Ex Parte Tabaczynski

Patent Trial and Appeal Board

Mar 30, 2017

12541826 (P.T.A.B. Mar. 30, 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.
12/541,826 08/14/2009 Michael TABACZYNSKI 040675-1137 4253
22428 7590 04/03
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
JACKSON JR, JEROME
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL TABACZYNSKI
Appeal 2015-005202
Application 12/541,8261
Technology Center 2800
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT B. HOWARD, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejections of claims 1—10, 16—21, and 23. An oral hearing was scheduled
March 16, 2017. See Notice of Hearing 1 (Jan. 20, 2017). Appellant waived
the hearing by failing to confirm attendance of the hearing within 21 days of
the Notice of Hearing mailing date. Appellant also did not appear at the
scheduled hearing. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies TK Holdings Inc. as the real party in interest. App. Br.
1.
Appeal 2015-005202
Application 12/541,826
Invention
Appellant discloses a “combined heating system and occupant sensing
system for a vehicle seat.” Abstract.
Exemplary Claim
Illustrative claim 1 is reproduced below:
1. A combined heating system and occupant sensing
system for a vehicle seat, comprising:
first and second electrodes electrically connected in
series; and
a controller configured to direct a same heating current to
the first and second electrodes,
wherein the controller is configured to isolate the first
and second electrodes from the heating current and, at the same
time, provide a sensing current to only one of the first and
second electrodes.
Rejections
The Examiner rejects claims 1—10, 16—21, and 23 under 35 U.S.C.
§112, first paragraph, as not being enabled by the disclosure. Final Act. 3.
The Examiner rejects claims 1—10, 16—21, and 23 under 35 U.S.C.
§112, second paragraph, as being indefinite. Final Act. 4.
The Examiner rejects claims 1—10, 16—21, and 23 under 35 U.S.C.
§ 102(b) as being anticipated by Stanley (US 2004/0113634 Al; June 17,
2004). Final Act. 4—6.
The Examiner alternatively rejects claims 1—10, 16—21, and 23 under
35 U.S.C. § 103(a) as being obvious over Stanley. Final Act. 4—6.
The Examiner alternatively rejects claims 1—10, 16—21, and 23 under
35 U.S.C. § 103(a) as being obvious over Stanley and Male (US 7,042,690
B2; May 9, 2006). Final Act. 6.
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Application 12/541,826
ANALYSIS
Issue 1: Did the Examiner err in finding the invention of claim 1 is not
enabled?
In rejecting claim 1 under 35 U.S.C. § 112, first paragraph, the
Examiner finds that “[h]eating and sensing structures critical or essential to
the practice of the invention, but not included in the claim . . . [are] not
enabled by the disclosure.” Final Act. 3. In particular, the Examiner finds
that “[t]wo electrodes and a controller cannot function as a combined heating
system and occupant sensing system.” Id.', see also Ans. 9 (“[t]here is no
sensor claimed or defined by [the] two ‘electrodes’ combined or otherwise”).
Appellant contends the Examiner erred because, the Specification
discloses “a first electrode or secondary heater 406, a second electrode or
primary heater 412, and a controller 410.” App. Br. 7 (citing Spec. Fig. 4).
That is, Appellant argues that the claimed first and second electrodes, when
supplied with a heating current directed to them by the controller recite the
essential elements for the heating system aspect of the claimed invention
(i.e., of the combined heating system and occupant sensing system).
Appellant further argues claim 1 recites that “one of the first and second
electrodes [is] supplied with a sensing current.” App. Br. 8. That is, that the
recited controller’s providing a sensing current to only one of the first and
second electrodes recites the essential elements for the occupant sensing
system aspect of the claimed invention.
Appellant’s arguments demonstrating that the Specification discloses
how first and second electrodes, and a controller, configured in the claimed
manner, provide for the structures critical or essential to the practice of the
invention are persuasive. Appellant’s arguments are consistent with the
cited portions of the Specification (see, e.g., Spec. Tfl[ 29—36 (cited by App.
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Application 12/541,826
Br. 7)) and with the claim recitations. The Examiner’s findings do not show
that the Specification’s disclosures are non-enabling, or that claim 1 omits
matter that is essential to the invention. Therefore, the Examiner’s findings
do not show that the invention of claim 1 is not enabled.
Accordingly, we do not sustain the Examiner’s 35U.S.C. § 112, first
paragraph, rejection of claim 1, and claims 2—10, 16—21, and 23, which are
similarly rejected.
Issue 2\ Did the Examiner err in finding the invention of claim 1 is
indefinite?
In rejecting claim 1 under 35 U.S.C. § 112, second paragraph, the
Examiner finds that “[a]s above, there is no sensor structure claimed and no
definitive structure defining a ‘combined heating system and occupant
sensing system.’” Final Act. 4. In particular, the Examiner finds “[t]he
claim language is not clear because ‘electrodes’ and a controller as claimed
do not define a structure capable of sensing occupancy. Two electrodes in
series that have a same heating current cannot form a sensor capacitor where
only one electrode has a sensing current.” Ans. 10.
We note that claim 1 does not recite two electrodes simultaneously
having the same heating current and only one of the electrodes having a
sensing current. Rather, claim 1 recites that the controller is configured to
direct a heating current to the two electrodes and also configured to isolate
the two electrodes from the heating current (and at the same time provide a
sensing current to only one electrode). In other words, the claimed
controller is configured to control whether the heating current is directed to
the two electrodes. Such control is illustrated in the Specification’s Figure
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Application 12/541,826
4, which shows that controller 410 operates high side switch control 404 and
low side switch control 416.
Furthermore, as discussed above with respect to the Examiner’s
35 U.S.C. § 112, first paragraph, rejection, the claimed controller’s
providing a sensing current to only one of the first and second electrodes
claims the essential elements for the occupant sensing system aspect of the
claimed invention. Although Appellant could have provided greater clarity
using language such as “able to direct/isolate” or “capable of directing/
isolating” rather than “configured to,” the claim recitations reasonably
apprise an artisan of ordinary skill as to the scope of the claimed invention.
Therefore, the Examiner’s findings do not show the invention of claim 1 is
indefinite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 1, and claims 2—10, 16—21, and 23,
which are similarly rejected.
Issue 3: Did the Examiner err in finding that Stanley teaches or suggests “a
controller configured to direct a same heating current to the first and second
electrodes . . . [and] configured to isolate the first and second electrodes
from the heating current and, at the same time, provide a sensing current to
only one of the first and second electrodes,” as recited in claim 1?
In rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Stanley—and alternatively under 35 U.S.C. § 103(a) as being obvious over
Stanley alone or in combination with Male—the Examiner finds that
Stanley’s heating element 34 (or one of electrodes 88 or 92 of heating
element 34) and sensor electrode 40 teach or suggest the claimed first and
second electrodes, with Stanley’s circuitry as a whole teaching or suggesting
the claimed controller. Final Act. 5; Ans. 6—8.
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Application 12/541,826
Appellant contends the Examiner erred because in one embodiment
“Stanley explicitly discloses that the same current is not directed to the
heating element 34 and the sensor electrode 40.” App. Br. 3; see also Reply
Br. 2; Stanley Figs. 1,3. Appellant contends that, in another embodiment of
Stanley, where heating element 34 also acts as sensor electrode 40, a sensing
“current cannot be directed to only one of the heating element 34 and the
sensor electrode 40.” App. Br. 4; see also Reply Br. 2; Stanley Figs. 4, 13.
We find Appellant’s arguments persuasive. The Examiner finds that
“electrodes 34 and 40 form a capacitor structure, and current across one
plate of the capacitor must be equal to (the same as) the current across the
other capacitor plate electrode.” Ans. 6. That is, the Examiner explicitly
relies on the embodiment of Stanley where heating element 34 and sensing
electrode 40 are different structural elements. However, the Examiner’s
finding that these elements form a capacitor structure is not supported by
Stanley, which illustrates heating element 34 as merely being proximal to
sensing electrode 40 (see Stanley Fig. 3) or being the same structure as
sensing electrode 40 (see Stanley Fig. 13). When Stanley is driven with a
heating current, current would flow through heating element 34 rather than a
charge accumulating on (or being depleted from) heating element 34. See
Stanley Figs. 1,3. Such accumulation or depletion would be needed for
heating element 34 and sensing electrode 40 to form a capacitor structure
when a heating current is being driven through heating element 34.
Because heating element 34 and sensing electrode 40 do not act as a
capacitor structure when heating element 34 is driven with an electrical
current, the Examiner’s findings do not show that the circuit directs the same
heating current to sensing electrode 40. Thus, the Examiner’s findings do
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Application 12/541,826
not show that the embodiment of Stanley relied upon teaches or suggests a
controller configured to direct a same heating current to the first and second
electrodes.
Furthermore, the embodiment of Stanley where heating element 34
and sensing electrode 40 are the same structure does not teach or suggest
provide a sensing current to only one of the first and second electrodes.
Therefore, the Examiner’s findings do not demonstrate that Stanley teaches
or suggests “a controller configured to direct a same heating current to the
first and second electrodes . . . [and] configured to isolate the first and
second electrodes from the heating current and, at the same time, provide a
sensing current to only one of the first and second electrodes,” as recited in
claim 1. The Examiner also does not show that Male cures this deficiency.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. §§ 102(b),
103(a) rejections of claim 1, and claims 2—10, 16—21, and 23, which contain
similar recitations.
OBJECTIONS
In addition to the rejections discussed above, the Examiner objects to
the drawings under 37 C.F.R. § 1.83(a). Final Act. 2—3; Ans. 10.
Appellant acknowledges the objections “are more properly addressed
in a petition to the Group Director,” but submit “the objections appear to
address issues that overlap with the rejections under 35 U.S.C. § 112.” App.
Br. 11. However, mere overlap of issues is insufficient to bring an objection
within the Board’s jurisdiction.
“The line of demarcation between appealable matters for the Board
and petitionable matters for the Director . . . should be carefully observed.”
MPEP § 1201. A “[pjetition may be taken to the Director in the case of
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Application 12/541,826
objections or requirements not involved in the rejection of any claim.”
37 C.F.R. § 1.113(a) (2013). An objection can become appealable when it is
involved in the rejection of a claim—for example, such as when “both the
claims and specification contain new matter either directly or indirectly, and
there has been both a rejection and objection by the examiner.” MPEP
§ 2163.06.11.
Appellant has not shown that the Examiner’s objections are involved
with rejections of the claims in such a manner that it is within our authority
to reach the merits of the objections. Therefore, our reversal of the
Examiner’s rejection does not encompass the objections.
DECISION
We reverse the Examiner’s decision rejecting claims 1—10, 16—21, and
23.
REVERSED
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