Ex Parte WaughDownload PDFPatent Trial and Appeal BoardMay 24, 201612910164 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/910,164 10/22/2010 72823 7590 Quinn Law Group, PLLC 39555 Orchard Hill Place Suite 520 Novi, MI 48375 05/26/2016 FIRST NAMED INVENTOR BrennenR. Waugh 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. P014439-NAPD-DPH/ GM2282 7472 EXAMINER DOLAK, JAMES M ART UNIT PAPER NUMBER 3618 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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): mjb@quinnlawgroup.com amb@quinnlaw group .com US Docketing@quinnlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRENNEN R. WAUGH Appeal2014-003593 Application 12/910, 164 Technology Center 3600 Before LYNNE H. BROWNE, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brennen R. Waugh (Appellant) seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART, designating the affirmance of the rejection of claims 1-8 under 35 U.S.C. § 103(a) as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b), and entering a NEW GROUND OF REJECTION of claims 9-15 under 35 U.S.C. § 103(a), also pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal2014-003593 Application 12/910, 164 BACKGROUND The disclosed subject matter "relates to control of a shutter via bi- directional communication using a single wire." Spec. i-f 1. Claims 1 and 9 are independent. Claim 9 is reproduced below: 9. A vehicle comprising: an internal combustion engine cooled by a fluid; a fan capable of being selectively turned on and off and configured to cool the engine: a grille opening located on the vehicle relative to the fan and configured to receive an airflow; a heat exchanger positioned between the grille opening and the fan for circulating the fluid though the engine; and a shutter system arranged relative to the grille opening and proximate the fan for controlling the airflow through the grille opening, wherein the shutter system includes at least one louver, a mechanism configured to select a position for the at least one louver between and inclusive of the fully-opened and the fully-closed positions to selectively restrict and unrestrict the grille opening, a slave processor in operative communication with the mechanism, and a master controller in bi-directional communication with the slave processor via a single wire; wherein the master controller is configured to control a selection of the position of the at least one louver by commanding the mechanism using the slave processor using the single wire; and wherein the slave processor is configured to respond to the master controller using the single wire. 2 Appeal2014-003593 Application 12/910, 164 REJECTIONS ON APPEAL 1. Claims 9-15 are rejected under 35 U.S.C. § 102(b) as anticipated by Ritter (US 4,779,577, issued Oct. 25, 1988). 2. Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ritter. 1 DISCUSSION Rejection 1 - The rejection of claims 9-15 under 35 U.S.C. § 102(b) Independent claim 9 (from which claims 10-15 depend) recites three limitations relating to a "single wire": (1) "a master controller in bi- directional communication with the slave processor via a single wire"; (2) "wherein the master controller is configured to control a selection of the position of the at least one louver by commanding the mechanism using the slave processor using the single wire"; and (3) "wherein the slave processor is configured to respond to the master controller using the single wire." Appeal Br. 16 (Claims App.) (emphasis added). In rejecting claim 9 as anticipated by Ritter, the Examiner identified element 15 in Ritter as the "master controller" and identified elements 12 and 14 together as the "slave controller." Final Act. 4. We first address the construction of the "single wire" limitations. The Examiner stated that "the broadest reasonable interpretation of the claimed 1 The summary of Rejection 2 in the Answer adds "as evidenced by Wroblewski et al. (US 4,736,367 & US 4,677,308)." Ans. 5; see also Final Act. 6, 8 (dated May 3, 2013) (not mentioning the Wroblewski references in the summary of the Rejection, but mentioning them in the body). We refer to the Wroblewski references as Wroblewski '367 and Wroblewski '308. 3 Appeal2014-003593 Application 12/910, 164 limitations: 'bi-directional communication via a single wire,' as best understood the cited elements of Ritter are considered to be capable of communication to/from each other via any one single wire provided in Fig.1-2" of Ritter. Final Act. 4. In support of this construction, the Examiner notes the use of the preamble term "comprising" (Ans. 11) and states that "a portion of the specific limitations which [Appellant] points to regarding control and communication are functional limitations (e.g., 'configured to control/respond')" (id. at 13). We determine that the second and third "single wire" limitations require that the signals performing the functions recited therein be transmitted using only the "single wire" introduced in the first "single wire" limitation. As noted by Appellant, the embodiment shown in Figure 2 of Ritter "requires the electric motor 12 and the four sliding contacts 60-64 of its control disk 14 to be connected with the control device 15 via at least four distinct wires to affect the intended operation." Appeal Br. 7 (discussing Ritter, col. 4, 11. 60-68). The Examiner appears to acknowledge that "the Ritter structure features at least four distinct wires" but takes the position that "Ritter's control can be affected bi-directionally via one of these four wires at any given time." Ans. 11. The Examiner has not, however, clearly identified an express or inherent disclosure in Ritter supporting that finding. See id. at 10 (stating that the cited elements of Ritter are capable of two-way communication "via any one single wire provided in Fig. 1-2 and as detailed in Col. 2-8 of Ritter"). As to the Examiner's reliance on column 3, lines 12-20 of Ritter (Ans. 11 ), that passage does not expressly or inherently disclose the use of only a single wire as required by the second and third "single wire" 4 Appeal2014-003593 Application 12/910, 164 limitations. Further, to the extent the Examiner takes the position that that passage "allow[ s] for the imparted teachings of one of ordinary skill in the art" (Ans. 11 ), we note that the Examiner relies on anticipation-not obviousness-as the basis for this Rejection. See also Appeal Br. 9 (arguing that it "would be mere speculation to say that the apparatus taught by Ritter may, without modification, operate as intended using bi-directional communication via a single wire"). For these reasons, we do not sustain the rejection of claim 9, nor the rejection of claims 10-15, as anticipated by Ritter. Rejection 2- The rejection of claims 1--8 under 35 U.S.C. § 103(a) For this Rejection, Appellant argues the patentability of independent claim 1 and does not separately argue claims 2-8, which depend from claim 1. See Appeal Br. 12, Reply Br. 9. Thus, we address only claim 1, with claims 2-8 standing or falling with claim 1. See 37 C.F.R. § 41.37 ( c )( 1 )(iv). Claim 1 recites the same three "single wire" limitations recited in claim 9, but adds "solely" before "the single wire" in the second and third limitations. See Appeal Br. 14 (Claims App.). In rejecting claim 1, the Examiner stated that Ritter does not explicitly teach the second or third "single wire" limitations, but stated that it would have been obvious to modify the wired connections of the Ritter disclosure to provide the same control via solely a single wire as a matter of common design choice as such connections are commonly known and used in the art of vehicle control design (See, e.g., US 4,736,367 and US 4,677,308 both to Wroblewski et al., and directed to 'bi-directional single wire communication assembly' for use in vehicle control systems). 5 Appeal2014-003593 Application 12/910, 164 Final Act. 8. The Examiner also stated that "using a single wire reduces the complexity of such vehicle control systems and reduces the overall cost of each vehicle which could potentially provide vehicle manufacturers significant savings over all of the vehicles manufactured in a given year" and that "the modification is obvious as no more than the use of familiar elements according to known methods in a manner that achieves predictable results." Id. First, Appellant argues that Ritter does not disclose or suggest any of the three "single wire" limitations. Appeal Br. 10.2 As to the second and third "single wire" limitations, we are not apprised of error because Appellant does not address the rejection as articulated, in which (as noted above) the Examiner relied on the teachings of Ritter as modified "to provide the same control via solely a single wire." Final Act. 8; see In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We tum now to the first "single wire" limitation in claim 1, which recites "a master controller in bi-directional communication with the slave processor via a single wire." Appeal Br. 14 (Claims App.). The Specification defines "bi-directional communication" as "electrical communication traveling both from the master controller 46 to the slave processor 48 and in reverse using the same single wire 50." Spec. i-f 32. The Examiner relies on Ritter as modified to satisfy the second and third "single wire" limitations, but appears to rely on Ritter alone to address the first "single wire" limitation. Final Act. 7-8. Although the Examiner has not 2 Although Appellant sets forth the three "single wire" limitations from claim 9, we understand Appellant to argue based on the similar limitations in claim 1. 6 Appeal2014-003593 Application 12/910, 164 necessarily shown that Ritter alone satisfies the first "single wire" limitation, Ritter as modified (as proposed by the Examiner) satisfies that limitation. Specifically, the modified device would use a single wire to provide electrical communications both from the identified "master controller" (element 15) to the identified "slave processor" (elements 12 and 14) and vice versa. See Final Act. 7-8. Appellant does not contend that Ritter fails to disclose communications from the identified "master controller" to the "slave processor," but rather, Appellant argues that "because control of Ritter's system does not employ position feedback, Ritter is not simply silent, but actually teaches away from the control disk 14 and the electric motor 12 being in bidirectional communication with and responding to the control device 15." Appeal Br. 7 (discussing Ritter, col. 5, 11. 34--43).3 We disagree. Here, the Examiner relies on "position feedback" as disclosed in Ritter (e.g., col. 5, 1. 61) as the required communication from the identified "slave processor" to the "master controller." See Ans. 10, 12. Considering the passages relied on by Appellant and the Examiner (Ans. 12 (discussing Ritter, col. 5, 11. 41---63)), we determine that Ritter discloses that "position feedback" may-but need not-be used. This does not "teach away" from the use of position feedback or the recited "bi-directional communication." See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching 3 Although Appellant provides these arguments regarding Rejection 1, we consider the statement at page 10 of the Appeal Brief as relying on this argument for Rejection 1. 7 Appeal2014-003593 Application 12/910, 164 away from any of the[] [disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... "). Second, Appellant states that "[a]s pointed out with respect to [Rejection 1], Ritter includes specific structure that renders the electric motor 12, control disk 14, and control device 15 incapable of communicating with each other via a single wire" and argues that two alleged "subjective assertions"4 by the Examiner "do not overcome the fact that the use of a single wire would demand complete reconstruction of Ritter's apparatus and change the underlying principle of its operation." Appeal Br. 11 (emphasis omitted); see also Reply Br. 8 (characterizing certain statements by the Examiner as "subjective assertions"). We are not apprised of error based on this argument. As to the first statement, we note that this Rejection relies on Ritter as modified as proposed by the Examiner (and revised above), rather than on Ritter alone. Further, Appellant has not persuasively demonstrated that the proposed modification would require a "complete reconstruction" of the device of Ritter or change the basic principle under which that device operates-i.e., 4 Appellant does not identify the locations in the record of the statements. The first statement-"a person having ordinary skill in the art here would have the required ability and creativity to modify components of a similar vehicle grille louver apparatus which are well known devices such that they are capable of featuring a single wire in place of multiple wires"- appears to be from page 2 of the Advisory Action, dated June 4, 2013. The second statement-"using a single wire reduces the complexity of such vehicle control systems and reduces the overall cost of each vehicle which could potentially provide vehicle manufacturers significant savings over all of the vehicles manufactured in a given year"-also appears on page 2 of the Advisory Action, but as a quotation from page 8 of the Final Action. 8 Appeal2014-003593 Application 12/910, 164 using a shutter system to control airflow through a grille opening to cool an automobile engine. See Ans. 15 (citing Ritter, Figs. 1-2, Abstract). In the modified device, adjustment of the shutter system would occur using bi- directional communication over a single wire rather than using the four wires shown, for example, in Figure 2 of Ritter. On the facts here, modifying how such adjustment occurs does not change the basic principle of operation of the device of Ritter and has not been shown to require a "complete reconstruction" of that device. Cf In re Ratti, 270 F.2d 810, 813 (CCP A 1959) (stating that the proposed modification would "require a substantial reconstruction and redesign of the elements shown in [the prior art] as well as a change in the basic principles under which the [prior art] was designed to operate"); see also Ans. 15 (stating that it "is unclear as to how the modification of multiple wire communication to single wire communication changes th[e] principle of operation" of Ritter). As to certain statements by the Examiner being characterized as "subjective assertions" (Appeal Br. 11; Reply Br. 8), with these contentions, Appellant essentially states that the Examiner erred without explaining why. See Exparte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); see also 37 C.F.R. § 41.37(c)(l)(iv) ("The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant."). In the Reply Brief, Appellant repeats certain aspects of this second argument but adds that the proposed modification would also render Ritter "unfit for its intended purpose." Compare Reply Br. 8-9, with Appeal Br. 11. For procedural reasons, we will not address this new argument. See 37 C.F .R. § 41.41 (b )(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in 9 Appeal2014-003593 Application 12/910, 164 the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). This new argument addresses the Rejection as originally set forth in the Final Office Action, rather than positions raised in the Answer. 5 Appellant has not shown good cause for failing to provide this argument in the Appeal Brief. For these reasons, we sustain the rejection of independent claim 1 as unpatentable over the combined teachings relied upon by the Examiner. Claims 2-8 fall with claim 1. Because our fact findings differ from those of the Examiner as outlined above, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellant with a full and fair opportunity to respond to the Rejection as modified. We also modify the prior art relied on in this Rejection from Ritter alone (Final Act. 6-8) to Ritter, Wroblewski '367, and Wroblewski '308. NEW GROUND OF REJECTION We enter a new ground of rejection: claims 9-15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ritter, Wroblewski '367, and Wroblewski '308. A. Independent Claim 9 We adopt as our own the Examiner's findings regarding the following limitations: "A vehicle comprising: an internal combustion engine cooled by a fluid; a fan capable of being selectively turned on and off and configured 5 Although Appellant precedes this argument with quotes from the Answer (see Reply Br. 8 (quoting Ans. 6-7)), the statements quoted were also provided in the Final Office Action (see Final Act. 8). 10 Appeal2014-003593 Application 12/910, 164 to cool the engine; a grille opening located on the vehicle relative to the fan and configured to receive an airflow; a heat exchanger positioned between the grille opening and the fan for circulating the fluid though the engine; and a shutter system arranged relative to the grille opening and proximate the fan for controlling the airflow through the grille opening, wherein the shutter system includes at least one louver, a mechanism configured to select a position for the at least one louver between and inclusive of the fully- opened and the fully-closed positions to selectively restrict and unrestrict the grille opening, a slave processor in operative communication with the mechanism." See Final Act. 3--4; Ans. 2-3. We also provide the following findings and conclusions: a master controller in bi-directional communication with the slave processor via a single wire - Ritter discloses a master controller (see Figs. 1, 2 (element 15)) in bi-directional communication with a slave processor (see col. 5, 11. 41-63) but does not disclose that such communication is via a single wire; wherein the master controller is configured to control a selection of the position of the at least one louver by commanding the mechanism using the slave processor using the single wire - Ritter discloses a master controller that controls a selection of the position of at least one louver by commanding a mechanism using the slave processor (see Figs. 1, 2; col. 3, 11. 5-7) but does not disclose that the master controller is configured to do so using a single wire; wherein the slave processor is configured to respond to the master controller using the single wire - Ritter discloses a slave controller that responds to the master controller (see Figs. 1, 2; col. 5, 11. 41-63) but does 11 Appeal2014-003593 Application 12/910, 164 not disclose that the slave controller is configured to do so using a single wire. It would have been obvious to one of ordinary skill in the art at the time of the invention, however, to modify, as a matter of common design choice, ( 1) the wired connections between the master controller and slave processor of Ritter to provide bi-directional communication using a single wire and (2) the configurations of the master controller and slave controller to perform the disclosed functions using a single wire because such connections and configurations are commonly known and used in the art of vehicle control design (see, e.g., Wroblewski '367, col. 4, 11. 19-20; Wroblewski '308, col. 4, 11. 60-61 (discussing a "bi-directional single wire communication assembly" for use in vehicle control systems)). Furthermore, using a single wire reduces the complexity of such vehicle control systems and reduces the overall cost of each vehicle, which could potentially provide vehicle manufacturers significant savings over all of the vehicles manufactured in a given year. Moreover, the modification is obvious as no more than the use of familiar elements according to known methods in a manner that achieves predictable results. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). B. Dependent Claims 10-15 We adopt as our own the Examiner's findings regarding claims 10- 15. See Final Act. 5-6; Ans. 3-5. DECISION We REVERSE the decision to reject claims 9-15 under 35 U.S.C. § 102(b) and AFFIRM the decision to reject claims 1-8 under 35 U.S.C. 12 Appeal2014-003593 Application 12/910, 164 § 103(a), designating the affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). We enter a NEW GROUND OF REJECTION of claims 9-15 under 35 U.S.C. § 103(a), also pursuant to our authority under 37 C.F.R. § 41.50(b). FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b ), which provides that "new ground[ s] of rejection pursuant to this paragraph shall not be considered final for judicial review." That section also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record .... 37 C.F.R. § 41.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation