Ex parte ALVEY et al.

Board of Patent Appeals and Interferences

Jan 15, 1998

08084502 (B.P.A.I. Jan. 15, 1998)

Application for patent filed July 1, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAYMOND S. ALVEY and
RONALD P. BROMBACH
_____________
Appeal No. 96-0310
Application 08/084,5021
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0310
Application 08/084,502
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-18, which constitute
all the claims in the application. An amendment after final
rejection was filed on August 12, 1994 and was entered by the
examiner. This amendment resulted in the removal of a
rejection of claim 8 under the second paragraph of 35 U.S.C. §
112.
The disclosed invention pertains to an apparatus and
method for controlling the operation of an interior courtesy
lamp of a motor vehicle. More particularly, the disclosed
invention is designed to turn off a door ajar courtesy lamp
when the speed of the vehicle exceeds a predetermined
threshold.
Representative claim 1 is reproduced as follows:
1. A system for controlling the operation of an
interior courtesy lamp of a motor vehicle, comprising:
position sensing means for generating a door ajar
signal responsive to said door being ajar;
speed sensing means for generating a speed signal
responsive to the speed of said vehicle; and
control means coupled to said position sensing
means and to said speed sensing means for controlling the
illumination of said interior courtesy lamp in response to
said door ajar signal and said speed signal.
Appeal No. 96-0310
Application 08/084,502
3
The examiner relies on the following references:
Mullin 3,641,488 Feb. 08, 1972
Holst et al. (Holst) 5,265,468 Nov. 30, 1993
(filed Feb. 27,
1992)
Claims 1-18 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Holst in view of
Mullin.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants'
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that the collective evidence relied upon and the
Appeal No. 96-0310
Application 08/084,502
4
level of skill in the particular art would have suggested to
one of ordinary skill in the art the obviousness of the
invention as set forth in claims 1-18. Accordingly, we
affirm.
Appellants have nominally indicated that the claims do
not stand or fall together [brief, page 2], but they have not
specifically argued the limitations of each of the claims.
The extent of appellants' arguments appears at the bottom of
page 3 of the brief wherein it is baldly asserted that the
prior art does not teach or suggest features of the claims
with no analysis or discussion of obviousness whatsoever.
Simply pointing out what a claim requires with no attempt to
point out how the claims patentably distinguish over the prior
art does not amount to a separate argument for patentability.
See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987). At the time appellants' brief was filed, 37
CFR § 1.192(6)(iv) required that "the argument shall specify
the errors in the rejection and, if appropriate, the specific
limitations in the rejected claims which are not described in
the prior art relied on in the rejection, and shall explain
how such limitations render the claimed subject matter
Appeal No. 96-0310
Application 08/084,502
5
unobvious over the prior art.” Appellants' arguments fail to
satisfy this requirement as a basis to have the claims
considered separately for patentability. Since appellants are
considered to have made no separate arguments for
patentability, all claims will stand or fall together. Note
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983). Therefore, we will consider claim 1 as
representative of all the claims on appeal.
At the outset, we note that claim 1 recites an
invention which is much broader than the invention argued by
the examiner and appellants. The brief and the answer
consider the obviousness of turning off a courtesy lamp
indicative of a door ajar condition when the speed of a
vehicle exceeds some predetermined threshold. In our view,
claim 1 is not directed to an invention of this narrow scope.
Claim 1 merely recites controlling the illumination of a lamp
in response to a door ajar signal and a speed signal. The
manner in which the control is effected is not a feature of
claim 1.
Appeal No. 96-0310
Application 08/084,502
6
Therefore, much of what appellants and the examiner
argue is not material to the invention as recited in claim 1.
We would agree with many of the points made by appellants if
claim 1 were, in fact, directed to the invention which they
argue. As noted above, however, claim 1 is not so directed.
Accordingly, all of appellants’ arguments directed to whether
the prior art teaches extinguishing a dome light in response
to a speed threshold are not commensurate in scope with the
invention of claim 1.
Having made these initial observations, we direct our
attention to the specific language of claim 1. Claim 1
recites generating a door ajar signal, generating a speed
signal, and controlling a lamp in response to these signals.
In our view, the recitations of claim 1 are broad enough to be
met by a control system which controls a lamp in response to
the presence of either or both of these signals because the
claim does not specify any relationship between the signals
and the subsequent control function.
Although the combination of Holst and Mullin suffers
many of the deficiencies argued by appellants, we are of the
view that the invention of claim 1 is basically suggested by
Appeal No. 96-0310
Application 08/084,502
7
the teachings of Mullin alone. Mullin teaches a speed signal
generator [19, 20] and a door ajar signal generator [45, 46]
connected to a control means for energizing an alarm unit
[10]. Although the speed signal generator is shown only in
Figure 1 and the door ajar signal generator is shown only in
Figure 2, Mullin suggests that the functions of Figure 1 which
have not been modified are not repeated in Figure 2 [column 2,
lines 65-67]. Thus, the embodiment of Figure 2 actually
contains both the speed signal generator and the door ajar
signal generator. These two signals are fed to a control
means which controls the alarm unit in response to these two
signals. As we pointed out above, the language of claim 1 is
considered broad enough to include a control means connected
to a speed sensing means and a door ajar sensing means as
shown by Mullin.
To the extent that appellants argue that a courtesy
lamp patentably distinguishes from the indicator light 45 or
the alarm unit 10 of Mullin, we do not agree. Mullin suggests
that lamp 45 could be either a dome light (courtesy lamp) or
an indicator lamp [column 3, lines 15-16]. Thus, Mullin
specifically recognizes that the illumination device could
Appeal No. 96-0310
Application 08/084,502
8
take the form of either a courtesy lamp or a warning lamp. We
also see no patentable distinction in modifying the sound
alarm of Mullin to be a courtesy lamp as claimed. A courtesy
lamp functions to inform the operator of a vehicle condition
in the same manner that a sound alarm does.
As we noted above, the examiner and appellants have
addressed the obviousness of an invention which is not
commensurate in scope with claim 1. We would have some
difficulty accepting the examiner’s analysis if claim 1 were
properly directed to the disclosed and argued invention.
Since the examiner and appellants have not properly considered
the invention as defined by claim 1, our analysis necessarily
differs somewhat from the rationale employed by the examiner
in demonstrating obviousness. Notwithstanding our different
reasoning discussed above, we still rely on the prior art
applied by the examiner to support the obviousness of the
invention as recited in claim 1. Thus, even though we sustain
the examiner's rejection for different reasons than those
advanced by the examiner, our position is still based upon the
collective teachings of the references and does not constitute
a new ground of rejection. In re Bush, 296 F.2d 491, 496, 131
Appeal No. 96-0310
Application 08/084,502
9
USPQ 263, 267 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2,
150 USPQ 441, 442 n.2 (CCPA 1966).
Since we have determined that the invention as broadly
recited in claim 1 is suggested by the teachings of the
applied prior art, and since all the claims stand or fall
together for reasons discussed above, we sustain the rejection
of claims 1-18 as unpatentable under 35 U.S.C. § 103.
Therefore, the decision of the examiner rejecting claims 1-18
is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Appeal No. 96-0310
Application 08/084,502
10
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )

Mark L. Mollon
Ford Motor Company
Suite 911 - Parklane Towers East
One Parklane Boulevard
Dearborn, MI 48126