Ex Parte LI et al

Patent Trial and Appeal Board

Dec 12, 2016

13743799 (P.T.A.B. Dec. 12, 2016)

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.
13/743,799 01/17/2013 Chi Li 83347800 6712
28415 7590 12/14/2016
PRICE HENEVELD LLP
FORD GLOBAL TECHNOLOGIES, LLC
695 KENMOOR S.E.
P. O. BOX 2567
GRAND RAPIDS, MI 49501-2567
EXAMINER
FORD, DARRELL CHRISTOPHER
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
ptomail @priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI LI and
JOHN ANDREW STAKOE
Appeal 2015-000840
Application 13/743,799
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—12. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2015-000840
Application 13/743,799
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “generally relates to automotive vanity
mirrors, and more particularly relates to a molded vanity mirror and light
assembly such as the type typically assembled onto a vehicle visor.” Spec.
12. Claims 1 and 12 are independent claims. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A method of manufacturing a vanity assembly comprising
the steps of:
providing a reflective film that is partially light
transmissive; molding a frame to the reflective film; and
installing a lighting device behind a lighting portion of the
reflective film such that light emitted by the lighting device
passes through the reflective film at the lighting portion to
provide vanity lighting and a reflective portion of the reflective
film provides a mirror.
REFERENCES RELIED ON BY THE EXAMINER
Brody
Martinez
Fernandez
Radu
US 3,740,542
US 6,532,119 B1
US 2006/0181893 A1
US 2006/0198123 A1
June 19, 1973
Mar. 11,2003
Aug. 17, 2006
Sept. 7, 2006
THE REJECTIONS ON APPEAL
Claims 1, 2, 5, 6, and 9-12 are rejected under 35 U.S.C. § 103(a) as
obvious over Fernandez and Radu.
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as obvious over
Fernandez, Radu and Brody.
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as obvious over
Fernandez, Radu, and Martinez.
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Appeal 2015-000840
Application 13/743,799
ANALYSIS
Both independent claims (claims 1 and 12) include language directed
to light passing through a reflective film to provide vanity lighting.1 * 3The
Examiner relies on Fernandez for teaching this limitation. Final Act. 4; Ans.
9—10. Appellants contend that, in Fernandez, “there is no reflective film in
front of the lighting device through which light passes” so as to provide
vanity lighting. App. Br. 8; see also id. at 9, Reply Br. 1—2.
The Examiner references paragraphs 42 and 44 of Fernandez as
support. Final Act. 4; Ans. 9-10. Paragraph 42 discusses “a thin film of
reflective material 120 with no or with limited transmittance” that is applied
to one side of mirror 30. Fernandez further states, “[i]t is furthermore
preferred to remove portions of said reflective material 120 on said mirror
surface” and that “[t]his means that the surface portion 80 free of reflective
material 120 becomes transparent.” Fernandez 142. Accordingly, “[t]he
light emitting device e.g. the FED 40 illuminates said mirror unit through
said transparent portions 80 of the mirror 30 without using transparent
diffusers being extra parts.” Fernandez 142. Fernandez continues stating
that the illuminated mirror unit is mounted on a sun visor and that “[i]t
comprises a mirror 30 with transparent portions 80 for illuminating through
said mirror by said FED 40.” Fernandez 144. Appellants also rely on these
teachings stating “Fernandez has separate and distinct portions,” one portion
retaining the film for reflective/mirror purposes and another portion “with
the reflective film removed for allowing light to pass therethrough.” App.
1 Claim 1 recites “light emitted by the lighting device passes through the
reflective film at the lighting portion to provide vanity lighting.” Claim 12
differs slightly, reciting a lighting device “to provide vanity lighting passing
through a portion of the reflective film.”
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Appeal 2015-000840
Application 13/743,799
Br. 9; see also Reply Br. 1—2. In other words, according to Appellants,
Fernandez does not teach the claim language directed to light passing
through a reflective film so as to provide vanity lighting. App. Br. 8—9;
Reply Br. 1—2.
The Examiner reiterates that “Fernandez teaches that the reflective
material (120) may have ‘limited transmittance’ (paragraph [0042])” and
that consequently, “light emitted by the lighting device passes through the
reflective film at the lighting portion as claimed.” Ans. 9—10.
The Examiner is correct that Fernandez teaches that such material has
no or “limited transmittance.” Ans. 10 (referencing Fernandez 142).
Consequently, in the embodiment employing “limited transmittance”
material, some limited amount of light will pass. However, both claims 1
and 12 not only require light to pass through the film, but also that such
passing light provides “vanity lighting.”
The claim term “vanity lighting” is not specifically defined in
Appellants’ Specification, but paragraph 3 thereof provides guidance that
such lighting “provide[s] local lighting sufficient to enable a user to view an
image in the mirror, particularly when ambient lighting conditions are
poor.”2 * 4Fernandez is consistent with this understanding of “vanity lighting”
stating that it is “possible to arrange the light-emitting diodes 40 according
to mere design aspects as long as sufficient illumination of the mirror unit
20 is guaranteed.” Fernandez | 59 (emphasis added). Hence, vanity
lighting is understood to be something more than just some limited amount
2 Paragraph 28 of Appellants’ Specification also states that the claimed
“reflective film 40 provides a reflective mirror surface and, when light is
illuminated from the backside, the reflective film 40 passes at least a portion
of the light therethrough sufficient to serve as vanity lighting.”
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Appeal 2015-000840
Application 13/743,799
of passing light. Instead, “vanity lighting” is understood to be “sufficient to
enable a user to view an image in the mirror.” Spec. 13.
Fernandez clearly did not rely on the limited amount of light passing
through the described “limited transmittance” film 120 to supply vanity
lighting. Instead, Fernandez specifically removed such “limited
transmittance” film 120 from portions of the mirror so that these portions
(80) became transparent in order to permit light source (LED 40) to provide
the requisite illumination. See Fernandez || 42, 44. The Examiner does not
explain how the limited amount of light that may pass through Fernandez’s
film 120 provides vanity lighting, or otherwise guarantees “sufficient
illumination of the mirror” as stated by Fernandez. See supra.
Accordingly, we are persuaded by Appellants’ contentions. We
reverse the Examiner’s rejection of claims 1, 2, 5, 6, and 9-12 as being
obvious over Fernandez and Radu. Final Act. 3—6; Ans. 9-12. Regarding
the Examiner’s additional reliance on the teachings of Brody and Martinez
(Final Act. 7, 8), such reliance does not cure the defect regarding
Fernandez’s reflective film 120 discussed supra. We, likewise, reverse the
Examiner’s rejections of dependent claims 3, 4, 7, and 8 under the
additionally cited references to Brody and Martinez.
DECISION
The Examiner’s rejections of claims 1—12 are reversed.
REVERSED
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