Ex Parte MORI et al

Patent Trial and Appeal Board

Sep 13, 2018

14593899 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/593,899 01/09/2015 Kiyoteru MORI
21254 7590 09/14/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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.
A-3035US 8553
EXAMINER
ENDO, JAMES M
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
09/14/2018 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 KIYOTERU MORI, KENT ARO YAMASAKI, YU TOMOEDA,
and MOTOT ATSU ISAJI
Appeal2018-007563
Application 14/593,899 1
Technology Center 2800
Before ROMULO H. DELMENDO, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
1 The subject application has been designated as "special" under the Patent
Prosecution Highway Program and granted a petition pursuant to 37 C.F.R.
§ 1.102( d) (Decision on Petition entered March 16, 2016).
Appeal2018-007563
Application 14/593,899
The Applicant (hereinafter "Appellant")2 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1, 5,
and 21-25. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a vehicle fog lamp and a
vehicle comprising such a fog lamp (Specification filed January 9, 2015
(hereinafter "Spec.") at 1, 11. 8-9; Appeal Br. 7-12 (Claims Appendix)).
Representative claim 1 is reproduced from the Claims Appendix (Appeal Br.
7), with limitations at issue on appeal emphasized, as follows:
1. A vehicle fog lamp that is disposed in a front end
part of a vehicle and illuminates light forward, the vehicle fog
lamp comprising:
a light source that emits light;
a reflector that reflects the emitting light forward;
a front lens that covers a front opening of the reflector;
a shade configured to partially block the light emitted from
the light source; and
reflective surface sections disposed on an inner surface of
the reflector so as to surround the light source, at least one
reflective surface section of the reflective surface sections having
a smaller inclination angle than other reflective surface sections
disposed at a same position in a front-and-rear direction of the at
2 The Appellant is the Applicant, "Fuji Jukogyo Kabushiki Kaisha"
(Application Data Sheet filed January 9, 2015). According to the Brief,
however, the real party in interest is "Subaru Corporation, assignee of 100%
interest" in the application (Appeal Brief filed February 6, 2018, as revised
March 1, 2018, (hereinafter "Appeal Br.") at 1; Assignment entered May 12,
2017 and recorded in Reel 042624/Frame 0886).
3 Appeal Br. 9-12; Final Office Action entered September 19, 2017
(hereinafter "Final Act.") 2-13; Examiner's Answer entered May 30, 2018
(hereinafter "Ans.") 2-9.
2
Appeal2018-007563
Application 14/593,899
least one reflective surface section with respect to an optical axis
of the light source,
wherein the light emitting from the light source is reflected
on the reflective surface sections of the reflector to form a screen
light distribution pattern by illuminating the light, the screen light
distribution pattern being divided by a vertical line passing
through a center of the light source into an outer pattern part
located outside direction of the vehicle from the vertical line and
an inner pattern part located inside direction of the vehicle from
the vertical line, and the outer pattern part having an upper end
part that is disposed above an upper end part of the inner pattern
part and above a horizontal line intersecting a lowest portion of
a regulation area,
wherein a road surface fog light distribution pattern
formed by emitting the light on a road surface includes a
protruded area, caused by light reflected by the at least one
reflective surface section, that is disposed outside an outer edge
of a road surface head lamps light distribution pattern formed by
emitting low beams of head lamps provided with the vehicle and
separately from the vehicle fog lamp on the road surface and is
extended in the turning direction of the vehicle, and
wherein the at least one reflective surface section is
located closer to the light source than the other reflective surface
sections located at a same position in the front-and-rear direction.
II. REJECTION ON APPEAL
On appeal, claims 1, 5, and 21-25 stand rejected under AIA 35 U.S.C.
§ 103 as unpatentable over De Lamberterie4 and Shimakura5 (Ans. 2-9;
Final Act. 2-14).
4 US 6,409,369 Bl, issued June 25, 2002.
5 US 2002/0145882 Al, published October 10, 2002.
3
Appeal2018-007563
Application 14/593,899
III. DISCUSSION
The Appellant relies on the same arguments for all claims on appeal
(Appeal Br. 9-12). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As
provided by this rule, claims 5 and 21-25 stand or fall with claim 1.
The Examiner finds that De Lamberterie describes a vehicle fog lamp
including most of the limitations recited in claim 1 (Final Act. 2---6). The
Examiner finds, however, that De Lamberterie does not describe two
limitations: (1) "a front lens that covers a front opening of the reflector";
and (2) "a shade configured to partially block the light emitted from the light
source" (id. at 6). Regarding the "front lens" limitations in dispute, the
Examiner relies on Shimakura's teachings regarding a cover and concludes
that "it would have been obvious to one of ordinary skill in the art ... to
incorporate a front lens as taught by SHIMAKURA to the reflector of DE
LAMBER TERIE in order to protect the interior components of the lamp
such as the light source, reflector, and shade" (id.).
The Appellant does not contest the Examiner's findings, analysis, or
conclusion regarding the "shade" limitations (Appeal Br. 9-12). Rather, the
Appellant contends that De Lamberterie teaches away from a front lens by
disclosing that"' by having a common cover lens, it can be a somewhat
difficult matter to design the reflector in such a way that it will produce
both a satisfactory turning beam and a satisfactory beam for use in fog"'
(id. at 9) (quoting De Lamberterie col. 1, 11. 33-37). According to the
Appellant, the Examiner's position that "it is well known in the art that head
lights require some type of protective cover and that it would [have been]
obvious to combine a transparent lens that does not change the light
4
Appeal2018-007563
Application 14/593,899
projection such as in Shimakura to protect the head light" is unreasonable
(id. at 10). In the Appellant's view, the Examiner is incorrect in finding that
Shimakura's protective lens does not change the light properties because
"any lens must change the light properties of light passing through a lens"
(id.). Furthermore, the Appellant alleges that "in an exemplary embodiment
of the claimed invention, the claimed invention is able to achieve superior
reflective properties for a satisfactory beam (such as a fog beam) even with
a cover lens" (id. at 12).
Based on these contentions, the central question presented in this
appeal is whether De Lamberterie teaches away from a protective cover of
the type disclosed in Shimakura. For the reasons given by the Examiner and
below, we find that it does not.
In discussing earlier prior art systems, De Lamberterie teaches that for
"headlights with tilting reflectors, having a common cover lens, it can be a
somewhat difficult matter to design the reflector in such a way that it will
produce both a satisfactory turning beam and a satisfactory beam for use in
fog" (De Lamberterie col. 1, 11. 33-37; emphases added). But this
discussion of the prior art does not amount to a teaching that a cover lens
would be problematic for all types of reflectors or----even in the case of
tilting reflectors-that the "somewhat difficult" problem is an
insurmountable one such that a solution would have been beyond the level
of a person having ordinary skill in the art.
Indeed, Shimakura' s teachings indicate that a solution to the prior art
problem discussed in De Lamberterie, or an alternative approach, was
known. Specifically, Shimakura describes a translucent cover 18 for a
vehicular lamp (Shimakura Fig. 2; ,r,r 32-36). Because Shimakura teaches
5
Appeal2018-007563
Application 14/593,899
that "[t]he function of controlling the light distribution of the lamp is
provided by the reflective surface 14a of the lamp body 14" (id. ,r 36), a
person having ordinary skill in the art would have drawn a reasonable
inference6 that the translucent cover 18 does not detrimentally or
significantly affect the light distribution characteristics imparted by the
reflective surface 14a. Thus, when the prior art teachings are considered as
a whole, we do not find De Lamberterie to be teaching away from a
protective cover of the type described in Shimakura. As explained by our
reviewing court, the "mere disclosure of alternative designs does not teach
away." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As it is undisputed that a protective cover of the type disclosed in
Shimakura (i.e., translucent cover 18) protects the internal components of
the lamp (Final Act. 5---6; Appeal Br. 10 ("In fact, 'protective lenses' of
which the Examiner asserts would be combined with De Lamberterie, were
known in the art at the time of De Lamberterie.")), we discern no reversible
error in the Examiner's conclusion that a person having ordinary skill in the
art would have been prompted to combine De Lamberterie and Shimakura in
the manner claimed by the Inventors for the purpose of protecting the
internal components of the lamp.
As a final point, we find no merit in the Appellant's argument that
"the claimed invention is able to achieve superior reflective properties"
(Appeal Br. 12). That argument is not supported by any identified, objective
evidence such as comparative data in the form of a declaration.
6 In re Preda, 401 F .2d 825, 826 (CCP A 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.").
6
Appeal2018-007563
Application 14/593,899
IV. SUMMARY
The rejection under 35 U.S.C. § 103 of claims 1, 5, and 21-25 as
unpatentable over De Lamberterie and Shimakura is sustained. Therefore,
the Examiner's final decision to reject claims 1, 5, and 21-25 is affirmed.
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
7