Ex Parte Disange et al

Patent Trial and Appeal BoardNov 7, 2012

11014063 (P.T.A.B. Nov. 7, 2012)

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. 11/014,063 12/16/2004 Nick Disange JAGP 0105 PUSA 1528 22045 7590 11/07/2012 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER PAUL, DISLER ART UNIT PAPER NUMBER 2655 MAIL DATE DELIVERY MODE 11/07/2012 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 NICK DISANGE, SIMON GLADSTONE, and ANDREW WESTWOOD ____________________ Appeal 2010-0071671 Application 11/014,063 Technology Center 2600 ____________________ Before JEAN R. HOMERE, TREVOR JEFFERSON, and LARRY J. HUME, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Jaguar Cars, Ltd. (App. Br. 1.) Appeal 2010-007167 Application 11/014,063 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-5. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a method for arranging a microphone in a motor vehicle. (Spec. 1, l. 2.) In particular, the microphone is mounted on an A- pillar covered by a pillar trim including a trim panel having an aperture in the region of the microphone. (Spec. 3, l. 7-Spec. 4, l. 11.) Illustrative Claim Independent claim 1 further illustrates the invention as follows: 1. A motor vehicle having a pair of A-pillars each of which is substantially covered by a respective pillar trim fixedly mounted to the A-pillar, wherein at least one said pillar trim includes a trim panel which covers at least part of the A-pillar and is spaced from it, wherein a microphone is fixed between the trim panel and the A-pillar and the trim panel has at least one aperture in the region of the microphone. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Ohmura US 2001/0052861 A1 Dec. 20, 2001 Patel US 6,328,333 B1 Dec. 11, 2001 Watson US 7,130,431 B2 Oct. 31, 2006 Appeal 2010-007167 Application 11/014,063 3 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ohmura and Patel. 2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ohmura, Patel, and Watson. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the principal Brief, pages 3-8. Dispositive Issue: Have Appellants shown that the Examiner erred in finding that the disclosures of Ohmura and Patel are properly combined to teach or suggest a microphone fixed between an A-pillar and the trim panel mounted thereon having an aperture in the region of the microphone, as recited claim 1? Appellants argue that the Examiner erred in finding that the proffered combination teaches or suggests the disputed limitations emphasized above. According to Appellants, the Examiner has not provided a sufficient rationale to support the proposed combination of references. In particular, Appellants submit that because the rationale of arranging the microphone in a location in the vehicle to prevent serious injuries to the driver as offered by the Examiner is found in Appellants’ Specification, such rationale is improper. (App. Br. 4-5.) Further, Appellants argue that while Ohmura discloses a microphone embedded in an A-pillar of the vehicle, the reference does not disclose disposing the microphone between the A-pillar and the Appeal 2010-007167 Application 11/014,063 4 trim panel having an aperture therein. (Id. at 5.) Additionally, Appellants argue that the Patel does not cure the noted deficiencies of Ohmura. (Id. at 6.) In response, the Examiner finds that because the rationale for the proposed combination is obtained from the Patel reference, the combination is proper. (Ans. 7-8.) Further, the Examiner finds that one of ordinary skill in the art would have found it obvious to insert an aperture in the trim panel disclosed by Patel to enable the driver to interact with the microphone embedded in Ohmura’s A-pillar. ( Id. at 9.) Consequently, the Examiner finds that the disclosures of Ohmura and Patel are properly combined to teach or suggest the disputed limitations. (Id.) On the record before us, we do not find error in the Examiner’s findings and ultimate conclusion of obviousness. In particular, Ohmura discloses embedding a microphone in an A-pillar of a vehicle. (¶ [0069].) Further, Patel discloses covering an A-pillar with a trim panel to provide inflatable restraint deployment capability from the pillar and cushion for the car occupant in case of a side impact or roll over condition. (Col. 2, ll. 17- 33.) We find that Ohmura and Patel disclose complementary and known elements that perform their ordinary functions to predictably result in a microphone being placed between an A-pillar and a trim panel, which covers the A-pillar. We note that while Appellants correctly argue that neither Ohmura nor Patel teaches an aperture in the trim panel, we agree with the Examiner that inserting an aperture in the trim panel in the region of the microphone would have been obvious to the ordinary skilled artisan in order Appeal 2010-007167 Application 11/014,063 5 to make the microphone functional. Given, the proposed combination of references, we echo the Examiner’s finding that the insertion of an aperture in the trim panel would have been obvious to enable the driver to use the microphone. Next, regarding the lack of logical reason to combine argument, we note that U.S. Supreme Court has held that “[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'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that: [o]ften it will be necessary for a court to look to interrelated teachings of multiple patents; . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason for combining the known elements in a the fashion claimed by the patent at issue. Id. at 418. Additionally, the Court instructs that: “[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”[].… [H]owever, 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. (citation omitted). Appeal 2010-007167 Application 11/014,063 6 First, we find that the ordinarily skilled artisan, being a creative individual would have been able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in the disputed limitations. That is, as discussed above, the proffered combination of the cited references would predictably result in positioning a microphone between an A-pillar and a pillar trim mounted thereon wherein the pillar trim includes an aperture in the region of the microphone to enable a driver of the vehicle to have access to the microphone. Further, as prescribed by the controlling case law, while it is often necessary for an Examiner to identify a reason for combining the familiar elements obtained from the prior art in establishing a prima facie case of obviousness, the identification of such a reason is not a sine qua non requirement. So long as the Examiner provides an articulated reasoning with some rational underpinning to substantiate the obviousness rejection, such a conclusion is proper. In this case, the Examiner provides more than just a mere conclusory statement. The Examiner notes that at the time of the claimed invention, an ordinarily skilled artisan would have been motivated to combine Patel’s cited teaching of covering Ohmura’s A-pillar with a pillar trim to enhance the safety of the driver of the vehicle in case of an accident. (Ans. 7-8.) In our view, such a statement suffices as an articulated reason with a rational underpinning to support the cited combination. As noted above, the case law allows the Examiner to look to the state of the prior art, including the knowledge of the ordinarily skilled artisan to arrive at such a reason for combining the known elements of the prior art. Consequently, the Appeal 2010-007167 Application 11/014,063 7 Examiner’s reliance upon the cited references in order to arrive at an articulated reason with a rational underpinning to support the proffered combination is proper. For these same reasons, Appellants’ argument that the combination is improper is not persuasive. It follows that Appellants have not shown error in the Examiner’s rejection of claim 1. Regarding claim 4, Appellants argue that the proposed combination of Ohmura and Patel does not teach that the trim panel material is cloth. (App. Br. 6-7.) This argument is unavailing. Patel explicitly teaches that the trim panel can use cloth material to cover the A-pillar as an energy absorbing material. (Col. 4, ll. 63-67.) Regarding claim 3, Appellants argue that the combination of Ohmura, Patel, and Watson does not teach the trim panel including fastening clips to attach the microphone so that it faces the aperture. (App. Br. 7-8.) According to Appellants, Watson’s disclosure of a fastening means to attach the microphone to a rearview mirror teaches away from the invention. (Id.) We find those arguments unpersuasive. Patel discloses a pillar trim that includes fastening clips to attach the trim to the A-pillar. (Col. 4, ll. 9-19.) Further, Watson discloses using fastening clips to attach a microphone to a rearview mirror such that the microphone is positioned in front of an aperture thereon. (Col. 9, ll. 4-16.) We find that the combination of Ohmura, Patel, and Watson disclose prior art elements that perform their ordinary functions to predictably result in a microphone positioned between an A-pillar and a trim panel including clips for attaching the microphone in front of an aperture in the trim panel. Appeal 2010-007167 Application 11/014,063 8 Further, regarding Appellants’ teaching away argument, we note that it has been held that “[w]hat the prior art teaches and whether it teaches toward or away from the claimed invention … is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). While the portion of Watson cited by Appellants may teach using fasteners to attach the microphone to a transducer mount in a microphone housing to form a microphone assembly attached to the rearview mirror (Reply Br. 5-6), Appellants fail to show that the cited textual portions of Watson otherwise discourage or criticize utilizing the fasteners to attach the microphone to the rearview mirror. It therefore follows that Appellants have not shown error in the Examiner’s rejection of claim 3. Claims 2 and 5 (not argued separately) fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner’s rejection of claims 1-5 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2010-007167 Application 11/014,063 9 AFFIRMED msc