Ex Parte Bennett et al

Patent Trial and Appeal Board

Mar 29, 2018

12944444 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/944,444 11/11/2010
27305 7590 04/02/2018
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
Dan BENNETT
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.
065310.00059 5730
EXAMINER
DUNNER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
tmorris@Howardandhoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN BENNETT, MARKS. ACKERMAN, and
DAVID W. LAHNALA
Appeal2016-001986
Application 12/944,444
Technology Center 3700
Before CHARLES N. GREENHUT, PATRICKR. SCANLON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dan Bennett et al. ("Appellants") 1 seek our review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action,
dated December 4, 2014 ("Final Act."), rejecting claims 1--42, which
constitute all the claims pending in this application. An oral hearing was
conducted on January 9, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify AGC Automotive Americas Co. as the real party in
interest. Appeal Br. 4.
Appeal2016-001986
Application 12/944,444
CLAIMED SUBJECT MATTER
Appellants' invention "generally relates to a cable drive system and a
sliding window assembly for a vehicle." Spec. i-f 2. Claims 1, 21, and 30 are
the independent claims on appeal. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A sliding window assembly for a vehicle, said assembly
compnsmg:
a track adapted to be coupled to the vehicle;
a sliding panel coupled to said track and movable relative
to said track between an open position and a closed position;
a heating grid coupled to said sliding panel for defrosting
said sliding panel;
a cable coupled to said sliding panel for moving said
sliding panel between said open and closed positions; and
a conductive element electrically connected to said heating
grid and directly connected with said cable such that said
conductive element moves concurrently with said cable as said
cable moves said sliding panel between said open and closed
positions.
Appeal Br. 22, Claims App.
REFERENCES
The Examiner relies upon the following prior art references:
Purcell
Lahnala
Smith
Rutkowski
US 6,766,617 B2
US 2010/0122496 Al
US 2011/0030276 Al
US 2011/0147153 Al
2
July 27, 2004
May 20, 2010
Feb. 10,2011
June 23, 2011
Appeal2016-001986
Application 12/944,444
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1--42 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over claims 1-
44 of U.S. Patent Application No. 13/015,902.
II. Claims 1, 7-9, 13-16, 18, 21, 24, 28, and 30 stand rejected
under 35 U.S.C. § 102(e) as anticipated by, or alternatively under 35 U.S.C.
§ 103(a) as unpatentable over, Smith.
III. Claims 2, 10, 19, 20, 22, 25, 29, and 31 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Smith and Rutkowski.
IV. Claims 3, 11, 12, 23, 26, 27, and 32 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Smith, Rutkowski, and Purcell.
V. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith and Purcell.
VI. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Purcell, and Rutkowski.
VII. Claims 17 and 33--42 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Smith and Lahnala.
ANALYSIS
Rejection I
Appellant does not seek review of, and does not advance any
argument against, the provisional double patenting rejection. Appeal Br. 6.
In addition, since the filing of the Examiner's Answer, U.S. Patent
Application No. 13/015,902 ("the '902 application"), the basis of the
provisional rejection, was abandoned. We decline to reach this rejection
because the circumstances surrounding the '902 application have changed
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Application 12/944,444
since institution of the provisional double patenting rejection in the present
application. Panels have the flexibility to reach or not reach provisional
double-patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI
2010) (precedential).
Re} ection II
Anticipation
The Examiner finds that Smith discloses all the limitations of claim 1.
Final Act. 4. In particular, the Examiner finds that flexible cable 32 of
Smith is a conductive element electrically connected to heating grid 24 and
directly connected with cable 30. Id. According to the Examiner, Smith's
flexible cable 32 is directly connected to cable 30 because "cable holder 42
and cable track 14 are connected to each other" and "[t]he cable and
conductive element are supported by the connector so that they both move
together." Id. The Examiner makes substantially similar findings with
respect to independent claims 21 and 30. Id. at 7, 8.
Appellants argue that "the conductive element (32) of Smith is not
connected to the cable (30) that moves the sliding panel (20)." Appeal
Br. 14. We agree with Appellants. Smith discloses that cable 30, in
response to drive motor 26, imparts horizontal movement to slider window
panel 20 along rails 14a, 14b. Smith i-f 65. Smith also discloses that
electrical connection of the vehicle power source to the heater grid of
window panel 20 is achieved via flexible cable 32. Id. i-f 68. Smith does not
describe flexible cable 32 as being connected to drive cable 30, and Smith's
drawings (see Figures 2-6) do not show these two elements to be connected.
As shown in Figures 5 and 6 of Smith, flexible cable 32 flexes to allow for
movement of window panel 20 between its open and closed positions. Id.
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Appeal2016-001986
Application 12/944,444
i-f 71. In particular, flexible cable 32 curls over on itself as window panel 20
moves from the closed to open position. Id. at Figs. 5, 6. As such, flexible
cable 32 moves in a different manner than, and separately from, drive cable
30.
As for the Examiner's finding that cable 30 and flexible cable 32 are
directly connected via "cable holder 42 and cable track 14," Smith discloses
that wire sleeve 42 "receives and guides a portion of the flexible cable 32,
while the unguided portion is allowed to flex and curve as the movable
window panel 20 is moved towards its opened position." Id. i-f 71. Thus,
flexible cable 32 merely is guided though wire sleeve 42, and is not
connected to the sleeve. Similarly, drive cable 30 moves through rail 14a
and is not connected thereto. Therefore, even if rail 14a and wire sleeve 42
are connected as the Examiner finds, 2 this connection does not establish a
direct connection between drive cable 30 and flexible cable 32 because these
cables are not connected to either rail 14a or wire sleeve 42. This lack of
connection is illustrated in Figure 3A of Smith, which is reproduced below.
FIG,3A
2 We note that although Figure 3A shows wire sleeve 42 abutting rail 14a,
Smith discloses that wire sleeve 42 "may be adhered or bonded to the fixed
window panel 16." Smith i-f 71.
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Appeal2016-001986
Application 12/944,444
Figure 3A of Smith shows a sectional view of a lower portion of the rear
slider window assembly in which flexible cable 32 does not contact wire
sleeve 42 and cable 30 (not called-out in Figure 3A but depicted in cross-
section as a circle) does not contact rail 14a. Id. i-f 11.
We also disagree with the Examiner's interpretation of "directly
connected" to mean merely that "the conductive element must physically or
mechanically be connected to the cable in such a way as to cause the
conductive element to move with the cable." See Ans. 4. This interpretation
contradicts the Examiner's finding that "[t]he term 'directly' is defined as
'with nothing or no one in between."' Id. As Appellants correctly point out,
the Examiner's rationale supporting a direct connection between drive cable
30 and flexible cable 32 relies on intervening elements-namely, rail 14a
and wire sleeve 42. Reply Br. 4.
For the above reasons, we disagree that Smith discloses a conductive
element directly connected to a cable for moving a sliding panel.
Accordingly, we do not sustain the rejection of claims 1, 21, and 30, and
claims 7-9, 13-16, 18, 24, and 28 depending therefrom, as anticipated by
Smith.
Obviousness
Despite stating in the alternative that claims 1, 7-9, 13-16, 18, 21, 24,
28, and 30 are obvious under 35 U.S.C. § 103(a) over Smith, the Final
Office Action does not discuss how the claims are obvious over Smith alone.
Final Act. 4--8. In the Examiner's Answer, however, the Examiner
determines that "Smith teaches that it would have been obvious to a skilled
artisan that the cabling and conductive element [are] directly connected to
each other since the casings of the cable and conductive element directly
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Application 12/944,444
touch[] one another." Ans. 5. After referring to a typographical error
(which is not identified clearly), the Examiner concedes that "there is no
explicit statement of motivation provided for the 35 USC 102/103 rejection
of claim 1, 21 and 30," but deems this deficiency "a trivial matter since the
Appellant never recites any structural detail of how the conductive element
is directly connected to the cable." Id. at 4--5.
Regardless of any alleged lack of structural detail in the claims, an
absence of a reason to modify a reference is not a "trivial matter." It is well
settled that a conclusion of obviousness must be supported by some
articulated reasoning with rational underpinning. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). The Examiner's rationale quoted above does
not meet this standard. Indeed, the statement is not so much a rationale for
modifying the Smith device as it is a re-wording of the Examiner's position
that Smith's drive cable 30 and flexible cable 32 are directly connected
because rail 14a and wire sleeve 42 are in contact. To the extent the
Examiner is proposing to modify Smith such that drive cable 30 and flexible
cable 32 actually are directly connected, we note that such a connection
between Smith's drive and flexible cables would destroy their ability to
move in different manners. Accordingly, this modification would not have
been obvious to one of ordinary skill in the art.
For the above reasons, we do not sustain the rejection of claims 1, 21,
and 30, and claims 7-9, 13-16, 18, 24, and 28 depending therefrom, as
obvious over Smith.
Rejections III-VII
The Examiner's rejections of claims 2, 10, 19, 20, 22, 25, 29, and 31
as obvious over Smith and Rutkowski, claims 3, 11, 12, 23, 26, 27, and 32 as
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Application 12/944,444
obvious over Smith, Rutkowski, and Purcell, claims 4 and 5 as obvious over
Smith and Purcell, claim 6 as obvious over Smith, Purcell, and Rutkowski,
and claims 17 and 33--42 as obvious over Smith and Lahnala all rely on the
same erroneous findings and conclusions, noted above, regarding
independent claims 1, 21, and 30. None of the additionally cited references
cures these deficiencies. Accordingly, we do not sustain these rejections for
the same reasons stated above with respect to claims 1, 21, and 30.
DECISION
We reverse the decision of the Examiner rejecting claims 1--42 under
35 U.S.C. §§ 102(e) and 103(a). We do not reach the provisional
obviousness-type double patenting rejection maintained by the Examiner.
REVERSED
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