Ex Parte DIETEWICH et al

Patent Trial and Appeal Board

Oct 31, 2016

13441392 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/441,392 04/06/2012
23911 7590 11/02/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Horst DIETEWICH
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.
080437.64399US 5844
EXAMINER
HUYNH,LUATT
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST DIETEWICH, PATRICK MOLL,
KARL-JOSEF HUBER, and GEORG STROBL
Appeal2015-002880
Application 13/441,392 1
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1-10, 14, 15, 19, and 20 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Djordjevic (US 2008/0154465 Al,
pub. June 26, 2008) and Ondracek (US 2011/0148143 Al, pub. June 23,
2011). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is the assignee
Bayerische Motoren W erke Aktiengesellschaft. Appeal Br. 1.
Appeal2015-002880
Application 13/441,392
Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An aerodynamic device for a motor vehicle,
compnsmg:
an air guide element movable between a position of rest
and at least one operating position;
a drive unit operatively coupled to the air guide element
for moving the air guide element; and
a control unit operatively configured to control the drive
unit to move the air guide element from the position of rest into
the operating position upon reaching a first vehicle speed
threshold value, the control unit being further operatively
configured to perform a function test of the drive unit below the
first vehicle speed threshold value.
ANALYSIS
The Examiner relies on Djordjevic to teach the claimed air guide
element and drive unit (i.e., a spoiler and drive device 5, respectively). Final
Act. 2 (citing Djordjevic, para. 23, Fig. 2). The Examiner also relies on
Djordjevic to teach a control unit that performs a functional test of the drive
unit from a position of rest into an operating position (i.e., evaluation unit 6
and information device 7). Final Act. 2.
The Examiner finds that "Djordjevic does not explicitly disclose a
control unit operatively configured to control the drive unit to move the air
guide element from the position of rest into the operating position upon
reaching a first vehicle speed threshold value." Id. at 3. The Examiner turns
to Ondracek to remedy the deficiency of Djordjevic and finds "Ondracek
teaches that 'the speed of the motor vehicle is above a predetermined
minimum threshold, at least one of the plurality of extendable spoilers ... is
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Appeal2015-002880
Application 13/441,392
moved from a retrac[t]ed state to an extended state."' Id. (citing Ondracek,
para. 25). The Examiner concludes that "it would have been obvious to one
having ordinary skill in the art at ... to combine the teachings of Ondracek
(speed detection mechanism) into the invention of Djordjevic to determine
whether and when to extend and retract the air guide element." Id.
The Appellants argue that the proffered combination of teachings
from Djordjevic and Ondracek fail to teach "a control unit ... operatively
configured to perform a function test of the drive unit below the first vehicle
speed threshold value," as recited in independent claims 1 and 20. See
Appeal Br. 3-6, Reply Br. 1-3. The Appellants' argument is persuasive.
As correctly pointed out by the Appellants, Djordjevic fails to use the
word speed in its disclosure (Appeal Br. 3) and "there is no disclosure of
when Djordjevic 's spoiler is moved" (Reply Br. 2 (emphasis added)). As
such, the Examiner's findings that "specific citations to Djordjevic ...
clearly show evaluation unit 6 and information device 7 (function test) in
Fig. 2 can be done for all vehicle speeds from the first position to the second
position of the spoiler" (Ans. 7-8, emphasis omitted) and that "[d]ifferent
vehicle speeds fairly constitute different spoiler positions as mentioned in
Djordjevic" (id. at 8) are not adequately supported. See Reply Br. 1.
Moreover, although the Examiner finds that "[i]t is well [k]now[n] in
the art that many retractable spoilers automatically extend around 60 to 80
mph and they usually retract around the same speed or slightly lower to
improve driving stability at high speeds" (Ans. 8), the Examiner does not
adequately explain why Djordjevic discloses that its control unit performs a
function test of drive device 5 below a vehicle speed threshold value. And,
the Examiner does not adequately explain that it would have been obvious at
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Appeal2015-002880
Application 13/441,392
the time of the invention to modify Djordjevic's control unit to perform a
function test of drive device 5 below a vehicle speed threshold value.
Additionally, the Examiner's findings based on Ondracek's disclosure does
not remedy these deficiencies. As such, the Examiner fails to adequately
explain how the combined teachings of Djordjevic and Ondracek teach "a
control unit ... operatively configured to perform a function test of the drive
unit below the first vehicle speed threshold value," as recited in independent
claims 1 and 20.
Thus, the Examiner's rejection of independent claims 1 and 20, and
depending claims 2-10, 14, 15, and 19, as unpatentable over Djordjevic and
Ondracek is not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-10, 14, 15,
19, and 20.
REVERSED
4