Ex Parte Hernandez et al

Patent Trial and Appeal Board

Apr 25, 2013

11478035 (P.T.A.B. Apr. 25, 2013)

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

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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

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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.
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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
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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
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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
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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,
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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

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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

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