Ex Parte Augst

Patent Trial and Appeal BoardFeb 10, 2016

12273372 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/273,372 11/18/2008 23911 7590 02/12/2016 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Alexander Augst 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. 080437.60767US 8176 EXAMINER KEEHN, RICHARD G ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER AUGST Appeal2013-009661 Application 12/273,372 Technology Center 2400 Before JEAN R. HOMERE, JOHN A. EV ANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 1, 2, 4, 5, and 7-20. App. Br. 2. Claims 3 and 6 have been canceled. Claims App. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appellant's Invention Appellant's invention is directed to a camera system including a camera ( 6) mounted in the interior of a motor vehicle for monitoring the field of view (8) in the rear space of the vehicle. Spec. i-f 73, Fig. 1. In particular, a deflection mirror (3) mounted on the backside of a proprietary Appeal2013-009661 Application 12/273,372 symbol ( 1) reflects incident light from the vehicle exterior field of view (8) into the camera (6). Spec. i-f 76, Fig. 1. Exemplary Claim Independent claim 1 is exemplary, and reads as follows: 1. A camera system for a motor vehicle, comprising: a swivelable decorative part of the motor vehicle, wherein the decorative part comprises a decorative side of an essentially flat carrier plate that swivels between at least a first stable swiveling position and a second stable swiveling position; a deflection mirror structurally coupled to the essentially flat carrier plate of the swivelable decorative part situated opposite the decorative side of the decorative part; and a camera operatively mounted on the vehicle such that the decorative side of the decorative part is turned to an exterior of the motor vehicle when the decorative part is in the second stable swiveling position, and wherein the deflective mirror is turned to the exterior of the motor vehicle when the decorative part is in the first stable swiveling position, the camera being operatively mounted such that incident radiation is directed via the deflection mirror to the camera when the decorative part is in the first stable swiveling position. Davis, II ("Davis") Chang Prior Art Relied Upon us 5,424,875 US 2001/0055214 Al 2 June 13, 1995 Dec. 27, 2001 Appeal2013-009661 Application 12/273,372 Schofield et al. ("Schofield") US 2002/0003571 Al Jan. 10,2002 Rejections on Appeal Appellant requests review of the following Examiner's rejections: Claims 1, 4, 5, 7-10, 13, 14, 17, and 18 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Schofield and Davis. Final Act. 3-11. Claims 2, 11, 12, 15, 16, 19, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Schofield, Davis, and Chang. Final Act. 11-17. ANALYSIS We consider Appellant's arguments seriatim, as they are presented in the Appeal Brief, pages 6-15, and the Reply Brief, pages 1-9. 1 Dispositive Issue: Under 35 U.S.C. Â§ 103, did the Examiner err in finding the combination of Schofield and Davis teaches or suggests a deflection mirror structurally coupled to the essentially flat carrier plate of the swivel able decorative part situated opposite the decorative side of the decorative part . .. wherein the deflective mirror is turned to the exterior of the motor vehicle when the decorative part is in the first stable swiveling 1 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed March 4, 2013), the Reply Brief (filed August 2, 2013), the Answer (mailed June 5, 2013), the Final Office Action (mailed October 4, 2012), and the original Specification (filed November 18, 2008) for the respective details. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). 3 Appeal2013-009661 Application 12/273,372 position, the camera being operatively mounted such that incident radiation is directed via the deflection mirror to the camera when the decorative part is in the first stable swiveling position, as recited in independent claim 1 ? First, Appellant argues the three-dimensional triangular-shaped member in Davis does not teach the "essentially flat carrier plate" and the "swivelable decorative part" recited in the claim. App. Br. 9. Appellant further asserts that the two mirrored surfaces of the three-dimensional triangular-shaped member in Davis are taught to be oblique to one another and not opposite to any surface. Id. Appellant additionally argues that the third side adjacent to the two mirrored surfaces cannot be the decorative side because it is perpendicular, not opposite, the flat bottom plate. Reply Br. 3. In response, the Examiner finds Davis teaches a three-dimensional triangular-shaped member with mirrored surfaces. Ans. 2-3 (citing Davis Fig. 1 ). The Examiner finds Davis teaches the flat bottom plate of the three- dimensional triangular-shaped member as the "essentially flat carrier plate" in claim 1. Ans. 3 (citing Davis Fig. l ). The Examiner further finds that Davis teaches the flat bottom plate is swivelable to different stable positions. Ans. 3 (citing Davis col. 1, 1. 65 - col. 2, 1. 33). Additionally, the Examiner finds Davis teaches that the two mirrored surfaces 18 are coupled to the flat bottom plate. Ans. 2-3 (citing Davis Fig. 1); see Davis col. 2, 11. 12-14; Fig. 1, elements 18 ("[T]he adjustment mechanism includes a rotatable support shaft connected to the at least two mirrored surfaces."). The Examiner also finds the third side, the side opposite the apex formed by the intersecting planes upon which each mirrored surface lies, is the claimed "decorative side of the decorative part." Ans. 2-3 (citing Davis Figs. 1and2). The Examiner finds two sides with mirrors of the three-dimensional triangular- 4 Appeal2013-009661 Application 12/273,372 shaped member in Davis teaches the "deflection mirror" recited in the claim. Id.; see Davis col. 2, 11. 1-3 (The structure comprises the "at least two mirrored surfaces lying on intersecting planes ... forming an apex."). We agree with the Examiner that the cited structure, as the "deflection mirror," is opposite the third side of the three-dimensional triangular-shaped member, as the "decorative side." We thus agree with the Examiner's finding because the two mirrored sides are opposite the third side. Second, Appellant argues neither Davis nor Schofield teaches "that incident radiation is directed via the deflection mirror to the camera," as recited in the claim. App. Br. 10. In particular, Appellant contends Davis teaches a visual reflection from a mirrored surface to the eyes of the operator, not a camera. Id. Appellant further asserts Schofield does not teach a reflecting surface directing light to the parking camera. Id. This argument is not persuasive. We agree with the Examiner that Appellant's arguments individually attack the Schofield and Davis references. Ans. 3--4. Appellant argues Schofield does not teach a reflecting surface, whereas the Examiner relies upon the three-dimensional triangular-shaped member in Davis to teach the "deflection mirror" recited in the claim. Final Act. 4--5 (citing Davis col. 1, 1. 65 - col. 2, 1. 33, Fig. 2). Nevertheless, Schofield suggests using a reflector in combination with a camera. Final Act. 3 (citing Schofield i-f 543 ("[A] single light emitting [diode] ... can be combined with a reflector element and a lens ... and be used in conjunction with a reversing or forward parking camera.")). Therefore, we agree with the Examiner that the combination of Schofield and Davis teaches "that incident radiation is directed via the deflection mirror to the camera," as recited in the claim. 5 Appeal2013-009661 Application 12/273,372 Third, Appellant argues the combination of Schofield and Davis would be inoperable because the mirrored surface of Davis reflecting at the eye level of the operator could not direct light to a camera mounted on the license plate holder. App. Br. 10, 12; Reply Br. 4--5, 8. This argument is unavailing. The Examiner correctly finds Schofield teaches a camera, placed at eye level of the operator, on the rearview mirror to which the mirrored surface of Davis directs light. Ans. 5 (citing Schofield Fig. 38A). Accordingly, we find the Examiner's reliance on the mirrored surfaces in Davis modified to direct light to the rear-facing camera mounted in the area of the rearview mirror in Schofield results in an operable combination.2 Appellant further contends that there is no motivation to modify the teachings of Schofield with the teachings of Davis because of the inoperability of the combination. App. Br. 11-12; Reply Br. 6-8. This argument is not persuasive because Appellant fails to rebut the Examiner's findings of the motivation to combine. The Examiner finds motivation to combine Schofield and Davis to widen the field of view for drivers. Ans. 5; Final Act. 6 (citing Davis col. 1, 11. 35-53). We agree with the Examiner 2 "If references taken in combination would produce a 'seemingly inoperative device,' ... such references teach away from the combination and thus, cannot serve as predicates for a prima facie case of obviousness." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (citation omitted); see also In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) ("a reference teaches away from a combination when using it in that combination would produce an inoperative result," but the obviousness analysis must account for "modifications that one skilled in the art would make to a device borrowed from the prior art"); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (finding no reason to modify a prior art device where the modification would render the device "inoperable for its intended purpose.") 6 Appeal2013-009661 Application 12/273,372 that camera placements taught in Schofield, such as the rear-facing camera at the rearview mirror, is in operable alignment with the three-dimensional triangular-shaped member taught in Davis. Ans. 5 (citing Schofield Fig. 38A). Fourth, Appellant argues Davis does not teach "the deflective mirror is turned to the exterior of the motor vehicle when the decorative part is in the first stable swiveling position," as recited in the claim. App. Br. 10. Specifically, Appellant asserts that if the reflecting surfaces in Davis were turned to the exterior of the vehicle, the driver would be prevented from being able to see light directed from the reflecting surfaces. App. Br. 10-11; Reply Br. 6. Appellant further contends the claim requires the mirror itself, not the mirror's vectors, be turned away from the vehicle. Reply Br. 6. In response, the Examiner correctly finds Davis teaches arrows indicative of light deflected away from the exterior of the car to the cross street. Ans. 4 (citing Davis Fig. 4). Accordingly, we agree with the Examiner that a mirror directing light away from the vehicle is turned to the exterior of the vehicle. Ans. 4. Hence, the cumulative weight and the totality of the evidence on this record reasonably support the Examiner's finding that the combined disclosures of Schofield and Davis would have taught or suggested the disputed limitations. Accordingly, Appellant has not shown the Examiner erred in finding that the cited combination of references renders claim 1 unpatentable. Regarding the rejection of claim 14, Appellant alleges the combination of Schofield and Davis do not teach "the carrier plate of the decorative part is swivelably mounted to and within an essentially common 7 Appeal2013-009661 Application 12/273,372 plane of an outside panel of the motor vehicle, wherein the outside panel defines a boundary between the interior and the exterior of the motor vehicle," as recited in the claim. App. Br. 12-13; Reply Br. 8-9. However, the Examiner finds that Davis teaches the bottom plate of the three- dimensional triangular-shaped member mounted to the tailgate. Ans. 5 (citing Davis Fig. 5). The Examiner further finds the tailgate defines a vertical boundary between the interior of the truck's bed and the exterior of the truck. Ans. 5. This vertical boundary has a common plane with the bottom plate of the three-dimensional triangular-shaped member. Ans. 5; see Davis Fig. 5. We agree with the Examiner that the bottom plate in Davis is mounted to the panel of the tailgate which has a plane common with the bottom plate. Therefore, we sustain the rejection of claim 14. Regarding the rejections of claims 2, 4, 5, 7-13 and 15-20, because Appellant has presented no additional persuasive arguments (App. Br. 13- 15), we sustain the rejections of claims 2, 4, 5, 7-13 and 15-20. DECISION We affirm the Examiner's rejections of claims 1, 2, 4, 5, and 7-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F. R. Â§ 1.136. AFFIRMED JRG 8