Ex Parte LOPEZ et al

Patent Trial and Appeal Board

Dec 21, 2018

14255665 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/255,665
68543 7590
Arent Fox LLP
555 West Fifth Street
48th Floor
04/17/2014
12/26/2018
Los Angeles, CA 90013
FIRST NAMED INVENTOR
Ted LOPEZ
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.
030286.00471 3096
EXAMINER
WHALEN, MICHAEL F
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TED LOPEZ
Appeal2018-000715 1
Application 14/255,665
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appeal Brief indicates Scosche Industries, Inc. is the real party in
interest. Appeal Br. 3.
Appeal2018-000715
Application 14/255,665
CLAIMED SUBJECT MATTER
The claims are directed to an aftermarket HV AC control device for
controlling a vehicle climate control system. Spec. ,r 2. Claims 1 and 18 are
independent, and claim 1, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
1. An HV AC control device for controlling a vehicle climate
control system having a plurality of control elements, the HVAC
control device configured for installing in a vehicle climate
control panel, the HVAC control device comprising:
a housing having a front surface, said housing having a
shared size, dimensioned for installing the housing in a
complementary receptacle for the housing in the vehicle climate
control panel, the complementary receptacle for the housing
having a first size, the first size shared among receptacles for
housings in replacement vehicle climate control panels for
vehicles made by more than one vehicle manufacturer, where the
first size is different than a second size, the second size shared
among receptacles for AM/FM radio tuners in replacement
vehicle climate control panels for vehicles made by more than
one vehicle manufacturer;
a user interface on the front surface of the housing, by
which a user can operate a vehicle climate control system having
a plurality of control elements and
a controller disposed in the housing and configured to
control said climate control system in accordance with user input
to said user interface, wherein said controller, in response to said
user input, creates said command inputs commanding action
within said climate control system and transmits said command
inputs to said climate control system, wherein said controller, in
response to said status outputs indicating said status of said
climate control system, regulates the operation of at least a
portion of said climate control system, and wherein the controller
is configured to control at least one of the control elements of the
vehicle climate control system.
Corrected Claims App. 3.
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Appeal2018-000715
Application 14/255,665
REFERENCES RELIED ON BY THE EXAMINER
Stenger
Daly
Walterscheid
Schramm
Fiore, IV ("Fiore")
us 5,810,418
US 7,177,730 B2
US 2007/0149104 Al
US 2009/0189373 Al
US D639,799 S
REJECTIONS
Sept. 22, 1998
Feb. 13,2007
June 28, 2007
July 30, 2009
June 14, 2011
(I) Claims 1-29 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(II) Claims 1-29 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
(III) Claims 1, 2, 4, and 10-16 are rejected under 35 U.S.C. § I02(b)
as anticipated by Walterscheid.
(IV) Claim 3 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Walterscheid and Daly.
(V) Claims 5-9 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Walterscheid and Schramm.
(VI) Claims 18-20 and 24--27 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Walterscheid and Stenger.
(VII) Claims 21-23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Walterscheid, Stenger, and Schramm.
(VIII) Claims 28 and 29 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Walterscheid, Stenger, and Fiore.
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Appeal2018-000715
Application 14/255,665
OPINION
Rejection(!), Written Description
The Examiner finds that the original disclosure does not support the
limitation that the first shared size is different from a second shared size of
receptacles for AM/FM tuners in claims 1 and 18. Final Act. 3.
Appellant contends that paragraph 272 of the Specification and Figure
1 support this limitation by describing two different sizes of receptacle, one
of which is for receiving an AM/FM tuner. Appeal Br. 8-9.
In response, the Examiner states, "the [S]pecification teaches slots
with different dimensions not a slot that is different from a standard AM/FM
radio slot." Ans. 3 (emphasis added).
Appellant has the better position. Paragraph 27 explains that the
second common size is associated with AM/FM radio tuner 16, which is
depicted in Appellant's Figure 1. Paragraph 27 also explains that the first
common size is associated with HVAC control device 12. Thus, when the
Specification teaches that the first and second slots have different sizes, the
Specification is teaching that the first slot has a size different from that of a
slot for an AM/FM radio tuner. 3 Accordingly, we do not sustain the
rejection of independent claims 1 and 18 and associated dependent claims 2-
17 and 19-29, as failing to comply with the written description requirement.
2 Appellant states that the language discussed is from paragraph 29 of the
Specification, but this is incorrect; the language discussed by Appellant
appears in paragraph 27.
3 Contrary to the limitation implied by the Examiner's reference to a
standard AM/FM radio slot (see Ans. 3), neither of claims 1 and 18 recites
that the AM/FM radio slot is standardized.
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Appeal2018-000715
Application 14/255,665
Rejection (II), Indefiniteness
The Examiner determines that the meaning of a "second size,"
expressed as relating to the size shared among receptacles for an AM/FM
tuner, in claims 1 and 18, is unclear because it is not described in the
Specification, it is subject to change, and multiple such sizes currently exist.
Final Act. 3--4.
Appellant contends "the second size shared among receptacles for
AM/FM radio tuners is a size that is the same as receptacles for AM/FM
radio tuners in replacement vehicle climate control panels for vehicles made
by more than one vehicle manufacturer[, and this] meaning is not
indefinite." Appeal Br. 10. Appellant argues "[a] shared size does not mean
unique size and it is irrelevant that there may be more than one second size."
Id. Appellant also argues "it is irrelevant that the second size may be subject
to change." Id. at 11.
In response, the Examiner notes that there is no indication as to what a
size and shape shared among receptacles is for an HV AC or AM/FM radio
tuner other than that they are a common shape and size, and the Examiner
finds that no dimensions or standards are disclosed in the Specification.
Ans. 4. The Examiner explains that a person of ordinary skill in the art
would not know how to avoid infringement because there is no way to know
the metes and bounds of the scope of claims 1 and 18. Id. at 4--5. In this
regard, the Examiner finds:
there are currently multiple standard dimensions for AM/FM
radio tuners that the Appellant may be referring to with the
language "the second size and shape shared among receptacles
for AM/FM radio tuners". Therefore there is not a specific shape
that one of ordinary skill in the art would recognize to be a "size
shared among receptacles for AM/FM radio tuners in
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Appeal2018-000715
Application 14/255,665
replacement vehicle climate control panels for vehicles made by
more than one vehicle manufacturer".
Id. at 5.
In reply, Appellant argues that the
invention is not limited to any single standard dimension.
Rather, the "specific size" circumscribed by the claims is the size
shared among receptacles for AM/FM radio tuners. That there
are more than one shared size does not mean that the language is
indefinite. Instead, the claim language claims particularly points
out and distinctly claims the subject matter which the applicant
regards as his invention.
Reply Br. 5---6.
"Because claims delineate the patentee's right to exclude, the patent
statute requires that the scope of the claims be sufficiently definite to inform
the public of the bounds of the protected invention, i.e., what subject matter
is covered by the exclusive rights of the patent." Halliburton Energy Servs.,
Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). A claim is properly
rejected as indefinite under 35 U.S.C. § 112, second paragraph, if, after
applying the broadest reasonable interpretation in light of the specification,
the metes and bounds of a claim are not clear because the claim "'contains
words or phrases whose meaning is unclear."' In re Packard, 751 F.3d
1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance
claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward,
Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) ( adopting the approach for assessing indefiniteness approved
by the Federal Circuit in Packard).
We agree with the Examiner that claims 1 and 18 are indefinite.
Claim 1 recites a housing that is "dimensioned for installing the housing in a
complementary receptacle for the housing in the vehicle climate control
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Application 14/255,665
panel, the complementary receptacle for the housing having a first size."
Corrected Claims App. 3. Thus, the housing is, in part, defined by the size
of the complementary receptacle, i.e., by the "first size." The first size is
limited in terms of the "second size." Specifically, the first size must be
different from the second size. Consequently, to understand the dimensions
of the housing recited in claim 1, it is necessary to know the size or sizes that
qualify as the second size.
Similarly, method claim 18 recites the size and shape of the receptacle
in terms of a second size and shape, namely, the size and shape shared
among receptacles for AM/FM radio tuners. Thus, the second size and
shape must be understood in order to understand the scope of the first size
and shape.
Appellant does not direct our attention to any portion of the
Specification that would inform a person of ordinary skill in the art as to
what size corresponds to "the second size shared among receptacles for
AM/FM radio tuners in replacement vehicle climate control panels for
vehicles made by more than one vehicle manufacturer" ( Corrected Claims
App. 3 (emphasis added)) as recited in claim 1 or a "second size and shape
shared among receptacles for AM/FM radio tuners" (id. at 5 ( emphasis
added)) as recited in claim 18. See Appeal Br. 9--11; see also Reply Br. 5-7.
Nor do we find one. Further, the Specification does not provide any usable
standard for determining this size. Indeed, based on the use of the word
"shared" in claims 1 and 18, it is not clear that the second size ( or second
size and shape) correspond to a standard. Accordingly, a person of ordinary
skill in the art would not be put on notice as to the metes and bounds of
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Application 14/255,665
claims 1 and 18. Therefore, we sustain the Examiner's rejection of claims 1
and 18, and associated dependent claims 2-17 and 19-29, as indefinite.
Rejections (111)-(VIII), Anticipation and Unpatentability
Having determined that claims 1-29 are indefinite, we do not sustain
the Examiner's rejections of claims 1-29 under 35 U.S.C. §§ 102 and 103
because to do so would require speculation as to the scope of the claims.
See In re Steele, 305 F .2d 859, 862---63 (CCP A 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a),
because the rejection was based on speculative assumptions as to the
meaning of the claims). It should be understood, however, that our decision
in this regard is based solely on the indefiniteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejections.
DECISION
We reverse Rejections (I) and (III}-(VIII).
We affirm Rejection (II).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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