Ex Parte Hernandez et alDownload PDFPatent Trial and Appeal BoardApr 25, 201311478035 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EVERARDO A. HERNANDEZ and SANTHOSH KUMAR KARUMURI ____________ Appeal 2011-003153 Application 11/478,035 Technology Center 3600 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003153 Application 11/478,035 2 STATEMENT OF THE CASE Everardo A. Hernandez and Santhosh Kumar Karumuri (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner’s rejection of claims 1-21, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ invention is directed to a widow regulator assembly. Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. A window regulator assembly comprising: a motor including a motor housing and a driving output for moving a window between open and closed positions; a cursor mounted for movement along a window track, said cursor including a window mount portion adapted to receive the window and a motor mount portion wherein said motor housing is fixed to said motor mount portion for movement with said cursor; and a cable in driving engagement with said driving output to move said motor, said cursor and the window together as a unit along the window track. Appeal 2011-003153 Application 11/478,035 3 THE REJECTIONS Appellants appeal from the following rejections: (i) claims 1-4, 6-16 and 18-21 under 35 U.S.C. § 103(a) as being unpatentable over Schrader (DE 35 45 856 C1, published Jan. 8, 1987)1 in view of Brusasco (US 4,402,160, issued Sep. 6, 1983); and (ii) claims 1, 5, 7, 12 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Schrader in view of Oberheide (US 6,918,208 B2, issued Jul. 19, 2005). ANALYSIS Claims 1-4, 6-16 and 18-21--Obviousness--Schrader/Brusasco The Examiner found that Schrader discloses all elements of independent claims 1 and 7, with the exception of a cable drive assembly. Ans. 3-4. The Examiner cited to Brusasco as teaching a window regulator assembly employing a cable drive, and concluded that it would have been obvious to provide the Schrader window regulator assembly with a cable drive. Ans. 4. The Examiner maintained that the modification would have been obvious “since a cable drive allows flexibility between the cable and the drive along the path of travel . . . thereby ensuring better engagement therebetween.” Id. Further, the Examiner stated that it would have been obvious to “substitute one window drive system for another based on weight, space, and overall drive capabilities and to substitute a cable drive for a rack and pinion drive” in that those systems are “art equivalents and both drive systems would operate equally as well.” Ans. 6. 1 A European Patent Office automated translation into English is of record in the application. Appeal 2011-003153 Application 11/478,035 4 Appellants argue that it is unclear, in the proposed modification, which portions of the Brusasco structure are to be incorporated into the Schrader system to result in a final structure, and that, if the proposed modification is to substitute the Brusasco cable drive system for the Schrader rack and pinion system, the modified system would not result in the claimed invention. Appeal Br. 9; Reply Br. 2. We agree on both counts. Regarding the latter argument, the motor in Brusasco, while not illustrated, would clearly not be mounted to plate 2, which corresponds to the claimed cursor, but would instead be mounted in a stationary manner somewhere in the vicinity of shaft 10 to drive that shaft and the toothed wheel connected thereto. Such a construction, when incorporated into the Schrader system, would not have a motor housing fixed to a motor mount portion of a cursor such that the motor and cursor would move together along a window track, as set forth in claims 1 and 7. If, contrary to the position that the Brusasco cable drive system would have been an obvious substitution for the Schrader rack and pinion system, the Examiner intended some other modification of the Schrader system that was less than a full substitution of one system for the other, the Examiner has not cogently explained what modification to Schrader was contemplated, nor what the resulting structure would be. The rejection of claims 1-4, 6-16 and 18-21 as being unpatentable over Schrader and Brusasco is not sustained. Claims 1, 5, 7, 12 and 17--Obviousness-- Schrader/Oberheide The Examiner’s findings with respect to the limitations set forth in claim 1 and the disclosure of the Schrader reference are essentially identical Appeal 2011-003153 Application 11/478,035 5 to those in the rejection discussed above. Ans. 4-5. The Examiner cited to Oberheide, and to Figures 5 and 6 in particular, as disclosing a window regulator assembly driven by a cable and gear assembly, and concluded that it would have been obvious to modify Schrader to include a single cable, a single track and a motor/gear assembly guided along the single track, in that such a modification would result in fewer mechanical parts and thus be less expensive, and would be more compact. Ans. 5. Appellants attack the rejection of claim 1 on several fronts. First, Appellants argue that, since Oberheide discloses that the motor is pivotably mounted to the cursor, the proposed modification to the Schrader system would not result in a configuration in which a motor housing is fixed to a motor mount portion of the cursor. Appeal Br. 18; Reply Br. 13. This argument is unpersuasive of error on the Examiner’s part. The Examiner’s ground of rejection proposes to modify the Schrader device by providing a single cable, a single track and a gear assembly that would include a motor in place of the rack and pinion arrangement. Ans. 5. That proposed modification does not appear to require a bodily incorporation of the exact components disclosed by Oberheide. To the extent that it could be argued that the Examiner has proposed a complete substitution of the Oberheide drive assembly for the Schrader one (Ans. 8), Appellants appear to be referring to an embodiment of a window regulator assembly as illustrated in Figure 2 of Oberheide in pointing out that the motor is pivotably mounted to the cursor. The Examiner, however, relies on the different embodiment shown in Figures 5 and 6. Ans. 5. In that embodiment, it appears that the motor is mounted such that is does not pivot relative to the cursor. Furthermore, even if that embodiment involved the Appeal 2011-003153 Application 11/478,035 6 motor being pivotably connected, it would still meet the claim limitation calling for the “motor housing [to be] fixed to said motor mount portion for movement with said cursor.” Appeal Br., Claims Appendix (emphasis added). In other words, the fixing of the motor housing to the motor mount portion is for the purpose of having the motor housing move with the cursor. Even the pivotably mounted motor in Oberheide moves with the cursor. Appellants further argue that Schrader teaches away from the proposed combination, that the proposed modification would render Schrader unsatisfactory for its intended purpose, and would change the principle of operation of Schrader. All of these arguments are based on an allegation that “[m]odifying Schrader to include the drive arrangement of Oberheide would necessitate removal of the base plate 5.” Appeal Br. 18. According to Appellants, this would eliminate a three-point connection of the plate, and also eliminate the multiple points of adjustment provided by the Schrader plate. This argument is in the nature of asserting that a complete bodily incorporation of the Oberheide system, including the element corresponding to the claimed cursor in its exact configuration, is necessary. The test for obviousness is not, however, whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, Appellant has not shown how Schrader criticizes, discredits or otherwise discourages the use of a cable drive system of the type disclosed in Oberheide. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Finally, as to the arguments that the modification would render Schrader unsatisfactory for its intended purpose, or would change the basic Appeal 2011-003153 Application 11/478,035 7 principle of operation, we note that the intended purpose of the Schrader system is to raise and lower a window, and the basic principle of operation is to use a motor and gearing interfaced with a toothed member to raise and lower a cursor having a window connected thereto. Neither of these is affected by the proposed modification. Appellants finally argue that the Examiner has not provided evidence that the proposed modification to include a cable drive system of the type disclosed in Oberheide would result in a drive system that is less expensive than that used in Schrader. Appeal Br. 18. The Examiner is not, however, required to establish beyond all doubt that the proposed combination would be successful. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require absolute predictability of success”). It is sufficient that a person of ordinary skill in the art would have made the combination with a reasonable expectation of success. In re Droge, 695 F.3d 1334, 1338 (Fed. Cir. 2012). The Examiner’s position that the resulting structure would have fewer parts is an adequate basis for a reasonable expectation that the modified system would be less expensive. None of the above arguments apprise us of error in the Examiner’s position. Accordingly, the rejection of claim 1 is sustained. For claim 5, Appellants correctly point out that the Examiner has made no findings or conclusions as to how the cited references are seen as rendering obvious the claim limitation directed to a gear housing portion that substantially encloses the gear drive. Appeal Br. 19; Reply Br. 14. The rejection of claim 5 is thus not sustained. For claims 7 and 17, Appellants argue that Oberheide teaches away from a window track formed within a door module, as claimed, and that, Appeal 2011-003153 Application 11/478,035 8 once Schrader is modified to include the Oberheide cable drive system, the gear racks of Schrader are no longer needed. Appeal Br. 19-20; Reply Br. 14. Appellants maintain that Oberheide teaches mounting a rail to the door body with brackets. Appellants have not shown how such an arrangement falls outside the scope of the claim limitation at issue, nor have Appellants shown how Oberheide criticizes, discredits or otherwise discourages forming a window track within a door module. The rejection of claims 7 and 17 is sustained. Claim 12 depends from independent claim 7, and further includes the limitation that the motor housing is to be rigidly mounted to the motor mount portion of the cursor such that said motor housing does not move relative to the cursor. Appellants, as they did in arguing for the patentability of claim 1, maintain that the motor in Oberheide is pivotably mounted to the cursor element, and thus does not teach this claim limitation. Appeal Br. 20; Reply Br. 14. As pointed out above, the Examiner relies on the embodiment illustrated in Figures 5 and 6 of Oberheide, which appear to have the motor housing rigidly mounted to the cursor. In particular, the gear and belt drive arrangement illustrated in Figure 6 appears to require that the motor not move relative to the cursor, in order to maintain the belt in its proper operating configuration. In addition, the motor housing in Schrader appears to be rigidly mounted to the cursor in the disclosed configuration. Schrader, Fig. 1. The rejection of claim 12 is thus sustained. DECISION The decision of the Examiner to reject claims 1-4, 6-16 and 18-21 as being unpatentable over Schrader and Brusasco is reversed. Appeal 2011-003153 Application 11/478,035 9 The decision of the Examiner to reject claims 1, 7, 12 and 17 as being unpatentable over Schrader and Oberheide is affirmed. The decision of the Examiner to reject claim 5 on the same grounds 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)(1)(iv). AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation