Ex Parte De Jonge et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10820424 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. DE JONGE, DENNIS M. HAWVER,
DAVID M. MITTEER, EDWARD J. BRATKOWSKI, ERIC W. BRYANT,
DANIEL J. FISHER, CRAIG A. WOLFFIS, and MARK A. MOSS
____________

Appeal 2009-005757
Application 10/820,424
Technology Center 3600
____________

Decided: April 27, 2010
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and STEVEN D. A.
McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005757
Application 10/820,424
2
STATEMENT OF THE CASE
Robert A. De Jonge et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 23-29 and
51-59, which are all of the claims on appeal. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER A NEW GROUND
OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b) (2009).
THE INVENTION
Appellants’ claimed invention is a shifter assembly for controlling the
transmission of a motor vehicle. Spec. 1, para [0003]. Claim 23,
reproduced below, is representative of the subject matter on appeal.
23. A shifter for controlling the transmission of a motor
vehicle, comprising:
a base;
a shift member movably mounted to the base;
a shift gate fixed to said shift member, said shift gate
having a plurality of transmission control positions; and
said shift member movable to input positions
corresponding to said transmission control positions; and:
a powered pawl fixed to the base for selectively engaging
said transmission control positions of said shift gate to restrict
movement of said shift member; and including:
a controller that actuates said powered pawl based at least
in part on at least one vehicle operating parameter in addition to
an input from a vehicle ignition, a position of the shift member,
and a position of a vehicle brake pedal.

Appeal 2009-005757
Application 10/820,424
3
THE EVIDENCE
The Examiner relies upon the following evidence:
Kito
Durieux
Kato
US 4,947,967
US 6,059,687
US 6,679,809 B2
Aug. 14, 1990
May 9, 2000
Jan. 20, 2004
Russell US 2004/0244524 A1 Dec. 9, 2004

THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 23, 26-29, 51-57, and 59 under 35 U.S.C. § 102(e)
as anticipated by Russell.
2. Rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Russell and Kato.
3. Rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable over
Russell and Durieux.
4. Rejection of claim 58 under 35 U.S.C. § 103(a) as unpatentable over
Russell and Kito.
Rejection of claims 23, 26-29, 51-57, and 59 under
35 U.S.C. § 102(b) as anticipated by Russell
ISSUE (Rejection 1)
The Examiner determined claims 23, 26-29, 51-57, and 59 are
anticipated by Russell based in part on the finding that Russell’s “other”
position of Relay 1 and 2 is a vehicle parameter other than the parameters of:
vehicle ignition, a position of the shift member, and a position of a vehicle
brake pedal. Ans. 3-5.
Appellants contend that Russell’s “other” parameter is not a parameter
other than the three parameters enumerated in independent claims 23 and 51,
because Russell’s “other” parameter relates to the position of the shift
member. App. Br. 12-13, 15; Reply Br. 2-4.
Appeal 2009-005757
Application 10/820,424
4
The issue before us is:
Is Russell’s “other” parameter a vehicle operating parameter other
than the position of the shift member as called for in claims 23 and 51?
FINDINGS OF FACT (Rejection 1)
We find that the following enumerated facts, as well as additional
facts enumerated elsewhere, are supported by at least a preponderance of the
evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Office).
1. Russell discloses a shifter mechanism for controlling
transmissions of motor vehicles having an electrically operated detent
assembly for holding the shifter lever in one of a plurality of gear
positions against movement to other gear positions. Russell 1, para.
[0004].
2. Russell discloses a control circuit 102 that permits movement of
a shifter lever assembly 14 based, in part, on input from an ignition
switch 120, a brake switch 128, and a transmission switch 108.
Russell 4, paras. [0036]-[0037]; fig. 8.
3. Russell discloses that transmission switch 108 provides a binary
output based on the two positions of shifter lever assembly 14: park
and “other” (a position other than the park position). Russell 4, para.
[0036]; fig. 8.
4. Russell discloses a control circuit 102 configured to permit the
following operations when ignition switch 120 is off. If shifter lever
assembly 14 is in the park position (also placing transmission switch
108 in the park position), shifter lever 14 cannot be moved. Russell 4,
para. [0037]; fig. 8. If shifter lever 14 is in other than the park
Appeal 2009-005757
Application 10/820,424
5
position (also placing transmission switch 108 in other than the park
position), shifter lever 14 can be moved. Id. Consequently, when
ignition switch 120 is off, shifter lever 14 cannot be moved out of the
park position, but can be moved from a position other than the park
position to the park position. Id.
5. Russell discloses that control circuit 102 is configured to permit
the following operations when ignition switch 120 is on. If shifter
lever assembly 14 is in other than the park position (also placing
transmission switch 108 in other than the park position), shifter lever
14 can be moved. Russell 4-5, para. [0038]; fig. 8. If shifter lever 14
is in the park position (also placing transmission switch 108 in the
park position), shifter lever assembly 14 can be moved only if brake
switch 128 is in the on position. Id. Consequently, when the ignition
is on, shifter lever 14 cannot be moved out of the park position unless
brake switch 128 is in the on position (brakes are applied). Further,
when the ignition is on, and shifter lever assembly 14 is in a position
other than park, the shifter lever assembly 14 can be moved by the
user’s activation of shifter lever switch 124. Id.
ANALYSIS (Rejection 1)
Independent claims 23 and 51 each include the limitation that the
controller actuates the powered pawl based on four vehicle operating
parameters: vehicle ignition, a position of the shift member, a position of a
vehicle brake pedal, and a fourth parameter other than the three enumerated
parameters.
Russell discloses a motor vehicle transmission shifter lever
mechanism for controlling movement of the shifter lever (Fact 1 ). The
controller of the shifter mechanism permits the operator to move the shift
Appeal 2009-005757
Application 10/820,424
6
lever based upon the vehicle operating parameters of: ignition, position of
the shift member, and brakes (Fact 2). Transmission switch 108 provides a
binary output to control circuit 102 based upon the position (park, or
“other”) of the shift member (Fact 3 ). Given this, the “other” parameter of
Russell is a vehicle parameter indicating the position of the shift member.
Because “other” is a vehicle parameter indicating the position of the
shift member, “other” is not a fourth vehicle operating parameter other than
the three enumerated parameters of vehicle ignition, a position of the shift
member, and a position of a vehicle brake pedal, as called for in independent
claims 23 and 51. The rejection of claims 26-29, 52-57, and 59 is also in
error by virtue of their dependence from independent claims 23 and 51.
Rejection of claim 24 under 35 U.S.C. § 103(a)
as unpatentable over Russell and Kato
ISSUES (Rejection 2)
The Examiner found that Kato teaches use of engine rpm as a
parameter for control of movement of a vehicle shift lever. Ans. 6. The
Examiner concluded that it would have been obvious to reach the subject
matter of claim 24 by modifying the shift lever assembly of Russell to add
engine rpm as a parameter for control of movement of the shifting lever, as
taught by Kato, in order to prevent careless operation of the shift knob and to
eliminate the possibility of jack-rabbit starts or hard braking. Ans. 6-7.
Appellants contend that Russell does not provide a reason for the
proposed modification. App. Br. 16. Appellants contend that modification
of Russell’s vehicle shifter assembly to use engine rpm as a factor for
control of the powered pawl would change the principle of operation of
Russell because Russell discloses only use of conventional Brake
Transmission Shifter Interlock (BTSI) parameters. Id. Appellants contend
Appeal 2009-005757
Application 10/820,424
7
that Kato discloses permitting an operator to move the shift member to an
unacceptable position and then moving the shift lever to an acceptable
position, contrary to operation of the powered pawl of claim 24, which
prevents movement of the shift member to an unacceptable position. Id.
The issues before us are:
Does the absence of an articulation of a reason in Russell for the
proposed modification demonstrate that the proposed combination is not
based upon a sufficient reason with a rational underpinning to explain why a
person of ordinary skill in the art would have modified Russell’s device to
reach the subject matter of claim 24?
Does the modification of Russell’s device to add engine rpm as a
factor for control of the powered pawl change the principle of operation of
Russell?
ADDITIONAL FINDINGS OF FACT (Rejection 2)
6. Kato discloses that in the prior art, a conventional steer-by-wire
gear shifter had the drawback that it did not account for the vehicle’s
running condition for control of gear shift operation so that it was
possible to change the position of the shift knob causing unfavorable
situations such as jack-rabbit start or hard braking. Kato, col. 1, ll. 11-
12, 47-63; fig 4. To overcome these drawbacks, Kato’s steer-by-wire
gear shifter includes a means for controlling an actuator based upon
the vehicle’s running condition that provides the shift knob with an
operating feeling that differs depending on the vehicle’s running
condition. Kato, col. 1, ll. 6-9; id. at col. 1, l. 66 – col. 2, l. 4.
7. Kato discloses control section 8 of the gear shifter receives: an
engine revolution speed signal e from engine controller 10, a
transmission signal d from transmission controller 7, and a detection
Appeal 2009-005757
Application 10/820,424
8
signal a representing the operational condition of the shift knob 4.
Kato, col. 1, ll. 16-17, 21-22; col. 3, ll. 6-12; fig. 1.
8. Kato discloses that engine control section 8 determines whether
or not shift knob 4 has been operated properly with regard to the
engine revolution speed signal e, transmission signal d, and detection
signal a. Kato, col. 3, ll. 45-48; fig. 2 (steps S-2 to S-4, S-7). If shift
knob 4 has not been operated properly, then control section 8 sends a
control signal which guides shift knob 4 from the improper position to
an acceptable position (step S-11), and then shift knob 4 is put into a
new position (step S-9). Kato, col. 3, l. 63 to col. 4, l. 4. After shift
knob 4 has been put into the new position, the control section 8 sends
the transmission controller 7 a gear shift signal c matched to the new
position of the shift knob 4 (step S-10), preventing jack-rabbit start or
engine idling. Kato, col. 3, ll. 57-62; col. 4, ll. 4-7; figs. 1, 2.
ANALYSIS (Rejection 2)
Claim 24 depends from independent claim 23, and adds the limitation
that the at least one vehicle parameter other than the enumerated parameters
comprises engine rpm.
As the Examiner correctly points out (Ans. 11), Appellants’
contention that Russell does not expressly provide a reason for the proposed
modification (App. Br. 16) does not demonstrate error in the rejection of
claim 24 because the rationale for the combination is provided by Kato.
We disagree with Appellants’ contention that modification of
Russell’s vehicle shifter assembly to use engine rpm as a factor for control
of the powered pawl would change the principle of operation of Russell.
App. Br. 16 (citing for support to In re Ratti, 270 F.2d 810 (CCPA 1959)).
Appeal 2009-005757
Application 10/820,424
9
In Ratti, the modification suggested by the Examiner changed the
basic principle of sealing from attaining sealing through a rigid, press-fit,
interface between the components, to attaining sealing by providing a
resilient interface between the components. 270 F.2d at 811-813 (“This
suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in [the primary reference]
as well as a change in the basic principles under which the [primary
reference] construction was designed to operate.” (emphasis added)). The
modification in Ratti fundamentally changed the technical basis of how a
seal performed its sealing function and how a sealed interface was attained.
In the case before us, Russell’s controller activates the actuator based
on the vehicle parameters of ignition, brake, and shift member position
(Fact 2). Kato discloses consideration of engine rpm as a vehicle parameter
for control of the actuator of a gear shifter (Facts 6-7). We fail to see, and
Appellants have failed to explain, how modification of Russell from
consideration of three vehicle parameters to consideration of four vehicle
parameters is a “change in the basic principles” of operation of Russell’s
device. Rather, this modification to Russell’s device is an improvement
specifically taught by Kato that a person of ordinary skill in the art would
recognize would improve Russell’s electronically-actuated shifter
mechanism in the same way as in Kato. KSR, 550 U.S. at 417.
Appellants’ contention that Kato discloses permitting an operator to
move the shift member to an unacceptable position and then moving the
shift lever to an acceptable position (App. Br. 16) is a mischaracterization of
the reference. Kato’s gear shifter does not change the transmission gear
until after the shift knob has been moved to the acceptable position (Fact 8).
When the operator moves the shift knob to a position that would cause an
Appeal 2009-005757
Application 10/820,424
10
unfavorable situation, Kato’s gear shifter moves the shift knob to a new
position, and sends the signal to the transmission to shift gears only after the
shift knob is in this new position (Facts 6-8). Thus, contrary to Appellants’
assertion, consideration of Kato’s disclosure as a whole demonstrates that
Kato’s device prevents the transmission from shifting into an unfavorable
situation.
Rejection of claim 25 under 35 U.S.C. § 103(a)
as unpatentable over Russell and Durieux
ISSUES (Rejection 3)
The Examiner found that Durieux discloses use of vehicle speed as a
factor for control of the vehicle transmission shift lever. Ans. 7. The
Examiner concluded that it would have been obvious to reach the subject
matter of claim 25 by modifying the shift lever assembly of Russell to add
vehicle speed as a parameter for control of movement of the shifting lever,
as taught by Durieux, in order to prevent movement of the shift lever into
park when the vehicle is moving. Id.
Appellants contend that the proposed modification would “require
modification of Russell ‘524 to include entirely new operating features that
are not disclosed in Russell ‘524.” App. Br. 17. Appellants contend that it
is improper to ignore the fact that Durieux’s actuator 2 and mechanism 7 are
not the same as a powered pawl that engages a plurality of transmission
control positions of a shift gate required by claim 25. Id.
The issues before us are:
Would a person of ordinary skill in the art have been prevented from
modifying the shift lever assembly of Russell to include consideration of
vehicle speed as a parameter for control of movement of the shifting lever,
Appeal 2009-005757
Application 10/820,424
11
as taught by Durieux, because such modification would add entirely new
operating features to Russell?
If the actuator 2 and mechanism 7 of Durieux are not the same as the
powered pawl that engages a plurality of transmission control positions of a
shift gate of claim 25, would this prevent a person of ordinary skill from
modifying the shift lever assembly of Russell to include consideration of
vehicle speed as a parameter for control of movement of the shifting lever,
as taught by Durieux?
ADDITIONAL FINDINGS OF FACT (Rejection 3)
9. Durieux discloses actuating logic that functions to lock the shift
lever in the parking position “P” (“shift-lock” function). Durieux, col.
1, ll. 8-11, 33-34.
10. Durieux discloses that the shift-lock function may be activated
by vehicle speed in excess of a specified amount, such as 3 kilometers
per hour. Durieux, col. 4, ll. 21-27.
ANALYSIS (Rejection 3)
Claim 25 depends from independent claim 23, and adds the limitation
that the at least one vehicle parameter other than the enumerated parameters
comprises vehicle speed.
We are unpersuaded by Appellants’ assertion (App. Br. 17) that the
rejection of claim 25 is in error because the proposed modification would
add entirely new operating features to Russell. The law of obviousness
recognizes that a person of ordinary skill may piece references together,
which could add a new operating feature to the modified reference. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“Common sense teaches,
however, that familiar items may have obvious uses beyond their primary
Appeal 2009-005757
Application 10/820,424
12
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
Assuming, arguendo, that the actuator 2 and mechanism 7 of Durieux
are not the same as the powered pawl that engages a plurality of
transmission control positions of a shift gate of claim 25, as Appellants
assert (App. Br. 17), Appellants have not explained how this dissimilarity
would prevent a person of ordinary skill in the art from modifying Russell’s
mechanism based on the teaching in Durieux as proposed. Further, to the
extent that Appellants’ argument can be viewed as a contention that
Durieux’s device cannot be bodily incorporated into the shift lever assembly
of Russell, such argument is not convincing. In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.... Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
(citations omitted)). More importantly, Appellants’ assertion does not seem
to be pertinent to the articulated rejection given that the proposed
modification does not use the actuator 2 and mechanism 7 of Durieux. See
Ans. 7. Rather, the proposed modification uses Durieux’s teaching to use
vehicle speed as a factor for control of a transmission shifting lever. Id. We
find that Durieux discloses such a teaching, namely, actuating logic that
functions to lock the shift lever in the parking position “P” (“shift-lock”
function) based on vehicle speed exceeding a pre-determined threshold
(Facts 9-10).
Given that Appellants have not asserted that the proposed
modification is beyond the skill of a person of ordinary skill in the art,
Durieux’s teaching is a technique a person of ordinary skill would recognize
Appeal 2009-005757
Application 10/820,424
13
could improve a similar device, such as Russell’s, in the same way, so that
use of the technique would have been obvious. KSR, 550 U.S. at 417 (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”).
Rejection of claim 58 under 35 U.S.C. § 103(a)
as unpatentable over Russell and Kito
Claim 58 depends indirectly from claim 51. For the reasons explained
in the analysis of claim 51 in the first rejection, supra, we cannot sustain the
rejection of claim 58 as entered by the Examiner.
NEW GROUND OF REJECTION
We enter the following new ground of rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Russell and either Kato or Durieux.1
Claims 24 and 25 each depend from independent claim 23. The
Examiner’s rejection of claims 24 and 25 under 35 U.S.C § 103(a)
constitutes an implied obviousness rejection of corresponding independent
claim 23. Because claims 24 and 25 include all the limitations recited in
claim 23, we conclude claim 23 must have been obvious based on our
conclusion of obviousness of claims 24 and 25. See Ormco v. Align Tech.,
498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to
have been obvious, the broader claims . . . must also have been obvious”).

1 No inference should be drawn from the failure to make a new ground of
rejection for other claims. See 37 C.F.R. § 41.50(b). See also Manual of
Patent Examining Procedure (MPEP), 8th ed., rev. July 2008, § 1213.02
(“Since the exercise of authority under 37 C.F.R. § 41.50(b) is discretionary,
no inference should be drawn from a failure to exercise that discretion”).
Appeal 2009-005757
Application 10/820,424
14
CONCLUSIONS
Russell’s “other” parameter is not a vehicle operating parameter other
than the position of the shift member as called for in claims 23 and 51.
The absence of an articulation of a reason for the modification in the
Russell reference does not demonstrate that the proposed combination of
Russell and Kato is based upon an insufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
modified Russell’s device.
The modification of Russell’s device to add engine rpm as a factor for
control of the powered pawl, as taught by Kato, does not change the
principle of operation of Russell.
Kato’s disclosure of permitting an operator to move the shift member
to an unacceptable position and then moving the shift lever to an acceptable
position would not have prevented a person of ordinary skill in the art from
combing Russell and Kato in the manner claimed.
A person of ordinary skill in the art would not have been prevented
from modifying the shift lever assembly of Russell to include consideration
of vehicle speed as a parameter for control of movement of the shifting
lever, as taught by Durieux, simply because such modification would add
entirely new operating features to Russell.
Even if the actuator 2 and mechanism 7 of Durieux are not the same
as the powered pawl that engages a plurality of transmission control
positions of a shift gate of claim 25, this fact would not prevent a person of
ordinary skill from modifying the shift lever assembly of Russell to include
consideration of vehicle speed as a parameter for control of movement of the
shifting lever, as taught by Durieux.
Appeal 2009-005757
Application 10/820,424
15
DECISION
We REVERSE the Examiner’s decision to reject claims 23, 26-29,
and 51-59.
We AFFIRM the Examiner’s decision to reject claim 24 and 25.
We enter a NEW GROUND OF REJECTION of claim 23 under
35 U.S.C. § 103(a) as being unpatentable over Russell and either Kato or
Durieux.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) (2009)
provides “Appellants may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2009). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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 proceeding
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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
Appeal 2009-005757
Application 10/820,424
16
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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) (2009).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

nhl

PRICE HENEVELD COOPER DEWITT & LITTON, LLP
695 KENMOOR, S.E.
P O BOX 2567
GRAND RAPIDS MI 49501