Ex Parte GALLAGHER et al

Patent Trial and Appeal Board

Sep 25, 2018

15137664 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/137,664 04/25/2016
28395 7590 09/27/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Steven William GALLAGHER
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.
83642560 6810
EXAMINER
PEDDER, DENNIS H
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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 STEVEN WILLIAM GALLAGHER and
DAVID SCHMIDT 1
Appeal2018-002820
Application 15/137,664
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-17. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Ford Global Technologies, LLC (Appellant) is the Applicant, as provided
in 37 C.F.R. § 1.46, and is identified as the real party in interest Appeal Br.
1.
Appeal2018-002820
Application 15/137,664
THE CLAIMED SUBJECT MATTER
Claims 1, 7, and 12 are independent. Claims App. 1-3. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A vehicle comprising:
bodyside pillars;
a roof defining a periphery and attached to and supported
by the bodyside pillars; and
a support structure attached to the roof, the support
structure having a mounting ring extending substantially around
the periphery, and a panel disposed within a section defined by
at least two leg portions of the mounting ring, the panel being
configured to support a plurality of sensors having a weight,
and the mounting ring defining attachment from the roof to the
bodyside pillars to distribute the weight of the panel across the
roof and the bodyside pillars.
Id. at 1.
REJECTI0NS 2
I. Claims 1, 2, 6-13, and 15-17 stand rejected under 35 U.S.C. § 103
as unpatentable over Ordonio et al. (US 2009/0174229 Al,
published July 9, 2009, hereinafter "Ordonio") and Ganz et al.
(US 5,545,261, issued Aug. 13, 1996, hereinafter "Ganz").
II. Claims 3, 4, and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ordonio, Ganz, and Bojanowski et al.
(US 2015/0343887 Al, published Dec. 3, 2015, hereinafter
"Bojanowski").
2 The Examiner withdrew a rejection of claims 4 and 14 under
35 U.S.C. § 112(b) in view of the Amendment filed August 22, 2017. See
Ans. 5; Advisory Act. (Sept. 1, 2017); Final Act. 2.
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Application 15/137,664
III. Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable
over Ordonio, Ganz, Regnier et al. (US 2006/0284450 Al, pub.
Dec. 21, 2006, hereinafter "Regnier"), and Khaykin et al.
(US 8,998,297 Bl, issued Apr. 7, 2015, hereinafter "Khaykin").
DISCUSSION
Rejection I
Appellant groups all independent claims 1, 7, and 12 together, and
does not present any separate arguments for the dependent claims, aside
from their dependence from one of claims 1, 7, and 12. See Appeal Br. 2--4.
We decide the appeal of this rejection on the basis of claim 1, with claims 2,
6-13, and 15-17 standing or falling with claim 1. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) (permitting the Board to select a single claim to decide the
appeal as to a single ground of rejection of a group of claims argued
together).
The Examiner found that Ordonio discloses substantially all of the
limitations of claim 1, including, in pertinent part, a "transparent panel
lacking sensors. " 3 Final Act. 3. The Examiner found that Ganz "teach[ es]
that a sunroof panel 10 may support solar cells 12, comprising solar
sensors." Id. The Examiner determined it would have been obvious to
provide Ordonio with the sensors of Ganz "in order to use solar electrical
energy." Id. at 4.
3 Notably, claim 1 does not positively recite sensors as an element of the
vehicle. Rather, claim 1 recites "the panel being configured to support a
plurality of sensors having a weight." Claims App. 1 (emphasis added).
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Application 15/137,664
Citing Ordonio' s statement that "there is a need in the art for a roof
frame portion for supporting an adjustable roof panel" (Ordonio ,r 10),
Appellant contends that the "Examiner's rejection must remove adjustability
from the disclosure [ of] Ordonio" and, thus, "ignores an explicitly stated
object of the disclosure [ofJ Ordonio." Appeal Br. 3. Appellant argues that,
therefore, the "Examiner's proposed combination of Ordonio in view of
[Ganz] is inoperable." Id.
In response, the Examiner points out that Ordonio "discloses that the
panel may 'optionally be adjustable."' Ans. 5. Ordonio states that "there is
a need in the art for a roof frame portion for supporting an adjustable roof
panel" (Ordonio ,r 10), but does not specifically restrict the teachings of the
invention to a frame for an adjustable roof panel. In this regard, Ordonio
discloses that "sunroof 218 can optionally be adjustable, for example, to at
least partially retract in a rearward direction relative to the roof panel 212."
Id. ,r 24 (boldface omitted). This suggests that adjustability of the sunroof
panel is optional, and not critical or required.
Moreover, the Examiner emphasizes that Ganz is relied on only for its
teaching "that a sunroof panel, such as the panel of Ordonio ... , may
support solar cells." Ans. 6. Appellant does not cogently explain, and we
do not discern, why the modification proposed by the Examiner (i.e.,
mounting a sunroof panel supporting solar cells, as taught by Ganz, in the
roof frame of Ordonio) would remove adjustability from the frame of
Ordonio.
In the Reply Brief, Appellant presents new arguments not presented in
the Appeal Brief. See Reply Br. 2. Appellant argues that "[i]t is unclear
how a non-transparent panel of solar cells (See column 2, lines 39 and 40
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Appeal2018-002820
Application 15/137,664
[ of] Ganz) can be a sunroof as defined by Ordonio, which requires
transparency." Id. Appellant also argues that Ganz discloses a roof lining
(13) underneath the solar cover. Id. According to Appellant, the opaque
solar cover and roof lining of Ganz would "render Ordonio' s sunroof system
unsatisfactory for its intended purpose, given that one could not see through
such a combined system."4 Id. These arguments are not responsive to an
argument raised in the Answer, and Appellant has not shown good cause
why these arguments could not have been raised earlier and should be
considered now. Accordingly, these arguments are not timely, and we do
not consider them. See 3 7 C.F .R. § 41.41 (b )(2) ("Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner's answer ... will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.").
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1. Accordingly, we do not sustain the rejection of claim 1,
or claims 2, 6-13, and 15-17, which fall with claim 1, under
35 U.S.C. § 103 as unpatentable over Ordonio and Ganz.
Rejections II and III
Appellant does not present any separate arguments contesting the
rejections of claims 3-5 and 14. See Appeal Br. 4 (relying on dependency
4 Should Appellant persist in this line of argument, we note that, although
Ganz discloses an opaque solar cover embodiment, the bottom of which is
lined by inside roof lining 13 (Ganz, col. 2, 11. 39-40, 43--45; Fig. 1), Ganz
also discloses a modified embodiment comprising a solar cover equipped
with a transparent solar module (id., col. 2, 11. 61-62; Fig. 2). The modified
embodiment of Ganz "is therefore partially transparent overall." Id., col. 2,
1. 65.
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Appeal2018-002820
Application 15/137,664
from claims 1, 7, and 12 for patentability of the dependent claims). Thus,
for the reasons set forth above, Appellant also fails to apprise us of error in
the rejections of claims 3-5 and 14. Accordingly, we sustain the rejection of
claims 3, 4, and 14 under 35 U.S.C. § 103 as unpatentable over Ordonio,
Ganz, and Bojanowski, and the rejection of claim 5 under 35 U.S.C. § 103 as
unpatentable over Ordonio, Ganz, Regnier, and Khaykin.
DECISION
The Examiner's decision rejecting claims 1-17 is AFFIRMED.
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 )(iv).
AFFIRMED
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