Ex Parte Gillen

Board of Patent Appeals and Interferences

Jun 22, 2011

10781395 (B.P.A.I. Jun. 22, 2011)

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.
10/781,395 02/18/2004 John H. Gillen 1-15972 1873
1678 7590 06/22/2011
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
REDMAN, JERRY E
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
06/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN H. GILLEN
____________________

Appeal 2010-001808
Application 10/781,395
Technology Center 3600
____________________

Before: KEVIN F. TURNER, STEPHEN C. SIU, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001808
Application 10/781,395
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention “relates to a vehicular, powered slider
drive assembly and, in particular, to a vehicular, powered slider drive
interface.” Spec. 1:11-13. Independent claim 1, reproduced below, is
representative of the claimed subject matter (emphasis added):
1. A powered slider drive interface for opening and closing a
vehicle slider panel across a window aperture, comprising:
a slider panel;
a regulator;
at least first and second mechanical stops mounted on the
slider panel or the regulator, both first and second stops having
a contact surface; and
one or more mechanical stops mounted on the other of
the slider panel or the regulator, the one or more stops having
third and fourth contact surfaces;
wherein when the regulator is caused to move in a first
direction the first stop contact surface is brought into
mechanical contact with the third contact surface, thus urging
the slider panel into an open position at which there is a space
between the second stop contact surface and the fourth stop
contact surface;
further wherein when the regulator is caused to move in
a second direction, the second stop contact surface is brought
into mechanical contact with the fourth contact surface, thus
urging the slider panel into a closed position at which there is a
space between the first stop contact surface and the third stop
contact surface.
Appeal 2010-001808
Application 10/781,395
3
REJECTIONS
Appellant seeks review of the following rejections:
1. Rejection of claims 1, 2, 6-8, 12, and 14-16 under 35 U.S.C. § 102(b)
as anticipated by Koneval (US 6,324,788 B1; issued December 4, 2001).
2. Rejection of claims 3-5, 9-11, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Koneval, MacMillan (US 6,435,636 B1; issued
August 20, 2002), and Hirsch (US 6,207,911 B1; issued March 27, 2001).

CONTENTION AND ISSUE
Appellant’s Specification describes that it was known in the art that
powered slider drive assemblies for the sliding window of pickup trucks
(and other vehicles) that include regulators rigidly attached to the sliding
panel tend to misalign (become “cocked”) and bind. Spec. 2:11-16.
Appellant’s claimed device is intended to overcome this known problem by
configuring the regulator and driver bracket with two pairs of contact
surfaces arranged so that during movement in one direction there is
mechanical contact between the first pair of contact surfaces while there is
space between the second pair of contact surfaces, and, conversely, during
movement in the second, opposite direction, there is space between the first
pair of contact surfaces while there is mechanical contact between the
second pair of contact surfaces. Spec. 6:6-19. Both the claims and
Appellant’s Specification, by contrasting “mechanical contact” and “space,”
implicitly define “space” between contact surfaces as the lack of mechanical
contact between those surfaces.
1
Spec. 6:10-15.

1
Because the intrinsic record is clear, we ignore the definition provided by
the Examiner to the extent it is inconsistent. See Digital Biometrics Inc., v.
Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998); see also Ans. 6.
Appeal 2010-001808
Application 10/781,395
4
Independent claims 1, 6, 7, 12, and 14 each similarly call for
mechanical contact between a first pair of surfaces and a lack of mechanical
contact (space) between a second pair of surfaces during movement in a first
direction.
Appellant contends that Koneval’s device is rigidly assembled and
that Koneval does not disclose space between the second pair of contact
surfaces during movement in the first direction as claimed. App. Br. 13-22.
The issue before us is whether Koneval discloses a lack of mechanical
contact (space) between the second pair of contact surfaces during
movement in the first direction as claimed.

ANALYSIS
Rejection of claims 1, 2, 6-8, 12, and 14-16 under 35 U.S.C. § 102(b) as
anticipated by Koneval
Koneval discloses a powered window regulator for actuating
horizontal sliding window panes in a motor vehicle window assembly.
Koneval, col. 1, ll. 6-7. Koneval discloses an embodiment where sliding
pane 216 is connected to upper pane attachment 228 having engagement tabs
230 that fit into slots 218 of carrier block 212 which is slidably retained in
guide rail 210. Koneval, col. 6, ll. 31-38; fig. 9. Koneval discloses that
“movement of block 212 along guide rail 210 is positively transferred to
sliding pane 216.” Koneval, col. 6, ll. 35-37 (emphasis added); fig. 9.
Koneval discloses that tabs 230 may be removed from slots 218 to permit
manual operation of the sliding pane 216. Koneval, col. 6, ll. 36-40.
Koneval does not explicitly disclose that during movement in a first
direction, one end of tab 230 contacts one end of slot 218 (the first pair of
Appeal 2010-001808
Application 10/781,395
5
contact surfaces) while there is space between the opposing ends of tab 230
and slot 218 (the second pair of contact surfaces).
2
Koneval, passim.
The Examiner found that the ends of tab 230 and the ends of slot 218
correspond to the claimed two pairs of contact surfaces. Ans. 3-4. The
Examiner reasoned that because tab 230 removably engages slot 218, there
must be “space” as claimed between the end of tab 230 and the end of slot
218. Ans. 3-6. Based on this, the Examiner found that Koneval discloses
space between the second pair of contact surfaces during movement in the
first direction as claimed.
We cannot agree with the Examiner’s logic that because tab 230 is
removable from slot 218 there is “space” (a lack of mechanical contact)
between tab 230 and slot 218 as claimed. First, such logic would suggest
there is space between both of the two pairs of contact surfaces when, in
contrast, the independent claims call for space between the second pair of
contact surfaces and mechanical contact between the first pair of contact
surfaces during movement in the first direction. Second, such logic is also
flawed in that removable engagement of tab 230 into slot 218 does not mean
there is a lack of a mechanical contact between the end surfaces of tab 230
and slot 218. The Examiner has ignored the possibility of frictional,
removable engagement between tab 230 and slot 218, where the fit causes
mechanical contact between the surfaces without preventing the removal of
tab 230 from slot 218.
Beyond the lack of explicit disclosure to support the Examiner’s
finding and the faulty logic regarding the space created by removability,

2
The ends of tab 230 and slot 218 referred to are the surfaces perpendicular
to the axis of movement (the longitudinal axis of drive cable 220). See Ans.
4 annotated Koneval, fig. 9. Hereinafter, we refer to these surfaces as
“ends” and “end surfaces.”
Appeal 2010-001808
Application 10/781,395
6
Koneval’s disclosure that movement is “positively transferred” from block
212 to sliding pane 216 suggests a fit between both ends of tab 230 and slot
218 that involves mechanical contact so that the motion is fully transferred.
Given this, we cannot conclude by a preponderance of the evidence that
Koneval discloses space between the second pair of contact surfaces during
movement in the first direction as called for in independent claims 1, 6, 7,
12, and 14.
3
As such, we reverse the rejection of claims 1, 6, 7, 12, and 14,
and their respective dependent claims 2, 8, 15, and 16.

Rejection of claims 3-5, 9-11, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Koneval, MacMillan, and Hirsch
The rejection of claims 3-5, 9-11, and 13 relies upon the same
erroneous finding of fact that Koneval discloses space between the second
pair of contact surfaces during movement in the first direction as claimed.
See Ans. 4. For that reason, we also reverse the rejection of claims 3-5, 9-
11, and 13.

CONCLUSION
Koneval does not disclose space between the second pair of contact
surfaces during movement in the first direction as claimed.

3
The Examiner states that Appellant has not shown the criticality of the
claimed “space,” and states that if space is the basis for the novelty of the
invention such space should have been quantified. See Ans. 6. These
attempts to shift the burden to Appellant do not alter our analysis.
Appeal 2010-001808
Application 10/781,395
7

DECISION
We reverse the Examiner’s decision to reject claims 1-16.

REVERSED

nlk