Ex Parte Buttolo et al

Patent Trial and Appeal Board

Apr 29, 2016

12363953 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/363,953 0210212009
28395 7590 05/03/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Pietro B uttolo
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.
81187278 3089
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIETRO BUTTOLO and JAMES STEWART RANKIN
Appeal2013-008585
Application number 12/363,953
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and ROBERT
J. SILVERMAN Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 13-18 and 21-27. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
Appeal2013-008585
Application number 12/363,953
Appellants' invention is directed to a method for providing haptic
notification of an upcoming turns to the operator (Spec. 1 ).
Claim 21 is illustrative:
21. A method of operating a haptic-assist direction system to indicate
to a vehicle operator a desired direction of a tum required at an action point,
the method comprising:
activating a first vibration generator located in a first 120° sector of a
steering input controller;
activating a second vibration generator located in a second 120° sector
of the steering input controller; and
activating a third vibration generator located in a third 120° sector of
the steering input controller, the vibration generators being activated in a
clockwise-progressing sequence to create vibrations that may be sensed by
the vehicle operator to indicate a right tum and in a counterclockwise-
progressing sequence to indicate a left tum.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Prost-Fin
Basson
Chiba
Almqvist
US 2008/0023254 Al
US 2009/0073112 Al
US 2009/0212974 Al
US 2009/0273458 Al
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Jan. 31, 2008
March 19, 2009
Aug. 27, 2009
Nov. 5, 2000
Appeal2013-008585
Application number 12/363,953
Appellants appeal the following rejections:
Claims 21 and 22 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 21and22 are rejected under 35 U.S.C. § 102(a) as anticipated
by Basson.
Claims 21and22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basson in view of Prost-Fin to Almqvist to Chiba.
ISSUE
Did the Examiner err in rejecting claims 21 and 22 under 35 U.S.C.
§ 112, first paragraph because the subject matter of these claims was
described in the originally disclosed specification?
Did the Examiner err in rejecting claims 21 and 22 under 35 U.S.C.
§ 102 because Basson does not disclose vibration generators located at first,
second, and third 120 degree sectors of the steering wheel?
Did the Examiner err in rejecting claims 21 and 22 under 35 U.S.C.
§ 103 because Prost, Almqvist and Chiba do not disclose sequential
activation of the vibration generators?
FACTUAL FINDINGS
We adopt the Examiner's findings as our own. Final Act. 6-9, 14--18.
Additional findings of fact may appear in the Analysis that follows.
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Appeal2013-008585
Application number 12/363,953
Written Description
ANALYSIS
We initially note that the proper test for determining whether claims
comply with the written description requirement of 35 U.S.C. § 112, if 1, is
whether the originally filed disclosure of an application would have
reasonably conveyed to one skilled in the art that the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). Additionally, a claim cannot be
broadened when it is amended to include embodiments that are inconsistent
with the original disclosure. Gentry Gallery, Inc. v. Berkline Corp., 134
F.3d 1473, 1480 (Fed. Cir. 1998) ("[C]laims may be no broader than the
supporting disclosure.").
The Examiner finds that the Figure 2 of Appellants' disclosure depicts
vibration generators 14a, 14b, and 14c are disposed at or near 10 o'clock, 2
o'clock and 6 o'clock pos1t10ns which are pos1t10ns that are likely to be
contacted by a hand but does not support the broader recitation of the
vibration generators disposed at three separate 120° sectors. Appellants
argue that Figure 2 depicts the vibration generators disposed in three
separate 120° sectors. We agree with the Appellants that Figure 2 does
depict the vibration generators at specific locations that are within specific
120° sectors of the steering input controller so as to be disposed at
approximately the 10, 2, and 6 o'clock positions. However, we agree with
the Examiner that Figure 2 does not provide support for the vibration
generators being disposed within specific 120° sectors so as to be disposed
at any other positions other than those depicted in Figure 2.
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Appeal2013-008585
Application number 12/363,953
In view of the foregoing, we will sustain the Examiner's rejection
under 35 U.S.C. § 112, first paragraph.
Anticipation
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Basson does not disclose vibration generators
located at a first, second and third 120° sectors of the steering input
controller. We agree with the Examiner's response to this argument found
on pages 5-6 of the Answer that since the claim does not recite non-
overlapping first, second, and third 120° sectors, Basson's disclosure of
vibration generators depicted at distinct positions around a steering wheel is
a disclosure of this subject matter as broadly claimed.
Obviousness
We are not persuaded of error on the part of the Examiner by
Appellants argument directed to the obviousness rejection that none of Prost,
Almqvist, and Chiba discloses that the vibration generators activated in a
clock-wise progressing sequence because these arguments are not directed to
the combination of references relied on by the Examiner but rather to each
reference alone. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In this case, the Examiner relies on Basson for teaching
this subject matter (Final Act. 3).
We are also not persuaded of error on the part of the Examiner by
Appellants' argument that that none of the references makes obvious the
discovery that three widely spaced vibrators would produce a pattern of
vibrations through the entire steering wheel because the claims do not recite
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Appeal2013-008585
Application number 12/363,953
widely spaced vibrators. In this regard, we agree with the Examiner that
vibrators located at 11, 1 and 6 o'clock positions, which are not widely
spaced, would meet the limitations of the claims.
In view of the foregoing, we will sustain the Examiner's rejections
under 35U.S.C.§103.
DECISION
The Examiner's rejection of claims 13-18 and 21-27 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l) (2009).
ORDER
AFFIRMED
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