating about a purported benefit of such a combination.” Reply Brief (dated July 30, 2018, hereinafter “Reply Br.”) 2. The benefit of Lee’s system and method that the Examiner alludes to is with respect to a hands-free power tailgate system that requires a user’s foot to access a kick sensor located at a bottom end inside a rear bumper. Lee, paras. 6, 11. However, Tofilescu’s hands-free vehicle entry system and method does not employ such a kick sensor, but rather requires a user to step onto a light pattern projected onto the ground for a predetermined time. Tofilescu, Abstract, paras. 27, 28. As Tofilescu’s system and method are different from those of Lee’s, the Examiner’s reliance on Lee’s paragraph 11 Appeal 2018-007962 Application 14/936,824 5 to conclude that modifying the system and method of Tofilescu, according to Lee, would “reduce construction cost through construction of a tailgate using previously installed apparatuses in a vehicle” requires speculation on the Examiner’s part. As speculation cannot form the basis for concluding obviousness, the Examiner’s first reason to modify the system and method of Tofilescu, according to Lee, is inadequate. With respect to the Examiner’s second reason, the Examiner fails to explain why a person of ordinary skill in the art would combine the teachings of Tofilescu and Lee to control the power entry system in Tofilescu by employing a user’s moving pattern. See Non-Final Act. 3; see also Lee, paras. 24–26. Specifically, the Examiner does not adequately explain how combining the proximity sensor of Lee with the structured light detection system and method of Tofilescu, which employs a sensor to identify an approaching user and projects a laser pattern onto the ground upon which the user steps thereon, would control opening of Tofilescu’s power entry system employing the user’s moving pattern. As such, the Examiner’s second reasoning amounts to a conclusory statement, which is not enough to satisfy the Examiner’s duty to provide a reasoned explanation for combining the teachings of Tofilescu and Lee. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). “Even under [the] ‘expansive and flexible’ obviousness analysis [of KSR], we must guard against ‘hindsight bias’ and ‘ex post reasoning.’” St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (citation omitted). Here, it appears that the structured light detection system and method of Tofilescu already provides an adequate hands-free system and method for controlling a power entry system. The Examiner has not Appeal 2018-007962 Application 14/936,824 6 provided any findings that Tofilescu recognized a problem with its hands- free system and method or that Lee’s system and method based on a user’s moving pattern is somehow superior. The Examiner has alternatively not provided an adequate reason with rational underpinnings to modify the method and system of Tofilescu with that of Lee in the manner suggested. Thus, absent hindsight, the record does not establish why a person having ordinary skill in the art would have modified the structured light detection system and method of Tofilescu in the manner claimed. Hence, the Examiner’s second reasoning does not adequately support the conclusion of obviousness as the Examiner has not shown the relevance of such reasoning in the context of Tofilescu’s hands-free structured light detection system and method. The mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009). Finally, we note that the Examiner’s use of the Ammar disclosure does not remedy the deficiency of the Examiner’s combination of Tofilescu and Lee discussed supra. See Non-Final Act. 3–4. In conclusion, for the foregoing reasons, we do not sustain the rejection of independent claims 1 and 8, and their respective dependent claims 2, 4–7, 9, 10, 12, 13, 15, and 16 under 35 U.S.C. § 103 as unpatentable over Tofilescu, Lee, and Ammar. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is nonobvious.). Appeal 2018-007962 Application 14/936,824 7 Rejections II and III The Examiner’s use of the Dingman and Aycock disclosures do not remedy the deficiency of the Tofilescu, Lee, and Ammar combination discussed supra in Rejection I. See Non-Final Act. 6–10. Accordingly, for the reasons discussed above, we also do not sustain the rejections under 35 U.S.C. § 103 of claims 3, 4, and 11–13 as unpatentable over Tofilescu, Lee, Ammar, and Dingman, and of claim 14 as unpatentable over Tofilescu, Lee, Ammar, Dingman, and Aycock. SUMMARY We reverse the Examiner’s decision to reject claims 1–8 and 10–16 under 35 U.S.C. § 103. REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ADRIAN NANIA and HOWARD PAUL TSVI LINDEN ____________ Appeal 2018-007962 Application 14/936,8243 Technology Center 3600 ____________ OPINION CONCURRING CAPP, Administrative Patent Judge I concur in the result reached by the majority as I agree that the Examiner’s stated reason for combining the prior art references is insufficient to support the rejection. I write separately to express my concerns about the patentability of Appellant’s invention. The invention merely uses well-known sensor and control technology to open a vehicle lift gate. Tofilescu discloses the invention substantially as claimed including projecting an image on the ground, detecting a change when a user steps onto the image, and changing the image to provide feedback to the user that the system has recognized activation of the door opening protocol. See Tofilescu, Abstract, ¶¶ 27, 33, Figs. 4, 7, and 8. Thus, Tofilescu uses sensing technology to detect a change in shape of an 3 Ford Global Technologies, LLC is the applicant and is identified as the real party in interest in Appellant’s Appeal Brief (filed Feb. 28, 2018, hereinafter “Appeal Br.”). Appeal Br. 3. Appeal 2018-007962 Application 14/936,824 2 otherwise static image projected onto the ground. Id. ¶¶ 32–33.4 Lee also discloses a hands-free power tailgate system. Lee, Abstract. Lee uses sensing equipment to detect movement of a user. Lee ¶¶ 24–26. Lee’s system opens the tailgate when the user moves according to a preset moving pattern. Id. The common thread between Tofilescu and Lee is the use of sensory input data and logic to determine the proximity of a user to the vehicle and to open the lift gate. The Examiner relies on Lee to satisfy the proximity sensor limitation of claim 1. Non-final Action 3. The Examiner relies on Ammar to demonstrate that it was known, in the prior art, to project a lighted image on the ground surface adjacent to the vehicle, which image varies in connection with the proximity of the user to the vehicle. Non-final Action 4. An otherwise obvious improvement or advantage over the individual references found in the prior art, without more, does not confer patentability on an invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422 (2007). In my opinion, the prior art discloses all of the elements of claim 1 which are arranged with each element performing the same function it is known to perform. It is well settled that when a patent application claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, at 416, citing United States v. Adams, 383 U.S. 39, 50–51 (1966). Similarly, when a patent “simply arranges old 4 The image can be a line, 2 parallel lines, or a more complicated image. Id. ¶ 32. Appeal 2018-007962 Application 14/936,824 3 elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. KSR, 550 U.S. at 417, quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). In the instant case, the only thing that is missing from the Examiner’s rejection is an adequate reason to combine the prior art. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (explaining that rejections on obviousness grounds cannot be sustained by mere conclusory statements and, instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness). A reason to modify a prior art reference may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007). Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added). Appeal 2018-007962 Application 14/936,824 4 In the instant case, Appellant presents neither evidence nor persuasive technical reasoning that incorporating Lee’s proximity sensor technology into Tofilescu’s system requires more than ordinary skill or produces unexpected results. Thus, I would answer Dystar’s above stated “proper question” in the affirmative. Id. In my opinion and in the overall context of the invention, detecting a change in a static image (Tofilescu) and detecting movement (Lee) are substantially equivalent to each other in terms of proving data to a controller to initiate a door opening sequence. In my opinion, this is a finding that Examiner reasonably could have made, but did not. I am also of the opinion that the Examiner could have and should have articulated a more cogent reason for incorporating Lee’s proximity sensor technology into Tofilescu’s system. However, I cannot fault the panel for declining to make such findings to cure the Examiner’s apparent oversight. See 37 C.F.R. § 41.50(b) see also MANUAL OF PATENT EXAMINING PROCEDURE § 1213.02 (explaining that the Board enters a new ground of rejection at its discretion). Consequently, I concur that, under the particular facts and circumstances of this case, the Examiner should have provided more articulated reasoning with rational underpinning to support the rejection and, in view of the Examiner’s failure to do so, it is appropriate to reverse the Examiner’s rejection of claim 1.