Ex parte Labelle

Board of Patent Appeals and Interferences

Aug 23, 2000

08434919 (B.P.A.I. Aug. 23, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was
not written for publication is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL J. LABELLE
_____________
Appeal No. 1998-0726
Application 08/434,919
______________
ON BRIEF
_______________
Before THOMAS, BARRETT and GROSS, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 5 through 9, the rejection of claim
12 having been withdrawn at page 10 of the answer.
Appeal No. 1998-0726
Application 08/434,919
Claim 5 as reproduced in the brief is not claim 5 on1
appeal, since claim 5 has been unamended. The original
submitted version of this claim as filed does not include the
words "it and" in the second line of the comparator means
clause of claim 5 as reproduced in the brief. This has been
noted by appellant at page 1 of the Reply Brief.
The additional references cited by the examiner at page2
3 of the answer have not been considered since they form no
part of the actual, stated rejection of the claims on appeal.
2
Representative claim 5 is reproduced below:1
5. An underspeed warning system for a motor vehicle
having left and right turn signals, comprising:
speed sensing means for outputting a speed sensing signal
proportional to the speed of said motor vehicle;
means for providing a reference speed signal;
comparator means for comparing said speed sensing signal
to said reference speed signal and outputting an underspeed
signal when said speed sensing signal is less than said
reference speed signal;
at least one warning indicator;
driver means for activating said at least one warning
indicator in response to said underspeed signal; and
turn signal disable means for inhibiting said driver
means from activating said at least one warning indicator when
at least one of said turn signals is active.
The following reference is relied on by the examiner:2
Milde, Jr. (Milde) 4,843,370 June 27,
1989
Appeal No. 1998-0726
Application 08/434,919
3
Claims 5 through 9 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner relies upon Milde
alone.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answers for
the respective details thereof.
OPINION
Since no specific claim has been argued by appellant in
the brief, we take as a representative claim claim 5. The
focus of the dispute between the examiner and the appellant is
the last clause of this claim which is "turn signal disable
means for inhibiting said driver means from activating said at
least one warning indicator when at least one of said turn
signals is active." A similar limiation is at the end of
independent claim 8.
Since we generally agree with appellant's position set
forth in the brief and the reply brief, we reverse the
rejection of claims 5 through 9 under 35 U.S.C. § 103.
Although we agree with the examiner's view that turn
signals are well known in the art on vehicles, we do not agree
Appeal No. 1998-0726
Application 08/434,919
4
with the conclusion that it would have been obvious to the
artisan to have associated Milde's bypass or disable switch 68
in Figure 1A with the operation of the turn signal means
normally found in an automobile. The most persuasive line of
reasoning advanced by the examiner appears to be set forth
between pages 8 and 9 of
Appeal No. 1998-0726
Application 08/434,919
5
the answer where the examiner makes reference to Milde's
Summary of the Invention at column 2, lines 3-13, which
indicates in part that his control device includes "means for
sensing the driving environment of the motor vehicle and for
changing the condition of response in dependence upon the
sensed environment." This noted portion of the Summary of the
Invention appears to be identical to Milde's abstract. Even
considering this broad teaching of sensing the driving
environment together with the statement at column 1, lines 50-
53 that "it is important that the device does not switch on
the hazard lights in situations where they are not needed,
since frequent, unnecessary flashing of hazard lights would
cause confusion to other motor vehicle operators," we are
still unpersuaded of the obviousness of the subject matter of
representative claim 5 and independent claim 8 as well on
appeal. The examiner's reasoning as well as these teachings
in Milde simply fall short in our view of a sufficient
motivation, teaching, or suggestion within 35 U.S.C. § 103 of
associating a turn signal means of a vehicle with the
operation of the underspeed signal detector means of Milde,
and to do so in a manner to inhibit the operation of the
Appeal No. 1998-0726
Application 08/434,919
6
driver means when at least one of the turn signals is active
as set forth at the end of claims 5 and 8 on appeal.
We are therefore in agreement with the appellant's view
expressed at pages 4 and 5 of the brief that the mere fact
that Milde's prior art invention could have been modified is
not sufficient within 35 U.S.C. § 103 to have found obvious
the presently claimed invention since the statute requires
that we conclude that it would have been obvious. Even the
broad teachings noted at columns 1 and 2 of Milde would not
have led the artisan to have associated the operation of the
disable switch 68 to the normal operation of a turn signal in
a vehicle. Thus, we agree with appellant's observation at
page 7 of the brief that the examiner appears to have
exercised impermissible hindsight in arriving at the position
of unpatentability based upon Milde alone. The examiner's
views do not appear to be prospective in nature but rather
appear to be relying indirectly upon appellant's disclosed
invention.
Appeal No. 1998-0726
Application 08/434,919
7
In view of the foregoing, the decision of the examiner
rejecting claims 5 through 9 under 35 U.S.C. § 103 is
reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1998-0726
Application 08/434,919
8
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