Ex Parte Welter

Patent Trial and Appeal Board

Oct 17, 2017

12810828 (P.T.A.B. Oct. 17, 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.
12/810,828 09/27/2010 Patrick Welter 091330-0247 9311
22428 7590 10/19/2017
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
TUMEBO, TSION M
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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 PATRICK WELTER
Appeal 2017-002465
Application 12/810,82s1
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 3, 6, 8, and 10—21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “Motus Integrated Technologies, whose parent company is Olympus
Holding B.V.” (Appeal Brief filed on March 7, 2016, hereinafter “Appeal
Br.,” 2).
2 Appeal Br. 4—9; Reply Brief filed on November 23, 2016, hereinafter
“Reply Br.,” 1—7; Final Office Action (notice e-mailed on October 7, 2015),
hereinafter “Final Act.,” 2—10; Examiner’s Answer (notice e-mailed on
September 26, 2016), hereinafter “Ans.,” 2—13.
Appeal 2017-002465
Application 12/810,828
BACKGROUND
The subject matter on appeal relates to a sun visor body including a
light source, a mirror, and a cover for the mirror. Specification, hereinafter
“Spec.,” 1:3—4. The Appellant states that their sun visor achieves
satisfactory illumination of the face of a vehicle seat occupant. Id. 1:15—17.
In particular, the sun visor includes a body, a light source, a mirror, and a
surface facing the mirror that has a reflective design. Id. at 1:19—21.
Representative claim 1 is reproduced from page 11 of the Appeal Brief
(Claims Appendix) (emphases added), as follows:
1. A sun visor body for a vehicle comprising:
a light source configured to radiate light beams of visible
light;
a mirror; and
a cover having an inner surface facing the mirror, the inner
surface being configured as a reflector and having a reflecting
surface,
wherein the mirror is not attached to the inner surface,
wherein the light source is configured to provide focused light
beams that are radiated by the light source obliquely upward into
a cone, the light source is configured to direct the cone of light
beams toward the inner surface of the cover, and the reflecting
surface is configured to reflect the light beams emanating from
the light source in a light-scattering fashion.
REJECTION ON APPEAL
Claims 1, 3, 6, 8, and 10—21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Radu3 in view of Hoegemann.4 Final Act. 2—
3 US 2006/0198123 Al, published September 7, 2006.
4 US 1,435,160, issued November 14, 1922.
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Appeal 2017-002465
Application 12/810,828
10; Ans. 2—12.
DISCUSSION
The Examiner finds Figure 2 of Radu depicts a sun visor for a vehicle.
Ans. 2. Figure 2 of Radu is reproduced below.
Figure 2 is an exploded view of an automotive visor. Radu 111.
The Examiner finds Radu’s visor includes a light source 30, a mirror
assembly 14, and a cover 24. Ans. 2—3. The Examiner finds, among other
things, that Radu does not disclose: (i) the inner surface of the cover 24 is
configured as a reflector and (ii) the light source is configured to provide
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Appeal 2017-002465
Application 12/810,828
focused light beams that are radiated by the light source obliquely upward
into a cone of light beams toward the inner surface of the cover, as recited in
claim 1. Id. at 3.
The Examiner cites Figure 3 of Hoegemann, which is reproduced
below. Id.
Figure 3 depicts an embodiment of a vanity case. Hoegemann 1:8; 2:57—61.
The Examiner finds Figure 3 of Hoegemann depicts a vanity case
having a cover 3 that faces a light source 7 and a mirror arranged on an inner
surface of the cover 3. Ans. 3. The Examiner concludes it would have been
obvious to modify Radu in view of Hoegemann to form an inner surface of
Radu’s cover 24 from a reflective element to provide enhanced illumination
in dark or poorly lighted places and to improve illumination of light towards
a user’s face because the modification would result in the reflection of light
back towards the user’s face without any loss. Id. at 4. The Examiner
explains in the Examiner’s Answer that the combination of Radu and
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Application 12/810,828
Hoegemann would result in the addition of a mirror to the inside surface of
the cover 24 of Radu. Ans. 12.
The Appellant contends that neither Radu nor Hoegemann discloses a
cover having a reflector that faces or is disposed over a mirror. Appeal Br.
6. The Appellant argues that, in contrast to the claimed subject matter, the
combination of Radu and Hoegemann would have suggested moving the
mirror of Radu to the inside surface of its cover 24, not the sun visor body of
claim 1. Id. 6—7; Reply Br. 1—4.
The Appellant’s arguments are persuasive. As noted above, the
Examiner finds Radu does not disclose a reflecting surface for the inner
surface of cover 24. Ans. 3. However, Hoegemann does not remedy the
deficiency of Radu in relation to the recitations of claim 1.
Hoegemann discloses an embodiment of a vanity case 2 in which light
is directed from a lamp 7 to a mirror 3. Hoegemann 1:28—36, 1:57—61. As
shown in Figure 3 above, the mirror 3 is the only mirror or reflective surface
for the vanity case 2. Thus, Hoegemann discloses using the same mirror for
reflecting light from a light source to illuminate a person’s face and for the
person to see a reflection of their face.
As a result, Hoegemann would not have suggested adding a reflector
or a second mirror to the inner surface of the cover 24 of Radu but, rather, to
use the mirror assembly 14 of Radu to reflect light from a light source to
illuminate the face of a user. Such a modification, as suggested by these
references, would not have resulted in the invention recited in claim 1.
Therefore, the Examiner’s conclusion that the combination would have
resulted in the claimed invention can only be based on impermissible
hindsight. Accordingly, the record does not support the Examiner’s
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Application 12/810,828
conclusion that it would have been obvious in view of Hoegemann’s
disclosure to add a mirror to Radu’s visor so the visor has both a mirror
assembly 14 and a mirror on the inner surface of the cover 24.
Because the Examiner has not set forth a prima facie case of
obviousness for claim 1 over Radu and Hoegemann, we cannot affirm. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (The Examiner “bears the
initial burden ... of presenting a prima facie case of unpatentability.”). KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John
Deere Co., 383 U.S. 1,36 (1966) (warning against a “temptation to read into
the prior art the teachings of the invention in issue”)).
Fike claim 1, independent claim 10—the only other independent
claim—recites a sun visor comprising, among other things, a mirror and “a
cover at least partially disposed over the mirror. . .having an inner surface
that is in the form of a reflector.” For the reasons discussed above, the
combination of Radu and Hoegemann would not have suggested a sun visor
including a mirror and a cover having an inner surface in the form of a
reflector, as recited in claim 10.
In view of the above, the Examiner has not set forth a prima facie case
of obviousness for independent claims 1 and 10 over Radu and Hoegemann.
Claims 3, 6, 8, and 11—21 depend from claims 1 and 10. Therefore, we
cannot uphold the Examiner’s rejection of claims 1, 3, 6, 8, and 10-21.
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SUMMARY
The Examiner’s decision to reject claims 1,3,6, 8, and 10—21 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Radu in view of
Hoegemann is reversed.
REVERSED
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