Ex Parte LOPEZ et al

Patent Trial and Appeal BoardDec 21, 2018

14255665 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/255,665 68543 7590 Arent Fox LLP 555 West Fifth Street 48th Floor 04/17/2014 12/26/2018 Los Angeles, CA 90013 FIRST NAMED INVENTOR Ted LOPEZ 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. 030286.00471 3096 EXAMINER WHALEN, MICHAEL F ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 12/26/2018 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TED LOPEZ Appeal2018-000715 1 Application 14/255,665 Technology Center 3600 Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-29. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The Appeal Brief indicates Scosche Industries, Inc. is the real party in interest. Appeal Br. 3. Appeal2018-000715 Application 14/255,665 CLAIMED SUBJECT MATTER The claims are directed to an aftermarket HV AC control device for controlling a vehicle climate control system. Spec. ,r 2. Claims 1 and 18 are independent, and claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. An HV AC control device for controlling a vehicle climate control system having a plurality of control elements, the HVAC control device configured for installing in a vehicle climate control panel, the HVAC control device comprising: a housing having a front surface, said housing having a shared size, dimensioned for installing the housing in a complementary receptacle for the housing in the vehicle climate control panel, the complementary receptacle for the housing having a first size, the first size shared among receptacles for housings in replacement vehicle climate control panels for vehicles made by more than one vehicle manufacturer, where the first size is different than a second size, the second size shared among receptacles for AM/FM radio tuners in replacement vehicle climate control panels for vehicles made by more than one vehicle manufacturer; a user interface on the front surface of the housing, by which a user can operate a vehicle climate control system having a plurality of control elements and a controller disposed in the housing and configured to control said climate control system in accordance with user input to said user interface, wherein said controller, in response to said user input, creates said command inputs commanding action within said climate control system and transmits said command inputs to said climate control system, wherein said controller, in response to said status outputs indicating said status of said climate control system, regulates the operation of at least a portion of said climate control system, and wherein the controller is configured to control at least one of the control elements of the vehicle climate control system. Corrected Claims App. 3. 2 Appeal2018-000715 Application 14/255,665 REFERENCES RELIED ON BY THE EXAMINER Stenger Daly Walterscheid Schramm Fiore, IV ("Fiore") us 5,810,418 US 7,177,730 B2 US 2007/0149104 Al US 2009/0189373 Al US D639,799 S REJECTIONS Sept. 22, 1998 Feb. 13,2007 June 28, 2007 July 30, 2009 June 14, 2011 (I) Claims 1-29 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. (II) Claims 1-29 are rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. (III) Claims 1, 2, 4, and 10-16 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by Walterscheid. (IV) Claim 3 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Walterscheid and Daly. (V) Claims 5-9 and 17 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Walterscheid and Schramm. (VI) Claims 18-20 and 24--27 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Walterscheid and Stenger. (VII) Claims 21-23 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Walterscheid, Stenger, and Schramm. (VIII) Claims 28 and 29 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Walterscheid, Stenger, and Fiore. 3 Appeal2018-000715 Application 14/255,665 OPINION Rejection(!), Written Description The Examiner finds that the original disclosure does not support the limitation that the first shared size is different from a second shared size of receptacles for AM/FM tuners in claims 1 and 18. Final Act. 3. Appellant contends that paragraph 272 of the Specification and Figure 1 support this limitation by describing two different sizes of receptacle, one of which is for receiving an AM/FM tuner. Appeal Br. 8-9. In response, the Examiner states, "the [S]pecification teaches slots with different dimensions not a slot that is different from a standard AM/FM radio slot." Ans. 3 (emphasis added). Appellant has the better position. Paragraph 27 explains that the second common size is associated with AM/FM radio tuner 16, which is depicted in Appellant's Figure 1. Paragraph 27 also explains that the first common size is associated with HVAC control device 12. Thus, when the Specification teaches that the first and second slots have different sizes, the Specification is teaching that the first slot has a size different from that of a slot for an AM/FM radio tuner. 3 Accordingly, we do not sustain the rejection of independent claims 1 and 18 and associated dependent claims 2- 17 and 19-29, as failing to comply with the written description requirement. 2 Appellant states that the language discussed is from paragraph 29 of the Specification, but this is incorrect; the language discussed by Appellant appears in paragraph 27. 3 Contrary to the limitation implied by the Examiner's reference to a standard AM/FM radio slot (see Ans. 3), neither of claims 1 and 18 recites that the AM/FM radio slot is standardized. 4 Appeal2018-000715 Application 14/255,665 Rejection (II), Indefiniteness The Examiner determines that the meaning of a "second size," expressed as relating to the size shared among receptacles for an AM/FM tuner, in claims 1 and 18, is unclear because it is not described in the Specification, it is subject to change, and multiple such sizes currently exist. Final Act. 3--4. Appellant contends "the second size shared among receptacles for AM/FM radio tuners is a size that is the same as receptacles for AM/FM radio tuners in replacement vehicle climate control panels for vehicles made by more than one vehicle manufacturer[, and this] meaning is not indefinite." Appeal Br. 10. Appellant argues "[a] shared size does not mean unique size and it is irrelevant that there may be more than one second size." Id. Appellant also argues "it is irrelevant that the second size may be subject to change." Id. at 11. In response, the Examiner notes that there is no indication as to what a size and shape shared among receptacles is for an HV AC or AM/FM radio tuner other than that they are a common shape and size, and the Examiner finds that no dimensions or standards are disclosed in the Specification. Ans. 4. The Examiner explains that a person of ordinary skill in the art would not know how to avoid infringement because there is no way to know the metes and bounds of the scope of claims 1 and 18. Id. at 4--5. In this regard, the Examiner finds: there are currently multiple standard dimensions for AM/FM radio tuners that the Appellant may be referring to with the language "the second size and shape shared among receptacles for AM/FM radio tuners". Therefore there is not a specific shape that one of ordinary skill in the art would recognize to be a "size shared among receptacles for AM/FM radio tuners in 5 Appeal2018-000715 Application 14/255,665 replacement vehicle climate control panels for vehicles made by more than one vehicle manufacturer". Id. at 5. In reply, Appellant argues that the invention is not limited to any single standard dimension. Rather, the "specific size" circumscribed by the claims is the size shared among receptacles for AM/FM radio tuners. That there are more than one shared size does not mean that the language is indefinite. Instead, the claim language claims particularly points out and distinctly claims the subject matter which the applicant regards as his invention. Reply Br. 5---6. "Because claims delineate the patentee's right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). A claim is properly rejected as indefinite under 35 U.S.C. Â§ 112, second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim "'contains words or phrases whose meaning is unclear."' In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP Â§ 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) ( adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). We agree with the Examiner that claims 1 and 18 are indefinite. Claim 1 recites a housing that is "dimensioned for installing the housing in a complementary receptacle for the housing in the vehicle climate control 6 Appeal2018-000715 Application 14/255,665 panel, the complementary receptacle for the housing having a first size." Corrected Claims App. 3. Thus, the housing is, in part, defined by the size of the complementary receptacle, i.e., by the "first size." The first size is limited in terms of the "second size." Specifically, the first size must be different from the second size. Consequently, to understand the dimensions of the housing recited in claim 1, it is necessary to know the size or sizes that qualify as the second size. Similarly, method claim 18 recites the size and shape of the receptacle in terms of a second size and shape, namely, the size and shape shared among receptacles for AM/FM radio tuners. Thus, the second size and shape must be understood in order to understand the scope of the first size and shape. Appellant does not direct our attention to any portion of the Specification that would inform a person of ordinary skill in the art as to what size corresponds to "the second size shared among receptacles for AM/FM radio tuners in replacement vehicle climate control panels for vehicles made by more than one vehicle manufacturer" ( Corrected Claims App. 3 (emphasis added)) as recited in claim 1 or a "second size and shape shared among receptacles for AM/FM radio tuners" (id. at 5 ( emphasis added)) as recited in claim 18. See Appeal Br. 9--11; see also Reply Br. 5-7. Nor do we find one. Further, the Specification does not provide any usable standard for determining this size. Indeed, based on the use of the word "shared" in claims 1 and 18, it is not clear that the second size ( or second size and shape) correspond to a standard. Accordingly, a person of ordinary skill in the art would not be put on notice as to the metes and bounds of 7 Appeal2018-000715 Application 14/255,665 claims 1 and 18. Therefore, we sustain the Examiner's rejection of claims 1 and 18, and associated dependent claims 2-17 and 19-29, as indefinite. Rejections (111)-(VIII), Anticipation and Unpatentability Having determined that claims 1-29 are indefinite, we do not sustain the Examiner's rejections of claims 1-29 under 35 U.S.C. Â§Â§ 102 and 103 because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F .2d 859, 862---63 (CCP A 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. Â§ 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. DECISION We reverse Rejections (I) and (III}-(VIII). We affirm Rejection (II). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8