Ex Parte Buccinna et al

Patent Trial and Appeal Board

Oct 24, 2014

11306303 (P.T.A.B. Oct. 24, 2014)

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.
11/306,303 12/22/2005 Frank Buccinna LEAR 05920 PUS 1302
34007 7590 10/27/2014
BROOKS KUSHMAN P.C. / LEAR CORPORATION
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
10/27/2014 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 FRANK BUCCINNA and JOHN MARCEL BURCA
____________

Appeal 2012-004193
Application 11/306,303
Technology Center 3700
____________

Before JOHN C. KERINS, JAMES P. CALVE and LYNNE H. BROWNE,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Frank Buccinna and John Marcel Burca (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–9 and
21–31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellants’ invention is directed to a waterproof remote function
actuator. Independent claim 1 is illustrative:
1. A waterproof remote function actuator comprising:

a plastic housing having a first opening disposed above
an electronic display;
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a plastic cover positioned within the first opening above
the display and having an outer surface lying flush with an
outer surface of the plastic housing;

a water seal positioned around at least a perimeter of the
plastic cover between the perimeter of the plastic cover and an
adjoining surface of the plastic housing;

a clear plastic polymer foil overlay bonded over at least a
portion of the outer surface of said plastic housing and entirely
over said first opening such that an outer surface of said
electronic display is in direct contact with and entirely covered
by said clear plastic polymeric foil overlay.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1 and 31 under 35 U.S.C. § 112, first paragraph, as failing
to meet the written description requirement;
(ii) claims 1–9 under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter regarded as the
invention;
(iii) claims 1, 3, and 31 under 35 U.S.C. § 103(a) as being
unpatentable over Kwak (US 2001/0022840 A1, published Sept. 20, 2001)
in view of Nuovo (US 7,711,400 B2, issued May 4, 2010);
(iv) claims 4–6 and 27–29 under 35 U.S.C. § 103(a) as being
unpatentable over Kwak in view of Nuovo and Brunstrom (US 7,428,427
B2, issued Sept. 23, 2008);
(v) claims 2, 7–9, and 23–26 under 35 U.S.C. § 103(a) as being
unpatentable over Kwak in view of Nuovo and Chien (US 6,983,130 B2,
issued Jan. 3, 2006); and
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(vi) claims 21, 22, and 30 under 35 U.S.C. § 102(b) as being
anticipated by Kwak.

ANALYSIS
Claims 1 and 31--35 U.S.C. § 112, first paragraph
The Examiner finds that there is no written descriptive support for the
claim terms “plastic cover within the first opening,” and “water seal within
the first opening,” appearing in each of claims 1 and 31. Ans. 4–5.
Appellants respond by presenting an annotated Figure 2, to which lead
lines have been added purportedly identifying where the plastic cover and
water seal are illustrated. Appeal Br. 6. The Examiner correctly indicates
that the lead line designating the purported “plastic cover” legend points to
an element elsewhere designated with a lead line and reference numeral 38,
and that the Specification identifies element 38 as an electronic display, and
not a plastic cover. Ans. 8, citing Spec., para. 14. The Examiner also notes
that the lead line identifying the purported “water seal” points to a space or
line between electronic display 38 and upper housing 23, and that the
Specification does not describe that there is a water seal in that location.
Appellants additionally cite to paragraphs 3 and 4 of the Specification,
which refer to “[a] clear lens such as glass or plastic” that is coupled within
an opening of a housing by a “seal around the perimeter of the lens.”
Appeal Br. 7. Appellants cite to paragraph 5 as well, which states that “[i]t
is therefore desirable to minimize or otherwise eliminate water-sealing
issues typically encountered with the present design.” Id. According to
Appellants, these passages convey possession of a remote function actuator
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invention that includes a plastic cover and water seal as claimed, in that the
invention purports to address water sealing issues with the described design.
The Examiner counters that paragraphs 3 and 4 describe a prior art
construction, and not the invention that is the subject of claims 1 and 31.
Ans. 9. The Examiner further notes that, notwithstanding the expressed
desire to overcome water-sealing issues experienced with the prior art
design, Appellants’ invention is directed to providing a clear plastic
polymeric foil overlay that is bonded over the top opening in the housing,
and that Appellants’ Specification describes that “a portion of the foil
overlay 40 therein constitutes a window display that covers the opening 33,”
with no mention of a plastic cover or water seal between a plastic cover and
housing. Ans. 9, citing Spec., para. [15].
The Examiner’s position is supported by a preponderance of the
evidence. While Appellants’ Specification discusses sealing problems with
conventional remote function actuators having plastic covers or lenses and
water seals, and states a desire to minimize or eliminate those problems, the
Specification, including its references to the drawings, evidence that
Appellants’ purported solution and invention do not rely on adopting the
exact configuration of such conventional remote function actuators as
described, and adapting the same to minimize or eliminate the problems.
Instead, the reference to the foil overlay as having a portion that constitutes a
window display, overlying a component identified not as a plastic cover, but
as an electronic display, evidence that the invention possessed by Appellants
differs significantly from that which is described as a conventional remote
function actuator.
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Accordingly, the rejection of claims 1 and 31 under 35 U.S.C. § 112,
first paragraph, as failing to meet the written description requirement, is
sustained.
Claims 1–9--35 U.S.C. § 112, second paragraph
Appellants state that they are in agreement with the Examiner that
claims 1–9 are indefinite. Appeal Br. 8. The rejection is summarily
sustained.
Claims 1, 3, and 31--35 U.S.C. § 103(a)--Kwak/Nuovo
Appellants argue claims 1 and 31 separately, but present no separate
arguments for the patentability of claim 3, which depends from claim 1.
Appeal Br. 8–18. We will group claim 3 with claim 1, and address the
arguments presented for claims 1 and 31. Claim 3 stands or falls with claim
1.
Claim 1
Notwithstanding that we have sustained the rejection of claim 1 as
being indefinite, we are able to decide whether or not the Examiner’s § 103
rejection is to be sustained, in that Appellants’ arguments traversing the
rejection are directed to claim limitations not implicated in the indefiniteness
rejection under § 112, second paragraph.
Appellants maintain that pad 10 of the Kwak patent, cited by the
Examiner as corresponding to the claimed polymeric foil overlay (Ans. 6),
“fails to entirely cover a window-placing portion 11.” Appeal Br. 10.
Appellants first contend that paragraph 22 in Kwak discloses that the
“external pad 10 includes an opening around a window-placing portion.” Id.
at 11. Paragraph 22, however, makes no mention whatsoever of external pad
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10, and we further see no disclosure in the surrounding paragraphs that
external pad 10 has such an opening.
In a similar vein, Appellants extract from paragraph 24 of Kwak that a
“through hole 22 is provided in the external pad 10 at a portion of the
housing 20 to define the window-placing portion 11,” and “the window-
placing portion 11 . . . is formed from a through hole 22 included within the
external pad 10.” Appeal Br. 12. Paragraph 24 discloses nothing of the sort,
instead describing that “[a] transparent display window through hole 22 . . .
[is] formed at the housing 20.” Kwak, p. 2, para. 24 (italics added).
Appellants further point to Figure 2 of Kwak, noting that pad 10 has a
pattern of lines appearing thereon, yet no such lines are present in the area
corresponding to window-placing portion 11, or, in terms of claim 1, a first
opening in the housing. Appeal Br. 11. Appellants contend that because the
pattern does not cover the window 11, Kwak thus fails to disclose or suggest
that the pad entirely covers the window, and thus does not meet the claim
limitation at issue. Id.
The Examiner, in response, directs attention to paragraph 20 and
Figure 3 of Kwak, which evidence that window-placing portion 11 of pad 10
is transparent, and that portion 11 of pad 10 extends over the first opening 22
in the housing 20. Ans. 9–10. The Examiner explains that the cross-
sectional view in Figure 3, with its attendant exploded views, is taken at
section line A–A appearing in Figure 2, which is at the center line of the
width of the housing, and which illustrates the housing as well as first
opening 22 and window-placing portion 11 of pad 10. Id. at 10. The
Examiner correctly deduces that Figure 3 and the relevant exploded view
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“clearly show[] that the external pad extends over the first opening and the
plastic cover [housing].” Id.
Appellants’ position in this regard is that “the Kwak reference fails to
properly illustrate where the cross-section of Figure 3 occurs,” and presents
an annotated version of Figure 3 in which section line A–A is replaced by a
section line B–B which extends along or near an edge of opening 22.
Appeal Br. 12–14. Appellants maintain that the position of this section line
“seems more logical than the A-A position shown in Figure 2 as the A-A
positioning results in the inconsistencies noted above.” Id. at 14. Those
alleged inconsistencies are that, were pad 10 to extend across window 11,
Figure 2 would have included some sort of shading in that area, and, if the
Examiner were correct that pad 10 has a transparent material extending over
opening 22, Figure 3 would have included, but does not include, proper
shading showing a difference or transition between the patterned portion of
external pad 10 and the transparent portion.
The preponderance of the evidence supports the Examiner’s position.
The alleged inconsistencies are not of such a nature that section line A–A as
presented by Kwak is to be disregarded. The Examiner correctly notes that
the lack of a change in the appearance of pad 10 in Figure 3 at the opening
22 is because it is the same material extending across the opening, and that a
transition from a non-transparent to a transparent characteristic would not
necessarily be shown under these circumstances. We decline Appellants’
invitation to alter the disclosure of Kwak by eliminating section line A–A in
favor of Appellants’ proposed section line B–B.
The rejection of claim 1 as being unpatentable over Kwak and Nuovo
is therefore sustained. Claim 3 falls with claim 1.
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Claim 31
The Examiner notes that Kwak does not disclose a water seal between
its first opening and its plastic cover. Finding that Nuovo discloses
providing a water seal between a housing and a plastic cover, the Examiner
concludes that it would have been obvious to modify Kwak to include a
water seal between the first opening and plastic cover, in order to provide
greater protection to the underlying electronic display. Ans. 6–7.
Appellants maintain that the Kwak and Nuovo references fail to
disclose the foil overlay being bonded over the water seal. Appeal Br. 15.
In support of this position, Appellants synopsize the relevant disclosures of
Kwak and Nuovo, and assert that,
In the event that the Nuovo reference was modified
to include the external pad 10 of the Kwak
reference, the external pad 10 would be positioned
over top of the exterior portion of the bezel 19.
This would cause the bezel 19 to be positioned
between the external pad 10 and the sealant 69.
The external pad 10 would in no way be bonded
directly to the sealant 69.
Appeal Br. 18.
The argument misses the mark, in that the Examiner does not propose
to modify the Nuovo device to incorporate features of the Kwak device.
Rather, the proposed modification is to the Kwak device, in view of the
teaching of a sealant between a housing (bezel) and a plastic cover. As such,
we are not apprised of error in the Examiner’s rejection.
The rejection of claim 31 as being unpatentable over Kwak and
Nuovo is sustained.

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Claims 4–6 and 27–29--35 U.S.C. § 103(a)--Kwak/Nuovo/Brunstrom
Appellants state that they rely on the arguments presented for the
claims that these claims depend from, and allege that the claims are
patentable for the same reasons. Appeal Br. 19. We have not found the
arguments advanced by Appellants to be persuasive, and therefore the
rejection of claims 4–6 and 27–29 as being unpatentable over Kwak in view
of Nuovo and Brunstrom is sustained.
Claims 2, 7–9, and 23–26--35 U.S.C. § 103(a)--Kwak/Nuovo/Chien
Appellants state that they rely on the arguments presented for the
claims that these claims depend from, and allege that the claims are
patentable for the same reasons. Appeal Br. 19. We have not found the
arguments advanced by Appellants to be persuasive, and therefore the
rejection of claims 2, 7–9, and 23–26 as being unpatentable over Kwak in
view of Nuovo and Chien is sustained.
Claims 21, 22, and 30--35 U.S.C. § 102(b)--Kwak
Appellants do not present arguments directed to any purported lack of
anticipation of claims 21 and 22 by Kwak. Appeal Br. 18–19. Accordingly,
the rejection of these claims as being anticipated by Kwak is summarily
sustained.
Appellants argue that claim 30, which depends from claim 21, is not
anticipated for the same reasons advanced with respect to claim 1, related to
the alleged failure of Kwak disclosing that its external pad 10 entirely covers
opening 22 in housing 20. Appeal Br. 19. For the same reasons presented in
the analysis of claim 1 above, the rejection of claim 30 as anticipated by
Kwak is sustained.
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DECISION
The rejection of claims 1 and 31 under 35 U.S.C. § 112, first
paragraph, as failing to meet the written description requirement, is
AFFIRMED.
The rejection of claims 1–9 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the subject matter
regarded as the invention, is AFFIRMED.
The rejection of claims 1, 3, and 31 under 35 U.S.C. § 103(a) as being
unpatentable over Kwak in view of Nuovo is AFFIRMED.
The rejection of claims 4–6 and 27–29 under 35 U.S.C. § 103(a) as
being unpatentable over Kwak in view of Nuovo and Brunstrom is
AFFIRMED.
The rejection of claims 2, 7–9, and 23–26 under 35 U.S.C. § 103(a) as
being unpatentable over Kwak in view of Nuovo and Chien is AFFIRMED.
The rejection of claims 21, 22, and 30 under 35 U.S.C. § 102(b) as
being anticipated by Kwak 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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