Ex Parte Board et al

Patent Trial and Appeal Board

Nov 16, 2017

14197597 (P.T.A.B. Nov. 16, 2017)

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.
14/197,597 03/05/2014 Derek Board 83385112 8989
117396 7590 11/17/2017
FGTL/Burgess Law Office, PLLC
P.O. Box 214320
Auburn Hills, MI 48321-4320
EXAMINER
CONDRA, DARLENE P
ART UNIT PAPER NUMBER
3616
MAIL DATE DELIVERY MODE
11/17/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEREK BOARD, SRINIVASAN SUNDARARAJAN,
and EDWARD JOSEPH DESMET
____________

Appeal 2017-001014
Application 14/197,597
Technology Center 3600
____________

Before ROBERT E. NAPPI, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.

Per Curiam.

DECISION ON REQUEST FOR REHEARING
Appellants requested rehearing of the Decision entered June 15, 2017
(“Decision” or “Dec.”), which affirmed the Examiner’s rejection of
claims 1–3.1 We have considered Appellants’ arguments, and such
arguments have not persuaded us that we misapprehended or overlooked any
arguments, facts, or points of law in our Decision. Therefore, we deny
Appellants’ Request for Rehearing (“Req.”).

1 Our Decision also reverses the Examiner’s rejection of claim 4 under 35
U.S.C. § 103, which the Request for Rehearing excludes.
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DISCUSSION
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1).
I
Appellants assert our obviousness determination “misapprehend[ed]
the teachings and combinability of Bok and Rodemer.” Req. 6; see also
Req. 6–9. In particular, Appellants contend—again with unsupported
attorney argument—“it is the movement seatbelt 20 of Bok, and
correspondingly the conductors 20 of Rodemer, over the magnetic D-ring of
Bok that generates the voltage.” Req. 9; see also Req. 6–9.
It is well established that “[a]ttorney’s argument in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“The fatal defect in this argument is that there is no competent evidence
which would negate the board’s conclusion . . . Attorney’s argument in a
brief cannot take the place of evidence.”); see also Meitzner v. Mindick, 549
F.2d 775, 782 (CCPA 1977) (“[T]he argument that . . . is unsupported by
evidence. Argument of counsel cannot take the place of evidence lacking in
the record.”).
Similar to the situation in Pearson, the “fatal defect” in Appellants’
arguments is that “there is no competent evidence which would negate the
board’s conclusion.” Pearson, 494 F.2d at 1405. As discussed extensively
in our decision (Dec. 4–7), Appellants’ arguments are unpersuasive because
they are merely attorney arguments that are unsupported by competent
evidence. See Pearson, 494 F.2d at 1405. For example, Appellants’
attorney argument contends “it is the movement seatbelt 20 of Bok, and
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correspondingly the conductors 20 of Rodemer, over the magnetic D-ring of
Bok that generates the voltage.” Req. 9.
We further find Appellants’ unsupported attorney argument is not
directed to the Examiner’s specific mapping. The Examiner maps the
claimed “plurality of metal filaments” to Rodemer’s “metal filaments” under
the Summary of the Invention (Final Act. 3), not “conductors 20” in a
particular exemplary embodiment of Rodemer, as Appellants assert (Req.
9). The Examiner finds in the proposed combination, the magnet and the
metal filaments would have been positioned away from each other (e.g., the
metal filaments being extended from the microphone to the electrical
circuitry and away from the magnet). See Final Act. 6 (the metal filaments
and the magnet would have been positioned away from each other and
adjacent to the occupant’s shoulder and waist, respectively).2 Therefore,
under the Examiner’s proposed combination, the metal filaments would not
have moved over the magnetic D-ring to generated voltage, as Appellants
speculate (Req. 9). The Examiner’s proposed combination is also consistent
with claim 1, which does not require the metal filaments to move over the D-
ring or extend through the seatbelt.3 See claim 1.

2 Contrary to Appellants’ assertion (Req. 9), “D-ring . . . spaced from
microphone” (Ans. 3) helps to position metal filaments away from the
magnet.
3 For similar reasons, Appellants’ assertion that “the conductors 20 of
Rodemer extend along the length of the belt 10 and consequently pass over
the D-ring or belt deflection 8 of Rodemer” (Reply Br. 1–2) is not directed
to the Examiner’s mapping and the proposed combination. In particular, as
discussed above, the metal filaments do not extend along the entire length of
the seatbelt in the proposed combination.
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Moreover, we again find Appellants’ arguments are not
commensurate with the scope of the claim, which is extremely broad and
merely recites a seat belt system comprising “a seat belt, said seat belt
including a plurality of metal filaments; and a D-ring, said D-ring including
a magnet.” We note there is no functional or structural relationship recited
between the claimed seat belt system’s seat belt with metal filaments and the
D-ring with a magnet.4
Furthermore, our reviewing court has held “[o]bviousness is not to be
determined on the basis of purpose alone.” In re Graf, 343 F.2d 774 (CCPA
1965). It is sufficient that references suggest doing what an Appellant did,
although Appellant’s particular purpose was different from that of the
references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re
Gershon, 372 F.2d 535, 539 (CCPA 1967)).

4 Appellants argue Faraday’s Law would somehow have been contravened
by the reference combination. Req. 9. However, as addressed, supra, the
scope of claim 1 reads on the reference combination as set forth by the
Examiner in our Decision, because the claim does not preclude other
circuitry or wiring as taught by the references, and because the claim, on its
face, does not implicate Faraday's law. Such implication arguably could
come about by, for example, reciting a negative limitation drawn to avoiding
generation of unintentional and possibly interfering voltages by the recited
seat belt system when relative motion occurs between the seat belt and the
D-ring. However, such limitations do not appear in the claim. 5 Consistent
with the mapping, the Examiner repeatedly cites Rodemer’s “metal
filaments” (not conductors 20). See Final Act. 3–4, 6; Ans. 3–4. In response
to Appellants’ argument about Rodemer’s conductors 20, the Examiner
incorrectly refers to “the conductor wires 20” once (Ans. 3), and that
reference appears to be a one-time typographical error.
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In short, Appellants’ attorney arguments are unpersuasive because
they are not supported by competent evidence, and are not directed to the
Examiner’s proposed combination.
In any event, as discussed in our decision, the Examiner finds if signal
interference does occur, one skilled in the art “is also a person of ordinary
creativity who would take into account any voltage generation or signal
interference.” Dec. 6 (citing Ans. 3). For example, the Examiner finds one
skilled in the art would have “include[d] the proper insulation on either the
magnet portion of the D-ring or at a contact location of the metal filaments
with the magnet in the D-ring to prevent or minimize interference for the
microphone.” Dec. 6 (citing Ans. 4). We find the Examiner’s findings and
conclusion are reasonable because the skilled artisan would “be able to fit
the teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420–21 (2007). Appellants do not
present competent evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19).
II
Appellants argue the Board incorrectly determines that “Appellants
belatedly asserted the proposed combination ‘produces an inoperative
device.’” Req. 10 (emphasis added); see also Req. 10–12.
We disagree. Appellants acknowledge in the Appeal Brief, they
merely argue the proposed combination “would be undesirable”—not
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inoperable. Req. 10 (emphasis added); App. Br. 5 (emphasis added). An
undesirable device is different from an inoperable device. Further,
Appellants’ assertion that “Appellants argued in their appeal brief that . . .
the Examiner’s proposed combination . . . would not work” (Req. 11) plainly
contradicts the record, and Appellants do not—and cannot—cite evidence
for such unsupported assertion.
Appellants also assert “for the first time in the Examiner’s Answer,”
the Examiner made certain findings. See Req. 10–11 (emphasis added).
That assertion is incorrect because in the Final Action, the Examiner already
made such findings:
During normal use and once the seatbelt is fastened, the magnet
would be positioned relatively stationary adjacent to the waist
of the occupant, while the metal filaments would be adjacent to
the shoulder of the occupant. There would be limited movement
of the magnet relative to the metal filaments. As such, the
magnet would not interfere with the metal filaments for the
microphone. Further, should the magnet be able to cause an
interference with the metal filaments, those skilled in the art
could take precautions, such as proper insulation between the
magnet and the metal filaments. It would be obvious to
combine the teachings of Rodemer et al to the seat belt of Bok
in order to provide a convenient location for a hands free
microphone.
Final Act. 6–7.
Therefore, contrary to Appellants’ assertion, the Examiner has not
made a new finding in the Answer (referenced above), and Appellants have
not shown any good cause for their belated argument that the proposed
combination is “inoperable.” See Dec. 7.
In any event, Appellants’ belated argument is unpersuasive. As
discussed in our Decision, the untimely argument is also substantively
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deficient, because it consists of unsupported attorney argument—Appellants
fail to provide competent evidence to show the proposed combination would
be inoperable, as Appellants speculate. See Dec. 7.
III
Appellants contend footnote 5 on page 6 of our decision is incorrect.
See Req. 2–5. In particular, Appellants contend the Examiner relies on
Figures 3 and 4 of Rodemer, not Figures 1 and 2. See Req. 2–5.
Contrary to Appellants’ assertion, the Examiner does not cite
Figures 3 and 4 of Rodemer for the proposed combination. Instead, the
Examiner cites an excerpt from the Summary of the Invention—not
Figures 3 and 4 under the Detailed Description of the Invention Section:
Rodemer et al discloses that it is known to include metal
filaments or strands woven into the belt in order to provide a
means for a microphone connection to an electronic circuit for
use with a microphone having contacts on its bottom side. (See
Col 2, lines 62–67).
Final Act. 3–4. Further, as shown above and discussed previously, the
Examiner maps the claimed “plurality of metal filaments” to Rodemer’s
“metal filaments,” not “conductors 20” in a particular exemplary
embodiment of Rodemer, as Appellants assert (Req. 3–4).5
Our footnote disagrees with Appellants’ focus on Rodemer’s
Figures 3 and 4 because they describe multiple microphones, but the
Examiner’s proposed combination provides one microphone. See Dec. 6,

5 Consistent with the mapping, the Examiner repeatedly cites Rodemer’s
“metal filaments” (not conductors 20). See Final Act. 3–4, 6; Ans. 3–4. In
response to Appellants’ argument about Rodemer’s conductors 20, the
Examiner incorrectly refers to “the conductor wires 20” once (Ans. 3), and
that reference appears to be a one-time typographical error.
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n.5; Final Act. 3–4.6 It is also unclear why Appellants discuss Rodemer’s
Figure 1 extensively (Req. 2, 4–5), as our footnote does not reference that
figure. See Dec. 6, n.5.
Finally, we note our footnote is a minor point and does not change the
thrust of the rejection or disposition of the case. Even if we disregard that
footnote, our factual findings, analysis, and legal conclusion remain the
same, i.e., applying Rodemer’s metal filaments in the Bok’s seat belt system
would have predictably used prior art elements according to their established
functions.
IV
“Arguments not raised, and Evidence not previously relied upon . . .
are not permitted in the request for rehearing except as permitted . . . .”
37 C.F.R. § 41.52(a)(1). Therefore, to the extent Appellants advance new
arguments without showing good cause, Appellants’ new arguments are
untimely.
For example, Appellants argue:
Bok specifically states the seatbelt moves, “the safety
belt for protecting the passenger is installed in the vehicle
passes through the anchor plate and it is rolled with the
predetermined power with the retractor of the lower part.”
(Bok, translation page 2, Purpose of the Invention, paragraph
2.) “And the moving hole (121) in which the safety belt moves
is formed in the center of the stamping plate 120.” (Bok,
translation pages 3-4, Structure & Operation of the Invention,

6 Rodemer’s Figure 2 describes one microphone. See Rodemer 4:29–67.
While that figure does not explicitly describe metal filaments, Rodemer’s
claim 1 recites a system comprising one microphone and metal filaments.
Claim 1. Likewise, the excerpt from the Summary of Invention cited by the
Examiner describes “metal filaments . . . woven into the belt” and “the
microphone.” Rodemer 2:61–66.
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paragraph 6.) Bok addresses the problem of seatbelt movement
causing a cut or crack in the molding D-ring due to long-term
usage. (Bok, translation page 3, paragraph 4.)
Req. 8.
The above new arguments are untimely, as Appellants have not shown
any good cause for the untimely presentation. We further note that even
assuming our reviewing court were to find the new arguments timely
presented, the belated arguments are unpersuasive for the following reasons.
Appellants’ citing Bok’s general discussion about a seatbelt’s
movement is not on point, because a seatbelt does move when it is
unfastened and being retracted. In contrast, the Examiner’s proposed
combination is directed specifically to the scenario when the seatbelt is
fastened and during normal use (Final Act. 6). Further, the Examiner’s
proposed combination allows movement of the seatbelt, as it allows “limited
movement of the magnet relative to the metal filaments” (Final Act. 6). In
any event, Bok’s general discussion does not validate Appellants’
speculation that when the seatbelt is fastened and during normal use, the
filaments—positioned away from magnet—would have moved “over” the
magnet to create voltage (Req. 9).7

Further Prosecution
As discussed in our decision (Dec. 2, n.2), in the event of further
prosecution, we leave it to the Examiner to determine whether claim 1

7 We again reiterate the scope of claim 1 is extremely broad, and lacks any
functional or structural relationships between the claim limitations that
would invoke specified performance while relative motion is occurring
between the seat belt and D-ring.
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complies with 35 U.S.C. § 112, second paragraph, because claim 1 “does not
positively recite structural relationships of the two elements [the claimed
“seat belt” and “D-ring”].” In re Collier, 397 F.2d 1003, 1005 (CCPA
1968); see also n.4 and 7, supra.

CONCLUSION
For the reasons stated above, Appellants have not persuaded us that
we misapprehended or overlooked any issue of fact or law in our Decision.
We have granted Appellants’ Request for Rehearing to the extent that
we have reconsidered our Decision. Appellants have not shown that we
misapprehended or overlooked any issue of law or fact in reaching that
decision. Accordingly, while we have granted Appellants’ Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
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.
§ 41.50(f).
REQUEST FOR REHEARING DENIED