Ex Parte Ung

Patent Trial and Appeal Board

May 29, 2014

11652743 (P.T.A.B. May. 29, 2014)

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

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