Ex parte KING et al.

Board of Patent Appeals and Interferences

Mar 29, 2000

07987048 (B.P.A.I. Mar. 29, 2000)

1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JAMES H. KING,
WAYNE F. BULTEMEIER
and JAMES L. ROUSSEY
______________
Appeal No. 1997-3121
Application 07/987,048
_______________
HEARD: MARCH 9, 2000
_______________
Before JERRY SMITH, LALL and FRAHM, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-15, which
constituted all the claims in the application. A first amendment
after final rejection was filed on June 29, 1996 but was denied
entry by the examiner. A second amendment after final rejection
was filed on August 29, 1996 and was entered by the examiner.
Appeal No. 1997-3121
Application 07/987,048
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This amendment cancelled claims 1 and 12 and resulted in an
indication by the examiner that claims 6 and 7 were directed to
allowable subject matter. Accordingly, this appeal is directed
to claims 2-5, 8-11 and 13-15 which are the only claims still
rejected by the examiner.
The invention pertains to a heating element for removing
snow and ice from the windshield of an automotive vehicle. The
heating element is disposed on the windshield of the vehicle. An
ambient temperature sensor determines the temperature of the
ambient air outside the vehicle, and the heating element is
prevented from operating when the ambient air temperature exceeds
some predetermined value.
Representative claim 5 is reproduced as follows:
5. An automotive vehicle having a passenger compartment
with window glass that separates the inside of the passenger
compartment from the outside environment, an electric heating
element disposed on said window glass for heating the same by
means of electric power, an electric power source for providing
electric power, and a control circuit for controlling the
delivery of electric power from said electric power source to
said electric heating element, characterized in that said control
circuit comprises selectively operable conducting means connected
between said electric power source and said electric heating
element, and means for operating said selectively operable
conducting means comprising an on-off switch means that is
accessible to an operator of the vehicle, a temperature sensing
switch means that is disposed in non-thermal sensing relationship
to said electric heating element to reliably sense temperature
indicative of the ambient temperature of the outside environment,
and means operatively relating said on-off switch means and said
Appeal No. 1997-3121
Application 07/987,048
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temperature sensing switch means with said selectively operable
conducting means for allowing electric power
to be delivered from said electric power source through said
selectively operable conducting means to said electric heating
element responsive to said on-off switch means being on and said
temperature sensing switch means indicating that the ambient
temperature of the outside environment is below a certain
threshold and for disallowing electric power to be delivered from
said electric power source through said selectively operable
conducting means to said electric heating element either
responsive to said
on-off switch means being off or said temperature sensing switch
means indicating that the ambient temperature of the outside
environment is above said threshold, characterized further in
that said selectively operable conducting means is a relay having
a coil and normally open contacts that are operated by said coil,
said means operatively relating said on-off switch means and said
temperature sensing switch means with said selectively operable
conducting means comprises means connecting said coil in series
with said on-off switch means and said temperature sensing switch
means, and said contacts are connected between said electric
power source and said electric heating element.
The examiner relies on the following references:
Marriott 3,982,092 Sep. 21, 1976
Jones 4,277,672 July 07, 1981
Heuser et al. (Heuser) 35 13 157 A1 Oct. 16, 1986
(German)
Claims 2-5, 8-11 and 13-15 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an inadequate
disclosure. Claims 2, 5, 9-11 and 13 also stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner offers
Marriott in view of Jones or Heuser.
Appeal No. 1997-3121
Application 07/987,048
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Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments in
support of the rejections and the evidence of obviousness relied
upon by the examiner as support for the obviousness rejection.
We have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellants’ arguments set forth in the
briefs along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before
us, that the disclosure in this application describes the claimed
invention in a manner which complies with the requirements of
35 U.S.C. § 112. We are also of the view that the collective
evidence relied upon and the level of skill in the particular art
would not have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 2, 5, 9-11
and 13. Accordingly, we reverse.
Appeal No. 1997-3121
Application 07/987,048
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We consider first the rejection of claims 2-5, 8-11 and
13-15 under the first paragraph of 35 U.S.C. § 112. The claims
are rejected as “containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the
claimed invention” [answer, page 4]. This rejection relates to
the written description requirement of 35 U.S.C. § 112.
The rejection is particularly addressed to the amendment
of independent claims 5 and 13 which recites that the ambient
temperature sensing switch is disposed “in non-thermal sensing
relationship to said electric heating element” [final rejection,
page 1]. The examiner considers this amendment to introduce new
matter into the specification because the original disclosure was
not so limited. In other words, other forms of temperature
sensing means also fell within the scope of the invention as
originally described. Appellants argue that the original
disclosure provides clear support for the scope of the invention
now being claimed [brief, pages 6-7; reply brief, pages 2-4].
The purpose of the written description requirement is to
ensure that the applicants convey with reasonable clarity to
those skilled in the art that they were in possession of the
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Application 07/987,048
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invention as of the filing date of the application. For the
purposes of the written description requirement, the invention is
"whatever is now claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1564,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). We agree with appellants
that the artisan would have recognized possession of the
presently claimed invention within the original disclosure.
The examiner has erred in basing this rejection on a
consideration of whether the present claims exclude embodiments
which were within the scope of the original specification. The
original disclosure simply describes an ambient temperature
sensor. The artisan would not have interpreted the disclosed
ambient temperature sensor to be in thermal relationship with the
heating element because that would distort any measurements of
ambient temperature. The broad recitation of the ambient
temperature sensor being disposed in non-thermal sensing
relationship to the electric heating element would be exactly
what the artisan would have assumed from reading the original
disclosure. The examiner’s attempt to read the original
disclosure on another imagined embodiment makes no sense.
In summary, we agree with appellants that the original
disclosure supports the recitations now appearing in independent
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Application 07/987,048
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claims 5 and 13. Therefore, we do not sustain the examiner’s
rejection of claims 2-5, 8-11 and 13-15 under the first paragraph
of 35 U.S.C. § 112.
We now consider the rejection of claims 2, 5, 9-11 and 13
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C. §
103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 1997-3121
Application 07/987,048
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Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make
in the brief have not been considered [see 37 CFR § 1.192(a)].
With respect to independent claim 5, the examiner cites
Marriott as teaching a vehicle windshield heater which is
switched on and off by means of a temperature sensor. The
examiner notes that Marriott does not teach the sensing of
ambient temperature. The examiner cites Jones or Heuser as
teaching that it was well known to sense ambient temperature in
Appeal No. 1997-3121
Application 07/987,048
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an electrically heated transparency. The examiner concludes that
it would have been obvious within the meaning of 35 U.S.C. § 103
to replace the temperature sensor of Marriott with an ambient
temperature sensor as taught by Jones or Heuser so that freezing
conditions may be determined [final rejection, page 2].
Appellants argue that the substitution of an ambient
temperature sensor in the Marriott device would render Marriott’s
device inoperable for its intended purpose [brief, pages 8-10;
reply brief, page 4]. We agree with the position argued by
appellants.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Since appellants are correct
that an ambient temperature sensor would serve no useful purpose
in the Marriott device, the only basis for the examiner’s
proposed modification of Marriott to have an ambient temperature
sensor is based on an improper attempt to reconstruct the
invention in hindsight.
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Application 07/987,048
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For the reasons just discussed, we do not sustain the
obviousness rejection of independent claim 5 or of claims 2 and
9-11 which depend therefrom. With respect to independent claim
13, this claim recites limitations similar to the limitations of
claim 5. Therefore, we also do not sustain the obviousness
rejection of claim 13.
The examiner’s rejections of claims 2-5, 8-11 and 13-15
are reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Eric S. Frahm )
Administrative Patent Judge )
Appeal No. 1997-3121
Application 07/987,048
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Appeal No. 1997-3121
Application 07/987,048
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Dennis K. Sullivan
Navistar International
Transportation Corporation
455 North Cityfront Plaza Drive
Chicago, IL 60611
JS/cam