Ex Parte Board et al

Patent Trial and Appeal Board

Jun 15, 2017

14197597 (P.T.A.B. Jun. 15, 2017)

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.
83385112 8989
EXAMINER
CONDRA, DARLENE P
ART UNIT PAPER NUMBER
3616
MAIL DATE DELIVERY MODE
14/197,597 03/05/2014
117396 7590 06/15/2017
FGTL/Burgess Law Office, PLLC
P.O. Box 214320
Auburn Hills, MI 48321-4320
Derek Board
06/15/2017 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 DEREK BOARD, SRINIVASAN SUNDARARAJAN,
and EDWARD JOSEPH DESMET
Appeal 2017-001014
Application 14/197,597
Technology Center 3600
Before ROBERT E. NAPPI, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—4, which are all the claims pending and rejected in the
application.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
STATEMENT OF THE CASE
Introduction
1 The Examiner withdrew the obviousness rejection of claims 5—7 and 9
(Ans. 2). Claim 8 is not before us because it is objected to as being
dependent from a rejected base claim, and claim 10 is allowable (Final
Act. 6).
Appeal 2017-001014
Application 14/197,597
According to the Specification, the present invention relates to a seat
belt system. See generally Spec. 1. Claim 1 is exemplary:
1. A seat belt system comprising:
a seat belt, said seat belt including a plurality of metal
filaments; and
a D-ring, said D-ring including a magnet.2
References and Rejections
Claims 1—4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bok (KR 680723 Bl; publ. Feb. 8, 2007) and Rodemer
(US 7,092,744 B2, iss. Aug. 15, 2006).
ANALYSIS
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 3—4) and (ii) the Answer (Ans. 2-4) to the extent
they are consistent with our analysis below.3
Appellants contend:
A person of ordinary skill in the art would understand, pursuant
to Faraday’s Law, a conductor moving through a magnetic field
generates an electromotive force, i.e., a voltage. If incorporated
in the seatbelt system of Bok, normal movement of the seatbelt
2 If prosecution reopens, we leave it to the Examiner to determine whether
claim 1 complies with 35 U.S.C. § 112, second paragraph, because claim 1
“does not positively recite structural relationships of the two elements.” In
re Collier, 397 F.2d 1003, 1005 (CCPA 1968).
3 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
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Application 14/197,597
would move the conductors 20 of Rodemer et al. past the
magnetic material of the D-ring of Bok generating a voltage
interfering with the microphone Rodemer et al.
... the upper end of the seatbelt 10 of Rodemer et al.
passes over the belt deflection member 8; i.e., the D-ring. The
movement generates a voltage in the conductor 20 because the
conductor 20 moves in the magnetic field generated by the
magnetic material of the D-ring of Bok. The generated voltage in
the conductor 20 would be undesirable, as it interferes with the
microphone signal.
Understanding that passing a conductor through a
magnetic field generates a voltage, a person wanting to put metal
filaments in a seat belt for a microphone would not want to put a
magnet in the D-ring due to voltage generation and signal
interference.
App. Br. 5; see also Reply Br. 1^4.
We disagree. The U.S. Supreme Court has held “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int 7 Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). Further, “[i]f the claim extends to what is
obvious, it is invalid under § 103” and “the 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.” Id. at 418—19.
The Examiner finds—and Appellants do not dispute—Bok teaches
“[a] seat belt system comprising: a seat belt. . . and a D-ring, said D-ring
including a magnet,” and Rodemer teaches a “seat belt including a plurality
of metal filaments.” See Final Act. 3^4. Further, the Examiner has provided
articulated reasoning with a rational underpinning as to why one skilled in
the art would have found it obvious to modify Bok’s system to incorporate
the teachings of Rodemer. See Final Act. 4; Ans. 2^4. In particular, the
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Application 14/197,597
Examiner finds one skilled in the art would have pursued the combination to
“provide the convenience of the hands free microphone on the seatbelt as
disclosed by Rodemer et al in any seatbelt assembly, including in a seatbelt
assembly where the D-ring portion of the seatbelt assembly was separately
manufactured with a magnet therein.” Ans. 3; see also Final Act. 4.
Appellants do not persuasively show why such reasoning is incorrect.
In particular, Appellants’ assertion that “the obviousness inquiry does not
ask ‘whether the references could be physically combined’” (Reply Br. 3) is
not directed to the Examiner’s specific determination.
Appellants’ assertion about Faraday’s Law is not evidence, as
Appellants do not cite any evidence about their assertion. See App. Br. 5.
While not relied on for our analysis, we note A Dictionary of Chemistry
(Oxford, 6th Ed. 2008) provides definitions of Faraday’s Law, which differ
from Appellants’ unsupported assertion.
Further, Appellants’ following assertion is not directed to the
Examiner’s proposed combination:
the upper end of the seatbelt 10 of Rodemer et al. passes over the
belt deflection member 8; i.e., the D-ring. The movement
generates a voltage in the conductor 20 because the conductor 20
moves in the magnetic field generated by the magnetic material
of the D-ring of Bok. The generated voltage in the conductor 20
would be undesirable, as it interferes with the microphone signal.
App. Br. 5.
As discussed above, the Examiner finds—and Appellants do not
dispute—the primary reference Bok teaches a D-ring. See Final Act. 3.
Therefore, the Examiner’s proposed combination does not include any
additional D-ring from Rodemer, as Appellants assert. In any event,
Rodemer describes “[a] belt deflection [member] 8” (Rodemer 4:21, 4:26,
4
Appeal 2017-001014
Application 14/197,597
4:32—33), and Appellants have not shown Rodemer describes the “belt
deflection [member] 8” as a D-ring. In short, the proposed combination
does not include Rodemer’s “belt deflection [member] 8,” and Appellants’
speculation that
the upper end of the seatbelt 10 of Rodemer et al. passes over the
belt deflection member 8; i.e., the D-ring. The movement
generates a voltage in the conductor 20 because the conductor 20
moves in the magnetic field generated by the magnetic material
of the D-ring of Bok. The generated voltage in the conductor 20
would be undesirable
(App. Br. 5; see also Reply Br. 1—2) is not directed to the proposed
combination. In any event, Appellants have not cited any evidence to
support their speculation about interference in their proposed combination,
which is not even the combination proposed by the Examiner.4
Appellants’ assertion that “normal movement of the seatbelt would
move the conductors 20 of Rodemer et al. past the magnetic material of the
D-ring of Bok generating a voltage interfering with the microphone
Rodemer et al.” (App. Br. 5) appears to stem from the above discussion of
Rodemer’s “belt deflection member 8,” and is unpersuasive for the reasons
discussed above. In any event, Appellants’ assertion lacks evidentiary
support, as Appellants have not shown why and how the proposed
combination would “move the conductors 20 of Rodemer et al. past the
4 Appellants’ assertion that “[t]he examiner does not dispute that such
movement would generate a voltage in the conductors 20” (Reply Br. 2) is
incorrect: as discussed above, Appellants’ assertion is not directed to the
Examiner’s proposed combination. In any event and to the contrary, the
Examiner states “voltage generation and signal interference may or may not
occur[.]” Ans. 3 (emphasis added).
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Application 14/197,597
magnetic material of the D-ring of Bok” (App. Br. 5), since the Examiner’s
proposed combination specifies the “D-ring . . . spaced from the
microphone.” Ans. 3.5
Despite Appellants’ failure to show evidence of signal interference for
the proposed combination, the Examiner finds if signal interference does
occur, one skilled in the art “is also a person of ordinary creativity who
would take into account any voltage generation or signal interference.”
Ans. 3. For example, the Examiner finds one skilled in the art would have
“include [d] the proper insulation on either the magnet portion of the D-ring
or at a contact location of the metal filaments with the magnet in the D-ring
to prevent or minimize interference for the microphone.” Ans. 4.
Appellants’ assertions that “[njeither Bok nor Rodemer et al disclose
insulating the wires or the magnet to prevent generation of a voltage in the
wires . . neither reference explains how such installation would be
accomplished and what is needed to insulate the conductors to prevent
generation of a voltage” (Reply Br. 3; see also App. Br. 6) are not
commensurate with the scope of the claim. In addition, Appellants do not
present adequate evidence that the resulting arrangements would have been
5 Appellants’ discussions of Rodemer are also problematic. In particular, the
Examiner’s proposed combination provides “a hands free microphone.”
Final Act. 4. And Rodemer’s Figure 2—which Appellants ignore—
describes “an embodiment of the microphone mounting according to the
invention.” Rodemer 4:10—11. Instead, Appellants focus on Rodemer’s
Figures 3 and 4 (App. Br. 3—4), which discusses multiple microphones
associated with an exemplary disclosure. See Rodemer 4:12—15 (“FIG. 3
shows a belt section along which three microphones are arranged; and FIG.
4 is an enlarged cross-sectional view through the belt and a microphone
along sectional line A—A in FIG. 3”).
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“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418—19). In contrast, the Examiner’s findings and conclusion are
reasonable because the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” since the skilled artisan is
“a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-
21.6
Accordingly, we agree with the Examiner that applying Rodemer’s
metal filaments in the Bok’s system would have predictably used prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. a 417.
In the Reply Brief, Appellants belatedly assert the proposed
combination “produces an inoperative device.” Reply Br. 2. Appellants
have waived that argument because it is untimely, and Appellants have not
demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2) (2012). Even if we consider the argument, Appellants have
not persuaded us of error because they have not provided the requisite
analysis to show the combination “produces an inoperative device” (Reply
Br. 2).
Because Appellants have not persuaded us the Examiner erred, on this
record, we sustain the Examiner’s rejection of independent claim 1.
6 Appellants assert the Examiner “[tjacitly acknowledging that the
combination produces an inoperative device” (Reply Br. 3), but do not cite
any support. To the contrary, the Examiner states “voltage generation and
signal interference may or may not occur[.]” Ans. 3 (emphasis added).
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Application 14/197,597
We also sustain the Examiner’s rejection of corresponding dependent
claims 2 and 3, as Appellants do not advance separate substantive arguments
about those claims.
Regarding dependent claim 4, we agree with Appellants that the
Examiner has not shown the cited Bok portions teach “wherein said magnet
counteracts at least a portion of the normal force of the seat belt on the D-
ring.” See App. Br. 6—7; Reply Br. 4. The Examiner cites Bok’s
paragraph 3 of page 3, and the “Effects of the Invention” section of page 4.
See Final Act. 4; Ans. 4. However, the cited Bok portions do not describe
“wherein said magnet counteracts at least a portion of the normal force of
the seat belt on the D-ring.” Absent further explanation from the Examiner,
we do not see how the cited Bok portions teach the disputed limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of dependent claim 4.7
DECISION
We affirm the Examiner’s decision rejecting claims 1—3.
We reverse the Examiner’s decision rejecting claim 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
7 Claim 4 recites “the normal force,” but fails to provide the required
antecedent basis for that claim element. See claim 4. If prosecution
reopens, we recommend the Examiner consider whether claim 4 meets the
definiteness requirement of 35 U.S.C. § 112, 2. See Nautilus, Inc. v.
Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014).
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Appeal 2017-001014
Application 14/197,597
AFFIRMED-IN-PART
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