Ex Parte UngDownload PDFPatent Trial and Appeal BoardMay 29, 201411652743 (P.T.A.B. May. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/652,743 01/13/2007 Ly Weng Ung UNLe01U2 3643 7590 05/30/2014 John C. Thompson 69 Grayton Road Tonawanda, NY 14150 EXAMINER DOAK, JENNIFER L ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 05/30/2014 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 LY WENG UNG ____________ Appeal 2012-003827 Application 11/652,743 Technology Center 2800 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and CATHERINE Q. TIMM, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-11. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2012-003827 Application 11/652,743 2 Appellant’s claimed invention is directed to a distortion-free image capture mirror disclosed as being useful with an automotive side view mirror for capturing an image from an area representing a driver’s blind spot. The article includes a flat background mirror, an image channeling awning, and an image channeling sill. Further details can be derived from a review of claim 1, which is illustrative and reproduced below: 1. A distortion-free image capture mirror which may be used with an automotive side view mirror for capturing an image from an area representing a blind spot for a driver of a vehicle fitted with the distortion-free image capture mirror, the distortion-free image capture mirror comprising a relatively flat background mirror, an image channelling awning disposed above the background mirror with respect to an intended use orientation of the distortion-free image capture mirror and an image channelling sill mounted below the background mirror with respect to the intended use orientation, portions of the image channelling awning and the image channelling sill extending away from the background mirror for such a distance as to in use eliminate a distracting background view and channel an image from the blind spot area towards the driver to provide a clear non-distracted view, the awning including an obtuse angle with the background mirror. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Kelley US 3,424,424 Jan. 28, 1969 Rose US 4,314,280 Feb. 2, 1982 The Examiner maintains the following ground of rejection: Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kelley in view of Rose. Appeal 2012-003827 Application 11/652,743 3 We affirm the stated rejection as to claims 1-10 for substantially the reasons set forth by the Examiner in the Answer. We reverse the rejection as to claim 11. Appellant argues claims 1-4, 6, 9, and 10 together as a group. We select claim 1 as the representative claim on which we shall primarily focus in deciding this appeal as to these commonly rejected claims. We consider claims 5, 7, 8, and 11 separately to the extent they are separately argued. Concerning representative claim 1, the Examiner has found without dispute that Kelley discloses or suggests a distortion-free image capturing mirror, a mirror that comprises a relatively flat background mirror (Ans. 5). Kelley teaches that the mirror structures thereof can be used and mounted on both sides of a vehicle for providing a rear view (col. 1, ll. 35-55, col. 2, ll. 13-48, (Figs. 1-4). The Examiner turns to Rose for a teaching of a light shield for use with an image viewing screen that includes a top awning portion (36, Fig. 1) and a bottom sill portion (37, Fig. 1), which can be used for preventing unwanted light/glare from disturbing the viewer (Ans. 5-6; Rose, col. 1, ll. 6- 7). The Examiner maintains that it would have been obvious for one of ordinary skill in the art at the time of the invention to provide such light shielding structures as taught by Rose together with the vehicle mirror of Kelley “to prevent glare from reaching the viewer” (Ans. 6). Appellant does not particularly address the Examiner’s basis/rationale for the proposed modification of Kelley (see generally Br.). Rather, Appellant argues that neither Kelley nor Rose is directed to a side view mirror that is used for capturing an image of a blind spot and that the proposed combination of the viewing screen light shields of Rose with the Appeal 2012-003827 Application 11/652,743 4 mirrors of Kelley would be unworkable and would not have been obvious to one of ordinary skill in the art (Br. 11-14; Reply Br. 1). Appellant’s arguments are not persuasive of substantive or harmful error in the Examiner’s obviousness rejection of representative claim 1 for reasons set forth by the Examiner (Ans. 8-13). In particular, representative claim 1 is not limited to a particular use of the claimed mirror and arguments relating to such an optional intended use as permissively recited in claim 1 (“may be used”) are not germane in terms of distinguishing the claimed mirror from the mirror suggested by the applied prior art as explained by the Examiner (Ans. 9-11). Moreover, Appellant has not contested the Examiner’s determinations that glare was a known problem affecting vehicle side-mounted mirrors, such as those of Kelley, and that the light shields of Rose provide a solution to the problem of light impinging on a screen or other interface to be viewed (Ans. 5-6, and 11-13). In this regard and to the extent the Examiner combines the prior art of record for reasons other than modifying the potential blind spot viewing properties of Kelley’s mirrors, we note that the reason for combining the prior art need not be the same as the Appellant’s reason. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness”). Appeal 2012-003827 Application 11/652,743 5 For the above reasons and those set forth by the Examiner in the Answer, Appellant has not identified harmful error in the Examiner’s obviousness rejection of representative claim 1. As for separately argued dependent claims 7 and 8, we observe, once again, that these claims are not limited to a blind spot mirror, as argued (Br. 15). The Examiner has furnished a reasonable basis for why it would have been obvious for one of ordinary skill in the art to employ reflective materials, materials that glow in the dark, and/or bright colors as part of the surfaces or the mirror light shades of the modified vehicle mounted mirrors of Kelley (Ans. 7, 8, 15, and 16). In this regard, we note that Appellant does not dispute the Examiner’s findings with respect to the well-known nature of light reflective and/or bright materials, and glow in the dark materials (Ans. 8 and 15). Furthermore, the Examiner’s obviousness determination concerning the selection of materials for the light shields is supported by Rose’s teachings that the surface finish of the light shields can be adapted to the requirements indicated for the environment in which the mirrors are used (col. 6, ll. 2-5). On this record, Appellant’s arguments expose no harmful error in the Examiner’s obviousness position with respect to dependent claims 7 and 8. Concerning dependent claim 5, Appellant’s argument does not indicate reversible error in the Examiner’s determination that the broadly recited semi-heart shape of the awning and sill (light shields) as set forth in claim 5 is an obvious design choice or choice of shape for the light shields as taught by Rose to be added to the mirrors of Kelley for the aesthetic reasons expressed by the Examiner (Ans. 8, 14, and 15). Appeal 2012-003827 Application 11/652,743 6 However, we agree with Appellant that the beam required by claim 11 is not a mere change in shape of the light shield panels taught by Rose and the Examiner has not proffered any other prior art or other rationale that would fairly suggest providing a beam extending from a triangular awning apex to a triangular sill apex as part of a mirror light shield. As such, we reverse the Examiner’s rejection as to claim 11. CONCLUSION/ORDER The Examiner’s decision to reject claims 1-10 under 35 U.S.C. § 103(a) as being unpatentable over Kelley in view of Rose is affirmed. The Examiner’s decision to reject claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Kelley in view of Rose is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART kmm Copy with citationCopy as parenthetical citation