Ex Parte Niwa et al

Patent Trial and Appeal BoardOct 12, 2016

12262246 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/262,246 10/31/2008 26096 7590 10/14/2016 CARLSON, GASKEY & OLDS, P,C 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR MinoruNiwa 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. 67255-027PUS 1 5862 EXAMINER DUONG,THOV ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/14/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MINORU NIWA, DANIELLE L. WHITE, and STEPHANIE A. SCHNEIDER Appeal2015-001043 Application 12/262,246 Technology Center 3700 Before JAMES P. CAL VE, WILLIAM A. CAPP, and SEAN P. O'HANLON, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from the final rejection of claims 1, 3, 8, 9, 12-14, 16-21, 24, and 27-29. Appeal Br. 2. Claims 15 and 25 have been allowed and claims 2, 4--7, 10, 11, 22, 23, 26, and 30-32 have been cancelled. Id. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2015-001043 Application 12/262,246 CLAIMED SUBJECT MATTER Claims 1, 12, and 16 are independent. Claim 1 is reproduced below. 1. A steering wheel assembly, comprising an upper rim; and a lower rim secured to the upper rim to establish a flow path, wherein at least one of the upper rim and the lower rim comprise ribs that contact the other of the upper rim and the lower rim to establish the flow path, the ribs laterally spaced from each other and laterally spaced from opposing outermost interfaces between at least one of the upper rim and the lower rim, wherein flow within the flow path heats or cools the steering wheel, wherein the opposing outermost interfaces comprise a radially outermost interface of a rim of the steering wheel and a radially innermost interface of the rim of the steering wheel, the radially outermost interface spaced radially from the radially innermost interface, the ribs and the flow path positioned radially between the opposing outermost interfaces such that the radially innermost interface is entirely radially inside the ribs, wherein the ribs are radially spaced from the opposing outermost interfaces to establish a first open chamber area that is radially inside the radially outermost interface and radially outside the ribs, and a second open chamber area that is radially inside the ribs and radially outside a radially innermost one of the interfaces. REJECTIONS 1 Claims 1, 3, 12-14, 16, 17, 19-21, 24, and 27-29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Brueder (US 3,394,615, iss. July 30, 1968) and Ruetz (US 2007 /0101728 Al, pub. May 10, 2007). 1 The Examiner withdrew the rejections of claim 32 under 35 U.S.C. Â§ 112, second paragraph, for indefiniteness, and claims 30-32 under 35 U.S.C. Â§ 103(a) as unpatentable over Brueder and either Ruetz or Wissel. Ans. 2. 2 Appeal2015-001043 Application 12/262,246 Claims 1, 3, 8, 9, 12, 13, 16-21, 24, and 27-29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Brueder and Wissel (US 6,481,312 Bl, iss. Nov. 19, 2002). ANALYSIS Claims 1, 3, 12-14, 16, 17, 19-21, 24, and 27-29 as unpatentable over Brueder and Ruetz The Examiner found that Brueder discloses a steering wheel assembly substantially as recited in independent claims 1, 12, and 16, with upper and lower rim portions la, 2a (Figs. 1-3, 6) and first and second open chamber areas formed by grooves 1 e, 2e that contain wire 3 but lacks a rim with holes for communicating air flow within the rim to heat or cool the steering wheel. Final Act. 3---6; Ans. 2-3. The Examiner found that Ruetz teaches a steering wheel with hollow rim 6 that includes a cooled air flow path 44 and plurality of holes 50 on the rim to allow the temperature of the steering wheel to be controlled as desired by a driver. Final Act. 6. Appellants argue that Brueder does not teach an "open chamber area" as recited in independent claim 1 or an "open area" as recited in independent claims 12 and 16 because the grooves 1 e, 2e that the Examiner relies on to form the open chamber are filled completely with wire 3 when the upper and lower rim portions 1 a, 1 b are assembled. Appeal Br. 4--7. Appellants argue that the claims recite an open chamber or area when the upper and lower rim portions la, lb are secured together, but Brueder's chamber is filled by wire 3 when rims la, lb are secured together. Reply Br. 1-2; Appeal Br. 4---6. The Examiner has not established that Brueder teaches open chamber areas or open areas that are formed when upper and lower rim portions or interior ribs of steering wheel portions are secured together, as claimed. 3 Appeal2015-001043 Application 12/262,246 Independent claims 1, 12, and 16 are open-ended claims that comprise the recited elements and encompass prior art with the claimed features and additional features. E.g., In re Skvorecz, 580 F.3d 1262, 1267---68 (Fed. Cir. 2009); In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). This open-ended claim format does not read on prior art with less than all claimed features or with other features like wire 3 of Brueder that negate the open chamber area and open area limitations of those claims. See Skvorecz, 580 F.3d at 1267 (holding that the use of "comprising" does not render a claim anticipated by a device with less (rather than more) than what is claimed and the claims did not read on prior art where some wire legs were not offset and the claims required each wire leg to have an offset); Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (holding that the open claim language, including "comprising," embraces technology that adds features to devices that otherwise fall within the scope of the claim definition). We agree with Appellants that Brueder does not disclose an open chamber area or open area when upper and lower rims 1 a, 2a (claims 1 and 12) or the ribs of the first and second steering wheel portions (claim 16) are secured together, as claimed. An ordinary meaning of "open" includes the absence of enclosures or a confining barrier, top, roof, or lid, i.e., "having openings, interruptions, or spaces ." See Merriam-Webster, http://www.merriam-webster.com/dictionary/open (last visited Oct. 6, 2016). This meaning is consistent with Appellants' Specification, which does not use the term "open" but does disclose chamber 42 formed between ribs 22 and interior surfaces of upper half 14 and lower half 18. Spec. i-f 18, Fig. 2B. Indeed, the Examiner recognizes that Brueder does not disclose an open chamber or open area when wire 3 fills that space. See Ans. 2-3. 4 Appeal2015-001043 Application 12/262,246 Paragraph 18 of Appellants' Specification discloses that, "[i]n other examples," chamber 42 may be filled with a second fluid, as the Examiner found. Id. at 3. However, claims 1, 12, and 16 are broader than that embodiment by claiming an open chamber, i.e., one that is not filled with anything when the steering wheel is assembled. Brueder's grooves le, 2e are not open when the steering wheel rim portions 1 a, 2a are secured together, as claimed. Brueder 2:41--46, Figs. 1-3. Thus, we do not sustain the rejection of claims 1, 3, 12-14, 16, 17, 19-21, 24, and 27-29 as unpatentable over Brueder and Ruetz. Claims 1, 3, 8, 9, 12, 13, 16--21, 24, and 27-29 as unpatentable over Brueder and Wissel The Examiner relied on Brueder to disclose an open chamber area and open areas of claims 1, 12, and 16 as in the first rejection. Final Act. 8-9. We agree with Appellants that Brueder does not teach this feature for the reasons discussed above. See Appeal Br. 8-10; Reply Br. 1-3. Therefore, we do not sustain the rejection of claims 1, 3, 8, 9, 12, 13, 16-21, 24, and 27-29 as unpatentable over Brueder and Wissel. DECISION We REVERSE the rejections of claims 1, 3, 8, 9, 12-21, 24, 25, and 27-29. REVERSED 5