Ex Parte Gulker et al

Board of Patent Appeals and Interferences

Jun 25, 2012

11939132 (B.P.A.I. Jun. 25, 2012)

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.
11/939,132 11/13/2007 William S. Gulker 81161646 5392
28415 7590 06/25/2012
PRICE HENEVELD LLP
FORD GLOBAL TECHNOLOGIES, LLC
695 KENMOOR S.E.
P. O. BOX 2567
GRAND RAPIDS, MI 49501-2567
EXAMINER
PATEL, KIRAN B
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
06/25/2012 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 WILLIAM S. GULKER, STEVEN C. DWORACK,
SCOTT D. CONN and ARTEM POLIAKOV
__________

Appeal 2010-007654
Application 11/939,132
Technology Center 3600
___________

Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-5, 7, and 11-14. The real party in interest is Ford Global
Technologies, LLC. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Rejection on Appeal
Claims 1-5, 7, and 11-14 were finally rejected under 35 U.S.C. § 112,
first paragraph, as lacking written description in the specification.
Appeal No. 2010-007654
Application 11/939,132

2

Claims 1-5, 7, and 11-14 were finally rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim
subject matter which the applicants regard as the invention.
The Invention
The disclosed invention is directed to a false division bar
assembly for minimizing wind noise generated during movement of a
vehicle. (Spec. ¶ [0012]). The assembly includes a division bar
mountable in a vehicle rear door window opening to create at least
two air passages on opposite sides of the division bar within the
vehicle rear door window opening, to thereby minimize wind noise
generated during movement of the vehicle. (Spec. ¶ [0010]). The
false division bar is described as mounted “inboard” of the rear
window. (Spec. ¶ [0027]).
The title of invention is “False Division Bar for Minimizing
Wind Throb Noise.” Each of independent claims 1 and 7 begins with
the phrase “A false division bar assembly for minimizing wind noise
generated during movement of a vehicle.” Independent claim 11 is
the same but refers to “the vehicle” instead of “a vehicle.” The
appealed claims are unamended from their original form as filed.
Figure 2 of Appellant’s specification is reproduced below,
which illustrates an automobile with closed front windows and open
rear windows, wherein the false division bar is disposed in an
extended configuration (Spec. ¶ [0019]):
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Appeal No. 2010-007654
Application 11/939,132

4

to thereby minimize wind noise generated during movement of
the vehicle when the vehicle front windows are closed with the
vehicle rear windows being open.

DISCUSSION
A. The Written Description Rejection of Claims 1-5, 7, and 11-14
The Examiner refers to the term “false division bar assembly” in the
preamble of independent claims 1, 7, and 11, and states that it is not clear
besides a false division bar what additional parts are included to make such
an assembly. (Ans. 4:4-5). The statement is misplaced, as the claims use
the term “comprising” in connection with the recited assembly, which is an
open-ended term. The details of implementation need not be recited in the
claims. All of the components of the assembly in a specific implementation
need not be recited in any claim unless the specification indicates that
applicant did not invent subject matter that is without such specifics. See
ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1378
(Fed. Cir. 2009). That is not the case here. The Examiner did not identify
any component which according to the specification is a necessary part of
Appellant’s invention and yet is not included in the claims. We agree with
all of Appellant’s arguments in Section VII.A of the Appeal Brief, and add
the following for emphasis.
The Examiner states that drawings must show every feature of the
invention as specified in the claims. (Ans. 6:4-8). While that is a
requirement for drawings, failure to comply with that requirement does not
establish lack of written description for any claim element. The supporting
description may not be in a drawing.
Appeal No. 2010-007654
Application 11/939,132

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The Examiner states that a vehicle rear door window opening is not
identified in the specification. (Ans. 4:6). We disagree. Figure 2 illustrates
a false division bar 20 disposed in a vehicle rear door window opening, as is
specifically described in paragraph [0019] on page 5 of the specification.
The Examiner states that the following claim elements are not
supported in the specification: (1) an opening end adjacent a vehicle rear
end; (2) a vehicle door window opening; (3) a vehicle including a false
division bar assembly; and (4) a division bar mountable in a vehicle door
window opening. That determination is not supported by the record. All of
those elements are in Appellant’s original claims as filed, illustrated in
Figure 2 reproduced above, and described in the specification as we
determined above in the section titled “The Invention.”
The Examiner further states that those four elements are not explained
in the specification. (Ans. 7:1-4). That determination is also not supported
in the record. In the section above titled “The Invention,” we identified the
corresponding portions in the specification which support those elements.
The invention is a simple one, without much complexity. The Examiner has
not set forth precisely what needs to be further explained. For instance, Item
1 means an end of an opening that is adjacent a vehicle rear end. In the
context of Figure 2, that would be the end of the rear door window opening
towards the rear of the vehicle. Item 2 means what it plainly states – an
opening of a rear door window. Similarly, Items 3 and 4 means what they
each plainly states. Lacking a description more detailed than what the
claims themselves state is not itself a basis for rejecting the claims for lack
of written description.
Appeal No. 2010-007654
Application 11/939,132

6

The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at the time
of filing of the claimed subject matter. Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563, (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983). For reasons discussed above, the Examiner has failed to set forth
a rational basis for finding that the rejected claims are without written
description in the specification.
The rejection of claims 1-5, 7, and 11-14 under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification cannot be
sustained.
B. The Indefiniteness Rejection of Claims 1-5, 7, and 11-14

The legal standard for indefiniteness is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In re Warmerdam, 33
F.3d 1354, 1361 (Fed. Cir. 1994); In re Merat, 519 F.2d 1390, 1396 (CCPA
1975). The purpose of 35 U.S.C. § 112, second paragraph, is to provide
reasonable notice as to the boundaries of the patent protection involved. In
re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
The Examiner’s stated rationale in support of the rejection for
indefiniteness does not point out just what it is about the recitations in the
claims which renders the scope of the claims not reasonably determinable.
While it is true that the claims, by using the term “comprising” to modify the
claimed false division bar assembly, are open ended and thus cover the
inclusion of unspecified components, that does not render any claim
indefinite under 35 U.S.C. § 112, second paragraph. Claim scope is defined
by the components which have been specified and recited, together with the
Appeal No. 2010-007654
Application 11/939,132

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functions they perform according to claim features. Breadth of coverage,
however broad, is not equitable to indefiniteness. In re Miller, 441 F.2d
689, 693 (CCPA 1971); see also In re Gardner, 427 F.2d 786, 788 (CCPA
1970).
With regard to the claimed assembly, it is not necessary that Appellant
expressly recite all component parts thereof. And a false division bar is false
because, according to the specification, it is not really positioned between
two window sections. Rather, it is mounted “inboard” of a window opening.
(Spec. ¶ [0027]:1-5). Thus, a single rear window occupying all of the
window space can still open and close despite presence of the “false”
division bar. Also, as is explained earlier, non-compliance with a regulatory
requirement that every claim element must be shown in the drawings does
not demonstrate claim indefiniteness under 35 U.S.C. § 112, second
paragraph.
On page 5 of the Answer, the Examiner identifies eight claim
elements as failing to particularly point out and distinctly claim subject
matter which applicants regard as the invention: (1) a false division bar
assembly; (2) a retractable rear window; (3) a vehicle rear door window
opening; (4) an opening end adjacent a vehicle rear end; (5) division bar is
retractable within a rear door; (6) a vehicle door window opening; (7) a
vehicle including a false division bar assembly; and (8) a division bar
mountable in a vehicle door window opening. The position taken is
unexplained and only raises the question -- what is it about these recitations
that renders them not understood to one with ordinary skill in the art, in the
context of Appellant’s disclosed invention?
Appeal No. 2010-007654
Application 11/939,132

8

For instance, a retractable rear window is a retractable rear window; a
division bar mountable in a vehicle door window opening is a division bar
mountable in a vehicle door window opening; and a division bar retractable
within a rear door is a division bar retractable within a rear door. The
Examiner’s statement (Ans. 7:1-5) that the elements are not explained in the
specification is not understood. It is uncertain on what basis further
explanation is necessary to understand the scope of the claims. Finally, the
Examiner poses the question (Ans. 8:1-3):
“A false division bar assembly” is referred to in the
beginning of the claim and later in the claim, “a division bar
mountable in a vehicle rear door” are they same or different?

The question is misplaced. An “assembly” is by definition a
combination of parts, and in each claim Appellant is claiming a false
division bar assembly which comprises a division bar mountable in a vehicle
rear door. Thus, the assembly includes the bar as a component.
For the foregoing reasons, the rejection of claims 1-5, 7, and 11-14
under 35 U.S.C. § 112, second paragraph, as indefinite cannot be sustained.
CONCLUSION
The rejection of claims 1-5, 7, and 11-14 under 35 U.S.C. § 112, first
paragraph, as lacking written description in the specification is reversed.
The rejection of claims 1-5, 7, and 11-14 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim
subject matter which the applicants regard as the invention is reversed.

REVERSED