Ex parte Iwata et al.

Board of Patent Appeals and Interferences

Apr 13, 2000

08357196 (B.P.A.I. Apr. 13, 2000)

1
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HITOSHI IWATA,
YASUSHI NISHIBE,
KENICHI KINOSHITA
_____________
Appeal No. 1997-3253
Application 08/357,196
______________
ON BRIEF
_______________
Before BARRETT, FLEMING, and GROSS, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 20, all of the claims pending in the present
application.
Appeal No. 1997-3253
Application 08/357,196
2
The present invention relates to a device for
controlling the drive of a power window for an automobile.
Independent claim 1 is reproduced as follows:
1. A device for controlling the drive of a power window,
wherein said drive includes a switch that, when moved into an
operated state, actuates an electrically powered driving
source to raise or lower a door glass comprising:
an automatic continuation means for automatically holding
the operated state of the switch so as to continuously raise
or lower the door glass; and
a thermistor means disposed in the vicinity of the
driving source for shutting off electricity to the driving
source as a result of heat generated by a driving source
locking current which flows through the thermistor upon
complete closure or complete opening of the door glass, and
for shutting off electricity supplied to the driving source as
a result of heat generated by the driving source from an
overload condition.
The Examiner relies on the following references:
Lemirande 4,394,607 July 19,
1983
Sobiepanek et al. 4,716,486 Dec. 29, 1987
(Sobiepanek)
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Lemirande and Sobiepanek.
Appeal No. 1997-3253
Application 08/357,196
Appellants filed an appeal brief on November 19, 1996. 1
Appellants filed a reply brief on January 14, 1997. The
Examiner in response to the reply brief mailed a communication
on February 24, 1997 stating that the reply brief has been
entered and considered.
3
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the briefs and answer for the1
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 20
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
Appeal No. 1997-3253
Application 08/357,196
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cert. denied, 519 U.S. 822 (1996), citing W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellants argue on pages 9-12 of the brief, that neither
reference teaches or suggests positioning a thermistor in the
vicinity of the driving source to shut off electricity to the
driving source as a result of heat generated by the driving
source from the overload condition. On page 2 of the reply
brief, Appellants further argue that neither reference teaches
or suggests the two functional limitations recited in
Appellants' claim for a thermistor means for shutting off
electricity to the driving source as a result of heat
generated either by (1) a driving source locking current which
flows through the thermistor upon complete closure or complete
opening of the glass door, or (2) the driving source from an
overload condition. In particular, Appellants argue that
Sobiepanek, taken as a whole, actually teaches against the
aforementioned functional limitations. Appellants point out
that Sobiepanek teaches that if the thermistors 17 and 18 were
mechanically mounted in the vicinity of the motor windings 1
Appeal No. 1997-3253
Application 08/357,196
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and 2 so as to achieve the second recited function to shut off
the electricity to the
Appeal No. 1997-3253
Application 08/357,196
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driving source when heated by heat radiated from the driving
source itself, the thermistors 17 and 18 could not achieve the
stated objective of rapid restarting of the motor after a
momentary stoppage. The heat radiated from the motor itself
would delay such restarting.
Turning to each of Appellants' independent claims, we
find that claim 1 recites
a thermistor means disposed in the vicinity of the
driving source for shutting off electricity to the
driving source as a result of heat generated by a
driving source locking current which flows through
the thermistor upon complete closure or complete
opening of the door glass, and for shutting off
electricity supplied to the driving source as a
result of heat generated by the driving source from
an overload condition.
Similarly, we find that Appellants' claim 6, which is the only
other independent claim, recites
a thermistor means disposed in the vicinity of the
driving source and electrically connected between
said driving source and source of electrical power
for shutting off said power to said driving source
when heated by a driving source locking current
which flows through the thermistor upon complete
closure or complete opening of the door glass, and
for shutting off electricity to said driving source
when heated by heat radiated from the driving source
itself as a result of an overload condition.
Appeal No. 1997-3253
Application 08/357,196
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We note that in the Examiner's answer, the Examiner
relies on Sobiepanek for the teaching of placing the
thermistor in the vicinity of the electric motor so that the
electric motor will heat the thermistor. Upon a closer
reading of Sobiepanek, we find that Sobiepanek teaches away
from the Examiner's findings.
In column 1, lines 16-21, Sobiepanek teaches that when
the current intensity increases in the circuit, the prior art
thermistor undergoes a temperature rise which tends to reduce
the supply current as well as the terminal voltage of the
excited winding possibly to such an extent that this winding
is put out of service. In column 1, lines 43-49, Sobiepanek
teaches that one of the objects of Sobiepanek's invention is
to propose an electric motor in which the provision is made
for an overcurrent protection device comprising thermistors,
in which the voltage supply to the windings is not totally
affected at the time of a momentary stoppage and which is
capable of restarting rapidly after the cause of said stoppage
has been removed. In column 1, lines 50-64, Sobiepanek
teaches that in order to achieve this object, the electric
motor proposed in accordance with the invention comprises a
Appeal No. 1997-3253
Application 08/357,196
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rotor, at least two motor windings and a device for providing
protection against overcurrent in the motor windings
comprising thermistors having a positive temperature
coefficient. In accordance with a distinctive feature of the
protective device, Sobiepanek teaches that the device
comprises at least two parallel thermistors each mounted in
series with at least one motor winding. Thus, in the event of
stoppage of the motor, the thermistor associated with the
continuously excited winding undergoes a temperature rise.
When the cause of the stoppage has been removed, the winding
whose thermistor is not heated up is supplied at a normal
voltage, thus permitting restarting of the motor.
In column 2, lines 20-44, Sobiepanek teaches that Fig. 1
shows a schematic representing an electric motor equipped with
two thermistors 17 and 18, which are connected in series with
two motor windings 1 and 2. In column 2, lines 45-50,
Sobiepanek teaches that the operation device is such that when
there is a moment of accidental stoppage of motor winding 1,
then thermistor 17 undergoes a temperature rise while
thermistor 18, which is located in the circuit of the
unexcited motor winding 2, remains at its normal operating
Appeal No. 1997-3253
Application 08/357,196
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point. At the time of release of the motor, circuitry is used
to switch to motor winding 2, which is then supplied under
normal conditions, because thermistor 18 has not been heated.
Therefore, the motor is able to have a rapid restart. Thus,
the thermistors 17 and 18 are not placed in the vicinity of
the electric motor because both thermistors would have been
heated, thereby preventing a rapid restart.
Therefore, we find that the Examiner has failed to show
any evidence of a teaching or suggestion of placing the
thermistors in the vicinity of the electric motor so that the
electric motor heats them up to cause them to cut off the
current to the electric motor.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 233 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
Appeal No. 1997-3253
Application 08/357,196
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court states in In re Piasecki, 745 F.2d at 1472, 223 USPQ at
788, the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under section 102 and 103". Citing
In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177
(CCPA 1967).

We have not sustained the rejection of claims 1 through
20 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
Appeal No. 1997-3253
Application 08/357,196
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) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-3253
Application 08/357,196
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THOMAS W. COLE
SIXBEY FRIEDMAN LEEDOM
and FERGUSON
2010 Corporate Ridge
McLean, VA 22102
Appeal No. 1997-3253
Application 08/357,196
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MRF/dal