Ex Parte Giefer et al

Patent Trial and Appeal Board

Apr 18, 2013

10595502 (P.T.A.B. Apr. 18, 2013)

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.
10/595,502 04/24/2006 Andreas Giefer 72187 1616
23872 7590 04/18/2013
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
JOHNSON, PHILLIP A
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
04/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS GIEFER and JORG MEYER
____________

Appeal 2011-001046
Application 10/595,502
Technology Center 3600
____________

Before EDWARD A. BROWN, BRADFORD E. KILE and
RICHARD E. RICE, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001046
Application 10/595,502

2

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §134 from a final rejection of
claims 1-15 and 17-21. App. Br. 1. Claim 16 has been canceled. Id. We
have jurisdiction under 35 U.S.C. § 6.
Appellants’1 (Andreas Giefer and Jorg Meyer) invention is directed to
“a shifting device for transmitting shift commands to a motor vehicle
transmission.” Spec. 1, para. [0002], ll. 8-9.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A shifting device for transmitting shift
commands to a motor vehicle transmission, the
shifting device comprising:

a housing support structure;

a selector lever for transmitting shift commands to
the motor vehicle transmission, said selector lever
having an upper portion;

a hand knob forming a gripping surface for
engagement by a hand of a driver of the motor
vehicle;

a connection cable comprising one or more lines
for transmitting electrical and/or optical signals;

a switch; and

an adapter mounted on said upper portion of said
selector lever, said adapter having said switch
integrated therewith, said adapter having an outer
surface, said outer surface defining a recess,

1 Appellants identify the real party in interest as ZF Friedrichshafen AG.
App. Br. 1.
Appeal 2011-001046
Application 10/595,502

3
wherein at least a portion of said one or more lines
extends within said recess, said adapter defining a
connection between said selector lever and said
hand knob, the shifting device being provided for
installation in a motor vehicle, wherein a shifting
gate is pushed over said selector lever, said adapter
being located at a position above the shift gate,
said hand knob being connected to said upper
portion of said selector lever via said adapter.

App. Br., Clms. App’x.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Kim US 4,558,609 Dec. 17, 1985
Nedachi US 5,588,329 Dec. 31, 1996
Murakami US 5,706,701 Jan. 13, 1998
Tucker US 7,032,609 B2 Apr. 25, 2006

Appellants request review of the following rejections advanced on
Appeal by the Examiner:
Claims 1-8 and 11-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Murakami and Kim – App. Br. 1-2.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murakami and Kim and further in view of Tucker – App.
Br. 2.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murakami and Kim and further in view of Nedachi – App.
Br. 2.
Claims 15 and 17-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murakami and Kim – App. Br. 2.
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Appeal 2011-001046
Application 10/595,502

5
positions. A selector lever 4 and the electrical
lines 6 extend from this housing. An adapter 7 that
accommodates the electrical lines 6 at the interface
10 is preassembled on the selector lever 4. The
adaptor 7 consists of a cylindrical housing 8 that
has the switch display part 5 in the upper part.
Furthermore, a recess 8a, in which the electrical
lines are laid, is incorporated, like a type of
groove, in the housing 8 of the adapter 7.

Spec. 9-10, para. [0034].

Independent claims 1 and 15 call for an adaptor located at a position
above a shift gate. Independent claim 21 similarly calls for a shift gate
located at a position below an adaptor.
The Examiner finds that the Murakami disclosure teaches in the
context of an automotive shift device a housing structure 25, a selector lever
24, a hand knob 1, a connection cable 6 comprising one or more lines, a
switch 3 and an adapter 9 mounted on an upper portion of the selector lever
24. Ans. 3. The Examiner further finds that “at least a portion of said one or
more lines extends within said recess 9d; said adapter 9 defining a
connection between said selector lever 24 and said hand knob 1 (Fig. 5); and
a shifting gate 26.” Id.
The Examiner also finds, however, that “Murakami does not expressly
disclose said adaptor having said switch integrated therewith.” Ans. 4. With
respect to this feature the Examiner relies on the Kim (electronic game
joystick) patent for a disclosure of an adaptor having a switch integrated
therewith. Id. The Examiner additionally finds that “Murakami as modified
by Kim does not expressly disclose said adapter being located at a position
above the shift gate.” Id. With respect to this deficiency in both Murakami
Appeal 2011-001046
Application 10/595,502

6
and Kim, the Examiner determines that locating the adapter at a position
above the shift gate would be “an obvious matter of design choice.” Id. In
this regard, the Examiner reasons that
the applicant is silent to the criticality [of] the
"adaptor being located at a position above the shift
gate" as claimed. It appears that the adaptor of
Murakami as modified by Kim would not
encounter any unexpected results with a portion of
the adaptor being positioned below or completely
above the shift gate. The advantageous affect [sic]
of the combination facilitates the preassembly of
the switch to the selector lever prior to the
assembly of the shift gate. Therefore, all electrical
connections required are made without the
hindrance of a shift gate. As such, the adapter
according to the combination of Murakami and
Kim would appear to work equally well at a
position above or partially below the shift gate,
since it merely serves to provide cable routing,
positioning and retention assurance.
Id. at 13.
Appellants assert that “Murakami fails to teach and fails to suggest the
combination of a switch adapter located at a position above a shift gate
wherein the outer surface of the switch adapter defines a recess which
receives at least a portion of a cable as claimed.” App. Br. 14. Appellants
further assert that there is no basis for application of design choice with
respect to the recitation of the adapter being positioned above the shift gate.
Id. at 15. In this regard, Appellants argue that “[c]ompared with Murakami,
the switch adapter is located at a spaced location from the shift gate such
that the switch adapter is located at a position above the shift gate. This
provides particular connection advantages such that the switch adapter can
Appeal 2011-001046
Application 10/595,502

7
be quickly and easily connected to the housing structure.” Id.; see also
Reply Br. 2-3. Appellants additionally argue:
The switch adapter and the portion of the cable
extending in the recess are located at a position
above the shift gate. This advantageously allows
the switch adapter to be quickly and easily
connected to the housing structure without any
switch connections having to be inserted. This
saves significantly on manufacturing costs since
less time and labor is needed to connect the switch
adapter to the housing structure.
App. Br. 13.
Appellants point out that Kim discloses a pivot lever 41 with an
actuator button 53 that is connected to a rod 50 that actuates a leaf switch 52,
which is located “within a two-part housing [11] . . . similar to a shift gate,
as clearly shown in Figure 2.” Id. at 17. Appellants assert that Kim does not
“direct a person of ordinary skill in the art toward a switch adapter that is
located above a shift gate since Kim clearly discloses a leaf switch 52 that is
provided within a joystick housing 11.” Reply Br. 3-4.
A “design choice” rationale is appropriate where the Examiner
proposes substituting one prior art element or property for another that
achieves the same result. Thus, for example, in In re Kuhle, the court
affirmed a rejection of a dependent claim where the limitation added by the
dependent claim “solve[d] no stated problem” and “present[ed] no novel or
unexpected result.” 526 F.2d 553, 555 (CCPA 1975). However, when a
claimed structure performs differently from the prior art a “design choice”
rationale is inappropriate. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
(“The Board held that Gal had simply made an obvious design choice.
Appeal 2011-001046
Application 10/595,502

8
However, the different structures of Gal and Matsumura achieve different
purposes.”).
Here, Appellants state in their briefs that positioning the adapter
above the shift gate advantageously allows the adapter to be quickly and
easily connected to the housing structure without any switch connections
having to be inserted. App. Br. 13. The Specification supports Appellants’
argument. See Spec. 4, para. [0010], ll. 13-15. Therefore, Appellants have
provided a technical reason why locating the adapter at a position above the
switch gate provides a nonobvious result and achieves a different purpose,
than the adapter described or depicted by Murakami and Kim. See Gal,
supra, at 719. The Examiner’s finding that the combination of Murakami
and Kim would facilitate preassembly of the switch to the selector lever
prior to the assembly of the shift gate, so that all electrical connections
required could be made without the hindrance of a shift gate (Ans. 13), lacks
adequate support in the record before us and appears to be speculative.2
Accordingly, we do not sustain the rejections of claims 1, 15 and 21
under 35 U.S.C. § 103(a) as being unpatentable over Murakami and Kim.
Claims 2-8, 11-14, and 17-20 directly or ultimately depend from
either independent claim 1 or 15 discussed above. Accordingly those
dependent claims are also not obvious in view of the Murakami and Kim
patent disclosures. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)

2 See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (The examiner has
the initial duty of supplying the requisite factual basis for the rejection and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis).
Appeal 2011-001046
Application 10/595,502

9
(“Dependent claims are nonobvious under section 103 if the independent
claims from which they depend are nonobvious.”)

Claims 9 and 10
Claims 9 and 10 depend from claim 1. For claim 9, the Examiner
adds to Murakami and Kim the disclosure of the Tucker patent and as to
claim 10 adds the disclosure of Nedachi. Neither the Tucker patent nor the
Nedachi patent cures the deficiencies of the Murakami and Kim disclosures
with respect to claim 1, and accordingly claims 9 and 10 are not obvious for
the reasons stated above. See In re Fine, supra.
ORDER
The Examiner’s rejections of claims 1-15 and 17-21 are reversed.

REVERSED

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