Ex Parte Rohrmüller et al

Patent Trial and Appeal Board

Sep 29, 2017

13354549 (P.T.A.B. Sep. 29, 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.
13/354,549 01/20/2012 HANS ROHR Ml JT ,T ER MAN-13830 9762
24131 7590 10/03/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS ROHRMULLER and GUNTER GERLACH
Appeal 2016-005401
Application 13/354,549
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans Rohrmuller and Gunter Gerlach (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision (1) to reject claims 1—5, 7,
and 14—20 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative,
under 35 U.S.C. § 103(a) as obvious over Tsang (US D455,768 S, iss. Apr.
16, 2002); (2) to reject claims 1—7, 13—15, and 20 under 35 U.S.C. § 103(a),
as unpatentable over Tsang and Wilt (US 3,176,602, iss. Apr. 6, 1965); (3)
to reject claims 1—7 and 13—20 under 35 U.S.C. § 103(a) as unpatentable
over Tsang and Ohsumi (US 2009/0046149 Al, pub. Feb. 19, 2009); and (4)
to reject claims 13, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over
Tsang, Tsang, and Wilt or Ohsumi and further in view of Tsai (US
Appeal 2016-005401
Application 13/354,549
7,563,040 B2, iss. July 21, 2009). Claims 8—12 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a passenger compartment
element of a motor vehicle.” Spec. 12, Fig. 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A passenger compartment element for a motor vehicle, the
motor vehicle having a passenger compartment, a front
windshield having an inner side and at least one air outlet
opening for directing an airstream, at least in certain sections,
onto the inner side of the windshield, the airstream flowing along
or virtually parallel to the inner side of the windshield in a
direction of flow, the passenger compartment element
comprising:
a functional component selected from the group consisting
of electrical components and electronic components; and
a housing in which at least one said functional component
is disposed, said housing configured for being disposed in the
passenger compartment of the motor vehicle, on or behind the
inner side of the front windshield in a region through which the
airstream flows, said housing having an outer contour for being
disposed in the airstream, said outer contour defining cross-
sectional surfaces, which a part of the airstream flows along, said
cross-sectional surfaces defining a rounded leading end and a
flow-off region of said outer contour, said cross-sectional
surfaces decreasing from said leading end towards said flow-off
region, said leading end having a leading end outer contour
radius being larger than a flow-off region outer contour radius of
said flow-off region, said housing having a housing surface
configured for facing the windshield, said housing surface
defining a side of said housing spanning from said leading end to
2
Appeal 2016-005401
Application 13/354,549
said flow [-] off region, said housing surface being elongated
along a direction from said leading end to said flow [-] off region.
ANALYSIS
Anticipation by or Obviousness over Tsang
Appellants present separate arguments for independent claim 1 and
dependent claims 2 and 18. We address each claim separately with the
remaining claims standing or falling with their respective parent claim. See
37C.F.R. §41.37(c)(l)(iv).
Claim 1
Independent claim 1 is directed to a passenger compartment element
for a motor vehicle reciting “a housing” with “said housing having a housing
surface configured for facing the windshield.” See App. Br. 17—18, Claims
App. Regarding this latter “housing surface” that faces the windshield,
claim 1 recites, “said housing surface being elongated along a direction from
said leading end to said flow off region.” Id. at 18.
The Examiner finds that Tsang discloses “a housing (the outer
housing of the camera which houses the camera components).” Final Act. 3.
The Examiner further finds “said housing having a housing surface (the front
portion as shown in FIG. 2) configured for facing the windshield.” Final
Act. 3. Regarding the housing surface having a “direction from said leading
end to said flow off region,” the Examiner references Tsing’s Figure 2 and
correlates the bottom portion shown therein to the recited “leading end” and
correlates the top portion shown therein to the recited “flow-off region.”
Final Act. 3. Regarding whether the direction of the housing surface can be
said to be elongated, the Examiner proffers, in the Answer, a definition for
the term “elongated,” i.e., “elongated means ‘having more length than width;
3
Appeal 2016-005401
Application 13/354,549
slender.’” Ans. 14 (citing http://www.thefreedictionary.com/elongated).
Based on this definition, the Examiner states that Figure 3 of Tsang
shows the housing surface having more length (length being
taken to be measured in the Y direction, see annotated FIG. 3
below) along a direction from the leading end to the flow off
region (which is considered to be along the Y axis, from bottom
to top) than width (width being taken to be measured in the Z
direction, see annotated FIG. 3 below).
Ans. 14. The Examiner’s referenced “annotated FIG 3” is reproduced
below.
Above is the Examiner’s annotation of the front (Fig. 2) and side (Fig.
3) view of Tsang’s video camera showing their orientation along the X, Y,
and Z axes. Figure 2 of Tsang is “a front elevational view” of a video
camera. See Tsang Cover Sheet, Description. Figure 3 of Tsang is “a left
side elevational view” of a video camera. See Tsang Cover Sheet,
Description.
4
Appeal 2016-005401
Application 13/354,549
As indicated above, the Examiner correlates the length and width directions
(which define “elongated”) to the Y and Z axes, respectively. Hence, and
based on the foregoing, the Examiner “maintains that [figure 3 of Tsang]
shows that the housing surface (i.e. the front half of the camera which is the
right half of the camera in the orientation shown in FIG. 3) is elongated as
claimed.” Ans. 14, id. at 16.
Appellants do not dispute the Examiner’s proposed definition of the
term “elongated.” being in terms of length and width. Reply Br. 3 (“FIG. 3
does show an elongated perspective side view” (emphasis omitted)). Rather,
Appellants contend that the housing surface identified by the Examiner only
addresses “a part of the alleged ‘housing surface’” and that “the Examiner’s
reliance only on [Figure] 3 to show the limitation recited in claim 1 is
absurd.” Reply Br. 3. In support of this argument, Appellants contend that
this is because the “housing surface” of Tsang is three-dimensional and “has
an extent in the X, Y, and Z axes.” Reply Br. 3.
Although Appellants are correct that a three-dimensional object
extends along three axes, the claim term “elongated” in the present matter is
defined only in terms of two of them, length and width, and Tsang’s Figure
3 depicts these two directions. Appellants do not indicate how Tsang’s
Figure 3 fails to illustrate Tsang’s “housing/front portion” (i.e., that portion
facing the windshield) as not “having more length than width.” See Ans. 14.
Appellants also contend that claim 1 “does not recite that a portion of
the housing surface is elongated” and that the Examiner’s reasoning fails
because only “[a] portion of this extent is shown in [Figure] 3” and that “one
cannot only consider the extent in the alleged Y and Z directions.” Reply
Br. 3, 4. In support of this argument, Appellants contend that this is
5
Appeal 2016-005401
Application 13/354,549
“because the housing surface also includes the extent in the alleged X
direction.” Reply Br. 3; see also id. at 5. However, any extent in the X
direction is not relevant in ascertaining whether the housing surface is
“elongated” because “elongated” is only defined in terms of the Y and Z
direction, not the X direction. See supra. Further, Appellants contend,
“Tsang discloses a housing surface that is a disk with curved edges” and that
“it is decisive that the width is greater than the length.” Reply Br. 4.
However, the “width” referred to here by Appellants (i.e., along the X-axis)
is not the same as the “width” identified by the Examiner and employed
when ascertaining “elongated.” Thus, Appellants’ contention is not
persuasive of Examiner error.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as anticipated by, or in
the alternative, as obvious over Tsang. Accordingly, we sustain the
Examiner’s rejection of claim 1 as anticipated by, or in the alternative, as
obvious over Tsang. Consequently, we also sustain the Examiner’s rejection
of claims 3—5, 7, 14—17, 19, and 20, which fall with claim 1.
Claim 2
Claim 2 depends from claim 1 (reciting “said housing having an outer
contour”) and recites the additional limitation “wherein an extent of said
outer contour in a transverse direction with respect to the direction of flow is
smaller than an extent of said outer contour in the direction of flow.” See
App. Br. 17—18, Claims App. The Examiner relies on Figures 1—3 of Tsang
as disclosing this limitation finding that the direction of flow from bottom to
top is longer than the direction of flow from left to right. Final Act. 4.
Appellants disagree contending, “Tsang discloses an extent of the outer
6
Appeal 2016-005401
Application 13/354,549
contour is in fact greater in the transverse direction than in a direction of
flow.” App. Br. 11.
In the Answer, the Examiner clarifies stating that there are multiple
lengths of a transverse outer contour (i.e., left to right), and that in Tsang,
“the [transverse] length at the top is smaller than the length in the center, as
the outer contour tapers inwards towards the top.” Ans. 17. Appellants do
not address this statement by the Examiner or otherwise explain how
Tsang’s device fails to disclose an extent in the direction of flow (i.e.,
bottom to top) larger than an extent in the transverse direction (left to right).
Accordingly, we sustain the Examiner’s rejection of claim 2.
Claim 18
Claim 18 depends from claim 1 and includes the additional limitation,
“wherein said housing surface is configured to be substantially parallel to the
windshield.” App. Br. 20, Claims App. The Examiner states that Tsang’s
“housing surface is configured to be substantially parallel to the windshield
(inasmuch as it is capable of this use).” Final Act. 6. Appellants contend,
“[t]he [EJxaminer’s allegation does not make sense” and that “[i]t is not seen
how [Tsang’s curved] surface with such a shape could ever be reasonably
considered as being substantially parallel to a windshield.” App. Br. 13.
The Examiner responds stating, “a recitation of the intended use of the
claimed invention must result in a structural difference” and that
“windshields exist with many different shapes and curvatures.” Ans. 18.
Accordingly, “it is the Examiner’s position that the prior art structure is
capable of this use.” Ans. 18. In response, Appellants contend, “the
limitation is not intended use” and that “the housing surface is constructed to
be parallel [to] specific windshields.” Reply Br. 7; see also id. at 8.
7
Appeal 2016-005401
Application 13/354,549
However, a statement as to how Appellants’ housing surface is to be
constructed does not detract from Tsang’s housing surface also being
capable of being parallel to other (or even the same set of) windshields.
Accordingly, we sustain the Examiner’s rejection of claim 18.
Other Rejections
Regarding the other stated rejections relying on Tsang (a) in view of
Wilt; (b) in view of Ohsumi; and, (c) in view of combinations involving
Wilt, Ohsumi, and Tsai, Appellants merely represent that these additional
references do “not make up for the deficiencies of Tsang.” See App. Br. 14—
15. We are not persuaded of any deficiencies in Tsang, and accordingly, we
sustain the rejections of these claims.
DECISION
We AFFIRM the decision of the Examiner to reject claim 1—5, 7, and
14—20 as anticipated by or obvious over Tsang.
We AFFIRM the decision of the Examiner to reject claims 1—7, IS­
IS, and 20 as unpatentable over Tsang and Wilt.
We AFFIRM the decision of the Examiner to reject claims 1—7 and
13—20 as unpatentable over Tsang and Ohsumi.
We AFFIRM the decision of the Examiner to reject claims 13, 16, and
17 as unpatentable over Tsang, Tsang and Wilt or Ohsumi, and further in
view of Tsai.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8