Marcus Hoggarth et al.Download PDFPatent Trials and Appeals BoardSep 26, 201915493708 - (D) (P.T.A.B. Sep. 26, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/493,708 04/21/2017 Marcus HOGGARTH 83798154 6829 28395 7590 09/26/2019 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER ROGERS, ADAM D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 09/26/2019 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARCUS HOGGARTH, JASPER DEKKER, IVAN MARK ROGERS, and EDWARD ROSE Appeal 2019-002912 Application 15/493,708 Technology Center 3600 ____________ Before EDWARD A. BROWN, CHARLES N. GREENHUT, and BRETT C. MARTIN, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant (Ford Global Technologies, LLC)1 appeals from the Examiner’s decision to reject claims 1–8, 11–13, 16, 17, and 19.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global Technologies, LLC. Appeal Br. 2. 2 Claims 9, 10, 14, 15, 18, and 20 are cancelled. Appeal Br. (Claims App.). Appeal 2019-002912 Application 15/493,708 2 CLAIMED SUBJECT MATTER Claims 1 and 16 are independent claims. Claim 1 illustrates the claimed subject matter. 1. A motor vehicle steering wheel assembly comprising: a ring-shaped member defining a hollow internal recess and a slot providing an aperture into the internal recess; and a guide portion configured to be slidably disposed in the internal recess such that the ring-shaped member is rotatable about the guide portion; one or more lights arranged around the ring-shaped member and configured to indicate a current position of the ring- shaped member relative to the guide portion. Appeal Br. (Claims App.). REJECTIONS3,4 1. Claims 1–6, 11, 12, 16, 17, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Lorenz (US 7,044,021 B2, issued May 16, 2006) and Beutnagel-Buchner (US 7,679,495 B2, issued Mar. 16, 2010). 3 The rejection of claims 14, 16, 17, and 19 under 35 U.S.C. § 112(b) was withdrawn in response to Appellant’s reply filed on September 6, 2018. Adv. Act. (dated Oct. 1, 2018). 4 In the Examiner’s Answer, Yoshimi (US 4,743,883, issued May 10, 1988) is not applied in any of the “modified grounds of rejection” under 35 U.S.C. § 103, corresponding to Rejections 1–5 listed herein. Ans. 2 (dated Dec. 26, 2018). However, Yoshimi is applied in each ground of rejection under 35 U.S.C. § 103 in the Final Action. Final Act. 3–14 (dated June 7, 2018). Consequently, the Examiner has effectively withdrawn the rejections in the Final Action. Appeal 2019-002912 Application 15/493,708 3 2. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as unpatentable over Lorenz, Beutnagel-Buchner, and Sasanouchi (US 8,327,722 B2, issued Dec. 11, 2012). 3. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over Lorenz, Beutnagel-Buchner, and de Heras (US 2,491,803, issued Dec. 20, 1949). 4. Claims 1, 3–6, 11, 12, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Thomas (US 2010/0175499 A1, published July 15, 2010) and Beutnagel-Buchner. 5. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over Thomas, Beutnagel-Buchner, and de Heras. ANALYSIS Claims 1–6, 11, 12, 16, 17, and 19 over Lorenz and Beutnagel-Buchner Claims 1 and 16 both recite, inter alia, “one or more lights arranged around the ring-shaped member and configured to indicate a current position of the ring-shaped member relative to the guide portion.” Appeal Br. (Claims App.) (hereinafter, the “lights limitation”). In rejecting claims 1 and 16, the Examiner finds that Lorenz discloses a motor vehicle steering wheel assembly comprising a guide portion (arc-shaped skeleton section 14) configured to be slidably disposed in the internal recess of a ring-shaped member (actuation member 16), such that the ring-shaped member is rotatable about the guide portion. Ans. 3 (citing Lorenz, Fig. 2). The Examiner concedes that Lorenz does not disclose the lights limitation. Id. Appeal 2019-002912 Application 15/493,708 4 The Examiner relies on Beutnagel-Buchner as teaching lights (light spots 112, 113) arranged around a ring-shaped member (steering wheel 111) and configured to indicate “a position of a vehicle.” Id. (citing Beutnagel- Buchner, col. 10, ll. 31–54). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Lorenz’s ring- shaped member to include one or more lights configured to indicate a position of vehicle wheels, as taught by Beutnagel-Buchner, to provide “a visual guidance arrangement that allows the user to see how much or how little to turn the steering wheel.” Id. at 3–4. The Examiner submits, “[o]nce Lorenz is modified by the teaching of Beutnagel-Buchner, the one or more lights would be configured to indicate a current position of the ring-shaped member relative to the guide portion because the lights would be formed on the ring-shaped member that rotates relative to the stationary guide portion.” Id. at 4. In reply Appellant points out that the Examiner previously found that “Lorenz in view of Beutnagel-Buchner . . . does not disclose that the one or more lights indicate a current position of the ring-shaped member relative to the guide portion.” Reply Br. 2 (citing Final Act. 4). Accordingly, in addition to no longer relying on Yoshimi, the modified rejection based on the combination of Lorenz and Beutnagel-Buchner relies on different reasoning than for the previous rejection in the Final Action. Regardless, Appellant contends, Beutnagel-Buchner fails to cure the deficiencies of Lorenz. Id. at 3. As noted by Appellant, Beutnagel-Buchner discloses that when luminous element 113 associated with steering wheel 111 is activated to display a steering change, the driver is then required to make luminous element 113 coincide with reference point 114. Id. (citing Beutnagel- Appeal 2019-002912 Application 15/493,708 5 Buchner, col. 10, ll. 36–38); see also Beutnagel-Buchner, Fig. 9. Thus, Appellant contends, Beutnagel-Buchner’s lights provide instructions to the driver, and do not disclose the lights limitation. Id. We agree with Appellant. Beutnagel-Buchner discloses that, in display unit 110 shown in Figure 9, light spots 112 are arranged on steering wheel 111 to instruct the driver in rotating the steering wheel to implement a steering change. In Beutnagel-Buchner, the light spots function in cooperation with reference point 114 associated with the steering wheel to implement the steering change. An additional reference point can be provided outside the steering wheel. See Beutnagel-Buchner, col. 10, ll. 40– 42. The particular light spot on the steering wheel that is activated instructs the driver how much to rotate the steering wheel to implement the steering change. The Examiner does not identify any disclosure in Beutnagel- Buchner that the light spots would provide this steering instructing function to the driver without also having the associated reference point(s). Furthermore, the Examiner does not identify any disclosure in Beutnagel-Buchner that the light spots are arranged around the steering wheel and “configured to”5 indicate a current position of the steering wheel relative to any “guide portion” about which the steering wheel rotates. Rather, the light spots are arranged and configured to cooperate with the reference point(s) to instruct the driver specifically how to turn the steering 5 An ordinary meaning of “configured” is “to set up for operation esp. in a particular way.” Merriam-Webster’s Collegiate Dictionary 261 (11th ed. 2003). See also Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (phrases such as “configured to” are frequently used to have the meaning “designed to” or “made to”). Appeal 2019-002912 Application 15/493,708 6 wheel in implementing turns of the vehicle when a steering change is called for. In view of this disclosure, the Examiner does not explain adequately how modifying Lorenz’s actuation member to incorporate the light spots disclosed by Beutnagel-Buchner would necessarily result in the lights being configured to indicate a current position of the actuation member relative to the skeleton section, as required by claim 1. Accordingly, we do not sustain the rejection of claims 1 and 16, or claims 2–6, 11, 12, 17, and 19 which depend from claim 1 or 16, as unpatentable over Lorenz and Beutnagel-Buchner. Claims 7 and 8 over Lorenz, Beutnagel-Buchner, and Sasanouchi Claim 13 over Lorenz, Beutnagel-Buchner, and de Heras The Examiner does not rely on Sasanouchi in rejecting claims 7 and 8 (Ans. 6–7), or de Heras in rejecting claim 13 (id. at 7–8), in a manner that cures the deficiencies in the rejection of parent claim 1 over Lorenz and Beutnagel-Buchner. Accordingly, we do not sustain the rejection of claims 7 and 8 as unpatentable over Lorenz, Beutnagel-Buchner, and Sasanouchi, or the rejection of claim 13 as unpatentable over Lorenz, Beutnagel-Buchner, and de Heras. Claims 1, 3–6, 11, 12, and 19 over Thomas and Beutnagel-Buchner In rejecting claim 1, the Examiner finds that Thomas discloses a motor vehicle steering wheel assembly comprising a guide portion (second ring member 24) configured to be slidably disposed in the internal recess of a ring-shaped member (first ring member 22) such that the ring-shaped Appeal 2019-002912 Application 15/493,708 7 member is rotatable about the guide portion. Ans. 8. The Examiner concedes that Thomas does not disclose the lights limitation. Id. at 9. The Examiner relies on Beutnagel-Buchner as teaching lights (light spots 112, 113) arranged around a ring-shaped member (steering wheel 111) and configured to indicate “a position of a vehicle.” Id. The Examiner concludes that it would have been obvious to modify Thomas’ ring-shaped member to include one or more lights configured to indicate a position of vehicle wheels, as taught by Beutnagel-Buchner, to provide “a visual guidance arrangement that allows the user to see how much or how little to turn the steering wheel.” Id. The Examiner submits, “[o]nce Thomas . . . is modified by the teaching of Beutnagel-Buchner, the one or more lights would be configured to indicate a current position of the ring-shaped member relative to the guide portion because the lights would be formed on the ring-shaped member that rotates relative to the stationary guide portion.” Id. For the reasons discussed above for the rejection of claim 1 over Lorenz and Beutnagel-Buchner, for this rejection the Examiner likewise does not explain adequately how modifying Thomas’ first ring member to incorporate the light spots disclosed by Beutnagel-Buchner would necessarily result in the light spots being configured to indicate a current position of the first ring member relative to the second ring member, as required by claim 1. Accordingly, we do not sustain the rejection of claim 1 or its dependent claims 3–6, 11, 12, and 19 as unpatentable over Thomas and Beutnagel-Buchner. Appeal 2019-002912 Application 15/493,708 8 Claim 13 over Thomas, Beutnagel-Buchner, and de Heras The Examiner’s reliance on de Heras in rejecting claim 13 does not cure the deficiencies in the rejection of parent claim 1 over Thomas and Beutnagel-Buchner. Ans. 7–8. Accordingly, we do not sustain the rejection of claim 13 as unpatentable over Thomas, Beutnagel-Buchner, and de Heras. CONCLUSION In summary: Claims Rejected Basis Affirmed Reversed 1–6, 11, 12, 16, 17, 19 § 103 Lorenz, Beutnagel- Buchner 1–6, 11, 12, 16, 17, 19 7, 8 § 103 Lorenz, Beutnagel- Buchner, Sasanouchi 7, 8 13 § 103 Lorenz, Beutnagel- Buchner, de Heras 13 1, 3–6, 11, 12, 19 § 103 Thomas, Beutnagel- Buchner 1, 3–6, 11, 12, 19 13 § 103 Thomas, Beutnagel- Buchner, de Heras 13 Overall Outcome 1–8, 11–13, 16, 17, 19 REVERSED Copy with citationCopy as parenthetical citation