Ex Parte Tiesler et al

Board of Patent Appeals and Interferences

May 17, 2012

10710897 (B.P.A.I. May. 17, 2012)

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.
10/710,897 08/11/2004 John M. Tiesler IAC 04966 PUS 4896
25286 7590 05/18/2012
BROOKS KUSHMAN P.C.
INTL. AUTOMOTIVE COMPONENTS GROUP
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
FIGUEROA, FELIX O
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
05/18/2012 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 JOHN M. TIESLER and JIM MESTEMAKER
____________

Appeal 2009-015098
Application 10/710,897
Technology Center 2800
____________

Before THOMAS S. HAHN, CARL W. WHITEHEAD, JR., and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 6-12, 14, 16-18, and 21-24. Claims 3-5, 13, 15, 19,
and 20 have been canceled. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

Invention
Appellants’ invention relates to an overhead vehicle assembly that
supplies electrical power to configurable consoles. See generally Spec.
¶ 0001. Claim 1 is reproduced below with the key disputed limitations
emphasized:
1. A vehicle overhead module powerstrip assembly
comprising:
at least one overhead attachment strip configured to couple to a
vehicle overhead structure, said at least one overhead attachment
strip including a T-shaped main center member having a T-body and
a T-cap;
at least one electrically conductive strip coupled to said at least one
attachment strip, said at least one electrically conductive strip
comprising a power strip positioned on said T-body and a ground
strip positioned on said T-cap;
a plurality of modular connectors each of which comprising a
plurality of electrical contacts having a plurality of attachment
positions along said at least one electrically conductive strip, said
plurality of modular connectors removable from said at least one
electrically conductive strip, position interchangeable with each other,
and configured to couple at least one overhead electronic module to
said at least one electrically conductive strip;
at least one flange that covers at least a portion of said at least one
electrically conductive strip, said at least one flange is flexible and
flexes outward when said plurality of modular connectors are
removed to at least partially cover and prevent access to said at least
one conductive strip.
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The Examiner relies on the following as evidence of unpatentability:
Dutta US 5,599,086 Feb. 4, 1997
Tiesler US 6,575,528 B2 June 10, 2003
Marmaropoulos US 6,854,988 B2 Feb. 15, 2005
(filed June 28, 2002)

THE REJECTIONS
1. The Examiner rejected claims 1, 2,1 6,2 7, 9-12, 14, 16-18, 23, and
24 under 35 U.S.C. § 103(a) as unpatentable over Dutta and Marmaropoulos.
Ans. 3-9.
3

2. The Examiner rejected claims 8, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Dutta, Marmaropoulos, and Tiesler. Ans. 9.

THE OBVIOUSNESS REJECTION OVER DUTTA AND MARMAROPOULOS
Claims 1, 6, 7, 11, 12, 16-18, 23, and 24
Regarding representative independent claim 1, the Examiner finds that
Dutta teaches or suggests all the recited features, except for the attachment
strip’s recited configuration. Ans. 3. The Examiner cites to Marmaropoulos
to teach (1) an attachment strip having a T-shape configuration with a
conductive strip coupled to the T-body and a ground strip positioned on the
T-cap (Ans. 3-4, 10-11) and (2) modular connectors with contacts having

1
The Examiner included canceled claim 3 in the rejection. See Ans. 3-4.
For purposes of this opinion, we presume this was an error.
2
Dependent claim 6 improperly depends from canceled claim 3. Similar to
the Examiner (Ans. 2), we will presume claim 6 depends from claim 1.
3
Throughout this opinion, we refer to the Appeal Brief filed May 9, 2008
and the corrected Examiner’s Answer mailed June 5, 2009, originally mailed
April 17, 2009. As noted by the Examiner in an Office Communication
mailed September 10, 2009, the Reply Brief filed July 17, 2009 was
untimely filed and has not been considered. See 37 C.F.R. § 41.41(a)(1).
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attachment positions capable of performing the recited functions (see Ans.
4). The Examiner then proposes incorporating Marmaropoulos’ teachings
into Dutta. See Ans. 4, 11.
Appellants argue that Marmaropoulos does not teach mounting any
electrical connections, including a ground, on a T-cap. Br. 6-7. Appellants
further contend that Marmaropoulos’ T-shaped member is not part of the
attachment strip coupled to an overhead structure, as recited, but rather is
part of an electrical device that exposes all electrical connections when
removed. Br. 7.

ISSUES
Under § 103, has the Examiner erred in rejecting representative claim
1 by finding that Dutta and Marmaropoulos collectively would have taught
or suggested:
(1) an overhead attachment strip configured to couple to a vehicle
overhead structure, the overhead attachment strip including a T-shaped main
center member having a T-cap; and
(2) an electrically conductive strip comprising a ground strip
positioned on the T-cap?

FINDINGS OF FACT (FF)
1. The Examiner finds that Marmaropoulos’ Figure 1 shows an
attachment strip including a T-shaped main center member having a T-body
and T-cap. An annotated Figure 1 included in the Response to Argument
section (Ans. 10) follows:
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Annotated Marmaropoulos’ Figure 1 shows
a sliding track for attaching an electronic device

2. Marmaropoulos discloses an electronic device 100 having a
contatct 150 for connecting to a ground. Col. 3, ll. 64-66; Fig. 1.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 1, which recites, in pertinent part, an overhead attachment
strip configured to couple to a vehicle overhead structure, the overhead
attachment strip including a T-shaped main center member. At the outset,
we echo the Examiner’s position (Ans. 11) that the rejection is based on
Dutta and Marmaropoulos (Ans. 3-4) and thus attacking Dutta or
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Marmaropoulos individually (see, for example, Br. 7 (stating “[n]either the
Dutta reference no[r] the Marmaropoulos reference teaches . . .”)) fails to
demonstrate non-obviousness. The Examiner admits Dutta does not teach an
attachment strip configured as recited in claim 1 (see Ans. 3) and proposes
to incorporate Marmaropoulos’ teachings related to another attachment strip
into Dutta (see Ans. 4, 11). Thus, any arguments attacking Dutta or
Marmaropoulos individually are not found persuasive.
Additionally, Appellants admit Marmaropoulos has a T-shaped
member (see Br. 7 (stating “the T-shaped member 10 in Marmaropoulos . .
.”)) but contends that Marmaropoulos fails to teach mounting a ground on
the T-cap and argues the T-shaped member is not an attachment strip
coupled to a vehicle’s overhead. Br. 6-7. We disagree. First, as stated
above, the Examiner has proposed incorporating the features of
Marmaropoulos’ sliding track 10 that behaves like an attachment strip (col.
2, ll. 43-46) into Dutta’s vehicle overhead module powerstrip assembly. See
Ans. 3-4. Thus, the combined powerstrip assembly – not Marmaropoulos
alone – teaches a resulting assembly strip configured to couple to a vehicle
overhead structure and having a T-shaped main center member as recited.
Second, Marmaropoulos teaches that the contact 150 is for connecting (FF
2) or connects to a ground. Figure 2 in Marmaropoulos shows contact 150
connects to a conductive element 50 that is located within the Examiner’s
labeled T-cap. See Fig. 2; see also FF 1 (labeled as “Ground contact.”) We
therefore find that Marmaropoulos, when combined with Dutta, teaches a
ground strip positioned in the attachment strip’s T-cap as recited.
We further agree with the Examiner (Ans. 11) that track 10 in
Marmaropoulos is not part of an electrical device (e.g., 210), as Appellants
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assert. Br. 7. Rather, “electrical device 210 is [sic] does not include
attachments strip 10 . . . .” Ans. 11. Moreover, as the Examiner states,
element 210 refers to a different embodiment (i.e., Figs. 5-6) than the
Examiner relies on for the § 103 rejection. Id. Also, as the Examiner notes
and we adopt (Ans. 11), Marmaropoulos teaches the recited T-shaped
member having a power strip in the T-body, a ground on the
T-cap, and protective flanges (e.g., curvilinear edges 20) that cover the T-
body. Thus, when combining this teaching with Dutta, the collective
powerstrip assembly will have an attachment strip with all the recited
features in claim 1. Moreover, these edges or flanges (e.g., 20) selectively
enclose or seal the conductive elements and thus prevent access to a
conductive strip of the connector (e.g., 110, 115) as recited (see Ans. 4;
Abstract) and do not expose electrical connections as asserted (Br. 7).
Without citing supporting evidence, Appellants also contend that none
of the cited references alone or in combination teach the recited claim
limitations. Br. 7. Pointing out the purportedly novel structure of the
invention and then merely asserting that references fails to teach the claim
limitations in the present invention (see id.) is not considered a separate
argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011).
While claims 16 (Br. 8-10) and 24 (Br. 10-11) were separately argued,
the arguments are similar to those made in connection with claim 1 and thus
are grouped with claim 1. Compare Br. 6-7 with Br. 8-11. We are not
persuaded for the above reasons. For the foregoing reasons, Appellants have
not persuaded us of error in the rejection of independent claims 1, 16, and
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24, as well as dependent claims 6, 7, 11, 12, 17, 18, and 23 that were not
separately argued with particularity (Br. 7, 10).

Claim 2
Regarding claim 2, the Examiner finds that Dutta as modified by
Marmaropoulos teaches the attachment strip is a single extruded component.
Ans. 4, 12. The Examiner points to Figures 1, 3, and 4 in Marmaropoulos
and further notes that the process of making the device cannot distinguish
over the prior art. See Ans. 12. Also, Appellants argue that the strip is not
in the form of a single extruded component. Br. 7.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 2 by finding
that Dutta and Marmaropoulos collectively would have taught or suggested
an attachment strip in the form of a single extruded component?

ANALYSIS

Based on the record before us, we find no error in the Examiner’s
rejection. The recitation to the component being “extruded” is a process
limitation or the phrase, “a single extruded component” is a
product-by-process claim. As the Examiner indicates (Ans. 12),
patentability of these limitations is based on the product itself and structure
implied by the process, but not its method production (e.g., extruding). See
In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
The Examiner has provided rationale tending to show the claimed
attachment strip in the form of a single extruded component as shown by
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Figures 1, 3, and 4 in Marmaropoulos when combined with Dutta. See Ans.
12. The burden has thus shifted to Appellants to establish an unobvious
difference between the claimed product and the prior art product. See In re
Marosi, 710 F.2d 799 (Fed. Cir. 1983). Appellants merely assert that
Marmaropoulos is not in the form of a single extruded component and have
not established an unobvious difference. See Br. 7.
Appellants repeat the argument that Marmaropoulos does not teach a
T-shaped member as part of the attachment strip. Br. 7. We disagree that
the combination fails to teach this feature for the above-stated reasons.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claim 2.

Claim 9
Regarding claim 9, the Examiner finds that Dutta as modified by
Marmaropoulos teaches a ground contact (i.e., 150), having spring
characteristics, and that the contact is in compression when in contact with
the ground strip. Ans. 5, 12-13. Appellants argue that the spring elements
in Marmaropoulos’ Figures 1 and 2 do not teach the limitations in claim 9
and also assert that Dutta fails to teach claim 9’s limitations. Br. 7-8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 9 by finding
that Dutta and Marmaropoulos collectively would have taught or suggested a
ground contact having spring characteristics, such that it is in compression
when in contact with the ground strip?

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ANALYSIS

Based on the record before us, we find no error in the Examiner’s
rejection. As explained above, Marmaropoulos teaches a ground strip (i.e.,
50) located in the T-cap and, thus when combined with Dutta, teaches the
electrical contacts comprising a ground contact. See also FF 2.
Additionally, the Examiner notes (Ans. 12-13) that Marmaropoulos shows
and teaches a contact (i.e., 150) that includes a spring (i.e., having spring
characteristics) and connects with the ground strip (i.e., 50) through the
spring. See Marmaropoulos, Fig. 2. We therefore find that Dutta when
combined with Marmaropoulos teaches a ground contact having spring
characteristics, such that it is in and capable of being in compression when
in contact with the ground strip. For the above reasons, Appellants have not
persuaded us of error in the rejection of claim 9.

Claim 10
Regarding claim 10, the Examiner finds that Dutta as modified by
Marmaropoulos teaches channels 12 and 14. See Ans. 13. Appellants argue
that Dutta and Marmaropoulos teach only a single channel – rather than a
plurality of channels – formed in the attachment strip connected to the
vehicle overhead structure and repeats that the cited references do not teach
a T-shaped mounting structure. Br. 8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 10 by finding
that Dutta and Marmaropoulos collectively would have taught or suggested
the overhead attachment strip comprising channels?
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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection. We agree with the Examiner (Ans. 13) that Marmaropoulos shows
an attachment strip with more than one channel. Specifically and contrary to
Appellants’ assertions (Br. 8), Marmaropoulos discloses channels 12 and 14
within track 10 or an attachment strip, as discussed in connection with claim
1. See also Marmaropoulos, col. 2, ll. 59-66; Fig. 2. Also, when this
teaching is incorporated into Dutta’s attachment strip, the resulting overhead
attachment strip connected to the vehicle overhead structure includes
multiple channels and not a single channel.
Concerning the recited references failing to teach the recited T-shaped
main center member, we refer to our previous discussion addressing claim 1.
For the above reasons, Appellants have not persuaded us of error in the
rejection of claim 10.

Claim 14
Lastly, concerning claim 14, the Examiner finds that Dutta as
modified by Marmaropoulos teaches the modular connector comprises an
insulator (i.e., Marmaropoulos’ 10) separating the electrical contacts and
having module attachment holes (i.e., 12 and 14) for attaching the insulator
to the overhead electronic module (i.e., 100). Ans. 5-6, 13. Appellants
argue neither Dutta nor Marmaropoulos teaches what is recited in claim 14.
Br. 8.

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ISSUE
Under § 103, has the Examiner erred in rejecting claim 14 by finding
that Dutta and Marmaropoulos collectively would have taught or suggested
the modular connector comprises an insulator having module attachment
holes for attaching the insulator to the overhead electronic module?

ANALYSIS

Based on the record before us, we find error in the Examiner’s
rejection. Rejecting claim 1, the Examiner maps Marmaropoulos’ track 10
to the recited attachment strip and a part of the electronic device 100 to the
modular connectors. See Ans 3-4. However, in rejecting claim 14, which
depends from claim 1, the Examiner now relies on the same element (i.e.,
track 10) as the insulator of the modular connector. We find the rejections
are inconsistent. In particular, track 10 in Marmaropoulos cannot be both
the recited attachment strip and the separately recited modular connector
comprising an insulator and having electrical contacts with attachment
positions along the conductive strip coupled to the attachment strip as claims
1 and 14 collectively require. For this reason, Appellants have persuaded us
of error in the rejection of claim 14.

THE OBVIOUSNESS REJECTION OVER DUTTA,
MARMAROPOULOS, AND TIESLER

Claims 8, 21, and 22 depend from claim 1 and are rejected as being
unpatentable over Dutta, Marmaropoulos, and Tiesler. For this rejection,
Appellants repeat the arguments made for claim 1. Compare Br. 6-7 with
Br. 11-12. Appellants also refer to spring characteristics of the ground
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contact, which is not recited in claims 1, 8, 21, or 22. The issues before us
are the same as those for claim 1, and we refer Appellants to our above
discussion. These arguments also fail to persuasively rebut the Examiner’s
prima facie case of obviousness.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1, 2, 6-12,
16-18, and 21-24, but did err in rejecting claim 14.

DECISION
The Examiner’s decision rejecting claims 1, 2, 6-12, 14, 16-18, and
21-24 is affirmed-in-part.
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-IN-PART

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