Ex Parte Ackerman et al

Patent Trial and Appeal BoardMar 28, 2018

12944448 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/944,448 11/11/2010 27305 7590 03/30/2018 HOW ARD & HOW ARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 FIRST NAMED INVENTOR Mark S. ACKERMAN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 065310.00058 5740 EXAMINER DUNNER, DIALLO IGWE ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 03/30/2018 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): IPDocket@HowardandHoward.com dtrost@HowardandHoward.com tmorris@Howardandhoward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK S. ACKERMAN, DAN BENNETT, and DAVID W. LAHNALA Appeal2016-001988 Application 12/944,448 Technology Center 3700 Before CHARLES N. GREENHUT, PATRICKR. SCANLON, and MICHELLE R. OSINSKI, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark S. Ackerman et al. ("Appellants") 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision, as set forth in the Non-Final Office Action, dated December 4, 2014 ("Non-Final Act."), rejecting claims 1--44. An oral hearing was conducted on January 9, 2018. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants identify AGC Automotive Americas Co. as the real party in interest. Appeal Br. 3. Appeal2016-001988 Application 12/944,448 CLAIMED SUBJECT MATTER Appellants' invention "generally relates to a sliding window assembly for a vehicle." Spec. i-f 2. Claims 1, 22, and 35 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A sliding window assembly for a vehicle, said assembly compnsmg: a first fixed panel adapted to be fixed to the vehicle; a second fixed panel adapted to be fixed to the vehicle and spaced from said first fixed panel; a first heating grid coupled to said first fixed panel for defrosting said first fixed panel; a track coupled to said first and second fixed panels; a sliding panel movably coupled to said track such that said sliding panel moves relative to said first and second fixed panels between an open position and a closed position; a second heating grid coupled to said sliding panel for defrosting said sliding panel; and said track including a conductive element interconnecting said first and second fixed panels to prevent movement of said first and second fixed panels relative to each other, with said conductive element defining a general u-shaped channel with an edge of said sliding panel disposed within said u-shaped channel and with said conductive element in continuous electrical connection to said first and second heating grids such that said first and second heating grids remain electrically connected to said conductive element in both of said open and closed positions of said sliding panel. Appeal Br. 21, Claims App. 2 Appeal2016-001988 Application 12/944,448 REFERENCES The Examiner relies upon the following prior art references: Gipson Smith US 2010/0146859 Al US 2011/0030276 Al REJECTIONS The following rejections are before us on appeal: June 17, 2010 Feb. 10,2011 I. Claims 1--44 stand provisionally rejected on the ground of non- statutory obviousness-type double patenting as unpatentable over claims 1- 42 of U.S. Patent Application No. 12/944,448 and claims 1-53 of U.S. Patent Application No. 13/015,902. II. Claims 1--41 and 43 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Smith. III. Claims 42 and 44 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Smith and Gipson. ANALYSIS Rejection I Appellants do not seek review of, and do not advance any argument against, the provisional double patenting rejection. Appeal Br. 5. In addition, since the filing of the Examiner's Answer, U.S. Patent Application No. 13/015,902 ("the '902 application"), one basis of the provisional rejection, was abandoned. We note that the other application identified as a basis of the provisional rejection, U.S. Patent Application No. 12/944,448, is the application at issued in this appeal. This appears to be a typographical error, with the Examiner presumably intending to rely on U.S. Patent Application No. 12/944,444 ("the '444 application"). Nevertheless, we 3 Appeal2016-001988 Application 12/944,448 decline to reach this rejection because the circumstances surrounding the '902 application have changed since institution of the provisional double patenting rejection in the present application, and the '444 application is pending, making the issue not ripe for decision by the Board. Panels have the flexibility to reach or not reach provisional double-patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010) (precedential). Re} ection II In rejecting claims 1 and 22, the Examiner finds that Smith discloses all of the claim limitations except for a conductive element defining a generally u-shaped channel with an edge of a sliding panel disposed within the u-shaped channel. Non-Final Act. 4--5. The Examiner then concludes it would have been obvious to one of ordinary skill in the art at the time of applicant's invention to modify the shape of the conductive element of Smith, since it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. Id. at 5---6 (citing In re Dailey, 149 USPQ 47 (CCPA 1976)). The Examiner makes substantially similar findings and conclusions with respect to independent claim 35. Id. at 14--16. Appellants argue that "the Examiner has failed to identify even a single prior art [reference] that provides a teaching or even a suggestion of a conductive element and or conductive [rails] defining a general u-shaped channel," and "the Examiner's proposed modification to the shape of the first and second conductive elements/raceways (332a, 332b) does critically impact the operation of Smith, and even render[ s] Smith inoperable for its intended purpose." Appeal Br. 14--16. 4 Appeal2016-001988 Application 12/944,448 We agree that the Examiner's obviousness analysis is flawed. First, the Examiner erroneously finds that Smith discloses "a conductive element 332" and "conductive elements or raceways 332a, 332b." Non-Final Act. 4, 5; Ans. 3--4. Smith, however, discloses only raceways 332a, 332b; there is no "conductive element 332" distinct or separate from the raceways. Smith, passim. Thus, the Examiner's conclusion that it would have been obvious to modify the shape of the conductive element of Smith is unfounded because Smith does not disclose a single conductive element. The Examiner does not specify that it would have been obvious to modify the shape of one or both of raceways 332a, 332b. Furthermore, the Examiner merely states that it would have been obvious to modify the shape of the conductive element, but fails to indicate that a general u-shape would have been obvious. More importantly, the Examiner fails to provide adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to make either raceway 332a or 332b generally u-shaped. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As such, it appears that the Examiner's rejection is based solely on knowledge gleaned from Appellants' disclosure, and thus relies on improper hindsight. For the above reasons, we do not sustain the rejection of claims 1, 22, and 35, and claims 2-21, 23-34, 36--41, and 43 depending therefrom, as obvious over Smith. Rejection III The Examiner's rejection of claims 42 and 44 as obvious over Smith and Gipson relies on the same erroneous findings and conclusions, noted above, regarding independent claims 1, 22, and 35. Gipson does not cure 5 Appeal2016-001988 Application 12/944,448 these deficiencies. Accordingly, we do not sustain this rejection of claims 42 and 44 for the same reasons stated above with respect to claims 1, 22, and 35. DECISION We reverse the decision of the Examiner rejecting claims 1--44 under 35 U.S.C. Â§ 103(a). We do not reach the provisional obviousness-type double patenting rejection maintained by the Examiner. REVERSED 6