Ex Parte Nedelman

Patent Trials and Appeals Board

Feb 7, 2019

14701786 - (D) (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/701,786 05/01/2015
121691 7590 02/11/2019
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
FIRST NAMED INVENTOR
Marc David Nedelman
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.
83524843 4748
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
02/11/2019 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC DAVID NEDELMAN
Appeal2018-005350
Application 14/701,786
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 3-8, 14, and 16-20. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 "[T]he real party in interest is Ford Global Technologies, LLC." (Appeal
Br. 3.)
Appeal2018-005350
Application 14/701,786
STATEMENT OF THE CASE
The Appellant's invention "relates generally to sun visors for motor
vehicles." (Spec. ,r 1.)
Illustrative Claim
1. A carrier assembly for translating a vehicle extendable
sun visor between a stowed configuration and a deployed
configuration, comprising:
a track element defining a channel;
a compression spring disposed within the channel; and
a carrier slidably received within the channel, the carrier
including a spring plate detent, wherein the track element
includes a detent aperture configured to releasably engage the
spring plate detent to retain the vehicle extendable sun visor in
the stowed configuration and to disengage the spring plate
detent such that the compression spring is released to
automatically bias the vehicle extendable sun visor into the
deployed configuration.
Admitted Prior Art
The Specification discloses a "prior art" extendable sun visor
assembly 10 which comprises a "visor panel 12" and a "translating
mechanism 22" that translates the visor panel 12 between a "stowed
configuration" and a "deployed configuration." (Spec. ,r,r 3, 4, 10; see also
Fig. 1.) The translating mechanism 22 includes a carrier 26 that is slidably
received within a "channel or track." (Id. ,r 4.) The carrier 26 includes a
"catch 28" (id.); and the track appears to have an aperture that releasably
engages the catch 28 when the visor panel 12 is in the stowed configuration.
(See id. at Fig. 1.) And, upon disengagement of the catch 28, a compression
spring 24 "bias [es] the panel 12 from [the] stowed configuration to [the]
deployed configuration." (Id. f 4.)
2
Appeal2018-005350
Application 14/701,786
Rejection
The Examiner rejects claims 1, 3-8, 14, and 16-20 under 35 U.S.C.
§ 103 as unpatentable over the above-described prior art assembly 10 in
view ofVarga. 2 (Non-Final Action 2.)
ANALYSIS
Claims 1 and 14 are the independent claims on appeal, with the rest of
the claims on appeal ( claims 3-8, 14, and 16-20) depending therefrom. (See
Appeal Br., Claims App.) Independent claim 1 recites "[a] carrier assembly
for translating a vehicle extendable sun visor," and independent claim 14
recites "[a] sun visor extension assembly for a vehicle." (Id.) The Examiner
concludes that the claimed assemblies would have been obvious over the
prior art (see Non-Final Action 2); and the Appellant argues that the
Examiner's conclusion of obviousness is not sufficiently supported by the
record (see Appeal Br. 9-14). We are persuaded by the Appellant's
arguments.
Independent claims 1 and 14 recite a "carrier" that includes a "spring
plate detent" and a "track element" that includes a "detent aperture."
(Appeal Br., Claims App.) In the prior art assembly 10, the carrier 26
includes a catch 28, and the track includes an aperture that releasably
engages the catch 28 to retain the visor panel 12 in the stowed configuration.
But, as appears to be acknowledged by the Examiner (see Non-Final
Action 3 ), there is nothing in the record specifying that the catch 2 8 in the
prior art assembly 10 is a "spring plate detent."
2 US 6,213,672 Bl, issued April 10, 2001. Our quotations from this
reference will omit the bolding of drawing-associated reference numerals.
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Appeal2018-005350
Application 14/701,786
According to the Examiner, it would have been obvious, in view of
the teachings of Varga, to provide the prior art assembly 10 with a spring
indent plate and an aperture that releasably engages this spring indent plate
to retain the sun visor panel 12 in the stowed configuration. (See Non-Final
Action 3.) The Examiner lists five advantages that could allegedly be gained
by modifying the prior art assembly 10 in this manner (see id.); and the
Examiner finds that this list "provide[ s] at least five articulated reasons to
make the combination" (Answer 5).
The first advantage listed by the Examiner involves "ease of securing
the visor in each position," and the Examiner cites to a sentence in Varga to
support this finding. (Non-Final Action 3.) The cited sentence does indeed
talk about "ease of securing a telescoped configuration," but this ease is
achieved via "keying guide" that prevents "[an] inner pole from rotating
within [an] outer pole." (Varga, col. 1, 11. 13-16.) The cited sentence does
not suggest that a spring indent plate could, or would, curtail undesired
rotation of an inner element relative to an outer element. Moreover, we see
nothing in the record indicating that the inner element in the prior art
assembly 10 (i.e., the carrier 26) could or would rotate within the outer
element of the prior art assembly 10 (i.e., the track/channel).
The second advantage listed by the Examiner pertains to the
"visibility" of, and the "access" to, the component(s) in the prior art
assembly 10 which retain the visor panel 12 in the stowed configuration.
(Non-Final Action 3.) To support this finding, the Examiner cites to a
paragraph in the Appellant's Specification and also to another sentence in
Varga. (See id.) As for the paragraph in the Specification, we agree with
the Appellant that "it is improper to use the patent application as a guide in
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Appeal2018-005350
Application 14/701,786
combining prior art references." (Appeal Br. 13.) As for the cited sentence
in Varga, it says nothing about the visibility of, and/or the access to, the
component( s) that retain the inner and outer poles in a telescoped
configuration. (See Varga, col. 4, 11. 50-56.)
The third advantage listed by the Examiner pertains to "user ease in
operation thereof," and the Examiner cites to another sentence in Varga to
support this finding. (Non-Final Action 3.) However, the cited sentence
conveys that an "outer guide" and an "inner guide," not a spring indent plate,
"ensure that a user can easily and quickly change of the telescoped length,"
without "wasting precious time trying to adjust the alignment" between the
"inner pole" and the "outer pole." (Varga, col. 5, 11. 21-25.) The Examiner
does not point to anything in the record reflecting that such misalignment
can occur between the inner element (i.e., the carrier 26) and the outer
element (the track/channel) in the prior art assembly 10.
The fourth advantage listed by the Examiner, namely "to prevent mis-
alignment of the detent and aperture" (Non-Final Action 3), likewise falters
because there is no indication in the record that misalignment is a problem
with the prior art sun visor assembly 10. And the sentence from Varga cited
by the Examiner in an attempt to support this finding (see id.), talks only
about the frustration that occurs due to the misalignment of the inner and
outer poles. (See Varga, col. 1, 11. 35--43.)
As for the fifth advantage cited by the Examiner, it concerns
"allow[ing] the visor to be extendable in multiple secured positions" (as
opposed to "only one extended position") to "more sufficiently block glare."
(Non-Final Action 3.) The Examiner again cites to a paragraph in the
Specification, but, as indicated above, "it is improper to use the patent
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Appeal2018-005350
Application 14/701,786
application as a guide in combining prior art references." (Appeal Br. 13.)
The Examiner also cites to another sentence in Varga (see Non-Final
Action 3), which describes the outer pole as being "provided with a plurality
of holes serially positioned in axial alignment." (Varga, col. 4, 11. 61-64.)
The Examiner does not, however, explain adequately how this multi-hole
arrangement would work in conjunction with the compression spring 24 of
the prior art assembly 10 to achieve the stated advantage of "multiple"
positions. 3
Thus, we agree with the Appellant that, despite the five listed
advantages, "the Examiner fails to provide any reason based on a rational
underpinning" for the proposed combination of the prior art (Appeal Br. 12,
see also Reply Br. 3--4); and we do not sustain the Examiner's rejection of
claims 1, 3-8, 14, and 16-20 under 35 U.S.C. § 103.
DECISION
We REVERSE the Examiner's rejection of claims 1, 3-8, 14, and 16-20.
REVERSED
3 As discussed above, when the visor panel 12 is in the stowed configuration,
and the catch 28 is disengaged from the aperture in the track, the compression
spring 24 biases the visor panel 12 to the deployed configuration. (See Spec.
, 4, Fig. 1.) As such, it is unclear how the catch 28 (be it a spring indent plate
or otherwise), would interact with a plurality of holes serially positioned in
the span of the track between the stowed configuration and the deployed
configuration.
6