Ex Parte Kihara

Patent Trial and Appeal Board

Jun 22, 2016

13166908 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/166,908 06/23/2011
23117 7590 06/24/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Noriyasu KIHARA
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.
GPK-2018-2718 6889
EXAMINER
ROGERS, ADAM D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIY ASU KIHARA
Appeal2014-005242
Application 13/166,908 1
Technology Center 3600
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Noriyasu Kihara (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1 and 5-16. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellant, the real party in interest is Denso Corporation.
Appeal Br. 3 (filed November 12, 2013).
2 Claims 2--4 have been canceled. Appeal Br. 19 (Claims App.).
Appeal2014-005242
Application 13/166,908
INVENTION
Appellant's invention relates to "an improved structure for a pedal of
a vehicle that can prevent foreign material or other detritus from obstructing
the pedal's return to the totally closed position." Appeal Br. 7; see also
Spec. 2:20-4:23.
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter:
1. A pedal device comprising:
a housing to be mounted to a vehicle;
a pedal arm rotatably supported by the housing and to be
pressed by a driver of the vehicle in a pressing direction, the
pedal arm passing through an opening of the housing;
a biasing portion biasing the pedal arm in an opposite
direction opposite from the pressing direction; and
a stopper having a contact face that contacts an edge of the
opening of the housing to limit a rotation range of the pedal arm
in the opposite direction, wherein the stopper is defined by a
protrt1sion protrt1ding from an outer \~1all of the pedal arm in said
opposite direction, and wherein a groove is defined in the
protrusion such that the groove extends from the contact face and
is inclined downward in a gravity direction when the contact face
of the stopper contacts the edge of the housing, wherein
the groove has
a first side opening in the contact face of the stopper,
a second side opening in an outer wall face of the stopper,
the outer wall face of the stopper being located adjacent and
below the contact face of the stopper, and
a bottom face extending from the contact face to the outer
wall face, wherein
the bottom face is inclined downward in the gravity
direction when the contact face contacts the edge of the housing,
and wherein
the bottom face is defined on the same plane as an outer
wall of the pedal arm.
2
Appeal2014-005242
Application 13/166,908
Appeal Br. 19 (Claims App.).
REJECTION
The Examiner rejected claims 1 and 5-16 under 35 U.S.C. § 103(a) as
unpatentable over Kimio (JP 2007 /299137, pub. Nov. 15, 2007)3 and Solta
(US 2004/0149070 Al, pub. Aug. 5, 2004).
ANALYSIS
Regarding independent claim 1, Appellant "submit[ s] that there is no
teaching, suggestion, or hint that one [of skill in the art] would derive the
claimed [groove/stopper] structure by applying the cited portion of Solta' s
pedal lever (which does not act as a stopper) of Solta's stopper (which does
not have grooves) to the protrusions of Kimio that serve as Kimio 's
stopper." Appeal Br. 17. Finding the Kimio and Solta combination
discloses each of the claimed elements, the Examiner concludes it would
have been obvious to arrange those elements as Appellant claims "for the
predictable result of reducing the weight of the pedal while still maintaining
adequate strength." Non-Final Act. 4. In addition, the Examiner concludes
"it is considered obvious, as a weight- and cost-saving measure to include
grooves such as those in Solta in the invention of Kimio." Id. at 8. Lastly,
the Examiner explains,
based on Kimio Figs. 2 and 4, there are shown what appear to be
recessed portions in the stopper (34). Fig. 2 shows two rows of
these substantially rectangular elements, and the side view
shown in Fig. 4 does not show these elements raised above the
top of the stopper. Therefore, Kimio at least suggests that these
3 Kimio is the first inventor's given name; Uchida is the surname. We use
Kimio to be consistent with the nomenclature used by the Examiner and
Appellant.
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Appeal2014-005242
Application 13/166,908
features could be recessed grooves in the surface of the stopper,
supporting examiner's obviousness rejection.
Id.
Appellant asserts the evidence in this record does not substantiate the
Examiner's conclusion of obviousness. Appeal Br. 16. According to
Appellant, "[ t ]here is no evidence that a person having ordinary skill in the
art would have believed that either Kimio or Solta would have been too
heavy or expensive, especially when balanced with other design
constraints." Id. We, therefore, must decide whether a rational connection
exists between the factual findings and the Examiner's reason for modifying
Kimio with Solta in the manner claimed. In re Kahn, 441F.3d977, 988
(Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."). We are persuaded the Examiner's analysis does not
properly establish such a connection.
Turning first to the "cost saving measure" reason, the Examiner has
not identified any evidence in the record, nor explained how, the
modification, in fact, would reduce the cost of manufacture (or any other
cost savings). Nor is it readily apparent from the record that the proposed
modification would necessarily result in any cost savings. "While ... cost
saving may serve as a motive for making a modification, see Orthopedic
Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983), it must be
clear at least that the modification, in fact, effects a reduction in the cost of
manufacture." In re Schmidt, No. 89-1456, 1989 WL 155455, at *2 (Fed.
Cir. Dec. 28, 1989) (unpublished). Without more, the Examiner has failed to
make the factual findings necessary to establish a rational connection
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Application 13/166,908
between the "cost savings" reason and the modification of Kimio and Solta
relied upon.
Next, regarding "reducing the weight of the pedal while still
maintaining adequate strength," the Examiner again does not identify any
evidence rationally connecting this idea to the combination proposed.
Specifically, the Examiner identifies no evidence that the skilled artisan at
the time of the invention was actually concerned with pedal assembly
weight; let alone, weight concerns more specifically related to pedal arms
and/or stoppers.
Moreover, even if we were to presume reducing the weight of pedal
assemblies was a known objective, the Examiner has not explained why a
skilled artisan would have recognized the proposed modification of Kimio
and Solta as a way to reduce the weight. Put another way, there is no
evidence that the concern for weight conservation in pedal design was so
acute that a skilled artisan would have found it advantageous to remove even
the limited amount of material necessary to create a groove in the stopper of
Kimio. We note the alternative embodiment in Solta (i.e., Figs. 4---6)
suggests otherwise because the grooves relied upon by the Examiner in
Figures 1 and 3 are not present, and there is no apparent reason the "weight
reduction" measure would not have been included, if such a concern existed.
See Solta Figs. 4---6. Furthermore, we agree with Appellant that the
Examiner does not provide any basis for the conclusion that a skilled artisan
knew the Kimio stopper could have included the claimed grooves and still
maintained adequate strength. See Appeal Br. 16. Again, without more, the
factual findings of the Examiner fail to establish a rational connection
between "weight savings" and the conclusion a skilled artisan would have
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Application 13/166,908
recognized the claimed combination as an obvious adaptation of the cited
references.
Finally, from "what appear to be" recessed portions in the stopper of
Kimio, the Examiner states, "Kimio at least suggests that these features
could be recessed grooves in the surface of the stopper, supporting
examiner's obviousness rejection." Non-Final Act. 8 (emphasis added). We
do not agree. Notably, the Examiner does not point to anything within the
Specification of Kimio suggesting the "substantially rectangular elements"
in Figure 2 are "recessed portions." Id. In fact, the Examiner does not
identify anywhere within Kimio the rectangular elements are even
mentioned, nor have we located any discussion of those elements.
We are mindful that the Federal Circuit has cautioned against relying
on patent drawings to establish specific proportions of elements if the
specification is completely silent on the issue. Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000). Although the
Examiner points out the rectangular elements are not shown as being
elevated above the stopper in Figure 4 (Non-Final Act. 8), it is also equally
true Figure 4 does not use "hidden line" markings to represent those
elements are recessed, which is typically how recessed edges are drawn,
when they are not directly visible. As a result, we do not find Figures 2 and
4 supportive of the Examiner's finding that the rectangular elements in
Figure 2 are recessed portions. Because the Specification is silent about
whether the "rectangular elements" are recessed and because the drawings
are ambiguous, the Examiner's reliance on Kimio for this purpose was error
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Application 13/166,908
and provides little, if any, supportive value for establishing a reason
supporting the Examiner's obviousness rejection. 4
Therefore, we do not sustain the obviousness rejection of claim 1
because the Examiner's factual findings do not demonstrate a rational
connection with the reason articulated for modifying Kimio with Solta to
arrive at Appellant's claimed combination. Furthermore, each of the
Examiner's obviousness rejections for dependent claims 5-16 relies on the
determination Kimio and Solta render independent claim 1 obvious. See
Non-Final Act. 5-7. The Examiner's analysis of those dependent claims
does not cure the deficiencies discussed above regarding claim 1. As a
result, we also do not sustain the Examiner's obviousness rejection of
dependent claims 5-16.
SUMMARY
We reverse the Examiner's decision to reject claims 1 and 5-16.
REVERSED
4 Appellant notes, "Kimio identifies Denso Corporation as its Applicant, and
Denso Corporation is similarly the assignee of the present application."
Appeal Br. 10. Because of this fact, Appellant is in a unique position to
potentially have additional information about the apparatus disclosed by
Kimio. We note further that Appellant has argued, "Kimio does not teach or
suggest that [the rectangular elements in Figure 2] are depressions or
recessed portions of the 'stopper 34. "' Id. at 12. Of course, Appellant owes
a duty of candor and we have presumed compliance with that duty.
Therefore, we also presume that Appellant has brought to our attention (as
well as the Examiner's attention) any and all information Appellant is
required to provide to fulfill that duty.
7