Ex Parte Burgess

Board of Patent Appeals and Interferences

Jan 20, 2006

09567582 (B.P.A.I. Jan. 20, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES P. BURGESS
____________

Appeal No. 2005-2587
Application No. 09/567,582
____________

HEARD: January 11, 2006
____________

Before JERRY SMITH, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 19-22.

We AFFIRM.
BACKGROUND
The appellant's invention relates to a keyless command
system for vehicles (specification, page 1). Specifically, the
invention includes a wireless transmitter mounted in the trunk,
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preferably with an illuminated or glow-in-the-dark trunk unlock
button (specification, page 4).
Claim 19 is representative of the invention, and is
reproduced as follows:
19. A keyless command entry system adapted for use with a
vehicle having a trunk and a wireless encoded command signal
receiver, the system comprising:

a transmitter module including a user control and a wireless
signal transmitter operative to transmit a wireless encoded
command signal following operation of the user control which is
identical to a wireless encoded command signal to which the
receiver is responsive; and

wherein the transmitter module is mounted in the trunk and
the wireless encoded command signal is a TRUNK-UNLOCK signal.

The prior art references of record relied upon by the

examiner in rejecting the appealed claims are:

David 5,859,479 Jan. 12, 1999
Flick 6,320,514 Nov. 20, 2001
(filed Jul. 15, 1999)
Marrazzo et al. (Marrazzo) 6,349,984 Feb. 26, 2002
(filed Apr. 5, 1999)
Breed 6,484,080 Nov. 19, 2002
(filed Jan. 2, 2001)1

1 We observe that Breed does not appear to have an effective filing date prior to the filing date of
appellant. However, since this issue has not been raised by the appellant or the examiner, and we have
not relied upon Breed in our Decision, we decline to raise the issue.
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Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flick in view of David and Breed.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flick in view of David and Breed, and
further in view of Marrazzo.

Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (mailed April 20,
2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed January 31, 2005) for the
appellant's arguments thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
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reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the brief along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claims 19 and 20 as being unpatentable over Flick in view of
David and Breed.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
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Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, page 4) is that Flick
discloses a keyless command entry system adapted for use with a
vehicle having a trunk and a wireless encoded command signal
receiver, but that Flick does not disclose the transmitter module
to be mounted in the trunk. To overcome this deficiency of
Flick, the examiner turns to David for a teaching of a vehicle
anti-confinement device having a wired transmitter module mounted
in the trunk. In addition, the examiner (id.) relies upon Breed
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for a teaching that a wired connection is an alternative to a
wireless connection.
Appellants' position (brief, page 3) is that David does
teach an anti-confinement device mountable within a trunk; but
that the apparatus of David is strictly hard-wired. It is argued
(brief, page 4) that despite the teachings of Breed, there is no
foundation to modify the teachings of David so as to be wireless.
Appellant adds (id.) that the mere fact that references can be
combined or modified does not render the combination obvious
unless the prior art suggests the desirability of the
combination. Appellant further asserts (id.) that to force the
system of David to be wireless per Breed, at least one principle
of operation would be lost, namely tail light operation.
From our review of Flick we find that the remote keyless
entry (RKE) transmitter 85 (figure 4) contains buttons for
locking/unlocking the doors, as well as for unlocking the trunk.
From this disclosure, we find that the RKE transmitter is meant
to be used by a person located outside the trunk, and find no
disclosure that the trunk opening transmitter be located inside
the trunk. Turning to David, we find that invention relates to a
device to open a vehicle compartment, such as a trunk (col. 1,
lines 10-12). The device is installed in a vehicle and enables
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the vehicle trunk to be opened from the interior of the trunk
(col. 3, lines 17-19). David further discloses that the trunk
opening device is located within the trunk and is activated by a
person confined therein (col. 3, lines 35-39). It is
additionally disclosed that a momentary switch is used to release
the trunk lid (col. 3, lines 62-64). A first toggle switch 18 is
used for opening trunk latch 30 (col. 4, lines 54-59). When
switch 18 is activated, an electrical impulse is transmitted
through the trunk latch electric line 24, opening the electronic
trunk latch 30. It is additionally disclosed (col. 3, lines 20-
25) that:
The present invention can be retrofit to existing
vehicles by connecting a prepared box and wiring
harness to the vehicle power supply, trunk release
solenoid, and tail lights. The present invention has
an ON/OFF switch which enables the circuit controlling
the blinking of at least one tail light.

From the disclosure of David recognizing the need for a
transmitting device to be installed within a trunk to allow a
person confined in the trunk to allow himself to get out of the
trunk, we find that an artisan would have been motivated to
provide the automotive keyless entry system of Flick with the
ability to allow a user to get out of the trunk if trapped
therein. As to the issue of whether the system of David would be
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a wired or wireless system if provided in Flick, we note that
David discloses his system to be retrofitted in an existing
vehicle. Since the system of David is to be retrofitted in an
existing vehicle, and the system of Flick is wireless, we find
that an artisan, upon providing the system of Flick with the
trunk release of David, would make the system wireless, to be
compatible with the wireless system of Flick, and to make the
installation process easier. As both wireless and wired systems
are known in the art of automobile door/trunk, etc., unlocking
systems as taught by Flick and David, an artisan would have
considered the wired and wireless systems to be equivalents, each
of which being substitutable for the other. Accordingly, we do
not agree with appellant (brief, page 4) that the examiner has
resorted to hindsight to arrive at the claimed invention.
Rather, we find that the teachings of the prior art references to
Flick and David would have suggested to an artisan the invention
of claim 19, and consider the reference to Breed to be
surplusage.
We are not persuaded by appellant’s assertion (brief, page
4) that forcing the system of David to be wireless would defeat
one purpose of operation because tail light activation would be
lost. Modifying Flick in view of David would provide Flick with
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the ability to open the trunk from the inside. The modification
would not delete the tail light actuation of David, but rather
tail light actuation would not be provided in Flick.
From all of the above, we are not convinced of any error on
the part of the examiner in rejecting claim 19. The rejection of
claim 19 under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 20. Appellant provides no separate
arguments for this claim. From the disclosure of David of using
a momentary switch to unlock the trunk (col. 3, lines 61-64) we
agree with the examiner, for the reasons set forth in the answer
(page 4), that the limitation of claim 20 is suggested by the
prior art. The rejection of claim 20 under 35 U.S.C. § 103(a) is
affirmed.
We turn next to the rejection of claims 21 and 22 under 35
U.S.C. § 103(a) as being unpatentable over Flick in view of David
and Breed, and further in view of Marrazzo. We begin with claim
21. The examiner (answer, page 5) relies upon Marrazzo for a
teaching of an illuminated trunk unlock button. Appellant
asserts (brief, page 5) that the:
argument is simply taking different elements from
different fields and gluing them together without any
teachings other than Appellant’s own disclosure in
support of the rejection. The mere fact that
references can be combined or modified does not render
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the resultant combination obvious unless the prior art
also suggests the desirability of the combination.
From our review of Marrazzo, we find that the reference relates
to release mechanisms for automobile trunks that enable the trunk
to be opened from inside the trunk (col. 1, lines 7-9). It is
disclosed that the trunk release mechanism includes a large
activation button 20 that faces the interior of the trunk, and is
illuminated so that a child locked in a dark automobile trunk can
touch the button and open the trunk latch (col. 2, lines 50-60).
From the disclosure of Marrazzo, we find that the reference is
not from a different field from Flick, David or appellant, and
teaches that the trunk release mechanism be illuminated so that a
child can unlock himself from the trunk of a car. From this
disclosure, we are not convinced of any error on the part of the
examiner, and find that the applied prior art would have
suggested to an artisan the invention of claim 21. The rejection
of claim 21 under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 22, which requires that the unlock
button is “glow-in-the-dark.” From the absence of any specific
arguments by appellant against the disclosure of Marrazzo of a
“glow-in-the-dark” unlock button, we agree with the examiner, for
the reasons set forth in the answer (page 5), that the prior art
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suggests the language of claim 22. Accordingly, the rejection of
claim 22 under 35 U.S.C. § 103(a) is affirmed.

CONCLUSION
To summarize, the decision of the examiner to reject claims
19-22 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(i)(iv).

AFFIRMED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

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SSL/gjh

John G. Posa, Esq.
Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C.
280 North Old Woodward Avenue, Suite 400
Birmingham, MI 48009

Comment [jvn1]: Type address