Ex Parte Bejin et al

Board of Patent Appeals and Interferences

Aug 16, 2011

11308033 (B.P.A.I. Aug. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER JOSEPH BEJIN, ANDREW SCHLOSSER,
MICHAEL WILLIAMS and GARY D. MULLEN
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Appeal 2010-001395
Application 11/308,033
Technology Center 3600
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Before MICHAEL P. TIERNEY, STEVEN D.A. MCCARTHY and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001395
Application No. 11/308,033

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1-17. The real party in interest is Ford Global
Technologies, LLC. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Miyahara U.S. 6,129,237 Oct. 10, 2000
Guenther U.S. 6,637,709 B1 Oct. 28, 2003
Sturt U.S. 7,114,755 B1 Oct. 3, 2006

The Claimed Subject Matter
The claimed subject matter is directed to an automotive center console
having an armrest that can be rotated back about an axis adjacent the floor
for use by rear seat occupants and for full cavity access. Independent claim
1 is illustrative of the claims on appeal and is reproduced below:
1. A storage console for an automotive vehicle, comprising:
a base unit having a storage cavity defined in part by a floor, a
fixed front wall, and fixed side walls, with said front wall and said
side walls being attached to said floor; and
an armrest and rear wall hingedly attached to said base unit for
rotation about a generally transverse axis located proximate said floor.

The Rejections on Appeal
1. Claims 1-9 and 11-17 are rejected under 35 U.S.C. § 103(a) as being
obvious over Sturt in view of Miyahara (Ans. 3).
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as being obvious over
Sturt and Miyahara in view of Guenther (Ans. 5).
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ISSUE
Would one of ordinary skill in the art have had reason to pivot a
console’s armrest about a transverse axis located proximate the floor for use
by rear seat occupants when it was known that a console’s armrest can be
pivoted about a transverse axis for use by rear seat occupants?

FINDINGS OF FACT
1. Sturt discloses an automotive center console whose armrest can be
pivoted for use by rear seat occupants (Sturt 2:14-16, 8:52-54 and Fig. 1).
2. Sturt’s armrest pivots about a transverse axis located above the floor
at an upper portion of the console body (Sturt 5:3-13, Figs 1, 2 and 5).
3. Miyahara discloses a case cover hingedly attached to “the lower
subcase” for rotation about a generally transverse axis (Miyahara 3:11-13
and Figs. 3-9).

PRINCIPLES OF LAW
“[A]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011).

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ANALYSIS
1. The Subject Matter of Claims 1-9 and 11-17 are Obvious in
view of Sturt and Miyahara

Appellants argue the rejection of claims 1-9 and 11-17 as a group
(App. Br. 5). Independent claim 1 is selected for review with claims 2-9 and
11-17 standing or falling with claim 11.
Claim 1 requires the armrest and rear wall of the console to be
hingedly attached to the console’s base unit “for rotation about a generally
transverse axis located proximate said floor.” In presenting a prima facie
case of obviousness, the Examiner states that all the structure of claim 1 is
disclosed by Sturt and Miyahara and that it would have been obvious to have
the “rear wall be hinged proximate the floor as taught by Miyahara on the
device of Sturt et al in order to create a greater opening in order to access the
console from the rear” (Id. and Ans. 3).
Addressing the art individually, Appellants contend that “the Sturt
console cannot reach back into the rear seat as does Appellants’ console”
and that Miyahara discloses a cover “in which the entire cover never swings
back from the rear portion of the device” (App. Br. 5). Claim 1 does not
require the entire cover to swing back as asserted by Appellants and
Miyahara was cited by the Examiner for its teaching of a rear wall rotated
about its lower edge (Ans. 3). Furthermore, "Non-obviousness cannot be
established by attacking references individually where the rejection is based

1 Appellants mention claims 16 and 17 in their arguments by reciting the
Examiner’s rejection (App. Br. 6). The paragraph following the
identification of claims 16 and 17 does not reference the claims but instead
re-addresses a contention previously made (App. Br. 6-7). This does not rise
to the level of a separate argument.
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upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). As the rejection of claim 1 is based upon
the teachings of a combination of references, Appellants’ contentions are not
persuasive.
Appellants also contend that the combination of Sturt and Miyahara
does not “teach or suggest” the claimed device because “neither discloses a
fully openable device which extends rearwardly by virtue of the fact that it is
hinged at the floor of a console” or that it reaches “to the back seat as
disclosed in Appellants’ specification and drawings” (App. Br. 6-7). It has
long been settled that claims must be distinguished from the prior art in
terms of structure rather than function. See In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Furthermore, and contrary to Appellants’ assertions,
Sturt discloses a console armrest that, when fully opened, extends rearward
for use by the rear seat occupants and Miyahara discloses a rear wall hinged
about a first generally transverse axis located proximate the base (Sturt 2:31-
35 and Fig. 1; Miyahara 3:11-14 and Fig. 10). The Examiner’s rationale for
combining Sturt and Miyahara is also persuasive because such a
combination would “create a greater opening in order to access the console
from the rear” (Ans. 3).
Appellants further contend that Miyahara “teaches away” from the
cover being hinged at the rear because Miyahara states that “it is not handy”
for the case’s cover to dangle when opened (App. Br. 6 citing Miyahara
1:20-22). It is common for automotive console covers and case covers to
dangle (i.e. be cantilevered) when opened (See Sturt 1:21-23 and Fig. 1;
Miyahara 1:16-19). While Miyahara states that a dangling cover may not be
“handy” in the context of a portable electronic device, one skilled in the art
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would have realized that past dangling covers did not prevent the cover from
operating as intended nor did a dangling cover prevent the user from being
able to access the interior of the compartment. One skilled in the art would
understand that Miyahara’s statement does not rise to a level of criticism
such that it discredits the use of dangling covers in the context of automobile
console covers. Other than Miyahara’s general remark, Appellant identifies
no credible evidence that one skilled in the art would be specifically directed
away from or discouraged from employing dangling covers. In view of the
above, Appellants’ contention is not persuasive.
Appellants also contend that there is no reason to combine Miyahara
with Sturt because “the Miyahara device is not a storage device, but rather a
cover for an electronic game” (App. Br. 6). In the Specification, Appellants
identify the known problem of fully exposing and utilizing the space
underneath a pivotal cover and to emphasize this, Appellants specifically
reference the “dead space, labeled ‘X’, in Figure 5” (Spec. ¶ [0002]). A
similar problem is likewise addressed in Miyahara which concerns a storage
case whose hinged cover “can be an obstacle” (Miyahara 1:20-22).
Miyahara addresses the problem of a cover being an obstacle to full access
to the space underneath by providing a cover that fully opens and “neither
becomes an obstacle nor dangles” (Miyahara 1:23-25). For these reasons,
both Appellants and Miyahara address similar problems regarding full
access underneath a cover and consequently, there is a reason to combine
Miyahara with Sturt.
Based on Appellants’ arguments and the record presented, we are not
persuaded that Appellants have met “the burden of coming forward with
evidence or arguments” to counter the Examiner’s rejection once the burden
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has been shifted due to the Examiner’s presentation of a prima facie case of
unpatentability (See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
Accordingly, the Examiner’s rejection of claims 1-9 and 11-17 as being
obvious over Sturt in view of Miyahara is affirmed.

2. The Subject Matter of Dependent Claim 10 is Obvious over
Sturt and Miyahara in view of Guenther

Claim 10 depends directly from claim 1 and further requires a cup
holder mounted to the base unit “at a location forward of said armrest.” The
Examiner relies upon Sturt and Miyahara as above and further upon
Guenther for teaching a cup holder “at a location forward the armrest” (Ans.
5 citing Guenther Fig. 1). The Examiner concludes that it would have been
obvious “for the base console to have a cup holder forward of the armrest as
taught by Guenther…in order for the front occupant to have a place to put a
cup or other items” (Ans. 5).
Appellants do not dispute the Examiner’s findings but instead contend
that Guenther “cannot begin to remedy the deficiencies noted in the rejection
of Claim 1 over Sturt in view of Miyahara” (App. Br. 7). The alleged
deficiencies are addressed above and as Appellants make no other argument
for the patentability of claim 10, we sustain the rejection of claim 10 as
being obvious over Sturt and Miyahara in view of Guenther.

CONCLUSION OF LAW
One of ordinary skill in the art would have had reason to pivot a
console’s armrest about a transverse axis located proximate the floor for use
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by rear seat occupants when it was known that a console’s armrest can be
pivoted about a transverse axis for use by rear seat occupants.

DECISION
1. The rejection of claims 1-9 and 11-17 under 35 U.S.C. § 103(a) as
being obvious over Sturt in view of Miyahara is affirmed.
2. The rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious
over Sturt and Miyahara in view of Guenther is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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