Ex Parte Bendel et al

Patent Trial and Appeal Board

Jan 19, 2018

13638798 (P.T.A.B. Jan. 19, 2018)

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.
13/638,798 02/07/2013 Thorsten Bendel KIEKP0103WOUS 8015
23908 7590 01/23/2018
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
MERLINO, ALYSON MARIE
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN BENDEL, SERKAN GULKAN,
KARSTEN BARTH, and ULRICH WEICHSEL
Appeal 2016-007400
Application 13/638,798
Technology Center 3600
Before LYNNE H. BROWNE, FRANCES L. IPPOLITO, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thorsten Bendel et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1—13.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 As noted by Appellants, in the Final Action the Examiner indicated that
claims 14 and 15 are objected to as depending from a rejected base claim.
Appeal Br. 12; see also Final Act. 9. Accordingly, we understand the
inclusion of claims 14 and 15 in the statement indicating the rejected claims
on the Office Action Summary (PTOL-326) to be a typographical error. See
Final Act. 1.
Appeal 2016-007400
Application 13/638,798
CLAIMED SUBJECT MATTER
The claims are directed to a motor vehicle lock. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A lock for a motor vehicle having a locking mechanism
arranged on a lock plate, comprising:
a rotary latch, a main latching pawl and a preliminary
latching pawl for latching the rotary latch,
a blocking lever having a rotation axle about which the
blocking lever rotates, and blocking the main latching pawl in a
main latching position of the locking mechanism, and
an elastic element for resiliently mounting the blocking
lever, the elastic element being located around the rotation axle
of the blocking lever and permitting movement of the blocking
lever perpendicular to a plane of rotation of the blocking lever.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hamada US 4,358,141 Nov. 9, 1982
Paulik US 5,632,517 May 27, 1997
Bendel DE 10 2007 003 948 A1 May 29, 2008
REJECTIONS2
Claims 1—3, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bendel and Hamada.
Claims 4, 6, and 9-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bendel, Hamada,3 and Paulik.
2 The rejection of claims 6, 14, and 15 under 35 U.S.C. § 112, second
paragraph, was withdrawn in the Answer. Ans. 2.
3 The statement of this rejection in the Final Action does not include
Hamada; however, as claims 4, 6, and 9-13 depend from claim 1 we
2
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Application 13/638,798
DISCUSSION
Rejection I
Appellants argue claims 1—3, 5,1, and 8 together. Appeal Br. 6—12.
We select claim 1 as the representative claim, and claims 2, 3, 5, 7, and 8
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bendel and Hamada disclose or suggest all of
the limitations of claim 1. See Final Act. 4—5. In particular, the Examiner
finds that Bendel discloses “an elastic element for resiliently mounting the
blocking lever (the spring that spring-loads the blocking lever, Col. 6, lines
26 and 27 of US-8480138, the English equivalent of DE 102007003948).”
Id. at 4. The Examiner determines that Bendel “fails to disclose that the
elastic element is located around the rotation axle of the blocking lever and
permits movement of the blocking lever perpendicular to a plane of rotation
of the blocking lever.” Id. at 5. We note that it appears that Bendel does not
address where the spring referenced by the Examiner is located. The
Examiner further finds that Hamada teaches “an elastic element 17 for
resilient mounting the rotatable component (Figure 9), with the elastic
element being located around the rotation axle and permitting movement of
the rotatable component perpendicular to a plane of rotation of the rotatable
component to prevent rattling of the rotatable component.” Id. (citing
Hamada 2:40-48).
Noting that “the ‘rotatable member’ in Hamada that has the elastic
element is the rotary latch 8, not a blocking lever as claimed,” Appellants
argue that “Hamada teaches to add the elastic element in comparable fashion
understand the rejection to include Hamada. Appellants indicate that this is
their understanding as well. See Appeal Br. 12.
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Application 13/638,798
to the rotary latch 2 in Bendel to reduce latch rattling, which does not result
in the claimed configuration in which the elastic element is provided to the
blocking lever.” Appeal Br. 10 (emphasis omitted). However, this
argument is not responsive to the rejection as articulated by the Examiner.
See Final Act. 4—5; see also Ans. 3 (explaining that the Hamada reference
was not utilized to teach the addition of an elastic element around the
rotation axle of the Bendel’s blocking lever, but to teach where Bendel’s
existing blocking lever spring should be located, i.e. around the rotation
axis). Accordingly, Appellants do not apprise us of error.
Appellants further contend that:
(1) Neither reference even recognizes the specific problem of
the “jumping off’ of the blocking lever addressed by the
claimed invention. (2) Hamada teaches to add an elastic
element to the rotary latch to reduce latch rattling, and thus
would teach to add an elastic element in comparable fashion
to the rotary latch in Bendel rather than to the blocking lever
as claimed. (3) Hamada does not have any analogous
component to the claimed blocking lever at all.
Appeal Br. 10.4 Considering each of these arguments in turn, we note that
with regard to argument (1), there is no requirement that the prior art
recognize or address the problem addressed by the claimed invention.
Rather, it is not necessary for the prior art to serve the same purpose as that
disclosed in Appellants’ Specification in order to support the conclusion that
the claimed subject matter would have been obvious. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
4 Arguments (1) and (2) are essentially repeated on pages 11 and 12 of the
Appeal Brief and again throughout the Reply Brief. In the interest of
brevity, we address these cumulative arguments once.
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Application 13/638,798
avowed purpose of the [Appellants] controls.”); see also In re Linter, 458
F.2d 1013, 1016 (CCPA 1972). For argument (2), as discussed supra,
Hamada was not relied upon for its teaching of adding an elastic element to
a latch. Rather, Hamada was relied upon for its teaching of placing an
elastic element around a rotation axle in order to reduce rattling of the
component attached to the axle. Finally, for argument (3), Hamada was not
relied upon to teach a blocking lever, as that component is already present in
Bendel. See Bendel, Fig. 1.
In the Reply Brief, Appellants argue that “Bendel lacks any structural
teaching as to how the blocking lever would be spring loaded.” Reply Br. 2.
Appellants are correct; however, this fact by itself is not indicative of error.
Appellants do not assert that making the blocking lever spring loaded is
beyond the skill of one skilled in the art. Absent such an assertion, we “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ,” and find that a person of ordinary skill in the art
would overcome any difficulties in making a spring loaded blocking lever.
See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
In addition, Appellants refer back to the discussion of the instant
invention on page 5 of the Appeal Brief. Reply Br. 2. In that discussion,
Appellants note that “the application states that the resilient mounting of the
present invention is not a pre-tensioned separate spring that biases rotation
of the blocking lever.” Appeal Br. 5; see also Reply Br. 2. Appellants
explain that “the resilient mounting referred to in the current application
pertains to incorporating an elastic element on the rotation axle of the
blocking lever itself.” Appeal Br. 5; Reply Br. 2—3. Based on this
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Application 13/638,798
discussion, Appellants argue that Bendel’s spring-loaded blocking lever
“falls within the conventional biasing (a rotational biasing), which is
described and distinguished in the current application.” Reply Br. 3.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner for two reasons. First, Appellants’ argument attacks
Bendel separately, but the rejection relies upon the combined teachings of
Bendel and Hamada. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097, (Fed.
Cir. 1986). Second, noting that Bendel does not address the location of its
spring, the rejection proposes moving Bendel’s spring such that it would be
incorporated on the rotation axle of the blocking lever. See Final Act. 4.
Appellants’ argument is not directed to Bendel as modified and thus does
not apprise us of error. Moreover, Appellants appear to be relying on
disclosure in the Specification to distinguish the claims. Although the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Further, to the extent that Appellants intended to argue that, as
modified in view of Hamada, Bendel’s spring-loaded blocking lever falls
within the conventional biasing that is distinguished in the current
application, we do not find that argument convincing either. In accordance
with the instant Specification,
A resilient mounting as described in the invention does not
mean that a [pre-tensioned] spring acts on the blocking lever in
such a way that the blocking lever can be turned around its
rotation axle by the spring. Instead the resilient mounting
described in the claim refers to the mounting on the axle,
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Application 13/638,798
containing at least one spring element, so that the blocking
lever can be moved against a spring force in addition to its
rotational movement.
Spec 2:7—12.
In accordance with the proposed modification in view of Hamada,
Bendd’s spring would be mounted on the axle. As the location of the spring
is the only structural feature identified in the Specification as distinguishing
conventional biasing from biasing in accordance with the instant invention,
Appellants do not apprise us of error. In addition, Appellants do not
meaningfully challenge the Examiner’s finding that the elastic element of
Bendel modified in view of Hamada would permit movement of the
blocking lever perpendicular to the plane of rotation of the blocking lever, as
recited in claim 1.
Appellants further argue that “the Examiner essentially equates catch
rattling to the issue of the blocking lever jumping off the main latching
pawl.” Reply Br. 3 (citing Ans. 4—5). However, Appellants mischaracterize
the Examiner’s statement in this regard. Rather than equating the issue of
jumping off and rattling, the Examiner merely posits that “[f]or argument’s
sake . . . one could infer that the prevention of rattling would lead to a
smoother operation of the blocking lever of Bendel.” Ans. 4. Furthermore,
the rejection as articulated by the Examiner does not depend on such a
determination and as discussed supra, there is no requirement that the prior
art solve the same problem as the instant invention in order to render the
claimed subject matter obvious. Thus, Appellants do not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2, 3, 5, 7, and 8, which fall therewith.
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Rejection II
Claims 4, 6, and 9-13 stand rejected as unpatentable over Bendel,
Hamada, and Paulik. Appellants argue that “Paulik does not teach the above
deficiencies of Bendel in view of Hamada, and therefore claims 4, 6, and 9—
13 are patentable at least for the above reasons as to independent claim 1.”
Appeal Br. 12.
As we find no such deficiencies for the reasons discussed supra, we
sustain the Examiner’s decision rejecting claims 4, 6, and 9-13.
DECISION
The Examiner’s rejections of claims 1—13 are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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