Ex Parte Okabe et al

Board of Patent Appeals and Interferences

Jun 18, 2009

11136562 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOSHIAKI OKABE, KENJI OISHI, and YASUHIRO
MATSUNAGA
____________

Appeal 2009-001890
Application 11/136,562
Technology Center 2800
____________

Decided: 1June 18, 2009
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and ROBERT
E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001890
Application 11/136,562

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-6, which are all of the pending claims. An oral hearing was
conducted on this appeal on June 9, 2009. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed December 26, 2007), the Answer
(mailed February 28, 2008), and the Reply Brief (filed April 24, 2008) for
the respective details. Only those arguments actually made by Appellants
have been considered in this decision. Arguments which Appellants could
have made but chose not to make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to an interior illumination lamp used in a
vehicle and includes a housing which is mounted in an opening formed in an
interior member of the vehicle. An engagement portion of a bending
member formed on the reverse surface of the housing engages a prevention
portion of the housing to hold the edges of the interior member between the
bending member and the reverse surface of the housing. Further included is
an angle maintaining member which keeps the bending member at a
predetermined bending angle. According to Appellants, the angle
2
Appeal 2009-001890
Application 11/136,562

maintaining member acts as a stopper to prevent the interior member from
being undesirably squeezed by the bending member being bent beyond the
predetermined angle. (See generally Spec. 7:9-15 and 8:15-20).

Claim 1 is illustrative of the invention and reads as follows:

1. An interior illumination lamp comprising:
a housing for mounting in an opening formed in an interior member of
a vehicle,
upstanding members formed in an upstanding manner on a reverse
surface of said housing,
bending members connected respectively to distal ends of said
upstanding members, and being bent to be disposed generally parallel to the
reverse surface of said housing, said bending members having an
engagement portion;
prevention portions provided on the reverse surface of said housing,
and disposed adjacent respectively to said upstanding members, each of said
prevention portions preventing said bending member from being restored
from a bent condition to an upstanding condition when said engagement
portion of said bending member slides past said prevention portion; and
angle maintaining member provided on the reverse surface of the
housing for preventing said bending member from being rotated beyond a
predetermined bending angle, said angle maintaining member being
independent of said prevention portions.

The Examiner’s Rejection

The Examiner’s Answer cites the following prior art references:
Matko US 6,909,408B2 Jun. 21, 2005
(filed Dec. 20, 2001)
Hasegawa JP 15095018 Apr. 3, 2003

Claims 1-6, all of the pending claims, stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hasegawa in view of Matko.

3
Appeal 2009-001890
Application 11/136,562

ISSUE

The pivotal issue before us is whether Appellants have demonstrated
that the Examiner erred in determining the obviousness to the skilled artisan
of applying the catch plate teachings of Matko, which describes the catch
plate as retaining a vehicle sun visor in a horizontal storage position, to the
vehicle interior lamp retaining structure teachings of Hasegawa.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Hasegawa discloses (Fig. 1) a lamp housing 1 having, mounted
on the reverse surface of the housing, a bending member 2a with
engagement portions 2b which engage the ribs of prevention portions 3.
2. Hasegawa further illustrates (Figs. 2 and 4) the bending
members 2a in the engaged position with the prevention members 3 which
grip the edges of the opening formed in the interior member 4 of a vehicle.
3. Matko discloses (Fig. 4; col. 2, ll. 29-64) an assembly for
mounting a sun visor 70 and night vision display unit 20 in the upper
windshield portion of the interior of a vehicle cab.
4. Matko further discloses (Figs. 5-7; col. 3, l. 59-col. 4, l. 10) the
use of magnetic catch plates 112, 114 which are secured to the headliner 72
and the inner face of the sun visor 70 which hold the sun visor in a
horizontal storage position.

PRINCIPLES OF LAW
4
Appeal 2009-001890
Application 11/136,562

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. §
103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claim 1 based on the combination of Hasegawa and
Matko, Appellants assert (App. Br. 10-13; Reply Br. 4-8) that the Examiner
has failed to set forth a prima facie case of obviousness since a proper basis
for the proposed combination of references has not been established. After
5
Appeal 2009-001890
Application 11/136,562

reviewing the arguments of record from Appellants and the Examiner, we
are in general agreement with Appellants’ position as stated in the Briefs.
The Examiner proposes (Ans. 4-5) to modify the vehicle illumination
lamp housing retaining structure disclosure of Hasegawa by adding the catch
plate stopper teachings of Matko. In our view, however, the disclosure of
Matko, at best, provides a disclosure of providing a magnetic catch plate 112
on the headliner of the upper region of a vehicle windshield to retain sun
visor 70 in a horizontal storage position. (See FFs 3 and 4). As such, we find
that the disclosure of Matko has little relevance to the vehicle lamp retaining
structure disclosed by Hasegawa.
We find no convincing rationale provided by the Examiner as to why
the skilled artisan would look to the sun visor catch plate retaining teachings
of Matko to solve any problems associated with an undesirable squeezing of
a vehicle interior member through over-rotation of a bending member such
as in Hasegawa. In particular, we find that any problems associated with
the over-rotation of a bending member that is gripping an interior vehicle
member such as in Hasegawa simply do not exist in Matko. There is no
disclosure in Matko that either the rotatable sun visor 70 or the rotatable
display unit 20 is ever used in gripping engagement with any member in
which undesirable squeezing due to over-rotation might occur.
Given the above discussed deficiencies in the applied prior art, we fail
to see how and in what manner the disclosure of Hasegawa might have been
modified by Matko to arrive at the features set forth in appealed independent
claim 1. In our view, given the disparity of problems addressed by the
applied prior art references, and the differing solutions proposed by them,
6
Appeal 2009-001890
Application 11/136,562

any attempt to combine them in the manner proposed by the Examiner could
only come from Appellants’ own disclosure using hindsight reconstruction.
We recognize that the Examiner (Ans. 10-11) has offered an
alternative interpretation of the language of claim 1 and of the disclosure of
Hasegawa in which it is suggested that the interior member 4 of Hasegawa
would correspond to the claimed angle maintaining member. We find no
basis for this assertion of the Examiner. As correctly pointed out by
Appellants (Reply Br. 7-8), the language of claim 1 specifically requires that
the angle maintaining member be mounted on the reverse surface of the
lamp housing, a structural arrangement which does not exist in Hasegawa.
In view of the above discussion, since we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, we do not sustain the rejection of
independent claim 1, nor of claims 2-6 dependent thereon.

7
Appeal 2009-001890
Application 11/136,562

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown the Examiner erred in rejecting claims 1-6 for
obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-6, all of the
appealed claims, is reversed.

REVERSED

gvw

SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
8