Ex Parte Capps

Board of Patent Appeals and Interferences

May 29, 2009

10992172 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT E. CAPPS
____________

Appeal 2008-001800
Application 10/992,172
Technology Center 3600
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Decided:1 May 29, 2009
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Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-001800
Application 10/992,172

2
Robert E. Capps (Appellant) filed a Request for Rehearing
(hereinafter “Request”) under 37 C.F.R. § 41.52 of the Decision dated
February 20, 2009 (hereinafter “Decision”). In the Decision, we affirmed
the Examiner’s decision rejecting claims 4-7, 9, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Toro (US 4,428,412, issued Jan. 31,
1984) and Love (US 6,536,828 B2, issued Mar. 25, 2003).
Appellant alleges that in reaching our decision, we overlooked or
misapprehended the point that by requiring an election of species between
the embodiments of Figures 1, 2 and 3 (Office Action mailed Mar. 20, 2006,
hereinafter “Election”), the Examiner determined that the three species of
sunshades depicted in Figure 1 (static cling variety), Figure 2 (roller shade
variety), and Figure 3 (pop-open variety), respectively, are patentably
distinct from one another, thus establishing “a standard of patentability in
this case which requires allowance of the rejected claims.” Request 1-2.
Consistent with this “standard of patentability,” Appellant argues that the
teachings of Love are more remote from Appellant’s elected species of
sunshade (the roller shade embodiment of Figure 2) than the species (the
embodiments of Figures 1 and 3) that were not elected by Appellant.
Request 6. Consequently, Appellant reasons that a rejection of claim 4,
which Appellant alleges is directed to the elected species, relying on such
prior art, even in combination with Toro, which discloses a roller shade type
of sun shade (Decision 5:FF4), is untenable. Request 6-7. According to
Appellant, because Toro is merely one example of a prior art automobile sun
shade, from among the many types admitted to be prior art, including static
cling type sun shades, the inclusion of Toro in the Examiner’s rejection
“does not defeat the logic of Appellant’s argument.” Request 7.
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Appellant’s argument appears to presume that an examiner’s claim
construction and patentability determinations, whether implicit or explicit, in
issuing requirements for election of species, and in holding claims to be
generic to multiple species, drawn to the elected species, or drawn to non-
elected species, are binding on this Board. This, of course, is not the case.
The Examiner’s determinations in making a restriction or election
requirement are no more binding on the Board than is the Examiner’s
decision to reject the claims.
Moreover, in any event, even assuming claim 4 is directed specifically
and solely to the roller shade embodiment of Appellant’s invention, the
Examiner’s rejection of claim 4 as being unpatentable over Toro and Love is
in no way inconsistent with a determination that a roller shade species of
Appellant’s invention is patentably distinct from a static cling species or
pop-open species of Appellant’s invention. There is no inconsistency, real
or implied, because the rejection is based on Toro’s roller shade sun shade,
not on the other types of admitted prior art sun shades alluded to by
Appellant, and, more particularly, not on the static cling or pop-open species
purportedly determined by the Examiner to be patentably distinct from the
elected roller shade species in requiring an election of species.
Appellant’s argument that Love’s teaching of forming a window of a
motor vehicle with UV-sensitive transition lens material is more remote than
the static cling and pop-open species of sun shade, and thus is not available
prior art against Appellant’s claim 4, is not well founded. An election of
species requirement does not place restrictions on the types of prior art that
may be relied upon in supporting a legal conclusion of obviousness of the
subject matter of claims directed to the elected species. Any reference,
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4
whether from the applicant’s field of endeavor, or from a field different from
that of applicant’s endeavor, may be reasonably pertinent if it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his or her invention as a
whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed.
Cir. 2007).
Love is reasonably pertinent to Appellant’s invention because, like
Appellant’s invention (Spec., para. [0005]), Love deals with applying
photochromic materials to vehicle windows to darken when exposed to
sunlight (UV light) and to lighten when the sunlight is not as intense, albeit
by providing the photochromic materials directly into the window, rather
than into a sun shade attached to the interior side of the window. Decision
5:FF7, FF8, and FF9. Therefore, Love is pertinent prior art to Appellant’s
invention.
Appellant additionally argues that in reaching our decision, we also
overlooked an important distinction between the instant case and KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Request 7-9. In particular,
Appellant argues that, unlike the situation in KSR, there is no design need or
market pressure to solve a problem in the automobile sunshade industry,
which Appellant alleges is “quite content with conventional, tried-and-true
designs,” which have not been provided with a photochromic characteristic.
Request 9.
As noted on pages 6-7 of the Decision:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
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5
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417.
In the instant case, as noted on page 8 of the Decision, the reason for
providing a photochromic characteristic to Toro’s shade would have been to
improve Toro’s sun shade by improving visibility and comfort when
sunlight is strong, without diminishing visibility at night or at other times
when the sunlight is weak. That the technique has been used to improve
automobile windows, and not automobile shades, does not diminish its
relevance in the obviousness analysis prescribed by KSR. In making
obviousness determinations, the relevant question is not whether the
combination was obvious to Appellant, or to any particular manufacturer of
automobile sun shades, but whether it was obvious to a person of ordinary
skill in the art. See id. at 420. As we found on page 8 of the Decision, “[a]
person of ordinary skill in the art would immediately have appreciated that
provision of a photochromic characteristic to the vehicle shade 10 of Toro
would improve Toro’s shade in the same manner [in which Love teaches
that it improves vehicle windows], namely, by improving visibility and
comfort when sunlight is strong without diminishing visibility at night or at
other times when the sunlight is weak.”
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Application 10/992,172

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For the above reasons, Appellant’s Request does not persuade us that
we erred in affirming the rejection of claims 4-7, 9, and 10 as being
unpatentable over Toro and Love.

CONCLUSION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
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)(1)(iv) (2007).
DENIED

mls

STEVEN C. SCHNEDLER
CARTER & SCHNEDLER, PA
56 CENTRAL AVE., SUITE 101
PO BOX 2985
ASHEVILLE, NC 28802