Ex Parte Oeltjebruns et al

Patent Trial and Appeal Board

Sep 28, 2017

14405457 (P.T.A.B. Sep. 28, 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.
14/405,457 12/04/2014 Thomas Oeltjebruns 83465870 1126
28395 7590 10/02/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER BADII, BEHRANG
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS OELTJEBRUNS and
UWE THIESMEYER
Appeal 2017-004772
Application 14/405,457
Technology Center 3600
Before MICHAEL J. STRAUSS, AARON W. MOORE, and
JASON M. REPKO, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004772
Application 14/405,457
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1 and 3—11. Claim 2 is canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm and designate our affirmance as a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
The claims are directed to releasing or blocking the function of
steering wheel or steering column switches on a case-by-case basis. Spec.,
Title. Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for case-based enabling of function of steering
wheel or steering column switches in a motor vehicle,
wherein
at least one function of one of the steering wheel or
steering column switches is enabled in response to operation of
another steering wheel or steering column switch, and is disabled
otherwise.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Altenkirch US 2003/0056613 A1 Mar. 27, 2003
Onaka US 2011/0062010 A1 Mar. 17, 2011
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Application 14/405,457
REJECTIONS
The Examiner made the following rejections:
Claims 1 and 3—11 stand rejected under 35 U.S.C. § 102(b) as being
disclosed by Onaka. Final Act. 5—16.
Claims 1 and 3—11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Onaka and Altenkirch. Final Act. 16—20.
APPELLANTS’ CONTENTIONS
1. In connection with the rejection under 35 U.S.C. § 102(b), rather than
enabling an operation of an otherwise disabled second switch in
response to operation of a first switch, Onaka discloses prohibiting
operation of a second switch until a predetermined time after
operation of the first switch. App. Br. 2—3.
2. In connection with the rejection under 35 U.S.C. § 103(a), the
Examiner fails to provide sufficient reasoning with rational
underpinning to support the combination of Onaka and Altenkirch.
App. Br. 3^4.
ANALYSIS
Rejection under 35 U.S.C. § 102(b)
Appellants contend Onaka only discloses prohibiting operation of a
second switch, not enabling a switch which is otherwise disabled. App. Br.
2—3. The Examiner finds Onaka describes the disputed switch operation by
disclosing ‘“zY is possible to prevent the execution of a control
corresponding to the input operation on the second switch from being
prohibited against the will of the driver S'" Final Act. 5—6, quoting Onaka
112. Based on the quoted disclosure, the Examiner finds
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Application 14/405,457
[T]he second switch can become enabled if the functions of the first
switch and second switch are enabled, otherwise the second switch
will be disabled. This is done by preventing the execution of a control
corresponding to the input operation on the second switch from being
prohibited against the will of the driver.
Final Act. 6.
We are not persuaded Onaka discloses the disputed limitation. The
quoted portion of Onaka addresses a scenario wherein, rather than avoiding
an accidental or unintentional operation of a second switch when a first
switch is operated, a vehicle operator intends to activate both first and
second switches. Onaka 112. Thus, in the case when the two switches are
related, operation of the second switch is not inhibited. Id. However, there
is no disclosure that the second switch is otherwise disabled except when the
first switch is operated. Even accepting the Examiner’s interpretation of
Onaka as a possible alternative meaning, we conclude the reference is, at
best, ambiguous regarding a function of a (second) switch that is (i) enabled
in response to operation of (first) switch, and is (ii) disabled otherwise and,
thus, insufficient to support an anticipation rejection. See In re Brink, 419
F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and can be
interpreted so that it may or may not constitute an anticipation of an
appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based
upon the ambiguous reference is improper.”); In re Hughes, 345 F.2d 184
(CCPA 1965) (“[I]f we accept arguendo the board’s position that [the
reference] can be alternatively interpreted to show either of two final core
structures, then [the reference] becomes an ambiguous reference which will
not support an anticipation rejection.” (citation omitted)). Accordingly, we
do not sustain the rejection of claims 1 and 3—11 under 35 U.S.C. § 102(b).
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Appeal 2017-004772
Application 14/405,457
Rejection under 35 U.S.C. § 103(a)
Appellants contend the rejection under 35 U.S.C. § 103(a) is improper
for lack of articulated reasoning with a rational underpinning for including
Altenkirch’s teaching of a first switch enabling a second switch in the
steering wheel control system of Onaka. App. Br. 3^4. In particular,
Appellants argue the Examiner’s reasoning only provides “[a] description of
the capabilities of a secondary reference [but] does not explain why one of
ordinary skill would have contemplated combining the secondary reference
with a primary reference.” App. Br. 3. The Examiner responds by finding
“the reason to combine is taken directly from the secondary reference,” i.e.,
Altenkirch 140. Final Act. 17, Ans. 20.
The cited portion of Altenkirch describes a transmission selectably
operable in automatic and manual modes of operation such that, only when
operated in the manual mode are tip switches activated to provide manual up
and down shifting of the transmission using a paddle provided on the
steering wheel. Altenkirch || 26, 40. Onaka also describes switches
disposed on a vehicle steering wheel (Onaka 122) including prohibiting
switch operation in situations wherein it is likely that switch operation is
inadvertent, e.g., a nearby switch has been operated (Onaka, Abstract, 110).
Thus, it would have been obvious to modify the suite of steering wheel
controls of Onaka to include the shift paddle of Altenkirch to provide for
selectively activated manual operation of a vehicle transmission as taught by
Altenkirch.
We are also not persuaded by Appellants’ argument the combination
of Onaka and Altenkirch “would make worse the problem Onaka is
attempting to avoid, thus rendering Onaka unsatisfactory for its intended
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purpose.” Reply Br. 2. In particular, enabling Altenkirch’s paddle switches
only in response to placing the transmission in a manual mode of operation
but inhibiting operation of the paddle switches if a nearby switch were also
operated would not render Onaka unsatisfactory but, instead, be consistent
with Onaka’s purpose of avoiding inadvertent operation of the activated
paddle switches.
We further note the Examiner finds “Altenkirch . . . taken alone, also
disclose[s] the limitations of this broad invention.” Ans. 19. As such,
Altenkirch anticipates claim 1 and Onaka is merely cumulative such that any
deficiency in the Examiner’s reasoning for modifying Onaka to incorporate
the teachings of Altenkirch is rendered moot. Because anticipation is the
epitome of obviousness, we further find Appellants’ argument attacking the
combination unpersuasive. See In re Baxter Travenol Laboratories, 952
F.2d 388, 391 (Fed. Cir. 1991); In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
For the reasons discussed supra, Appellants’ arguments alleging error
in the rejection of claims 1 and 3—11 under 35 U.S.C. § 103(a) are
unpersuasive and we sustain that rejection of the claims. However, because
our rationale in support of the rejection somewhat differs from that set forth
by the Examiner, we designate our affirmance of the rejection as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).
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DECISION
We reverse the Examiner’s decision to reject claims 1 and 3—11 under
35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 1 and 3—11 under
35 U.S.C. § 103(a) as unpatentable over Onaka and Altenkirch. However,
for the reasons discussed supra, we designate our affirmance of the rejection
of claims 1 and 3—11 as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41,501b)
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