Ex Parte Rake et al

Patent Trial and Appeal Board

Mar 25, 2019

14411867 (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/411,867 12/29/2014
757 7590 03/25/2019
BGL
P.O. BOX 10395
CHICAGO, IL 60610
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
LudgerRake
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.
004404-US-PCT
(13362-105)
EXAMINER
WRIGHT, DIRK
1015
ART UNIT PAPER NUMBER
3659
MAIL DATE DELIVERY MODE
03/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUDGER RAKE, ANDREAS GIEFER, and
RALF HARTRAMPF
Appeal2017-006349
Application 14/411,867
Technology Center 3600
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action (Feb. 9, 2016) ("Final Act.") rejecting
claims 1--4 and 6-l0. 2,3 We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant is the Applicant, ZF Friedrichshafen AG, identified by the
Appeal Brief as the real party in interest. Br. 2.
2 The Final Office Action is supplemented by an Advisory Action (Apr. 13,
2016) ("Adv. Act.").
3 Claim 5 is objected to as being dependent on a rejected base claim. Final
Act. 7.
Appeal2017-006349
Application 14/411,867
For the reasons explained below, we AFFIRM-IN-PART.
Claimed Subject Matter
Claim 1 is the only independent claim, and is reproduced below with
selected limitations emphasized.
1. A gearshift lever assembly for actuating a vehicle
transmission, the gearshift lever assembly comprising:
a mounting;
a gearshift lever moveably supported on the mounting and
capable of moving between a first predefined gearshift lever
position and a second predefined gearshift lever position;
a blocking device capable of moving to a first predefined
blocking device position, wherein the blocking device locks the
gearshift lever to the mounting when the gearshift lever is in the
first predefined gearshift lever position and the blocking device
is in the first predefined blocking device position;
a release mechanism compnsmg a magnetically
responsive switch and a magnet, wherein the spacing between
the magnetically responsive switch and the magnet can be varied
by moving the blocking device, and when the gearshift lever is in
the first gearshift lever position and the blocking device is in the
first blocking device position, the magnetic field of the magnet
can activate the magnetically responsive switch; and
a shielding element capable of being positioned between
the magnet and the switch, wherein when the gearshift lever is in
the second predefined gearshift lever position, the shielding
element is positioned between the magnet and the switch and
shields the magnetically responsive switch from the magnetic
field of the magnet.
Rejections
I. Claims 1, 3, and 8-10 stand rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Syamoto (US 2002/0002849 Al, published Jan.
10, 2002). Final Act. 2--4.
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Application 14/411,867
II. Claims 1, 3, 4, and 6-8 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Parker (US 4,610,179, issued Sept. 9, 1986).
Final Act. 4---6.
III. Claim 2 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Syamoto or Parker. Final Act. 7.
DISCUSSION
Rejection 1-35 U.S.C. § 102(b) based on Syamoto
Claims 1, 3, 8-10
Appellant argues the Syamoto anticipation rejection based on claim 1.
Appeal Br. 5-8, 13-15. We select claim 1 as representative, and decide the
appeal of this rejection on the basis of claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds Syamoto discloses all elements of claim 1. Final
Act. 3--4. As to the blocking device recited in claim 1, the Examiner finds it
is formed by Syamoto's elements 33 or 32/33/34 and/or 61 and/or 62 and/or
63. Final Act. 3; see Syamoto Fig. 1. The Examiner finds the spacing
between Syamoto 's magnetically responsive switch 28 and magnet 21 "can
be varied by moving the blocking device," as recited in claim 1, because
"after the blocking device is disengaged, see paragraph 0069-0074, the
magnet can be moved." Final Act. 3.
Appellant argues "none of the elements of Syamoto relied on by the
Examiner as disclosing the claimed blocking device (33 or 32, 33, 34 and/or
61 and/or 62 and/or 63) are coupled to or otherwise connected to element 21
of Syamoto such that moving the blocking device elements would vary the
spacing between elements 21 and 2 8 of Syamoto." Appeal Br. 7. Appellant
contends Syamoto's elements 33 or 32, 33, 34 and/or 61 and/or 62 and/or 63
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Application 14/411,867
"are only capable of locking the lever body 17 in a specific position," and it
is movement of the lever body, not movement of the blocking mechanism,
that moves magnet 21. See Appeal Br. 7-8.
We agree with the Examiner that "the feature upon which [ A Jppellant
relies (i.e., the blocking device being coupled to or otherwise connected to
the magnet, such that the blocking device would vary the spacing between
the switch and the magnet) is not recited" in claim 1. Ans. 3. The disputed
clause of claim !-"wherein the spacing between the magnetically
responsive switch and the magnet can be varied by moving the blocking
device" ( emphasis added}-"does not require that the blocking device
[directly] cause the varying of the spacing between the switch and magnet,"
id. It is sufficient that a movement of the blocking device allows for varying
the spacing between the switch and the magnet, as in Syamoto. That
movement of Syamoto 's shift lever is the direct cause of moving magnet 21
does not bring Syamoto outside the scope of claim 1.
Appellant also contends that the Examiner interprets "can be" to mean
"be capable of," that "capable of' is present elsewhere in claim 1, and that to
interpret the two phrases to have the same meaning would render the
distinction between the claim terms meaningless. Reply Br. 2. Appellant
also contends that "[ e ]ven if 'can be' is construed to mean 'be capable of,
the spacing between element 28 (Examiner-asserted switch) and element 21
of Syamoto (Examiner-asserted magnet) is not capable of being varied by
moving elements 33, or 32, 33, 44 and/or 61 and/or 62 and/or 63 (Examiner-
asserted blocking device)." Id. Appellant's position is that claim 1 requires
that movement of the blocking device alone causes the spacing to vary. See
id. at 3.
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Appeal2017-006349
Application 14/411,867
We are not informed of error by Appellant's assertion that the "can
be" should not be interpreted to have the same meaning as "capable of." In
a sense, the Examiner interprets "can be varied by moving the blocking
device" more broadly than merely "to be capable of varying by moving the
blocking device" because the Examiner determines that the recited clause
only requires that the spacing between the switch and the magnet be capable
of varying "as a result of movement of the blocking device." Ans. 3. In
other words, if, as a result of moving the blocking device, it is possible to
vary the spacing between the switch and magnet, even if by some other
means, then the spacing "can be varied by moving the blocking device," as
recited in claim 1. Appellant has not informed us of error in this
interpretation, such as by any assertion that "can be varied" acquires a
different meaning as used in the Specification.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 102(b) as anticipated by Syamoto. For the same
reasons, we sustain the rejection of dependent claims 3 and 8-10 as
anticipated by Syamoto, as these claims are rejected on the same ground and
not argued separately.
Rejection 11-35 US.C. § 102(b) based on Parker
Claims 1, 3, 4, 6-8
The Examiner finds Parker discloses all elements of claim 1. Final
Act. 5---6. As to the blocking device recited in claim 1, the Examiner finds it
is formed by Parker's elements 50 and 52. Final Act. 5; see Parker Fig. 3.
The Examiner finds the spacing between Parker's magnetically responsive
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Application 14/411,867
switch (Fig. 1, at A, or B, or C, or D) and a magnet (Fig. 1, at A' or B' or C'
or D') "can be varied by moving the blocking device," as recited in claim 1,
because "the spacing between the switch and magnet are varied by the
placement of shield 54 there between, or holes of shield 54 therebetween."
Final Act. 5.
Similar to the arguments presented for the rejection of claim 1 as
anticipated by Syamoto, Appellant argues elements 50 and 52 of Parker are
not coupled to or connected to the elements identified as the switch and
magnets in Parker such that moving elements 50 and 52 would vary the
spacing between the switch and magnets. Appeal Br. 10. For the reasons
discussed above for Rejection I, Appellant's arguments on this basis do not
inform us of error in Rejection II.
Appellant also contends the Examiner errs in broadly interpreting
spacing between the switch and magnet being varied to encompass any
change to the space between the switch and magnet, and determining that the
change need not be with respect to distance. Id. at 11. Appellant contends
the Examiner's interpretation is inconsistent with the Specification. Id. at
11-12 (citing Spec. 4:23-5:5, 5:16-30, 8:19-10:6, 13:6-14:4, Figs. 1--4).
The Examiner responds by reiterating that the space between the
magnet and switch is "varied between an occupied/shielded state and a non-
occupied/un-shielded state by the particular placement of the code slide
member/shielding material (54) between the magnet and the switch." Ans.
5. The Examiner relies on dictionary definitions of "spacing" defining the
term as the arrangement of objects in a space or the arrangement of spaces or
of objects in space. See Ans. 6 (citing definitions in attachment). Therefore,
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Application 14/411,867
the Examiner determines, the claimed spacing can refer to the arrangement
of objects in the space between Parker's magnets and switch. Id.
We agree with Appellant that the Examiner's interpretation of
"spacing" is unreasonably broad in light of use of the term in the
Specification. For example, the Specification refers to the magnet exhibiting
a "large spacing to the switch" or a "limited spacing to the switch," which is
consistent with use of the term spacing to mean "distance."4 Spec. 5:22-30.
In addition, the Specification's discussion of positioning the shielding
element between the magnet and the switch does not describe this action as
altering the spacing between the switch and the magnet. See, e.g., id. at
4 :23-25, 8: 19-21. Even considering the Examiner's dictionary definitions,
placing an object in the space between the magnets and switches in Parker
does not alter the arrangement of the magnets and switches in space because
their positions are not altered.
In view of the foregoing, we do not sustain the rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by Parker. For the same reasons, we
do not sustain the rejection of dependent claims 3, 4, and 6-8 as anticipated
by Parker.
4 Such a construction of the term "spacing" is also consistent with its
ordinary and customary meaning of "the distance between any two objects
in a usually regularly arranged series." See MERRIAM-WEBSTER,
https://www.merriam-webster.com/dictionary/spacing (last visited March
22, 2019) (emphasis added).
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Appeal2017-006349
Application 14/411,867
RejectionIII-35 USC§ 103(a)
Claim 2
Appellant argues the rejection of claim 2 is in error because the
Examiner has not established a prima facie case of obviousness of
independent claim 1 based upon Syamoto or Parker, alone or in
combination. Appeal Br. 12. We understand Appellant to be arguing that
the rejection of claim 2 should be reversed for the same reasons argued in
support of claim 1.
Because we sustain the rejection of claim 1 as anticipated by
Syamoto, and Appellant does not provide additional argument against the
rejection of claim 2 as obvious over Syamoto, we sustain the rejection of
claim 2 under 35 U.S.C. § 103(a) as unpatentable over Syamoto.
Because the Examiner's rejection of claim 2 as unpatentable under 35
U.S.C. § 103(a) over Parker does not remedy the deficiencies discussed
above for the anticipation rejection based on Parker, we do not sustain the
rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Parker.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, and 8-10 as
anticipated by Syamoto.
We reverse the Examiner's decision to reject claims 1, 3, 4, and 6-8
as anticipated by Parker.
We affirm the Examiner's decision to reject claim 2 under 35 U.S.C.
§ 103(a) as unpatentable over Syamoto, and reverse the Examiner's decision
to reject claim 2 under 35 U.S.C. § 103(a) as unpatentable over Parker.
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Appeal2017-006349
Application 14/411,867
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-IN-PART
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