Ex parte IHLE et al.

Board of Patent Appeals and Interferences

Jan 23, 1998

07969663 (B.P.A.I. Jan. 23, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GUY A. WOJTANEK
_______________
Appeal No. 95-2405
Application 07/969,6631
_______________
HEARD: Jan. 15, 1998
_______________
Before KRASS, LEE, and CARMICHAEL, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 3 through 6, 8 and 9. Claims 1 and 2 have been canceled
and claim 7 has been indicated by the examiner as being
allowable.
The invention pertains to a windshield wiper/washer switch,
the details of which are made clear from an analysis of
independent claim 8, the only independent claim before us on this
appeal.
Claim 8 reads as follows:
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Application No. 07/969,663
2
8. A wipe/wash switch comprising:
(a) housing means including connector terminal means adapted for
circuit connection thereto;
(b) collar means mounted for sliding movement on said housing
means between a first and second position;
(c) rocker means mounted for pivotal movement on said collar
means by a user between a center “OFF” and clockwise “ON” and
counter-clockwise “ON” position;
(d) first shorting contact means mounted on said rocker means for
movement therewith;
(e) a first set of stationary contact strips disposed on said
housing means, said first shorting contact means operative with
said collar means in either of said first and second positions
for sliding contact with said first set of strips to complete a
first circuit upon said counter-clockwise pivotal movement of
said rocker means, and operative to complete a second circuit
upon said clockwise pivotal movement of said rocker means;
(f) second shorting contact means disposed on said rocker means
for movement therewith;
(g) a second set of stationary contact strip means disposed on
said housing means for sliding contact by said second shorting
contact means such that upon movement of said collar means to
said second position, said second shorting contact means is
operative with said second set of contact strip means to complete
a third circuit when said rocker means is in either of said
clockwise and counter-clockwise pivotal positions; and,
(h) means connected [sic, connecting?] said first and second
contact strip means with said connector terminal means.
The examiner relies on the following references:
Stevenson 2,672,531 Mar. 16, 1954
Roeser 3,772,484 Nov. 13, 1973
Kokubu 5,099,091 Mar. 24, 1992
Claims 3 through 6, 8 and 9 stand rejected under

1 Application for patent filed October 30, 1992.
Appeal No. 95-2405
Application No. 07/969,663
3
35 U.S.C. ' 103. As evidence of obviousness, the examiner cites
Stevenson and Roeser with regard to claims 3, 5, 6, 8 and 9,
adding Kokubu to this combination with regard to claim 4.2
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that, in the answers, the examiner
refers back to a previous office action, paper number 7, for an
explanation of the rejection of claims 3, 5, 6, 8 and 9.
However, when reference is made to that previous office action,
that action refers us back further to paper number 5 for an
explanation of the rejection. This is improper under Manual of
Patent Examining Procedures ' 1208 (6th ed., rev. 3, July 1997)
which provides for incorporation by reference to only “a single
prior action.” Violations of this rule in the future may result
in the application being remanded to the examiner for compliance
with the rule.
We now turn to the rejection of independent claim 8.
The examiner’s rationale for the rejection of claim 8 is
that Stevenson discloses a pivot/push switch as claimed
but for the rocker being pivotally mounted to a collar. However,
the examiner cites Roeser for the teaching of a switch wherein

2 The rejection of claim 4 based on the Stevenson, Roeser and
Kokubu references is a new ground of rejection presented for the
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Application No. 07/969,663
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the rocker is mounted to the collar such that during pivotal
motion of the rocker, a first circuit is completed but during a
sliding action of the collar, a second circuit is completed. The
examiner concludes that it would have been obvious to provide a
separate collar in which the rocker pivots “because the separate
collar would ensure that the sliding movement to actuate the
second circuit would not accidentally occur during a pivotal
movement of the rocker” [Paper No. 5, page 3].
The examiner’s rationale does not appear to be unreasonable
to us and, since the examiner has identified what elements of the
prior art are considered to correspond to the claimed invention,
where the differences lie, and why the artisan would have found
the claimed subject matter as a whole obvious in view of the
prior art, the examiner appears to have made out a prima facie
case of obviousness.
The burden has been shifted to appellant to establish,
by argument and/or objective evidence, why the examiner’s
finding of obviousness is erroneous.
At page 6 of the principal brief, appellant merely sets
forth what is recited in claim 8 and then sets forth a
single argument, to wit,
Claim 8 has the rocker pivotally mounted on the slider
such that the shorting contacts mounted on the rocker
are away from the pivot point to effect sliding or
wiping action. Stevenson relies on pivoting contact on
the housing to provide his electrical common function

first time in the examiner’s principal answer.
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Application No. 07/969,663
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for switching, this is obviated by Applicant’s claimed
invention.
The Roeser reference…contains no teaching of moveable
[sic] contact means mounted on the rocker means…
Appellant’s argument is unpersuasive. First, it is unclear
exactly what language in claim 8 is being relied on for the
argument that the shorting contacts on the rocker “are away from
the pivot point.” Second, while appellant argues that Stevenson
relies on the pivoting contact to provide “his electrical common
function for switching,” we fail to find any language in claim 8
which precludes any such “electrical common function for
switching.”
With regard to the Roeser reference, it is unpersuasive for
appellant to argue that the reference “contains no teaching of
moveable [sic] contact means mounted on the rocker means” because
the examiner relies on Stevenson, not Roeser, for this teaching.
Roeser is relied on by the examiner merely to show that it was
known to use the pivotal motion of a rocker with reference to a
collar to operate switches while simultaneously operating other
switches with a downward or pushing motion of the collar.
With regard to claim 4, appellant does not argue that the
application of Kokubu for the teaching of a light pipe was
improper; only that Kokubu does not provide for the alleged
deficiencies of Stevenson and Roeser. However, since appellant’s
previous argument with regard to the primary references was
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Application No. 07/969,663
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deemed unpersuasive, for the reasons supra, this argument, too,
is unpersuasive.
While we understand appellant’s disclosed invention to
differ somewhat from that disclosed by the applied references,
and we do not say that the subject matter of instant claim 8
cannot be distinguished from the prior art as represented by
Stevenson and Roeser, we simply note that appellant has not so
distinguished the claim language. Further, appellant does not
take issue with the appropriateness of the examiner’s combination
of the references and motivation therefor.
We have responded to all of appellant’s arguments.
Arguments not made are waived. In re Kroekel, 803 F.2d 705, 709,
231 USPQ 640, 642-43 (Fed. Cir. 1986). Accordingly, since
appellant has failed to convince us of any error in the
examiner’s rejection of claims 3, 5, 6, 8 and 9 under
35 U.S.C. ' 103, we will sustain the rejection.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
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Application No. 07/969,663
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' 1.136 (a).
AFFIRMED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jameson Lee ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )
Appeal No. 95-2405
Application No. 07/969,663
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Eaton Corp.
Patent Law Department
Eaton Center
1111 Superior Avenue
Cleveland, OH 44114