Ex Parte Lehti et al

Patent Trial and Appeal Board

Jun 20, 2017

13768301 (P.T.A.B. Jun. 20, 2017)

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.
13/768,301 02/15/2013 Michael Lehti P022518-GMVE-DPH 4433
104102 7590 06/20/2017
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
VANAMAN, FRANK BENNETT
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
06/20/2017 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 MICHAEL LEHTI and MARK. D. DICKENS
_____________

Appeal 2015-007798
Application 13/768,301
Technology Center 3600
____________

Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Lehti and Mark D. Dickens (Inventors)1 seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C. § 103(a)
of claims 1–18 as unpatentable over (1) Nelson (US 5,275,249, iss. Jan. 4,
1994); and over (2) Nelson and Roddy (US 2012/0118656 A1, pub. May 17,
2012). We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1 According to Appellants, the real party in interest is General Motors LLC.
Appeal Br. 4.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated October 24, 2014 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 16 is reproduced below and
illustrates the claimed subject matter.
16. A product comprising:
an active hood extractor including a plurality of louvers, at least
one of the plurality of louvers being constructed and arranged for
sealing engagement with an adjacent louver when the plurality
of louvers are in a closed position.

ANALYSIS
Obviousness of Claims 1–18 over Nelson and Roddy
Appellants argue claims 1–18 together in contesting the rejection of
these claims as obvious over Nelson and Roddy. See Appeal Br. 13–14;
Reply Br. 4–5. We select claim 16 as the representative claim for this group,
and the remaining claims stand or fall with claim 16. See 37 C.F.R.
§ 41.37(c)(1)(iv); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002); see
also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).
Regarding claim 16, the Examiner finds that “Nelson teaches a
product including a vehicle (10) which includes an active hood extractor
including plural louvers (24, 24) at least one of which is operated by an
actuator (100) associated with a controller system.” Final Act. 4.3 While
acknowledging Nelson “fails to teach that the louver constitutes a plurality
of adjacent louvers with a mating seal on a louver for engaging another
adjacent louver,” the Examiner looks to Roddy for teaching “that it is well
known to provide a ventilation arrangement which includes a plurality of
louvers (12, 14) rather than a single louver, and wherein the louvers are

3 Although claim 1 recites an actuator, claim 16 is devoid of such a
limitation.
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provided with mating seals (16, 24) to engage against an adjacent louver.”4
Id. at 5.
Based on the foregoing, the Examiner reasons that it would have been
obvious
to provide the single louver taught by Nelson instead as a
plurality of louvers as taught by Roddy et al., with at least one
louver having at least one seal for engaging a mating adjacent
louver, for the purpose of providing a lower profile louver
arrangement which can achieve a desired opening area and
resultant ventilation flow rate without protruding above the hood
by an undesirably large dimension.

Id. (citing the limitations on upward protrusion as specified by Nelson at
column 6, lines 10–21) (emphasis added).
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants contend that “Nelson teaches away from the
claim limitations,” because “[o]ne of ordinary skill in the art would be
discouraged from making the posited modification because the line of
development flowing from Nelson would not produce . . . ‘an active hood
extractor including a plurality of louvers, the plurality of louvers being
constructed and arranged for sealing engagement with another vehicle
component when the plurality of louvers are in a closed position’ as claimed
by [Appellants] in claim 16.” Appeal Br. 13–14.
We disagree. As our reviewing court explains, a reference does not
teach away from claimed subject matter if it does not “criticize, discredit, or
otherwise discourage” investigation into the claimed subject matter. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Thus, the test is what the

4 See Roddy ¶¶ 31, 32; Fig. 2.
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combined teachings of the references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As also explained by the Examiner, although “Nelson specifically mentions
the desirability of providing a single plate or louver in any particular
opening, . . . it is clear that the reference . . . in no way teaches that another
configuration is undesirable, particularly in view of Nelson explicitly
anticipating the variation in the number and size of the louvers or plates.”5
Ans. 8–9. The Examiner then points out that “an implied lesser desirability
does not directly lead to a clear ‘teaching away’ from the modification,
particularly when the modification consists of a mere change in the number
of already taught elements.” Id. at 9.
Furthermore, Appellants are simply attacking Nelson in isolation for
lacking support for teaching a plurality of louvres, rather than addressing the
Examiner’s combination of Nelson and Roddy. Nonobviousness cannot be
established by attacking references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the Examiner again explains,
Roddy teaches “that it is well understood to be within the skill level of the
ordinary practitioner to provide, for a given louver assembly, a differing
number of louvers.” Ans. 8–9 (citing Roddy ¶ 44).
Appellants also contend that “Roddy merely discloses a plurality of
louvers having a sealing lip closure,” and that “[m]odifying the Nelson
invention as the Examiner has suggested would not achieve the intent,
purpose, and function of Nelson because such a modification would be

5 We note that Nelson also discloses “louvered hood vents and the like.”
Col. 1, ll. 27–30.
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undesirable in light of Nelson’s teachings,” arguing that “the modification
the Examiner has suggested would not provide single, separate, large plates,
or an individual, stand-alone plate mounted in a single opening, a primary
purposes [sic] of the Nelson invention.” Appeal Br. 15.
However, we also agree with the Examiner that Appellants have
“provided no evidence that the intent, purpose or function of the base
reference to Nelson is destroyed by the modification proposed by the
[Examiner].” Ans. 9–10. We are instructed that “[a]ttorney’s arguments in
a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (citation omitted); see also In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (holding that lawyer arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value).
The Examiner also explains that “[b]oth Nelson and Roddy et al.
intend to variably control thermal conditions associated with an engine
compartment for the purpose of maintaining optimal operation temperatures,
and do so by providing one or more louvers or plates to be variably opened
or closed.” Ans. 10 (citing Nelson, col. 4, l. 42–col. 5, l. 12; and Roddy ¶¶ 3,
4, and 6). The Examiner also points out that Roddy “is directed to an
alternative arrangement having the same intent, purpose and function, and as
such, there is no evidence that the application of Roddy et al. would result in
the destruction of the operational intent, purpose or function of Nelson.” Id.
Appellants have not disputed any of these findings. Thus, Appellants’
contention does not inform us of error.
Appellants continue by quoting portions of the Examiner’s rejection
of claim 16 over Nelson, alone, as a basis for contending “nothing within the
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Nelson disclosure teaches, suggests, or discloses that ‘a plurality of louvers’
would increase or multiply the area which may be opened by the louvers
and/or increasing the flow of ventilating air from the compartment.” Appeal
Br. 16. Based on the foregoing, Appellants then reason that “one of ordinary
skill in the art would appreciate that merely splitting the single hood plate of
Nelson into ‘a plurality of louvers’ would not actually increase or multiply
the area which may be opened by the louvers and/or increasing the flow of
ventilating air from the compartment as the Examiner has suggested,” and
conclude that “the Examiner has merely selected elements from
[Appellants’] own disclosure such as a ‘plurality of louvers’ and arbitrarily
plugged those elements into the disclosure of Nelson in an attempt to arrive
at what would be obvious to one of ordinary skill in the art.” Id. at 16–17.
However, Appellants’ argument is not responsive to Examiner’s
rejection of claim 16 over Nelson and Roddy. See Final Act. 5.
Furthermore, even if those arguments had been responsive, they would not
be persuasive because the Examiner has articulated adequate reasoning
having rational underpinnings. Thus, we are not persuaded that the
combination of Nelson and Roddy impermissibly uses the disclosure of the
present patent application as a guide, as argued by Appellants. Furthermore,
Appellants have not identified any knowledge that the Examiner relied upon
that was not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see
also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny
obviousness inquiry necessarily involves some hindsight.”).
Although Appellants’ Reply Brief refers to the Examiner’s rejection
of claims 1–18 over Nelson and Roddy, Appellants continue to contend that
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Nelson only teaches “an individual, stand alone plate mounted in a single
opening,” and that “the addition of Roddy does not negate that which Nelson
so clearly teaches.” Reply Br. 4–5. However, Appellants are simply
continuing to attack Nelson in isolation for lacking support for teaching a
plurality of louvres, rather than addressing the Examiner’s combination of
Nelson and Roddy. Nonobviousness cannot be established by attacking
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck, 800 F.2d at 1097. As pointed out
supra, the Examiner looks to Roddy for teaching a plurality of louvres.
Again see Final Act. 5. Thus, we need not reach the issue of whether Nelson
alone discloses a plurality of louvres, because we agree with the Examiner’s
findings as to Roddy and determine, for the reasons stated supra, that the
proposed combination of Nelson and Roddy is based on rational
underpinnings and would result in the claimed product.
For the foregoing reasons, we sustain the rejection of claim 16 under
35 U.S.C. § 103(a) as obvious over Nelson and Roddy. Claims 1–15, 17,
and 18 fall with claim 16.

Obviousness of Claims 1–18 over Nelson
We affirm the rejection of claims 1–18 under 35 U.S.C. § 103(a) as
being obvious over Nelson and Roddy. This affirmance disposes of all
claims before us on appeal. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed.”).

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DECISION
We AFFIRM the Examiner’s rejections.
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