Ex Parte Kaye et al

Patent Trial and Appeal Board

Aug 29, 2018

14006399 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/006,399 11/26/2013
27572 7590 09/06/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Paul Kaye
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.
3711-000207 /US/NP 7128
EXAMINER
REPHANN, JUSTIN B
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
troymailroom@hdp.com
sto-ptomail@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL KA YE, JOHN NERDEN,
JAMES GODBOLD, and RICHARD CARDIN
Appeal2017-000126
Application 14/006,399
Technology Center 3600
Before STEVEN D.A. McCARTHY, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000126
Application 14/006,399
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants Paul Kaye et al. 1 appeal
from the Examiner's decision, as set forth in the Final Office Action dated
October 29, 2015 ("Final Act."), rejecting claims 25-28, 30, 31, and 33-36. 2
An oral hearing was held on August 23, 2018. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a viewing panel unit. Claim 25, the only
independent claim on appeal, is reproduced below with disputed limitations
italicized for emphasis:
25. A viewing panel unit, comprising:
a first panel comprising one or more light transparent
regions that are substantially transparent to visible light and one
or more light hindering regions which substantially hinder
transmission of visible light;
a second panel comprising one or more light transparent
regions that are substantially transparent to visible light and one
or more light hindering regions which substantially hinder
transmission of visible light;
an actuator for moving the first panel relative to the second
panel in a vertical direction parallel to a plane of the first panel
from a first position to a second position, in order to switch the
viewing panel between a state in which visual access is allowed
and a state in which visual access is substantially blocked or
Appellants identify Vistamatic Limited as the real party in interest.
Appeal Brief, dated May 31, 2016 ("Appeal Br."), at 3.
2 Claims 3-9, 11, 17, 19-24, 29, 32, and 41--43 are cancelled, and
claims 1, 2, 10, 12-16, 18, and 37--40 are withdrawn from consideration.
Appeal Br. 16-23 (Claims App.).
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Application 14/006,399
between a state in which visual access is substantially blocked
and a state in which visual access is allowed;
a third panel mounted so as to be immovable relative to
said second panel, said first panel being located in between said
second and third panels; and
a cushioning mechanism provided in between the second
and third panels for cushioning movement of said first panel on
approach to the first position, wherein:
the separation between the second and third panels is less
than 6mm;
the first position is lower than the second position; and
the cushioning mechanism comprises a piston and an
elongate body configured to dissipate energy from the first panel
on approach to the first position or the second position by driving
the piston into the elongate body.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Kangyu ( or "'908 patent")
Nerden
CN 201065908 Y May 28, 2008
US 2008/0144159 Al June 19, 2008
REJECTI0NS 3
The Examiner made the following rejections:
1. Claims 33-35 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 25-28, 30, 31, and 36 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Nerden and Kangyu.
3 The Advisory Action, dated March 7, 2016, references a potential
rejection under 35 U.S.C. § 103 of certain amended claims based on the
combination ofNerden and Lun (US 2008/0314706). Because the amended
claims were not entered, the potential rejection is moot. Ans. 4.
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Application 14/006,399
Appellants seek our review of these rejections.
DISCUSSION
Rejection 1: Claims 33-35 as Being Indefinite
Because Appellants do not address the Examiner's rejection regarding
claims 33-35, the rejection is summarily sustained. 4
Rejection 2: Claims 25-28, 30, 31, and 36
as Unpatentable Over Nerden and Kangyu
Appellants argue claims 25-28, 30, 32, and 36 as a group. Appeal Br.
10-14. We select independent claim 25 as the representative claim, and
claims 26-28, 30, 32, and 36 stand or fall with claim 25. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Nerden discloses all of the limitations of
claim 25, except for a cushioning mechanism comprising a piston and an
elongate body. Final Act. 4--6. For this missing limitation, the Examiner
finds that Kangyu '908 discloses "that it is known in the art to feature a
piston (Figure 1, element 3) and cylinder (Figure 1, element 1) combination
as a cushioning mechanism," and that "the actuation of the piston and
cylinder combination causes the piston to be driven into the cylinder,
wherein the driving of the piston into the cylinder causes air to be driven out
of the cylinder in a manner that dissipates energy." Id. at 6. The Examiner
determines that it would have been obvious to one of ordinary skill "to
4 Appellants' amendment to cancel claims 33-35 and replace them with
new claims 44--46 was not entered. Appeal Br. 14--15; Answer, dated
August 3, 2016 ("Ans."), at 5; Reply Brief, dated September 27, 2016
("Reply Br."), at 2.
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Application 14/006,399
modify the viewing panel system ofNerden to include a spring-driven piston
and cylinder combination as a cushioning mechanism, as taught by '908, in
place of the spring members (Figure 5b, elements 240 and 242) ofNerden"
because (1) "piston and cylinder systems are well known cushioning
mechanisms used in the art," (2) "the viewing panel system ofNerden would
perform equally well with the spring members replaced with a spring-driven
piston and cylinder damper system such as that taught by '908," and (3)
"some potential consumers could potentially desire a spring-driven piston
and cylinder damper system rather than a spring damping system." Id. The
Examiner further determines that "one of ordinary skill in the art could have
substituted one known element for another, using known methods with no
change in their respective functions," and "[s]uch a substitution would have
yielded predictable results to one of ordinary skill in the art at the time the
invention was made, since the elements perform as expected and thus the
results would be expected." Id. at 6-7 (citing MPEP 2143).
Appellants assert that the Examiner's rejection is erroneous because
"Nerden and '908 fail to teach or suggest the viewing panel unit recited by
Claim 25." Appeal Br. 10. According to Appellants, Kangyu '908 "may
only be combined with Nerden in impermissible hindsight because '908 []
disclose[ s] cushioning mechanisms that provide no counterbalancing, a
requirement of the disclosure in Nerden, and "one of ordinary skill in the art
would never implement the cushioning mechanisms of '908 ... into Nerden
because the viewing panel ofNerden would not operate as intended with the
cushioning mechanisms of '908." Id. at 11.
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Appellants state that:
Nerden, paragraph [0060] explains that springs 240 are
counterbalancing the middle sheet 230 to substantially reduce the
forces that a user has to apply on the sliding mechanism 29 which
is desirable when the middle sheet 230 is very heavy. Further,
Nerden, paragraph [0062], recites, in part: "since the middle
sheet 230 is counterbalanced with springs 240, the rack 270 will
have to push and pull the middle sheet 230 in both positive and
negative Z-axis." Thus, the springs 240 of Nerden provide
enough counterbalancing force in the positive Z-axis direction
that in order for the middle sheet 230 to be moved to a lower
position, the rack 270 must pull the middle sheet in the negative
Z-axis direction.
Id. at 11.
Appellants assert that
the piston rod 3 of '908 does not provide any counterweight or
counterbalancing assistance to open the drawer, which is
required in Nerden. To provide the kind of counterbalancing
required by Nerden, the piston rod 3 of '908 would drive the
drawer or at least assist in driving the drawer-open.
In other words, if the springs 240 of N erden, which
necessarily provide counterbalancing force to assist the middle
sheet 230 in moving in the positive Z-axis direction, were
replaced with the micro-dampers of '908, the micro-dampers of
'908 would only provide a damping force as the middle sheet 230
moved in the negative Z-axis direction. The micro-dampers of
'908 would not provide any assistance in moving the middle
sheet 230 in the positive Z-axis direction, since the middle sheet
230 would drive the piston rod 3. Thus, because it is a
requirement for the springs 240 of N erden to provide
counterbalancing force in the positive Z-axis direction to assist
in moving the middle sheet 230 in the positive Z-axis direction,
the micro-dampers of '908 would never be implemented in
Nerden. As such, '908 cannot be combined with Nerden except
by impermissible hindsight.
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Application 14/006,399
Id. at 11-12. To summarize, Appellants contend that replacing Nerden's
springs 240 with Kangyu '908's dampers provide a damping force in the
negative Z-axis, but not in the positive Z-axis necessary to counterbalance
the middle panel.
In response to Appellants' argument that N erden' s counterbalancing
feature is a "requirement," the Examiner asserts that N erden' s
counterbalancing is not a critical and necessary requirement. Ans. 3. The
Examiner explains that paragraph 60 ofNerden merely states that "[s]prings
242, 240 are therefore counterbalancing the middle sheet 230. This is
desirable if the middle sheet 230 is very heavy and therefore the forces that a
user has to apply on the sliding mechanism 250 are substantially reduced",
and this statement "is simply indicating that, if the viewing panel system of
Nerden is configured such that it is a very large panel system, and the middle
sheet ( element 230) happens to be heavy, a counterbalancing effect from the
four spring members (Figure 5b, elements 240 and 242) can be beneficial."
Id. The Examiner concludes that "rather than the counterbalancing effect of
the cushioning members ofNerden being a critical design characteristic, it is
simply a feature that can be desirable if the panel system ofNerden is
configured in a particular manner (i.e. the panel system is very large)." Id.
Appellants do not respond to the Examiner's explanation. On
balance, the Examiner has the better position. Nerden says that when the
panel is heavy, the counterbalancing feature is "desirable," not that it is a
"requirement" or critical as argued by Appellants.
In response to Appellants' argument that "N erden would not operate
as intended with the cushioning mechanisms of' Kangyu '908, the Examiner
explains that Appellants are "only replacing the lower springs (Figure 5b,
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Application 14/006,399
element 240) ofNerden with spring-driven dampers of '908" whereas the
rejection states that "each of the four cushioning members ofNerden (Spring
members, Figure 5b, elements 240 and 242) would be replaced with the
cushioning member of '908 (i.e. a spring-driven piston and cylinder damper
system, Figure 1, element 1 )." Ans. 3--4. The Examiner explains that "the
spring (Figure 1, element 4) of the spring-driven damper of '908 would
function in a manner similar to the springs of N erden" because the spring of
'908 would apply "a restoring force to the extendable piston (Figure 1,
element 3) in order to return to a state of equilibrium of the spring, just as
the spring members ofNerden apply a restoring force in order to return to a
state of equilibrium." Id. at 4. The Examiner concludes that when "two
spring-driven dampers [are] arranged at both the top and bottom of the
middle panel," as recited in the rejection, the spring-driven dampers of '908
apply a counterbalancing effect to the middle panel ( element 230) of
Nerden. Id. Appellants do not address the Examiner's position and, thus, do
not identify error by the Examiner.
For the reasons above, the rejection of independent claim 25 is
sustained. Appellants do not argue claims 26-28, 30, 32, and 36 apart from
claim 1. We discern no error in the Examiner's rejection of claims 26-28,
30, 32, and 36, and also sustain the rejection of these claims.
DECISION
For the above reasons, the Examiner's rejection of claims 33-35
under 35 U.S.C. § 112, second paragraph, is AFFIRMED
The Examiner's rejection of claims 25-28, 30, 31, and 36 under 35
U.S.C. § 103(a) is AFFIRMED.
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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)(l )(iv).
AFFIRMED
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