Ex Parte Vaillancourt et al

Board of Patent Appeals and Interferences

Jun 23, 2004

10174567 (B.P.A.I. Jun. 23, 2004)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLAUDE VAILLANCOURT, GHYSLAIN BORDELEAU,
CAROLINE CHARBONNEAU, and JEAN-PIERRE BOYER
_____________
Appeal No. 2004-1016
Application No. 10/174,567
______________
ON BRIEF
_______________
Before PAK, OWENS, and JEFFREY SMITH, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 15, which are
all of the claims pending in the above-identified application.
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Application No. 10/174,567
2
APPEALED SUBJECT MATTER
Claims 1, 4 and 9 are representative of the subject matter
on appeal and read as follows:
1. An adjustable air vent for a vehicle comprising:
a stationary grill adapted to be mounted to the
vehicle, the stationary grill having at least one air
aperture and an engaging surface; and
a movable grill adapted to be movably mounted with
respect to the stationary grill, the movable grill
having at least one air aperture and an engaging
surface adapted to engage the engaging surface of the
stationary grill, the movable grill movable with
respect to the stationary grill from an open position
where the at least one aperture of the stationary grill
is aligned with the at least one aperture of the
moveable grill to allow air to flow therethrough to a
closed position, where the at least one aperture of the
stationary grill is not aligned with the at least one
aperture of the moveable grill to reduce the flow of
air through the vent, the movable grill including at
least one projecting actuator suitable for moving the
movable grill between the open position and the closed
position.
4. The adjustable air vent of claim 1, wherein the movable
grill and the at least one projecting actuator are
integrally molded from a plastic material.
9. A snowmobile, comprising:
a engine for driving the snowmobile;
an air path from an exterior of the snowmobile to an
engine compartment; and
an adjustable air vent mounted in the air path, the
adjustable air vent comprising:
a stationary grill adapted to be mounted to the
Appeal No. 2004-1016
Application No. 10/174,567
3
vehicle, the stationary grill having at least one air
aperture and an engaging surface; and
a movable grill adapted to the movably mounted with
respect to the stationary grill, the movable grill
having at least one air aperture and an engaging
surface adapted to engage the engaging surface of the
stationary grill, the movable grill movable with
respect to the stationary grill from an open position,
where the at least one aperture of the stationary grill
is aligned with the at least one aperture of the
moveable grill to allow air to flow therethrough, to a
closed position, where the at least one aperture of the
stationary grill is not aligned with the at least one
aperture of the movable grill to reduce the flow of air
through the vent, the movable grill including at least
one projecting actuator suitable for moving the movable
grill between the open position and the closed
position.
PRIOR ART
In support of his or her rejections, the examiner relies on
the following prior art references:
Dunlap 1,521,362 Dec. 30, 1924
Allred 4,676,145 Jun. 30, 1987
Inagawa et al. (Inagawa) 5,251,718 Oct. 12, 1993
REJECTION
Claims 1 through 3, 5 and 6 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of Dunlap. Claims 4
and 7 stand rejected under 35 U.S.C. § 103 as unpatentable over
Appeal No. 2004-1016
Application No. 10/174,567
1 The examiner inadvertently stated in the Answer that
claims 4 and 5 were rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Dunlap and Allred.
However, it is clear from the examiner’s final Office action
dated December 16, 2002 and the examiner’s Answer that this
rejection is actually directed to claims 4 and 7.
4
the combined disclosures of Dunlap and Allred.1 Claims 8 through
15 stand rejected under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Dunlap, Allred and Inagawa.
OPINION
We have carefully reviewed the claims, specification,
applied prior art, including all of the arguments and evidence
advanced by both the examiner and the appellants in support of
their respective positions. This review has led us to conclude
that only the examiner’s rejections of claims 4, 7, 8, 12 and 15
are not well founded. Accordingly, we affirm the examiner’s
rejections of claims 1 through 3, 5, 6, 9 through 11, 13 and 14
for the factual findings and conclusions set forth in the Answer.
We add the following primarily for emphasis and completeness.
ANTICIPATION
An anticipation under Section 102 is established only when a
single prior art reference discloses, either expressly or under
the principles of inherency, each and every element of a claimed
invention. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
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Application No. 10/174,567
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1657 (Fed. Cir. 1990); RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
The law of anticipation, however, does not require that the prior
art reference teach the appellants’ purpose disclosed in the
specification, but only that the claims on appeal "read on"
something disclosed in the prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983).
As evidence of anticipation of the subject matter defined by
claims 1 through 3, 5 and 6 under 35 U.S.C. § 102(b), the
examiner relies on the disclosure of Dunlap. The appellants do
not dispute the examiner’s finding that Dunlap teaches an
adjustable air vent for a vehicle having a stationary grill, a
movable grill and at least one projecting actuator as required by
claims 1 and 2. See the Brief, pages 10-11. The appellants only
argue that Dunlap does not teach the movable grill including the
projecting actuator as recited in claim 1. Id. In other words,
the appellants contend that Dunlap does not indicate that a
handle 44 corresponding to the claimed projecting actuator is
part of a shuttle plate 18 which corresponds to the claimed
movable grill. Id. According to the appellants (the Brief, page
11):
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Webster’s Dictionary defines “include” as to take in or
comprise as part of a whole, to contain between or
within. Webster’s Dictionary further defines “include”
to mean to contain within as part of a whole,
suggesting the containment of something as constituent,
component, or subordinate part of a larger whole.
We are not persuaded by this argument. The appellants may be
their own lexicographer and may define the claimed movable grill
as a shuttle plate 18 per se or a combination of a shuttle plate
18 and a handle 14 (movable grill including a projecting
actuator). However, this is merely a matter of semantics. That
is, the claims on appeal, by virtue of selecting one definition
over another, do not distinguish the structure of the claimed
adjustable air vent from that of Dunlap’s adjustable air vent in
that they both require a handle (a projecting actuator) to be
attached to a shuttle plate (a moveable grill).
The appellants separately argue that the limitations of
claims 3, 5 and 6 are not taught in Dunlap. We are not persuaded
by this argument for the findings of fact set forth at page 3, 4,
7 and 8 of the Answer. We adopt the examiner’s factual findings
set forth in the Answer as our own.
It follows that Dunlap teaches each and every limitation of
claims 1 through 3, 5 and 6 within the meaning of 35 U.S.C.
§ 102(b). Hence, we affirm the examiner’s decision rejecting
claims 1 through 3, 5 and 6 under 35 U.S.C. § 102(b).
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OBVIOUSNESS
The obviousness of an invention cannot be established by
combining the teachings of the prior art references absent some
teaching, suggestion or incentive supporting the combination.
See ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does not
mean that the prior are references must specifically suggest
making the combination. See B.F. Goodrich Co. V. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d
1500, 1502 (Fed. Cir. 1988). Rather, the test for obviousness is
what the combined teachings of the prior art references would
have suggested to those of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
As evidence of obviousness of the subject matter defined by
claims 4 and 7 under 35 U.S.C. § 103, the examiner relies on the
combined teachings of Dunlap and Allred. The disclosure of
Dunlap is discussed above. The examiner acknowledges that Dunlap
does not disclose that “the movable grill and the at least one
projecting actuator are integrally molded from a plastic
material” as required by claim 4.
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To remedy this deficiency, the examiner refers to the
disclosure of Allred. Allred teaches a ventilating device for
building foundation comprising a mounting plate 16 corresponding
to the claimed stationary grill, an operating plate 20
corresponding to the claimed movable grill and a knob 38
corresponding to the claimed projecting actuator. According to
the examiner (Answer, page 5), Allred teaches that the operating
plate and knob can be integrally molded from a plastic material.
The examiner then concludes (Id.) that
At the time of the invention, it would have been
obvious to a person or ordinary skill in this art to
integrally mold the projecting actuator to the movable
grill in Dunlap in view of the teachings of Allred.
In other words, it is the examiner’s position that the combined
teachings of Dunlap and Allred would have motivated one of
ordinary skill in the art to employ the operating plate and knob
integrally molded from a plastic material for a building
ventilation system as the shuttle and the handle of Dunlap’s
automobile radiator system. See the Answer, pages 9 and 10. We
do not agree.
Dunlap is directed to an improvement in automobile radiator
shuttles in which it employs a particular handle (a projecting
actuator) to control the flow of air to a radiator from the
interior of an automobile. See column 1, lines 1-21. Although
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Application No. 10/174,567
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Allred may teach an operating plate and a knob integrally molded
from a plastic material for a building ventilation system, it
does not teach or suggest employing such plate and knob for
Dunlap’s intended purpose, i.e., controlling the flow of air to a
radiator from the interior of an automobile. Nor does Allred
teach or suggest that its integrally molded plate and knob useful
for a building ventilation system are equally useful for an
automobile environment. On this record, the examiner simply has
not convincingly explained why would one of ordinary skill in the
art be lured to employ the integrally molded plate and knob
taught in Allred in Dunlap’s automobile, given the inability to
control the flow of air to a radiator from the interior of the
automobile during the operation of the automobile and given the
space and temperature constraints between a radiator and an
automobile bumper impeding the use of the integrally molded plate
and knob of the type described in Allred. It follows that the
examiner’s decision rejecting claims 4 and 7 under 35 U.S.C. §
103 is reversed.
As evidence of obviousness of the subject matter defined by
claims 8 through 15 under 35 U.S.C. § 103, the examiner relies on
the combined disclosures of Dunlap, Allred and Inagawa. We
initially reverse the examiner’s rejection of claims 8, 12 and 15
Appeal No. 2004-1016
Application No. 10/174,567
2 It is readily apparent from the Answer that Allred is
relied on to show the limitations of claims 4, 7, 8, 12 and 15.
10
for the reasons indicated above. Inagawa does not remedy the
deficiencies indicated supra.
However, we concur with the examiner that Dunlap and Inagawa
as whole would have rendered the subject matter of claims 9
through 11 and 13, and 14 obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. § 103.2 As found by the
examiner (Answer, page 5), Inagawa teaches that it is well known
for a snowmobile to employ an air vent. See also columns 5 and
6. The snowmobile air vent, like an automobile air vent, is used
to draw air to cool its radiator. See column 5, lines 65-67.
Although Inagawa does not indicate that its air vent corresponds
to the claimed adjustable air vent, Dunlap teaches an automobile
adjustable air vent corresponding to those recited in claims 9
through 11, 13 and 14 as indicated supra and in the Answer.
Dunlap teaches not only using the automobile adjustable air vent
to control the flow of air to a radiator, but also obtaining
various advantages by using the adjustable air vent, including
the adjustment of the flow of air to a radiator from the interior
of a vehicle during its operation, as indicated supra and in the
Answer.
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Given the advantages of the adjustable air vent described in
Dunlap, we concur with the examiner that one of ordinary skill in
the art would have been led to employ such adjustable air vent in
the snowmobile of the type described in Inagawa, with a
reasonable expectation of successfully cooling the radiator of
Inagawa’s snowmobile. It follows that the examiner’s decision
rejecting claims 9 through 11, 13 and 14 under 35 U.S.C. § 103 is
affirmed.
CONCLUSION
In summary,
1. The examiner’s Section 102 rejection of claims 1 through 3,
5 and 6 as anticipated by the disclosure of Dunlap is
affirmed;
1. The examiner’s Section 103 rejection of claims 4 and 7 as
unpatentable over the combined disclosures of Dunlap and
Allred is reversed;
3. The examiner’s Section 103 rejection of claims 8, 12 and 15
as unpatentable over the combined disclosures of Dunlap,
Allred and Inagawa is reversed; and
4. The examiner’s Section 103 rejection of claims 9 through 11,
13 and 14 as unpatentable over the combined disclosures of
Dunlap, Allred and Inagawa is affirmed.
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Application No. 10/174,567
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CKP:jlb
Appeal No. 2004-1016
Application No. 10/174,567
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