Ex Parte Flemming et al

Patent Trial and Appeal Board

Jan 4, 2017

13122437 (P.T.A.B. Jan. 4, 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.
13/122,437 06/17/2011 Andre Flemming 095309.63404US 9066
23911 7590 01/06/2017
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
RAHMAN, MOHAMMAD J
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
01/06/2017 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 ANDRE FLEMMING, MARTIN KRUG,
NORBERT SCHLOEMER, and JUERGEN SEEKIRCHER
Appeal 2016-001411
Application 13/122,437
Technology Center 2400
Before BRUCE R. WINSOR, AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—6 and 9—18, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 7 and 8 are cancelled. Final Act. 5.
We affirm-in-part.
1 The real party in interest identified by Appellants is Daimler AG. Br. 1.
Appeal 2016-001411
Application 13/122,437
STATEMENT OF THE CASE
Appellants’ disclosed “invention relates to a carrier device for
attaching to a pane, in particular a windshield, of a motor vehicle.” Spec.
Claims 1 and 18, which are illustrative, read as follows:
1. A carrier device for attaching to a windshield of a motor
vehicle, having a carrier plate that can be attached to the
windshield which is made of plastic at least in segments, and by
which at least one of a camera and a sensor is carried,
wherein the carrier plate has a carrying device serving as
a stop, against which the at least one of the camera and the sensor
are supported with a force directed from the carrier plate in the
direction of the interior of the motor vehicle, the carrying device
including a plurality of upper carrying elements at one end
thereof and a plurality of lower carrying elements at another end
thereof; and
wherein the force supporting the at least one of the camera
and the sensor against the carrying device is applied by a spring
device arranged at the carrier plate, the spring device including a
plurality of spring elements.
18. The carrier device according to claim 1, wherein the
spring elements include an upper spring element arranged
adjacent to the upper carrying elements that presses the at least
one of the camera and the sensor against the lower carrying
elements.
The Examiner relies on the following prior art in rejecting the claims
12.
Claimed Subject Matter
References
Tovi US 4,225,881 Sept. 30, 1980
US 6,244,716 B1 June 12, 2001
US 6,824,281 B2 Nov. 30, 2004
US 2006/0171704 A1 Aug. 3, 2006
Steenwyk et al.
Schofield et al.
Bingle et al.
2
Appeal 2016-001411
Application 13/122,437
Neumann et al. US 7,322,755 B2 Jan. 20, 2008
Incorvia et al. US 2010/0020541 Al Jan. 28, 2010
Kreig2 DE 102 11 444 Al Oct. 9,2003
Rejections
Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Neumann, and Schofield. See Final Act 3—5.
Claims 9—11 and 183 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Neumann, Schofield, and Bingle. See Final Act 5—
6.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Neumann, Schofield, Bingle, and Tovi. See Final
Act 6—7.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Neumann, Schofield, and Steenwyk. See Final
Act. 7.
Claims 14—17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Neumann, Schofield, and Incorvia. See Final Act.
7-9.
2 The Examiner relies on, and cites to, a machine translation of Krieg. Final
Act. 3. We do likewise.
3 Although not identified in the summary ground of rejection (see Final Act.
5), the Examiner articulates a detailed ground of rejection of claim 18 over
Krieg, Neumann, Schofield, and Bingle (see Final Act 6). We note,
however, that the rejection of claim 18 does not cite to any passages of
Bingle.
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Application 13/122,437
Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed Apr. 20, 2015) and the Specification4 (“Spec.” filed Apr. 4,
2011) for the positions of Appellants and the Final Office Action (“Final
Act.” mailed Nov. 3, 2014) and Examiner’s Answer (“Ans.” mailed Sept.
11, 2015) for the reasoning, findings, and conclusions of the Examiner.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2014).
ISSUES
Appellants’ arguments present the following issues:
Does the Examiner err in finding Schofield teaches or suggests “the
force supporting the at least one of the camera and the sensor against the
carrying device is applied by a spring device arranged at the carrier plate”
(hereinafter the “spring device limitation”), as recited in claim 1?
Does the Examiner err in finding Steenwyk teaches or suggests “a
pane heater is integrated into the carrier plate, the pane heater heating at
least one region of the windshield near the at least one of the camera and the
sensor” (hereinafter the “pane heater limitation”), as recited in claim 13?
Does the Examiner err in concluding it would have been obvious to
modify the combined teachings of Krieg, Neumann, and Schofield to include
a heater as taught by Steenwyk and as recited in claim 13?
4 References to the Specification are to the copy of the Specification in the
Record labeled “SUBSTITUTE SPECIFICATION — CLEAN COPY.” See
Spec. 1.
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Application 13/122,437
Does the Examiner err in finding Schofield teaches or suggests “the
spring elements include an upper spring element arranged adjacent to the
upper carrying elements that presses the at least one of the camera and the
sensor against the lower carrying elements” (hereinafter the “upper spring
element limitation”), as recited in claim 18?
ANALYSIS
Claim 1
The Examiner finds Schofield, when combined with Krieg and
Neumann, teaches the spring device limitation recited in claim 1. Final
Act. 4 (citing Schofield col. 1,11. 6^67, col. 2,11. 1-3, col. 12,11. 13-17,
Fig. 7 (items 38, 40)); see also Ans. 3^4 (additionally citing Schofield col.
12,11. 1—17, Figs. 7—8 (items 28, 38, 40)). Appellants contend Schofield
does not teach or suggest the spring device limitation because “Schofield’s
spring 40 is not arranged at the carrier plate.” Br. 4. We are not persuaded
of error.
The Examiner explains that Schofield’s sensor 38 is carried by
Schofield’s cover 28. Ans. 4 (citing Schofield col. 12,11. 1—17). We agree.
Comparing Schofield’s Figures 7 and 8, Schofield illustrates that the biasing
member 40 (i.e., spring) and sensor 38 (i.e., camera or sensor) are fixed to
the cover 28 by an un-labeled member with the sensor 38 extending through
an opening 32a in the plate 32, so that the sensor 38 retracts when the
accessory module 10 is mounted to the windshield 12. Thus, Schofield
teaches that the biasing member 40 is arranged at the structure that carries
the sensor 38.
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Application 13/122,437
That the carrying structure for Schofield’s sensor 38 is the cover 28
rather than the plate 32 attached to the windshield 12 does not persuade us of
error. The Examiner relies on Krieg to teach carrying a sensor on a plate
attached to a windshield. Final Act. 3 (citing Krieg 1:1—2, 2:3, 3:3—7, 9—15,
13:10-15, Fig. 6 (items 4a, 4e)). The test of obviousness is not whether one
reference can be bodily inserted into another, but, “[rjather, the test is what
the combined teachings of the references would have suggested to one of
ordinary skill in the art,” In re Keller, 642 F.2d 413, 425 (CCPA 1981), who
is a person of ordinary creativity and not an automaton, KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007), and whose inferences and creative
steps we may consider, id. at 418. We agree with the Examiner’s conclusion
that one of ordinary skill in the art would have learned from Krieg to mount
the sensor on a structure attached to the windshield, and from Schofield to
locate a spring applying force to the sensor at the structure carrying the
sensor.
The arguments presented by Appellants do not persuade us of error.
See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we sustain the rejections of claim 1 and claims 2—6, 9—12, and
14—17, which depend, directly or indirectly, from claim 1 and were not
separately argued with particularity.
Claim 13
The Examiner finds Steenwyk, when combined with Krieg, Neumann,
and Schofield, teaches or suggests the pane heater limitation recited in claim
13. Final Act. 7 (citing Steenwyk col. 1,11. 38 42). The Examiner
concludes “[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Krieg in view of Neumann further in
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view of Schofield to incorporate the teachings of Steenwyk to remove mist
from the glass.” Id.
Appellants contend as follows:
Steenwyk only discloses a heater in an exterior mirror assembly
disposed in an outer side-mirror area of a vehicle. Steenwyk is
silent with regard to providing a heater that is integrated into the
carrier plate and with regard to providing a heater for heating a
region of the windshield near the camera and/or sensor.
Steenwyk’s heater is only provided outside of the vehicle for
heater the side mirror.
Br. 5. Appellants further contend that it would not have been obvious to
incorporate a heater, as taught by Steenwyk, into a “carrier device for
attaching to a windshield” (claim 1) as taught by Krieg, Neumann, and
Schofield, for the following reasons:
Steenwyk’s heater is designed for use in an exterior side-mirror
assembly, but the component holder of the Krieg, Neumann, and
Schofield combination is designed for use in an interior of a
windshield at a central portion thereof. The heating needs and
environments of these two different components are completely
different due to their disparate locations and functions.
Moreover, the heating effects of Steenwyk’s heater are limited to
the side mirror to which it is associated.
Nothing in Steenwyk’s disclosure indicates that its side-
mirror heater would be able to have any effect on devices
provided on a carrier plate in a carrier device disposed on the
inside of a windshield. Accordingly, integrating the heater from
Steenwyk’s exterior side mirror assembly into the interior,
central windshield component holder of the Krieg, Neumann,
and Schofield combination would render Steenwyk’s heater
unsatisfactory for its intended purpose of providing a heater in
an exterior mirror assembly.
Br. 6.
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Application 13/122,437
We are not persuaded of error. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. Furthermore, the test of obviousness is not whether one
reference can be bodily inserted into another, but, “[rjather, the test is what
the combined teachings of the references would have suggested to one of
ordinary skill in the art,” Keller, 642 F.2d at 425, who is a person of ordinary
creativity and not an automaton, KSR, 550 U.S. at 421, and whose inferences
and creative steps we may consider, id. at 418.
Moisture is a known problem for cameras and sensors such as those
incorporated into the recited carrier device. See, e.g., Neumann col. 3,11. 17-
—21 (discussing the need for resistance to climatic conditions and to keep the
camera’s field-of-view free from interference) (cited at Final Act. 4);
Schofield col. 12,11. 23—31 (discussing the need to protect the windshield
and accessory from contaminants that can affect the performance of the
accessory, such as dirt, dust, smoke, moisture or the like) (cited at Final
Act. 6). Steenwyk teaches that misting (i.e., moisture) on a mirror (i.e., a
glass surface) can be removed by heating the glass surface, such as by a
heater on an adjacent carrier plate. Steenwyk col. 1,11. 38 42. Doing so
would not change the intended purpose of Steenwyk’s heater, which is
removing misting from a glass surface so that the misting does not obscure
the surface. Although we agree with Appellants that some adaptations of
Steenwyk’s heater would be required to use it in the carrier device,
Appellants give no reason why such adaptation would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
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Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 419); see also Keller, 642 F.2d at 425 (“To justify
combining reference teachings in support of a rejection it is not necessary
that a device shown in one reference can be physically inserted into the
device shown in the other.”).
The arguments presented by Appellants do not persuade us of error.
Accordingly, we sustain the rejection of claim 13.
Claim 18
The Examiner finds Schofield, when combined with Krieg and
Neumann, teaches the upper spring element limitation recited in claim 18.
Final Act. 6 (citing Schofield col. 12,11. 1—31). Appellants contend
“Schofield’s spring 40 does not press the accessory 38 against a lower
carrying element. Instead, it presses the accessory against the surface 12a of
the windshield 12.” Br. 7 (citing Schofield Fig. 8). We agree with
Appellants for the reasons stated by Appellants.
The Examiner relies on Krieg to teach the upper and lower carrying
elements. Final Act. 3 (citing Krieg 3:3—7, 9—15, Fig. 6 (items 4a, 4e)).
However, the Examiner does not explain, nor is it apparent from the
teachings of the cited references, why the skilled person would adapt
Schofield’s teaching of a spring that biases the sensor towards the
windshield to bias the sensor from one carrying element of a carrying plate
towards another carrying element of the carrying plate.
Appellants demonstrate error in the rejection of claim 18.
Accordingly, we do not sustain the rejection of claim 18.
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DECISION
The decision of the Examiner to reject claims 1—6 and 9—17 is
affirmed.
The decision of the Examiner to reject claim 18 is reversed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
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