Ex Parte Salamey et al

Patent Trial and Appeal Board

Nov 30, 2016

13096022 (P.T.A.B. Nov. 30, 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.
13/096,022 04/28/2011 Kristyna Salamey P012740-GMVE-LCH 3723
81466 7590 12/02/2016
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5 th Floor
Toledo, OH 43604
EXAMINER
KELLEHER, WILLIAM J
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
docketing @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTYNA SALAMEY and RICHARD K. METTE
Appeal 2015-000415
Application 13/096,022
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Kristyna Salamey et al.,1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify GM Global Technology as the real party in
interest. Appeal Br. 1.
Appeal 2015-000415
Application 13/096,022
THE CLAIMED SUBJECT MATTER
The claims are directed to “a mechanism for actuating a vehicle door
handle, and particularly to a cable fitting or abutment for engaging and
disengaging an inside door handle located outboard of a door trim pad.”
Spec. 11. Claims 1 and 7 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A cable fitting, comprising:
a hollow cylinder sized to receive a cable assembly
extending therethrough, the cable assembly including a cable
slidably received in a sheath, the hollow cylinder having a first
end configured to engage a retention member on an end of the
cable to prevent the cable from sliding out of the hollow cylinder
and a second end configured to receive a portion of the sheath
therein; and
a lever including;
a blade supported on the cylinder adjacent to the first end;
a pivot about which the blade pivots, the pivot extending
radially from the cylinder closer to the second end than the blade;
an engagement member secured to the blade, extending
radially inward toward the cable, and spaced from the pivot in a
first direction, the first direction being oriented away from the
second end; and
a tab secured to the blade between the pivot and the
engagement member and extending to a surface spaced from the
pivot in a second direction opposite the first direction, the surface
being closer to the second end than the pivot, the surface being
configured such that a force can be applied to pivot the
engagement member away from an engaged position.
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Application 13/096,022
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Dege US 5,816,109 Oct. 6, 1998
Gutschner US 6,178,845 B1 Jan. 30,2001
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gutschner.
2. Claims 7—13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gutschner and Dege.
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 16 As Unpatentable Over Gutschner
Claims E 2, 5, and 6
Appellants argue claims 1, 2, 5, and 6 as a group. Appeal Br. 6—11.
We select claim 1 as the representative claim, and claims 2, 5, and 6 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
In the Final Action, the Examiner annotated Figure 6 of Gutschner,
and used annotated Figure 6 to explain the basis of the rejection. Final Act.
2-4. In their Appeal Brief, Appellants, instead of using the Examiner’s
annotated Figure 6, prepared and used their own annotated Figure 6 which
was substantively different from the Examiner’s annotated figure. See, e.g.,
Appeal Br. 8. For example, the Examiner identified certain Gutschner
elements as “first end” and “second end” as recited in claim 1, but
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Application 13/096,022
Appellants identified the same elements as “second end” and “first end”
respectively. Compare the Examiner’s annotated Figure 6 (Final Act. 4)
with Appellants’ annotated Figure 6 (Appeal Br. 8). Consequently,
Appellants’ arguments which reverse the first and second ends (see, e.g.,
Appeal Br. 6—9 and Reply Br. 4—7) do not respond to the rejection as
articulated by the Examiner, and do not show Examiner error.
The Examiner also explains that:
Gutschner discloses the claimed invention except for the first end
engaging the retention member and the second end receiving a
portion of the sheath therein - that is, Gutschner discloses the
invention wherein the orientation of the cable fitting with respect
to the cable is reversed. As vehicle handle mountings vary, it
would have been obvious to one having ordinary skill in the art
at the time the invention was made to reverse the orientation of
the cable fitting (13), and thus also of the cable fitting receiving
device (Gutschner Fig. 2; 14) so that the first end is closer to the
handle (Gutschner Fig. 1; 9) for the purpose of adapting the cable
fitting of Gutschner to various vehicle door handle
configurations. ... To illustrate, an example of the rearranged
cable fitting and the cable fitting receiving device is shown in
rearranged Gutschner Fig. 2 below. It has been held that
rearranging parts of an invention involves only routine skill in
the art. In re Japikse, 86 USPQ 70 [(CCPA 1950)]. It is noted
that this rearrangement of parts would not have modified the
operation of the device — the cable is held in place by the cable
fitting which is locked in a stationary position by the blade and
engagement members. The Bowden cable operating the vehicle
door would still operate as originally intended.
Ans. 3^4. In response, Appellants argue that reversing the orientation of the
cable fitting 13, as proposed by the Examiner, would change “the operation
of the device,” including: (1) “how one installs and removes the cable fitting
from a vehicle door,” (2) “which end of the end piece (13) must be gripped
by the installer,” and (3) “the support provided by this end piece for forces
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Application 13/096,022
applied to the cable is changed and, for some forces, reduced,” and it
“requires two different motions to install rather than the one motion of the
claimed present invention, and requires two tabs to be actuated to remove
the end piece (13), rather than the ability to remove with the actuation of one
arm.” Reply Br. 3^4. However, these arguments are not persuasive because
they do not affect whether the door can properly open and close, as
suggested by the Examiner, and they are not commensurate in scope with the
limitations found in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“[Ajppellanf s arguments fail from the outset because . . . they are
not based on limitations appearing in the claims.”). Appellants also do not
explain why a person skilled in the art would be unable to reverse/rearrange
Gutschner’s cable fitting 13 and other parts, as suggested by the Examiner.
Thus, Appellants do not show error by the Examiner.
For the reasons above, the rejection of claim 1 is sustained, and claims
2, 5, and 6 fall with claim 1.
Claim 3
The Examiner finds that Gutschner discloses a projection 27 as recited
in claim 3. Ans. 6 (citing to Figure 7). In response, Appellants argue that
the “element (27) of Gutschner cited by the examiner is at the first end, not
the second end” (Appeal Br. 11) and “[tjhere is no such projection taught in
Gutschner” (Reply Br. 5). As discussed above with respect to claim 1, the
“first end” and “second end” in Appellants’ annotated Figure 6 are different
from the “first end” and “second end” in the Examiner’s annotated Figure 6.
Thus, Appellants’ arguments do not respond to the rejection as articulated by
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Application 13/096,022
the Examiner, and do not show Examiner error. The rejection of claim 9 is
sustained.
Claim 4
The Examiner finds that the labeled portion of annotated Figure 6 of
Gutschner is a “tab stop” as recited in claim 4. Final Act. 4. In response,
Appellants correctly argue that “Gutschner does not show such a part. The
longitudinal side (34) of the basic body (16) may act as a stop for second
short arms (37) but they do not extend radially outward.” Appeal Br. 12. As
Appellants correctly note, the large section at the left end of annotated
Figure 6 which the Examiner labels as the tab stop does not “contact the
arms (37) to limit displacement” as claimed. Id. We cannot sustain the
rejection of claim 4.
The Rejection of Claims 7—13 As Unpatentable Over Gutschner and Dege
Claims 7, 8, and 10-13
Appellants argue claims 7, 8, and 10-13 as a group. Appeal Br.
12—13. We select claim 7 as the representative claim, and the remaining
claims stand or fall with claim 7. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants correctly note that the Final Action addresses limitations
from claim 1 (i.e., “first end engaging the retention member”) instead of
limitations from claim 7 (“a hollow cylinder sized to receive a portion of the
cable and the sheath therein, a first end of the cylinder adjacent to the handle
and configured to prevent the cable from sliding out of the hollow
cylinder”). Appeal Br. 12—13. The Examiner addressed the limitations of
claim 7 in the Answer, finding, in part, that Gutschner discloses: “a hollow
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Application 13/096,022
cylinder (see hole for Fig. 5; 2 that extends through parts 31 and 32) sized to
receive a portion of the cable and the sheath therein, one cable side end (the
left end of Fig. 6) of the cylinder adjacent to the handle and configured to
prevent the cable from sliding out of the hollow cylinder.” Ans. 7. The
Examiner also stated that the cylinder is illustrated in annotated Figure 6.
See, e.g., Ans. 7.
Appellants present several arguments contending that the Examiner’s
rejection is incorrect. First, Appellants argue that the Examiner erroneously
refers to “hole 2” as the element corresponding to the hollow cylinder
recited in claim 7, and a “hole” is not a “hollow cylinder.” Reply Br. 6. We
do not read the Examiner’s findings this way. We understand that the hole
passes through the hollow cylinder and the “hole” is merely the portion of
the hollow cylinder that is “sized to receive a portion of the cable and
sheath” as recited in claim 7. The Examiner, for example, finds that other
elements such as lever 15 and blade 36 are supported on the cylinder, and
that pivot 35 extends from the cylinder. Lever 15, blade 36, and pivot 35 are
supported by the hollow cylinder, not hole 2. Appellants’ argument is not
persuasive of Examiner error.
Second, Appellants argue that the Examiner’s findings that (1) the
“blade” is supported on the “first end”, (2) the “pivot” is spaced from the
“first end”, (3) element 33 is adjacent the first end, and (4) element 37 is in
the second direction, do not meet the language of claim 7. Reply Br. 6—7.
As discussed above with respect to claim 1, Appellants’ “first end” and
“second end” are different from the “first end” and “second end” in the
Examiner’s annotated Figure 6. Thus, Appellants’ arguments do not
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Application 13/096,022
respond to the rejection as articulated by the Examiner, and do not show
Examiner error.
Finally, Appellants present the “catch-all” argument that the “redesign
of Gutschner by the examiner at the bottom of page 7 to the middle of page
8 fails for the same reasons as discussed above relative to claim 1.” Appeal
Br. 7. As discussed above with respect to claim 1, Appellants do not show
error by the Examiner.
For these reasons, the Examiner’s rejection of claim 7 is sustained.
Claims 8 and 10—13 fall with claim 7.
Claim 9
The Examiner finds that Gutschner discloses a projection 27 as recited
in claim 9. Ans. 7 (citing to Figure 7). In response, Appellants argue that
the “element (27) of Gutschner cited by the examiner is at the first end, not
the (second) end” (Appeal Br. 13) and “[tjhere is no such projection taught
in Gutschner” (Reply Br. 7). As discussed above with respect to claim 1,
Appellants’ “first end” and “second end” are different from the “first end”
and “second end” in the Examiner’s annotated Figure 6. Thus, Appellants’
arguments do not respond to the rejection as articulated by the Examiner,
and do not show Examiner error. The rejection of claim 9 is sustained.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—3 and
5-13 are AFFIRMED.
The Examiner’s rejection of claim 4 is REVERSED.
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Appeal 2015-000415
Application 13/096,022
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-IN-PART
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