Ex Parte Lewis

Board of Patent Appeals and Interferences

Aug 31, 2010

11728116 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JIMMIE LEWIS
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Appeal 2009-010235
Application 11/728,116
Technology Center 2800
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
CHUNG K. PAK, and JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010235
Application 11/728,116

2
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14, and 16. 2 We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims an extendable rearview mirror assembly for a
vehicle. Claim 1 is illustrative:
1. An extendable rearview mirror assembly for a vehicle
comprising:
a mount to be attached to a vehicle;
a generally rectangular mirror, said mirror defining a
plane, said mirror having a central axis and a longitudinal pivot
axis which extends through said plane of said mirror and non-
parallel to said plane of said mirror, and said longitudinal pivot
axis is offset from said central axis; and
a structure for allowing rotation of said mirror about said
longitudinal pivot axis, and rotation of said mirror about said
longitudinal pivot axis moves said mirror between an inboard
position, a first outboard position and a second outboard
position, said mirror having a longer dimension and a smaller
dimension to define said generally rectangular shape, and said
longer dimension extending generally parallel to a horizontal
plane when said mirror is in said inboard position, and said
longer dimension of said mirror extends generally vertical when
said mirror is in said first outboard position, wherein said
inboard position and said second outboard position are disposed
180o apart from each other around said longitudinal pivot axis.

2 The subject matter of claims 15 and 17 has been indicated as containing
allowable subject matter. (Final Rejection, dated July 10, 2008, p. 1).

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Application 11/728,116

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The References

Creager 3,404,935 Oct. 8, 1968
Suzuki 4,626,085 Dec. 2, 1986
Gerndt 5,639,054 Jun. 17, 1997
Wyers GB 1,539,609 Jan. 31, 1979

The Examiner maintains the following grounds of rejection:
1. Claims 1-4, 6-8, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Wyers.3
2. Claims 11-14 and 16 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Wyers and Gerndt.
3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wyers and Creager.
4. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wyers and Suzuki. 4

OPINION
We begin with the rejection of claims 1-4, 6-8, and 10 under 35
U.S.C. § 103(a) as unpatentable over Wyers. The issue presented for review
is the following:
Did the Examiner err in determining that it would have been obvious
to a person of ordinary skill in the art form an extendable rearview mirror

3 Appellant has not presented separate arguments for all of the rejected
claims. Rather, Appellant’s arguments are principally directed to
independent claim 1. Any claim not separately argued will stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).
4 Appellant has not presented separate arguments for claim 9. Rather,
Appellant relies upon the arguments presented for the first stated rejection.
(App. Br. 7). Accordingly claim 9 will stand or fall with independent claim
1.
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assembly comprising a first outboard position and a second outboard
position, wherein the mirror as a longer dimension and a smaller dimension
to define said generally rectangular shape, and wherein said longer
dimension of said mirror extends generally vertical when the mirror is in the
first outboard position as required by independent claim 1. We answer this
question in the negative.
Appellant contends that the structure of Wyers allows for only two
positions of its mirror head and does not provide any structure to allow an
intermediate position of the mirror head in a generally vertical orientation.
(Br. 4). Appellant contends that Wyers discloses projections (26) and
recesses, which facilitate the clamping action in one of the two
predetermined positions. Appellant also argues that when the mirror head of
Wyers is located in the vertical position, the projections (26) are not capable
of engaging a recess because they are moved to locations of open space.
(Reply Br. 2). Thus, Appellant's conclude that due to the lack of sufficient
structures in projections and recesses the mirror head can not be retained in
the generally vertical position. (Br. 4).
Appellant’s arguments are not persuasive for the reasons provided by
the Examiner in the Answer.
The Examiner found that Wyers discloses an extendable rearview
mirror assembly that comprises a structure for allowing the rotation of a
generally rectangular mirror head about a longitudinal pivot axis from an
inboard position to an outboard position. (Ans. 4). The Examiner
recognized that Wyers did not specifically mention a first outboard position
wherein the longer dimension of the mirror head extends in a generally
vertical direction. The Examiner nonetheless concluded that it would have
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been obvious to a person of ordinary skill in the art to adjust the mirror of
Wyers to a first outboard position wherein the longer dimension of the
mirror head extends generally vertically to obtain a different viewing angle
and perspective from the mirror. (Ans. 4).
We agree with the Examiner. Wyers discloses a mirror assembly that
can be rotated to various positions of adjustment. Specifically Wyers
discloses the wing mirror of the disclosed invention is:
Characteri[z]ed in that said means for holding the mirror
head in a selected position of adjustment on the arm includes at
least one abutment formation provided on each of confronting
surfaces of the mirror head in the arm in the vicinity of the
pivotal connection between the head and the arm, the abutment
formations being arranged to engage in predetermined relative
angular positions of the head and the arm so as to prevent
pivoting therebetween.
(Page 1, ll. 36-46).

Thus, the Examiner correctly reasoned that a person of ordinary skill in the
art would have selected the angular position wherein the longer dimension of
the mirror head extends generally vertical to obtain a different viewing angle
and perspective from the mirror. Indeed, Appellant has not sufficiently
refuted the Examiner’s position. (See Briefs generally).
Appellant has not explained that the mirror head of Wyers was
incapable of being pivoted to a generally vertical position. Rather,
Appellant’s argument that Wyers fails to describe sufficient structures of
projections and recesses for retaining the mirror head in a generally vertical
position is not persuasive. As set forth above, Wyers discloses the mirror
head that can be adjusted to selected positions of adjustment, inclusive of
placing the mirror head in the generally vertical position. From this
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disclosure of Wyers, we concur with the Examiner that Wyers would have
led a person of ordinary skill in the art, through no more than ordinary
creativity, to incorporate the appropriate projections and recesses into the
mirror assembly so as to position the mirror head in predetermined relative
angular positions, including a generally vertical position. See KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). A person of ordinary
skill in the art that desired a viewing angle of a mirror head in a generally
vertical would have reasonably expected that the mirror head of Wyers could
have been pivoted to the appropriate angle.
Appellant’s arguments regarding independent claims 2 and 4 are
principally the same as those presented for claim 1. (Br. 5). These
arguments are not persuasive for the reasons set forth above and in the
Answer.
Appellant’s arguments regarding the rejection of claims 11-14 and 16
(Br. 5-6) are not persuasive for the reasons set forth above and in the
Answer. The Examiner cited Gerndt for describing the use of detents for
retaining a mirror in different positions. Appellant has not explained that a
person of ordinary skill in the art would not have recognized the suitability
of utilizing detents for retaining a mirror in different positions to obtain the
predetermined relative angular positions taught by Wyers.
Appellant’s arguments regarding the rejection of claim 5 are not
persuasive for the reasons set forth by the Examiner. (Answer 15-16). A
person of ordinary skill in the art would have reasonably expected that a
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spring placed below the nut (24) would have provided a biasing force on the
mirror as evidenced by Creager.
For the foregoing reasons and those presented in the Answer, the
rejections of claims 1-14, and 16 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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