Ex Parte 6,273,501 et al

Board of Patent Appeals and Interferences

May 13, 2010

90008657 (B.P.A.I. May. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MERITOR LIGHT VEHICLE SYSTEMS1
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Appeal 2009-011541
Reexamination Control 90/008,657
Patent US 6,273,501 B12
Technology Center 3900
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Decided: May 13, 2010
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Before JOHN C. KERINS, KEVIN F. TURNER and DANIEL S. SONG,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Meritor Light Vehicle Systems is the real party in interest (App. Br. 1).
2 Issued August 14, 2001 to Raasakka et al.
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The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claims 1-16. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306 (2002).
The Patentee claims a wind deflector for a vehicle roof closure
commonly referred to as a “moon roof” or a “sun roof.”
Independent claim 1 reads as follows (App. Br. App’x of Claims;
emphasis added):
1. A vehicle roof comprising:
an aperture;
a roof closure member movable between open and closed
positions, and said closure member enclosing said aperture
when in said closed position, and exposing said aperture when
in said open position;
a wind deflector movable between an extended position
and a stowed position, and a portion of said wind deflector
extending upwardly above a vertical position of said closure
member in said extended position, and said wind deflector
moving to said extended position when said closure member is
in said open position, said wind deflector being movable to said
stowed position, and said wind deflector being biased to at least
one of said extended and said stowed position, and movable
based upon movement of said closure member to the other of
said extended and closed position, said wind deflector being
pivotable about an axis in a mount between said extended and
stowed positions; and
a stop on said wind deflector positioned on an opposed
side of said axis from portion of said wind deflector which
extends vertically above said closure member, said stop
contacting said mount to prevent further rotation of said wind
deflector relative to said mount when said wind deflector is in
said extended position, said stop being positioned vertically
above said pivot axis in said stowed position, but vertically
below said pivot axis in said extended position, and also
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rearward of said pivot axis relative to a forward end of said
portion of said wind deflector in said extended position.

Independent claims 5 and 8 similarly recite the language of claim 1
emphasized above except that claim 8 recites “a stop surface which contacts
a surface of said mount.”
The evidence relied upon by the Examiner in rejecting the claims is:
Igel 4,676,546 Jun. 30, 1987
Horiuchi 5,513,891 May 7, 1996

The Examiner rejected claims 1-6, 10, 14 and 15 under 35 U.S.C.
§ 102(b) as anticipated by Igel.
The Examiner rejected claims 7-9, 11-13 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Igel in view of Horiuchi.
We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the evidence supports the Examiner’s finding that Igel
describes a stop contacting a mount to prevent further rotation of a wind
deflector.
2. Whether the Examiner’s articulated reason is sufficient to
support the conclusion that it would have been obvious to modify Igel in
view of Horiuchi so that a stop surface contacts a surface of a mount.

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PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). “Anticipation requires the presence in a single
prior art reference disclosure of each and every element of the claimed
invention, arranged as in the claim.” Lindemann Maschinenfabrik GMBH v.
American Hoist and Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)).

ANALYSIS
Rejection of claims 1-6, 10, 14 and 15
The Examiner rejected these claims under 35 U.S.C. § 102(b) as
lacking novelty, asserting that Igel discloses each and every limitation
recited in these claims (Ans. 3-5 and 7). In this regard, the Examiner asserts
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that rear edge 73 of Igel corresponds to the recited “stop,” and that this rear
edge 73 contacts “abutment 76,” to thereby limit the rotational movement of
the wind deflector 19 (Ans. 3-4 and 7).
The Appellant contends that Igel fails to disclose the limitation “said
stop contacting said mount” as specifically recited in independent claims 1
and 5, and required by the rejected dependent claims that depend from
claims 1 and 5 (App. Br. 5). In particular, the Appellant contends that the
Examiner has failed to identify a structure in Igel that corresponds to the
recited mount since the rear edge 73 of the wind deflector of Igel contacts an
opposing part 74 which is not a mount (App. Br. 5-6; Reply Br. 2). We
agree with the Appellant.
Firstly, we observe that numeral 76 relied upon by the Examiner is
identified in Igel as hinges (Igel; col. 6, ll. 1-4). Based on the Answer, we
presume that the Examiner is actually referring to “opposing part 74” in
making the anticipation rejection (Ans. 4 and 7), the rear edge 73 of the
wind deflector clearly being illustrated and described as contacting the
opposing part 74 to stop rotation of the wind deflector (Igel; col. 5, ll. 63-68;
Fig. 5). However, with this understanding, we fail to see how the described
opposing part 74 satisfies the required mount limitation as recited in these
claims.
In particular, the recited term “mount” itself requires the
corresponding structure to perform the function of supporting something.
However, the opposing part 74 of Igel does not perform such a function. In
this regard, the rejected claims specifically recite “said wind deflector being
pivotable about an axis in a mount between said extended and stowed
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positions.” (Emphasis added). Hence, the axis about which the wind
deflector pivots must be in the recited mount, and the recited “stop” must
contact “said mount to prevent further rotation of said wind deflector….”
Whereas Igel clearly discloses an axis about which the wind deflector pivots,
this axis is not in the opposing part 74. Therefore, opposing part 74 does not
satisfy the limitation which requires the axis to be in the mount.
To the extent that the Examiner is, in fact, relying on hinge 76 as
corresponding to the mount of the rejected claims, we observe that the rear
edge 73 (i.e., stop) of Igel does not contact the hinge 76 so as to prevent
further rotation of the wind deflector as required by the claims.
Correspondingly, in this alternate application of Igel, the required contact
between the stop and the mount specifically required by the claims is absent.
In view of the above, we do not sustain the Examiner’s rejection of
independent claims 1 and 5 under 35 U.S.C. § 102(b) as being anticipated by
Igel. We also do not sustain the Examiner’s anticipation rejection of claims
2-4, 6, 10, 14 and 15 that ultimately depend from independent claims 1 and 5
for the same reasons. The Appellant’s further arguments with respect to
positioning of the stop (App. Br. 6) and spring fingers (App. Br. 7) are moot.

Rejection of claims 7-9, 11-13 and 16
The Examiner rejected these claims under 35 U.S.C. § 103(a) as
unpatentable over Igel in view of Horiuchi (Ans. 5-7). The Examiner states
that Igel does not describe a stop surface which contacts a surface of the
mount, but finds that Horiuchi “shows a vehicle closure member having
stops 19 that are positioned for contacting surface 18 between mounting
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structures for pivot pin 15.” (Ans. 7; internal citations omitted). The
Examiner asserts that “[i]t would have been obvious to one of ordinary skill
in the art to have to have [sic] used the arrangement shown by Horiuchi in
the closure member of Igel by simply extending the rear edge 73 of wind
deflector of Igel so that it would engage the wind deflector's mount in the
manner taught by Horiuchi, instead of opposing part 74, as a mere reversal
and/or rearrangement of parts.” (Ans. 6). The Examiner also states that such
combination would be desirable because “it would increase the efficiency of
Igel by preventing further rotational movement of the wind deflector.” (Ans.
7).
We agree that the Examiner’s articulated reason is insufficient to
support the conclusion of obviousness (Reply Br. 3). In particular, the
Examiner’s assertion that mere extension of the rear edge 73 in Igel is all
that is required to satisfy the rejected claims is not correct. Such mere
extension would result in the rear edge 73 contacting the distal portion of the
framework 13, not the hinge which has the pivot axis. In order to establish
contact between the rear edge 73 and the hinge of Igel, these components
would have to be contoured or otherwise reshaped. (See also App. Br. 8).
In addition, while the Examiner has asserted increased efficiency in
“preventing further rotational movement of the wind deflector” in attempting
to establish the desirability of combining Igel and Horiuchi, the Examiner
does not identify, nor is it evident to us, how or in what way the mechanism
resulting from the suggested combination is more efficient in preventing
further rotation as compared to the two different mechanisms described in
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Igel (i.e., U-shaped holding shackle 57 (col. 5, ll. 5-12) and opposing part 74
(col. 5, ll. 63-68)).
To the extent that the Examiner may be referring to efficiency in
manufacturing and corresponding reduction in cost, we observe that it would
be evident to one of ordinary skill in the art that rotation of the deflector of
Igel could be prevented most simply by the mere extension of the rear edge
73 (as suggested by the Examiner) without further contouring of the rear
edge, or reshaping of the hinge. However, as noted, such an extension of the
rear edge 73 would not establish the surface contact as recited in the rejected
claims.
In view of the above, Examiner’s articulated reason is insufficient to
support the conclusion that it would have been obvious to modify Igel in
view of Horiuchi so that a stop surface contacts a surface of a mount.
Therefore, we do not sustain the Examiner’s rejection of claims 7-9, 11-13
and 16 under 35 U.S.C. § 103(a) as unpatentable over Igel in view of
Horiuchi. The Appellant’s additional arguments and reliance on the
Declaration evidence (App. Br. 8) are moot.

CONCLUSIONS
1. The evidence does not support the Examiner’s finding that Igel
describes a stop contacting a mount to prevent further rotation of a wind
deflector.
2. The Examiner’s articulated reason is insufficient to support the
conclusion that it would have been obvious to modify Igel in view of
Horiuchi so that a stop surface contacts a surface of a mount.
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DECISION
1. The Examiner’s rejection of claims 1-6, 10, 14 and 15 under 35
U.S.C. § 102(b) as anticipated by Igel is REVERSED.
2. The Examiner’s rejection of claims 7-9, 11-13 and 16 under 35
U.S.C. § 103(a) as unpatentable over Igel in view of Horiuchi is
REVERSED.

REVERSED

ack

cc:

CARLSON, GASKEY, & OLDS, P.C.
400 West Maple Road
Suite 350
Birmingham, MI 48009

Third Party Requester:

Webasto AG
Kraillinger STR.5
Stockdorf, Germany 82131