Ex Parte Gulker et alDownload PDFBoard of Patent Appeals and InterferencesJun 25, 201211939132 (B.P.A.I. Jun. 25, 2012) Copy Citation 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]): App App is di fixed 14. dispo wind (Spe eal No. 20 lication 11 Figure 2 In autom sposed “in ly or retra (Spec. ¶ [0 sed at app ow openin c. ¶ [0011 Claim 1 1. noise ge retractab a opening said divi 10-007654 /939,132 shows an obile 10 h board” of ctably mo 027]:1-5). roximatel g from an ]:1-3). is represen A fals nerated du le rear win division ba to create a sion bar w embodim aving a re the rear wi unted to an It is desc y 1/3 the l opening e tative and e division ring move dow, said r mountab t least two ithin the v 3 ent of App ar door 14 ndow and interior t ribed that ength of th nd adjacen reproduce bar assem ment of a assembly le in a veh air passag ehicle rear ellant’s in , a false di is describ rim panel the divisio e vehicle t a vehicl d below: bly for mi vehicle inc comprisin icle rear d es on opp door win vention vision bar ed as eithe of rear doo n bar may rear door e rear end nimizing w luding a g: oor windo osite sides dow openi 20 r r be . ind w of ng, 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 5 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 7 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 Copy with citationCopy as parenthetical citation