14612723 - (D) (P.T.A.B. Dec. 20, 2019)

Co, Juanito Yu. et al.

Patent Trials and Appeals BoardDec 20, 2019

14612723 - (D) (P.T.A.B. Dec. 20, 2019)

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. 14/612,723 02/03/2015 Juanito Yu Co 83498781 6776 121691 7590 12/20/2019 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 EXAMINER LIN, KO-WEI ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 12/20/2019 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): laura@iplaw1.net uspto@iplaw1.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUANITO YU CO and LEONARD ANTHONY SHANER Appeal 2019-004002 Application 14/612,723 Technology Center 3700 Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford Global Technologies, LLC. Appeal Br. 3. Appeal 2019-004002 Application 14/612,723 2 CLAIMED SUBJECT MATTER The invention relates to “a ventilation device mounted in a vehicle window having a forced air feature for ventilation exhaust of hot interior air from the vehicle.” Spec. ¶ 1. Claims 1 and 20 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An air vent for mounting in a vehicle window frame, comprising: a one-piece body having an interior face and an exterior face; a passive ventilation feature including an air pathway extending from a first opening in said interior face to a second opening in said exterior face; and a forced air ventilation feature carried by said body; said forced air ventilation feature including a ventilation fan, an air exhaust outlet and a closure for said exhaust outlet displaceable between an open position and a closed position. Appeal Br. 17 (Claims App.). REJECTIONS ON APPEAL 1. Claims 1, 12, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Rivers2 and Fujimoto.3 Final Act. 2, 9–10. 2. Claims 2–9 are rejected under 35 U.S.C. § 103 as unpatentable over Rivers, Fujimoto, and Sacks.4 Final Act. 3–4. 3. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Rivers, Fujimoto, and Matthews.5 Final Act. 5. 2 US 3,434,408, issued March 25, 1969 (“Rivers”). 3 JP 01–190526, published July 31, 1989 (“Fujimoto”). 4 US 2012/0028563 A1, published February 2, 2012 (“Sacks”). 5 US 2006/0199523 A1, published September 7, 2006 (“Matthews”). Appeal 2019-004002 Application 14/612,723 3 4. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Rivers, Fujimoto, and McClary.6 Final Act. 5. 5. Claims 15–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Rivers, Fujimoto, and Bliss.7 Final Act. 7. OPINION Independent claims 1 and 20 both require “a one-piece body.” Appeal Br. 17, 20 (Claims App.). The Examiner finds that Rivers discloses a one- piece body designated 10, which includes three panels 12, 14, 16 laminated together. Final Act. 2, 10. The Examiner finds that since panels 12, 14, 16 of Rivers are bonded together, “body 10 is a one-piece body when in use.” Id.; see also Ans. 12. Appellant argues that because body 10 of Rivers is made up of multiple panels, they “do not qualify as the claimed one-piece body.” Appeal Br. 11. Appellant also notes that the parent application, which the Specification incorporates by reference, disparages Rivers and other prior art, and the use of “multiple components that increase their cost of production.” Id. at 12 (quoting U.S. Patent App. No. 14/311,552). We agree with Appellant that the Examiner erred in finding that Rivers discloses “a one-piece body” as required by independent claims 1 and 20. The Examiner and Appellant agree that Rivers discloses body 10 made up of three separate panels, bound together when in use. Final Act. 2; Ans. 12; Appeal Br. 12. In order to read the “one-piece body” limitation on Rivers, the Examiner implicitly construes “one-piece body” to encompass 6 US 6,042,473, issued March 28, 2000 (“McClary”). 7 US 1,783,276, issued December 2, 1930 (“Bliss”). Appeal 2019-004002 Application 14/612,723 4 bodies made up of multiple pieces bound together in some manner. We do not agree with this construction for several reasons. First, the claim language itself—“one-piece body”— suggests that it must consist of a single piece rather than multiple pieces. Second, the Specification only discloses bodies made of one, monolithic piece of material when referring to a one- piece body. See Spec. Figs. 2, 3a–3c, 4–7, ¶¶ 28, 50. Third, the Specification contrasts the “one-piece” bodies of these embodiments with a different embodiment with a body made “from multiple pieces that are joined together.” Spec. ¶ 50 (describing lap joint 108 made from multiple pieces that may be secured together with an optional adhesive). Finally, the Specification incorporates by reference its parent application, which disparages Rivers and other art on the basis that “such devices are generally overly complicated in construction and incorporate multiple components that increase their cost of production.” See US 2015/0367709 A1 ¶ 2 (publication of U.S. App. No. 14/311,552); Spec. 1 (incorporating by reference App. No. 14/311,552). Based on the foregoing, we construe “one- piece body” in claims 1 and 20 to require a single, monolithic body, which does not encompass bodies made up of multiple pieces bound together. Based on our construction, the Examiner’s finding that Rivers discloses “a one-piece body” based on a broader implicit construction lacks an adequate foundation because Rivers discloses multiple panels making up body 10. Accordingly, we do not sustain the rejection of independent claims 1 and 20.8 The Examiner relies on the same flawed findings as support for 8 The Examiner does not address, and we do not reach, whether any claims would have been obvious even if Rivers does not disclose the “one-piece body” limitation because making a part from one piece rather than two Appeal 2019-004002 Application 14/612,723 5 the rejections of claims 2–19 without relying on additional prior art in a manner that remedies the deficiencies addressed above. See Final Act. 2–9. Accordingly, we do not sustain the rejections of claims 2–19 for the same reasons as claims 1 and 20. DECISION We reverse the Examiner’s rejection of claims 1–20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 12, 20 103 Rivers, Fujimoto 1, 12, 20 2–9 103 Rivers, Fujimoto, Sacks 2–9 10, 11 103 Rivers, Fujimoto, Matthews 10, 11 13, 14 103 Rivers, Fujimoto, McClary 13, 14 15–19 103 Rivers, Fujimoto, Bliss 15–19 Overall Outcome 1–20 REVERSED would have been obvious. See Final Act. 2 (finding that body 10 of Rivers “is a one-piece body,” not determining that a multiple piece body would render a one-piece body obvious (emphasis added)); see also Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893) (The prior art grate “is cast in two pieces, while the [claimed invention] is cast in one piece. This does not involve patentable invention.”).