Ex Parte Schmidt

Board of Patent Appeals and Interferences

Jul 31, 2012

11506123 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/506,123 08/17/2006 William Paul Schmidt ML 0225 PUS 6615
27256 7590 07/31/2012
Dickinson Wright PLLC
38525 Woodward Avenue
Suite 2000
Bloomfield Hills, MI 48304
EXAMINER
DOAK, JENNIFER L
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
07/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Mirror Lite Company
Inventor: William Paul Schmidt

____________________

Appeal 2009-014857
Application 11/506,123
Technology Center 2800
____________________

Before RICHARD E. SCHAFER, ALLEN R. MacDONALD, and
SCOTT R. BOALICK, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014857
Application 11/506,123

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Mirror Lite Company (Applicant) appeals from an Examiner’s decision
rejecting claims 17-26. 35 U.S.C. §§ 6(b) and 134(a). We affirm.

Exemplary Claim
17. A method for improving the field of vision of a
crossview mirror assembly in front of and to the side of a
school bus, the crossview mirror assembly having a housing
with an arcuate mirror fixedly secured thereto and being
mounted to the front fender of the school bus using a mounting
support, the mounting support also being coupled within a
tubular region of the crossview mirror assembly, the tubular
region defining a center point, the method comprising:
coupling an electronic actuator within the crossview
mirror assembly to the mounting support;
coupling an electronic controller within a cab area of the
school bus;
electronically coupling said electronic actuator to said
electronic controller; and
activating said electronic controller to send an electrical
signal to said electronic actuator, said electronic actuator
interpreting said electronic signal and rotating in a first
direction about the center point about a horizontal plane in
response to said interpreted electronic signal, thereby rotating
said mirror assembly in said first direction about said horizontal
plane about the center point, said first direction selected from
the group consisting of a clockwise direction and a
counterclockwise direction;
wherein said mirror assembly together with said arcuate
mirror can be brought into compliance with Federal Motor
Vehicle Safety Standards 111 initially and repeatedly solely by
an operator of the school bus and without the operator having to
leave the school bus, thereby protecting the safety of the
children in the school bus.
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Application 11/506,123

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Rejections
The Examiner maintains the following rejections:
1. Claims 17-19 and 26 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Englander1 and Foster2;
2. Claims 20-22 under 35 U.S.C. § 103(a) as unpatentable over the
Englander-Foster combination with additional reliance on Herzog3 and Tate4; and
3. Claims 23-25 under 35 U.S.C. § 103(a) as unpatentable over the
Englander-Foster combination with additional reliance on Tate and Adams.5
Applicant’s Contentions
1. Applicant contends that the Examiner erred in rejecting Claims 17-19
and 26 over Englander and Foster because:
Neither of the references disclose or suggest a method of
adjusting a cross-view mirror for a bus at all, let alone a method
of continuously and repeatedly allowing cross-view mirrors on
buses to be realigned when necessary without endangering the
safety of the children on the bus at any time. Allowing initial
alignment by one person and allowing realignment by one
person without the necessity of the driver leaving the bus are
significant benefits of the present invention.
App. Br. 8.
2. Applicant further contends that the rejection of Claims 17-19 and 26
should be reversed because neither Englander or Foster teach a mirror lens that “is
fixed on the housing and only moves with the housing and not independently . . . .”
Id. at 8-9.

1 U.S. Patent 6,636,822 B2 issued Oct. 21, 2003 (Englander).
2 U.S. Patent 2,877,686 issued Mar. 17, 1959 (Foster).
3 U.S .Patent 4,502,759 issued Mar. 5, 1985 (Herzog).
4 U.S. Patent 4,679,158 issued July 7, 1987 (Tate).
5 U.S. Patent 6,350,037 B1 issued Feb. 26, 2002 (Adams).
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Application 11/506,123

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3. As to Claims 18 and 19, Applicant contends that neither Englander or
Foster teach an electronic actuator limited to rotating the mirror assembly within a
predetermined angle (Claim 18) and that angle be between 0° and 45° in both the
clockwise and counterclockwise directions (Claim 19). Id. at 9.
4. Applicant contends that the rejection of Claims 20-22 should be reversed
because
all four of the cited references used in this rejection relate to
different structures for different purposes than those specified
and required in the Applicant’s claims. It is pure speculation to
combine the references in the manner utilized by the Examiner.
There also is no teaching, suggestion or motivation found in
any of the four references which would cause persons or
ordinary skill in the art to combine them in the speculative
manner proposed by the Examiner.
Id. at 10.
5. As to the rejection of Claims 23-25 Applicant says the Examiner erred
because “[t]here is no teaching, suggestion or motivation to combine the four
references in the manner suggested by the Examiner . . . .” Id. at 10.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Applicant’s
arguments. We fail to see error in the Examiner’s decision to reject the claims.
As to Contention 1, as correctly noted by the Examiner in her Answer,
Applicant points out certain deficiencies in each reference rather than challenging
the conclusion based upon their combined teachings. The fact that “[n]either
Englander nor Foster disclose or suggest [the claimed] method” (id. at 9) does not
rebut the obviousness conclusion reached by the Examiner based upon the
combined teachings of those references. The test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
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Application 11/506,123

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person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Applicant has not challenged the combinability of the teachings of Englander and
Foster.
In any event, we agree with the Examiner’s conclusion with respect to the
obviousness of the claimed subject matter.
The record establishes that cross-view mirrors were known prior to
Applicant’s invention. Specification, ¶ 11. Such mirrors have been required on
certain vehicles such as school buses. Englander, 1: 12-24; Specification, ¶ 11.
Cross-view mirrors are typically mounted on the front fenders to provide views of
both sides and the front of the vehicle. Englander 1: 16-21; Specification, ¶ 11. As
with other types of vehicle mirrors, cross-view mirrors need to be repositioned for
each driver of the vehicle. Specification, ¶ 11. Because of the locations of the
mirrors on the bus (see Applicant’s Fig. 1), the adjustment can be “a time
consuming process that typically requires two people –one inside the bus and one
adjusting the mirror – to ensure proper adjustment.” Id. at ¶ 12.
Applicant’s invention addresses this problem “provid[ing] an easier method
for adjusting a [cross-view] mirror . . . .” Id. at ¶ 13. Applicant’s solution was to
provide “an electronically controlled [cross-view] mirror controllable by the
operator from the cab of the vehicle.” Id. at ¶ 14.
The concept of electronically controlling vehicle mirrors, however, was
already known to those working in the motor vehicle mirror art. Foster teaches an
electronically adjustable rearview mirror for a motor vehicle that “can be readily
and accurately positioned by the driver from within the vehicle . . . .” Foster, 1:
42-44. The positioning of the mirror is electronically controlled using switches
convenient to the driver. Id. at 3: 64-65. This allows the driver to easily adjust the
position of, for example, the right side mirror from inside the cab while
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Application 11/506,123

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maneuvering the vehicle. Id. at 3: 65-70. One having ordinary skill in the art
would have recognized the benefits and convenience of remote controlled vehicle
mirrors such as those taught by Foster. It would have been prima facie obvious to
equip known cross-view mirror assemblies with electric components and controls
of the type described by Foster.
Applicant’s second contention is that the claims require that the mirror be
fixed to the housing and this feature is not disclosed in the references. To the
contrary, Foster’s mirror 15 is taught fixed to the housing or casing 3. Id. at 2: 14-
15 and Figures 1 and 2. As noted by the Examiner, “[i]t is apparent that if the
mirror is not ‘fixed,’ that is securely placed or fastened, within the housing the
result would be that it would fall out.” Ans. 10.
The third contention is “neither Englander nor Foster disclose or suggest”
the limitations of Claims 18 and 19 that the rotation of the mirror be limited to a
predetermined angle or to an angle between 0º and 45º. The Examiner, referring to
Foster’s Figure 3, found that Foster teaches these limitations. Id. Applicant has
not provided any explanation why this finding is not reasonable. We have
reviewed the relevant portions of Foster and hold that the Examiner’s finding is
supported and reasonable.
Applicant’s fourth and fifth contentions challenge the combinability of the
Englander, Foster, Herzog and Tate references applied against Claims 20-22
(Contention 4) and of the Englander, Foster, Tate and Adams references applied
against Claims 23-25 (Contention 5). In both her Final Rejection and Answer, the
Examiner made fact findings as to the relevant teachings of the references and
explained why the combined teachings rendered the claimed subject matter
unpatentable. Final, 5-7; Answer 6-8 and 11-13. Applicant has presented only
contentions without pointing to any evidence or argument challenging the
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Application 11/506,123

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Examiner’s findings or conclusions. Our own review reveals no error in those
findings and conclusions.
We have considered Applicant’s remaining arguments and find none that
warrant reversal of the Examiner’s rejections. Cf. Hartman v. Nicholson, 483 F.3d
1311, 1315 (Fed. Cir. 2007).

DECISION
The Examiner’s decision to reject claims 17-26 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)(1)(iv).

AFFIRMED

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