Ex Parte Bentivoglio et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10607923 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HELMUT BENTIVOGLIO and VOLKER ZIPF
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Appeal 2008-3708
Application 10/607,923
Technology Center 2600
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Decided: January 22, 2009
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Before MAHSHID D. SAADAT, MARC S. HOFF,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 11-22. (App. Br. 5).1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants invented, according to their disclosure, an automatic
sensor switch on an automotive interior mirror module. The sensor switch
initiates a touchless switching action based on the approach of a nonmetallic
switching object (i.e., a hand). (Spec., Abstract; ¶ 0006).
Claim 11, illustrative of the invention, follows:
11. A switch arrangement for an automotive interior mirror module
comprising:
a mirror housing of an automotive interior mirror module;
at least one sensor disposed in said mirror housing; and
an evaluation electronics unit disposed in said mirror housing and
operably associated with said at least one sensor, wherein said evaluation
electronics unit initiates at least one switching process based on the approach
of a non metallic object toward said at least one sensor.
The Examiner relies on the following prior art references to show
unpatentability:
Desmond US 5,820,245 Oct. 13, 1998
Schulz US 5,880,538 Mar. 9, 1999

1 The Examiner’s Answer (mailed October 31, 2006) (“Ans.”), and
Appellants’ Brief (filed October 10, 2006) (“App. Br.”) and Reply Brief
(filed October 20, 2006) (“Reply Br.”), detail the respective positions of the
parties.
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Application 10/607,923

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The Examiner rejected claims 11-22 under 35 U.S.C. § 103(a) based
upon the teachings of Desmond and Schulz.

ISSUES
Appellants and the Examiner raise the following issues:
1) Did Appellants demonstrate that the Examiner erred in finding that
it would have been obvious to replace Desmond’s mechanical switch with
Schulz’s capacitive switch, thereby constituting an evaluation electronics
unit that initiates a switching process based upon the approach of a non-
metallic object, as set forth in claim 11?
2) Did Appellants demonstrate that the Examiner erred in finding that
Schulz teaches the turn-on and turn-off signals recited in claim 12?
3). Did Appellants demonstrate that the Examiner erred in finding that
Schulz’s sensor includes the sensitivity adjustment recited in claim 20?
4) Did Appellants demonstrate that the Examiner erred in finding that
Desmond and Schulz collectively teach a sensor located in the lower corner
region of a mirror housing facing the driver, as set forth in claim 22?

FINDINGS OF FACT (FF)
1. Schulz discloses a proximity switch “which may be used as an
actuating device for a variety of control applications, such as windshield
wipers and door locks.” (Schulz, Abstract).
2. Schulz states; “One of ordinary skill in the art, however, should
appreciate that the invention is not limited to this application.” (Schulz, col.
2, ll. 51-53).
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3. Schulz states “Present-day miniaturization of electronic circuits
also makes it possible to provide the capacitive proximity switch entirely,
i.e., optionally except for the operating electrode, within an object.”
(Schulz, col. 1, ll. 49-52).
4. Schulz discloses
As seen by the foregoing disclosure, the capacitive proximity
switch circuit provides an effective switch for universal control
systems. When used in a locking control system, the capacitive
proximity switch circuit is activated, thereby locking or
unlocking a door, when a user’s hand approaches the operation
electrode of the circuit. One important feature of the invention
is that the switching state of the circuit is unchanged when the
user removes her hand from the vicinity of the operating
electrode.

(Col. 4, ll. 50-58) (emphasis added).
5. Schulz’s capacitive switch circuit comprises an RC circuit that
measures the presence of a person’s capacitive effect on the switch.
Different resistor values, including those in resistor divider and feedback
circuits, and capacitive values, effect not only the lower and upper cutoff
frequencies of the circuit frequency response, but also the compared voltage
potentials at the inputs of a differential amplifier and operational amplifier.
(Schulz; Fig. 1; see generally col. 3, l. 39 to col. 4, l. 39).
6. Desmond discloses a mirror housing having light bulbs therein
controlled by mechanical switches 27 and 29. The switches 27 and 29 are
located on lower corner regions of the mirror case 11, with switch 27 facing
the driver. (Figs. 9, 10, col. 6, ll. 45-54).
7. Several different corner regions are depicted in the mirror case 11.
(See Fig. 7). Recesses 48, 49, and 50, having corners, accommodate
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switches 27, 28, and 29. The switches are also adjacent the lower corner
regions of recesses 46, 47. A corner of recess 46, and hence, a corner of the
mirror case 11, is immediately adjacent the recess 48 for switch 27.
(Desmond, Figs. 4, 7, 10; col. 4, ll. 53-58).
8. Appellants state that a sensitivity setting can be “influenced by
means such as a manually operated potentiometer or adjusting wheel, a
sensor that is sensitive to ambient light level, or a scanner or sensor that
detects physical size and/or seat position.” (Spec. ¶ 0011).
9. Appellants disclose a capacitive proximity sensor having a
presettable threshold value, and a frequency determining capacitor in an RC
signal generator. (Spec. ¶ 0015).
10. Appellants’ switch interprets a first approach of a user’s hand
towards the switch as a turn-on command and a second similar approach as a
turn-off command. (Spec. ¶¶ 0015, 0016).

PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
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“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1740 (quoting Sakraida v. Ag. Pro.,
Inc., 96 S. Ct. 1532 (1976)). In “. . . difficult . . . cases . . . the claimed
subject matter may involve more than the . . . mere application of a known
technique to a piece of prior art ready for the improvement.” Id.
When the claimed and prior art products are identical or substantially
identical, the burden shifts to applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of the claimed
product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re King, 801
F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludke, 441 F.2d 660, 664 (CCPA
1971); In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971).
ANALYSIS
Issue 1
Appellants’ arguments reduce to the assertion that the combination
does not teach replacing a mechanical switch with an automatic switch
(App. Br. 8-13). Such arguments ignore the principle enunciated in
Leapfrog, that “[a]pplying modern electronics to older mechanical devices
has been commonplace in recent years.” Leapfrog, 485 F.3d at 1161.
Moreover, ample motivation exists for such a simple replacement, contrary
to Appellants’ related arguments.
For example, Schulz explicitly teaches that one of skilled artisans
would have recognized the advantages of placing an effective miniaturized
automatic switch entirely within an object (i.e., a housing) for universal
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control of electronics using a switch (FF 1-4). Desmond discloses such a
housing, containing such a light control circuit and having a mechanical
switch (FF 6). Therefore, Schulz’s and Desmond’s teachings directly
contradict the unsupported and conclusory Zipf affidavit and Appellants’
related assertions. (See App. Br. 11-12; Evidence Appendix).
The Zipf affidavit fails to acknowledge or address all of Schulz’s
teachings, including those specifically relied upon by the Examiner (see,
e.g., Ans. 4, citing Schulz col. 4, ll. 54-59; see FF 4, quoting the column 4
passage; see also Ans. 7, citing Schulz col. 1, ll. 6-10, teaching “a variety of
universal control applications”). In any event, the Zipf affidavit does not
outweigh the Examiner’s factual findings with respect to Schulz and
Desmond. As the Examiner found (Ans. 9), skill artisans would have
recognized that such an automatic switch alleviates the necessity to actually
touch a mechanical switch, which would have been advantageous while
driving, especially at night. Such common sense teachings need not be
explicit in the references, contrary to Appellants’ arguments (Reply Br. 6, 7).
See KSR, 127 S. Ct. at 1741-42 (cautioning against “overemphasis on . . . the
explicit content of issued patents” and stating that “[c]ommon sense teaches
. . . that familiar items may have obvious uses beyond their primary purposes
. . . .”).
In other words, replacing Desmond’s light switch with Schulz’s
modern, automatic, universal control switch, would have involved no “more
than . . . the mere application of a known technique to a piece of prior art
ready for the improvement.” KSR, 127 S. Ct. at 1740. Accordingly,
Appellants have not demonstrated the Examiner erred with respect to claim
1.
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Issue 2
Appellants dispute (App. Br. 13-14) the Examiner’s finding (Ans. 9-
10) that Schulz’s user, making first and second approaches towards the
capacitive proximity switch, and thereby respectively turning the switch on
and off (FF 4), meets claim 12. Appellants assert (Reply Br. 9, 12) that
Schulz’s user would have to move her hand away to constitute the second
approach. The assertion is not commensurate in scope with the claim. The
claim merely requires a second approach. Moving toward the switch a
second time constitutes a second approach (FF 4). Moreover, this
interpretation is consistent with Appellants’ disclosure (FF 10).
Accordingly, Appellants have not demonstrated the Examiner erred with
respect to claim 12.
Issue 3
Claim 20 recites: “The switching device of claim 11 wherein said at
least one sensor is provided with a sensitivity adjustment that is used to set
the length of the desired approach distance.” Appellants dispute (Reply Br.
13) the Examiner’s finding (Ans. 10-11) that Schulz teaches that the circuit
can be adjusted by changing the resistor values to meet the adjustment
element recited in claim 20. However, Appellants disclose similarly
changing a resistance value (i.e., a potentiometer), and also disclose a
capacitive switch. (FF 8, 9).
In this situation, under King, Ludke, Best, and Swinehart, the burden
has shifted to Appellants to explain why a similar change of resistance in
Schulz’s similar RC capacitive switch circuit (FF 5) would not produce the
claimed sensitivity adjustment. Appellants have failed to meet this burden.
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Moreover, Schulz’s circuit senses changes in capacitance. (FF 4, 5). It
follows that changing one of the capacitors necessarily changes the
sensitivity. Alternatively, changing a resistor in one of the resistor divider
circuits changes the voltage input at one of the comparator amplifiers.
Finally, contrary to Appellants’ arguments (Reply Br. 13), Schulz
need not explicitly disclose a sensitivity adjustment. Claim 20 is a product
claim and does not require an adjustment, only the ability for an adjustment,
initially or otherwise. In any case, Schulz’s circuit implicitly was adjusted
when it was made, and/or has the ability to be further adjusted.
Issue 4
Claim 22 requires “at least one sensor . . . located in the lower corner
region of said housing facing a driver.” As the Examiner found (Ans. 11-
12), Desmond’s mechanical switches 27 and 29 are located in a lower corner
region of Desmond’s mirror housing, with switch 27 facing a driver. (FF 6,
7). Appellants argue that Desmond’s switches “are in the central bottom
portion of the mirror case 11.” (Reply Br. 14). Such an argument does not
refute the Examiner’s finding that the lower corner regions extend towards
the center. Appellants do not define where such a corner “region” ends.
Further, Desmond discloses different corner regions in the housing. One
such corner region; i.e., recess 46, constitutes a corner region of the housing
11, and lays immediately adjacent the switch 27. (FF 7).
Appellants’ conclusion (Reply Br. 14), asserting no motivation to
provide Schulz’s sensor in place of Desmond’s mechanical switch, was
addressed above with respect to claim 11. Accordingly, Appellants have not
demonstrated error in the Examiner’s findings (Ans. 11-12) with respect to
claim 22.
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Application 10/607,923

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CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
it would have been obvious to replace Desmond’s mechanical switch with
Schulz’s capacitive switch, thereby constituting an evaluation electronics
unit that initiates a switching process based upon the approach of a non-
metallic object, as set forth in claim 11. Appellants did not demonstrate that
the Examiner erred in finding that Schulz teaches the turn-on and turn-off
signals of claim 12. Appellants did not demonstrate that the Examiner erred
in finding that Schulz’s sensor includes the sensitivity adjustment of claim
20. Finally, Appellants did not demonstrate that the Examiner erred in
finding that Desmond and Schulz collectively teach a sensor located in the
lower corner region of a mirror housing facing the driver, as set forth in
claim 22. Accordingly, we sustain the Examiner’s rejection of claims 11,
12, 20 and 22, and the remaining claims on appeal which are not separately
argued.

DECISION
We affirm the Examiner’s decision rejecting claims 11-22.
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)(2006).

AFFIRMED
KIS

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P. O. Box 70098
Rochester Hills, MI 48307