Ex Parte Dominguis Botella et al

Patent Trial and Appeal Board

Oct 25, 2013

11501945 (P.T.A.B. Oct. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MARC DOMINGUIS BOTELLA and
JAVIER MORENO COLOM
____________________

Appeal 2011-012717
Application 11/501,945
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/501,945

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
6 and 8-10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and designate the affirmed rejections as NEW
GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b).

The Invention
Appellants’ claimed invention “relates to a shift-by-wire gearshift
device comprising a selector lever operable by a user for remotely
controlling a motor vehicle transmission.” Spec., para. [0002]. Claims 1
and 10 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A shift-by-wire gearshift device comprising:
a selector lever operable by a user for remotely
controlling a motor vehicle transmission, wherein the selector
lever includes a main shaft and a follower finger, said follower
finger providing a selector lever tip of the selector lever and
being displaceable axially relative to said main shaft;
a biasing element to maintain said selector lever tip of
said selector lever in contact with a contoured surface for
providing the user with a shifting feeling, wherein said biasing
element is disposed to act on the follower finger such that the
selector lever tip of the follower finger is urged against the
contoured surface; and
a detector comprising
an emitting element and a receiving element,
wherein one of said emitting element and
receiving element is attached at or within said
selector lever tip of the selector lever such that the
position of the selector lever tip of the selector
lever on said contoured surface can be detected,
and
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wherein the other of said emitting element
and receiving element includes an electronic board
that is fitted below the contoured surface.

Evidence Relied Upon
Malcolm
Daetz
Arita
US 4,912,997
US 5,625,289
US 6,760,006 B2
Apr. 3, 1990
Apr. 29, 1997
Jul. 6, 2004

The Rejections
The following rejections are before us on appeal:
I. Claims 1-4, 6, and 8-10 under 35 U.S.C. § 103(a) as unpatentable over
Malcolm and Arita.
II. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Malcolm,
Arita, and Daetz.

OPINION
I. Obviousness over Malcolm and Arita
Claims 1-41
Appellants present three lines of argument, namely: Arita is
nonanalogous art, there is no reason to combine the references, and even if
combined, the proposed combination would not include a detector as
claimed. Br. 4-17. We address these arguments in turn.
- Nonanalogous Art
Appellants contend that Arita is nonanalogous art. Br. 8.

1 Appellants argue claims 1-4 as a group, and we select claim 1 as
representative. Br. 4-17; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
Regarding the field of endeavor inquiry, Appellants allege that
Malcolm and Arita are not in the same field of endeavor. Br. 8. The proper
inquiry is not whether the references are in the same field of endeavor.
Rather, the proper inquiry is whether Arita is in the claimed field of
endeavor. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). By
arguing that Malcolm and Arita are not in the same field of endeavor,
Appellants have not alleged, much less established, that Arita is not in the
claimed field of endeavor.
Regarding the reasonably pertinent inquiry, Appellants contend the
problem faced was the “issue of shifting feeling gearshift location
determination,” while in contrast, Arita is not directed to the provision of
manual feeling feedback. Br. 9. Appellants elaborate that Arita relates to
rotational motion and not translational movement of a selector lever relative
to a contoured surface. Id.
Appellants’ Specification states that shift-by-wire gearshift devices
were known, to include providing the user the feel of manual shifting.2
Spec., paras. [0002]-[0004]. The Specification goes on to state that in those
prior art shift-by-wire gearshift devices, feeling and detection features are
carried out separately, and were performed by separate sensors which do not

2 In this context, a “shifting feeling” feature in a shift-by-wire device
provides the user with the feel of a mechanical shifting device. See Spec.,
paras. [0002], [0004].
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form part of the selector lever, making the assembly more complex and
cumbersome. Spec., Background Art, para. [0008]. Therefore, the general
problem facing Appellants was to make shift-by-wire gearshift devices
having separate feeling and detection features less complex and
cumbersome. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“In
considering motivation in the obviousness analysis, the problem examined is
not the specific problem solved by the invention but the general problem that
confronted the inventor before the invention was made.”); cf. Br. 9.
The Examiner correctly found that Arita discloses an input device
used in a computer system that determines the position of a lever, and has a
reduced size.3 See Ans. 10-11; Arita, col. 2, ll. 14-15; col. 6, ll. 32-39;
col. 8, ll. 50-56; col. 12, ll. 7-10; fig. 11. Just as an inventor considering a
hinge and latch mechanism for portable computers would naturally look to
references employing other “housings, hinges, latches, springs, etc.,” so too,
a person of ordinary skill in the art considering combining feeling and
detection features for a shift-by-wire gearshifter having a lever would
consider a reference such as Arita having a detection feature for a lever of a
reduced size (less cumbersome). See In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379-80 (Fed. Cir. 2007).
- Reason to Combine
Appellants make numerous contentions in support of the argument
that there is no reason to combine the references as proposed by the
Examiner. Br. 11-17.

3 Arita’s “lever” is comprised of key-top main body 1Aa as secured to the
top of stick 124A. Artia, col. 7, ll. 23-37; figs. 11, 12A, 12B, 13A.
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Throughout this line of argument, Appellants state that the references
do not suggest the proposed combination, and that no reason for the
proposed modification has been given. See, e.g., Br. 11 (Arita does not
indicate its lever and holder may have other applications); 12 (there is “no
teaching, suggestion or motivation for or toward a ‘shift-by-wire gearshift
device’ in or from Arita”); 13 (“no ‘reason’ is given”); 14 (“[t]here is no
teaching, suggestion or motivation in or from the cited art for this
conclusion”); 14 (Malcolm does not disclose alternate dispositions of the
sensors).
These assertions each suffer from the same shortcoming. The
Examiner gave a reason for the proposed combination, namely to promote
space optimization, and such reasoning has factual support in the reference.
See Ans. 6; Arita, col. 2, ll. 13-15. Appellants fail to directly and
convincingly address the merits of this contention.
Appellants argue that Arita’s smooth movement of magnet 6A within
holder 7 teaches away from the claimed shifting sensation. Br. 11.
However, Arita is silent regarding providing a feedback sensation to the user
such as mechanical shift feeling. We fail to see, and Appellants fail to
cogently explain, how such silence teaches away from the claimed subject
matter. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”);
see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, … would be led in a direction divergent from the path that was
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taken by the applicant.” (quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192
F.3d 1353, 1360 (Fed. Cir. 1999))).
Appellants argue that the proposed combination is not the mere
substitution of otherwise known interchangeable elements. Br. 14. This
argument is unpersuasive because the Examiner did not use that line of
reasoning to support the proposed combination. Rather, the Examiner
reasoned that the proposed combination would promote space optimization.
Ans. 6.
Similarly, Appellants argue that because Arita’s device is not a similar
or analogous device to Malcolm’s device there is no reasonable expectation
of success in combining the two references as proposed. Br. 14-16. The
premise of this argument is that only similar or analogous devices have a
reasonable expectation of success in being combined. We know of no such
requirement. There are numerous other rationales that may support a
conclusion of obviousness, such as “obvious to try,” or a teaching,
suggestion or motivation in the prior art. See, e.g., Manual of Patent
Examining Procedure (MPEP) § 2141(III) (8th Ed., Rev. 9, Aug. 2012).
Additionally, Appellants’ characterization of the references as
dissimilar devices is misleading in that it is incomplete. As the Examiner
correctly points out, both Malcolm’s device and Arita’s device utilize a lever
and detecting means to produce an output signal reflecting the lever’s
position. Ans. 10; Malcolm, col. 9, ll. 6-9; Arita, Abstract. Further,
Appellants have not argued nor presented evidence that the proposed
combination is beyond the level of skill in the art.
Appellants make two additional related contentions. First, Appellants
state that Arita’s computer joystick does not have anything in common with
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the claimed subject matter which is directed to providing a shifting feeling.
Br. 13. Second, Appellants contend that Arita’s pointing device is intended
to indicate position in a wholly two dimensional plane, and there is no
indication in Arita that the pointing device could be used in the divergent
environment of automotive gear shifting. Br. 12-13. These contentions are
unconvincing mischaracterizations. Beyond providing a shifting feeling, the
claimed subject matter also detects the position of the selector tip of a lever,
and as explained supra, Arita’s device similarly detects the position of a
lever. See Br. 23, Claims App’x, Claim 1.
As explained supra, the Examiner provided a reasonable rationale for
the proposed combination. Appellants do not challenge the merits of that
contention nor otherwise cogently explain why that reasoning is in error.
- Detector
Appellants make numerous contentions in support of the argument
that “any combination of Malcolm and Arita fails to disclose a shift-by-wire
follower finger tip movable, with shifting feeling/translationally in relation
to a contoured surface providing a sensor element in/on the shift-by-wire
follower finger and an appropriate second sensor element below the
contoured surface.” Br. 10. We assess these contentions.
Appellants contend that it is not clear from the rejection if Arita’s
detector (printed-circuit board 10A) would move with Malcolm’s contoured
surface 88 or would be stationary with Malcolm’s frame. Br. 10, 12. To the
contrary, the rejection is clear. The Examiner proposed to include an
emitting element such as Arita’s disk-shaped magnet 6A attached at or
within Malcolm’s selector tip, and to add a receiving element such as Arita’s
circuit board 10A below Malcolm’s contoured surface (longitudinally
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extending single rocking ball track 88). Ans. 4-6, 10-11; see also Office
Action dated September 15, 2010, at 3-4. The rejection does not state that
circuit board 10A moves with Malcolm’s contoured surface; rather, as used
in Arita, the circuit board 10A is stationary with respect to the lever. See
Ans. 6.
Appellants contend that Arita does not provide a shifting feeling or a
contoured surface over which the selector tip may be guided to provide such
sensation, and that Arita’s spring does not provide compression to keep
holder 7A in appropriate position within the seat 8A. Br. 10-12.
Additionally, Appellants contend that Arita moves in a solely rotational
manner within the seat and not along a contoured surface for providing the
user with a shifting feeling as called for in claim 1. Br. 10-11.
As the Examiner correctly points out, the rejection relies upon
Malcolm for the shifting feeling and contoured surface. Ans. 9, 4-6.
Further, because Arita’s disk-shaped magnet 6A is incorporated into
Malcolm’s selector tip, Arita’s spring and motion are not incorporated into
the proposed combination. See Ans. 4-6. Because the rejection relies upon
a combination of the references for the limitation at issue, Appellants’
contentions addressing only one of the references (Arita) are unpersuasive.
See Ans. 9-10.
Appellants have not apprised us of error in the rejection of claim 1.
Consequently, we sustain the rejection of claims 1-4. Because our
determination with regard to the analogous art argument differs from that of
the Examiner we designate our affirmance a NEW GROUND OF
REJECTION so that Appellants may have a fair opportunity to respond to
the rejection. Cf. Ans. 8-9.
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Claim 6
Claim 1 calls for a biasing element to maintain the selector lever tip in
contact with a contoured surface for providing the user with a shifting
feeling. Claim 6 depends from claim 1, and further limits the contoured
surface to a 3D-relief surface. Br. 24, Claims App’x, Claim 6. The
Specification states that the user is provided with a shifting feeling by
selector lever tip 2a passing over contoured surface 8, a 3D-relief surface.
Spec., para. [0021]; figs. 3, 5. Thus, the contoured surface of claim 6 is a
3D-relief for selector lever tip 2a to pass over.
The Examiner found that Malcolm’s longitudinally extending single
rocking ball track 88 includes a length, width, and longitudinally provided
varying height, and therefore corresponds to a 3D-relief surface as claimed.
Ans. 7, 11.
Malcolm’s ball follower 34 (the selector lever tip) is adapted for
longitudinal4 reciprocal travel in a captured manner in the single ball track
88 (contoured surface) as shift lever 22 moves longitudinally about pivot
axis 68. Malcolm, col. 5, ll. 43-46; fig. 2. The cam surface of track 88
differs in height along its longitudinal axis. Malcolm, col. 7, ll. 3-6; fig. 11.
Ball follower 34 remains in track 88 during transverse5 movement.
Malcolm, col. 7, ll. 48-54; figs. 2, 11.
In light of this, Malcolm’s ball follower 34 (the selector lever tip)
moves longitudinally and up and down (vertically) with respect to the cam
surface of track 88 (contoured surface), but does not move transversely. We
are mindful that track 88 has a width, and in that sense, has a third

4 Also referred to as fore and aft or north-south travel.
5 Also referred to as east-west travel.
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dimension. However, with regard to the travel of the selector lever tip (ball
follower 34), track 88 has two dimensions (longitudinal and vertical). Thus,
the cam surface of Malcolm’s track 88 is a 2D surface, and not a 3D-relief
surface as claimed. Br. 17-19.
Accordingly, we do not sustain the rejection of claim 6.
Claim 8
Claim 8 depends from claim 1 and recites, “wherein said biasing
element comprises a compression spring.” Br. 24, Claims App’x, Claim 8.
Appellants argue that the proposed combination does not include a
spring as claimed. Br. 19-20. This argument is not persuasive because the
Examiner found that Malcolm discloses a compression spring as claimed
(helical coil follower spring 50). Ans. 7; Malcolm, col. 4, ll. 56; figs. 3, 8.
Appellants also argue that there is no further teaching, suggestion, or
motivation for combining Malcolm and Arita. Br. 20. The Examiner did
not make an additional modification of Malcolm to include spring 50; rather,
it was part of the combination utilized for the rejection of claim 1 (see Ans.
5) and the Examiner simply reemphasized that finding with regard to claim 8
(Ans. 7).
Accordingly, we sustain the rejection of claim 8.
Claim 9
Claim 9 depends from claim 8 and recites, “wherein the lower end of
the selector lever main shaft may be inserted into the follower finger, said
compression spring being arranged outside and around the selector lever
main shaft urging the follower finger against the contoured surface.” Br. 24,
Claims App’x, Claim 9.
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The Examiner found that Malcolm’s operating lever assembly 20
corresponds to a selector lever main shaft as claimed. Ans. 5. Malcolm’s
spring 50 is captured in lower hollow tube 38 that is positioned within end
fitting 40 (Malcolm, col. 4, ll. 35-42; fig. 8), and is not arranged outside and
around the selector lever main shaft (operating lever assembly 20).
Malcolm, figs. 3, 8; see also Br. 20.
Consequently, we do not sustain the rejection of claim 9.
Claim 10
Appellants repeat the arguments used against the rejection of
independent claim 1 against the rejection of independent method claim 10,
and Appellants do not identify any distinction between the subject matter of
claims 1 and 10. Br. 20-21. Our analysis of the rejection of claim 1 applies
equally well here, and we sustain the rejection of claim 10.

II. Obviousness over Malcolm, Arita, and Daetz
Claim 5 depends indirectly from claim 1. Appellants repeat the
arguments used against the rejection of claim 1 and add that Daetz does not
cure the deficiencies of the Malcolm and Arita combination. Br. 21. As
there are no deficiencies for Daetz to cure, we sustain the rejection of claim
5.

DECISION
We AFFIRM the Examiner’s decision to reject claim 1-4, 8, and 10 as
unpatentable over Malcolm and Arita, we AFFIRM the Examiner’s decision
to reject claim 5 as unpatentable over Malcolm, Arita, and Daetz, and we
designate each as a NEW GROUND OF REJECTION.
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We REVERSE the Examiner’s decision to reject claims 6 and 9 as
unpatentable over Malcolm and Arita.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] 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 rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 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,
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.
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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 Patent Trial and Appeal Board 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

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

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