Ex Parte Luger

Board of Patent Appeals and Interferences

Nov 27, 2001

07977163 (B.P.A.I. Nov. 27, 2001)

1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL P. LUGER
____________
Appeal No. 2001-1280
Application No. 07/977,163
____________
ON BRIEF
____________
Before COHEN, McQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 11-14, 16 and 17. Notwithstanding
appellant's statement on page 2 of the brief (Paper No. 31, filed
August 16, 1996) that an amendment has not been filed subsequent
to the final rejection and the examiner's agreement therewith
(answer, page 3), our review of the record indicates that three
such amendments (Paper Nos. 24, 27 and 34) were filed. The
amendments of Paper Nos. 24 and 34 were not entered (see Paper
Nos. 26 and 35). There is no indication that the examiner has
Appeal No. 2001-1280
Application No. 07/977,163
1 It is apparent from the examiner's remarks on page 2 of the Office
action mailed April 13, 1995 (Paper No. 20) that the examiner has treated the
copy of the specification and claims submitted by appellant on January 3, 1995
(Paper No. 19) as a request to substitute the claims (11-17) therein for
claims 11-17 previously pending and to substitute the specification for the
originally filed specification. The examiner has refused entry of the
substitute specification (Paper No. 20, page 2), but the amendment to claims
11-17 has been entered. The record is ambiguous as to whether the examiner
treated the amendment of Paper No. 19 as including a request to cancel claims
2 and 3, the only other claims pending prior to the amendment in Paper No. 19,
or whether claims 2 and 3 remain withdrawn from consideration under 37 CFR
§ 1.142(b) as being directed to a non-elected invention.
2 Notwithstanding the examiner's statement to the contrary (answer, page
4), the appendix to appellant's brief is replete with errors in reproducing
these claims.
2
considered the amendment of Paper No. 27, filed May 21, 1996. In
any event, inasmuch as no amendment after the final rejection has
been approved for entry by the examiner, in the interest of
judicial economy, we have decided this appeal based on the
assumption that claims 11-17 as presented in Paper No. 19, filed
January 3, 1995, are the claims currently pending.1 Claim 15
stands objected to as being dependent on a rejected base claim
and claims 11-14, 16 and 17 stand rejected.
BACKGROUND
The appellant's invention relates to a rearview mirror which
provides a driver of a vehicle with general rearview vision as
well as a view of the driver's blind-spot area. We direct our
attention to the claims in Paper No. 19 in deciding this appeal.2
Appeal No. 2001-1280
Application No. 07/977,163
3 An English language translation of this reference, prepared by the
Patent and Trademark Office, is appended hereto.
4 Although the examiner has not expressly repeated this rejection in the
answer, it is apparent from the examiner's comment in the last paragraph on
page 2 of the answer that the § 112, second paragraph, rejection has been
maintained by the examiner.
5 The August 16, 1996 appeal brief is merely a signed copy of the
earlier brief filed January 3, 1996 (Paper No. 25). All references to the
brief in this decision are to the August 16, 1996 brief.
3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Lawson 4,200,359 Apr. 29, 1980
Weureither 2,331,633 Jun. 6, 19743
(German patent)
The following rejections are before us for review.
Claim 17 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which appellant
regards as the invention.4
Claims 11-14 and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lawson in view of Weureither.
Reference is made to the brief5 (Paper No. 31, filed August
16, 1996) and reply brief (Paper No. 37, filed January 15, 1998)
and the final rejection (Paper No. 22, mailed October 19, 1995)
and examiner's answer (Paper No. 36, mailed November 18, 1997)
Appeal No. 2001-1280
Application No. 07/977,163
6 In this decision, any references to line numbers of claims are with
respect to each of the claims themselves (i.e., the first line of any claim
would be denoted line 1, etc.), not the line number of the page on which the
claim appears.
4
for the respective positions of the appellant and the examiner
with regard to the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
With reference to the claims as presented in Paper No. 19,
we note the following informalities which, while not of a nature
to render the claims indefinite, are deserving of correction in
the event of further prosecution.6
In claim 11, line 4, "drivers" should be "driver's." In
claim 11, line 19, "reflector" should be deleted for consistency
with earlier terminology (line 6). In claim 11, line 44, "the"
should be inserted before "driver."
In claim 14, line 5, it appears that "two said" should be
"said two."
Appeal No. 2001-1280
Application No. 07/977,163
7 Appellant did attempt to address this rejection in Paper No. 34, filed
December 5, 1996, by proposing a new claim 18 to replace claim 17. However,
the examiner refused entry of this proposed amendment (Paper No. 35, mailed
November 18, 1997).
5
In claim 15, lines 7-8, "plane mirror surface" should be
changed to "plane mirror" to provide clear antecedent for "said
third plane mirror" in lines 9 and 12 of claim 15.
In claim 17, line 7, "supports" should be "support."
The indefiniteness rejection
The basis of the examiner's rejection of claim 17 under the
second paragraph of 35 U.S.C. § 112 is that the phrase "said
second wedge-shaped support structure" in claim 17 lacks
antecedent basis (final rejection, page 2). In this regard, we
note that claim 17 does recite a "second support structure" in
line 4, but that second support structure is not positively
recited as being "wedge-shaped." Accordingly, we agree with the
examiner that "said second wedge-shaped support structure" lacks
antecedent basis in the claim, thereby raising uncertainty as to
what recited structure is intended thereby. As appellant has not
contested this rejection in either the brief or reply brief7, we
Appeal No. 2001-1280
Application No. 07/977,163
8 Appellant filed an amendment on May 21, 1996 (Paper No. 27) which,
except for an evident inconsistency in claim line references, appears to
overcome the antecedent basis problem on which the rejection is grounded.
There is no indication that the examiner has considered this amendment. We
presume that the examiner will, upon consideration of Paper No. 27, enter the
amendment, with the necessary clarifications in line numbering, to overcome
the rejection, especially in light of the examiner's indication of allowable
subject matter in claim 17.
9 Consistent with appellant's underlying disclosure, we understand
"over" to mean "upon the surface of" as opposed to "above" (Webster's New
World Dictionary, Third College Edition (Simon & Schuster, Inc. 1988).
6
shall sustain the examiner's rejection of claim 17 under the
second paragraph of 35 U.S.C. § 112.8
The obviousness rejection
As we understand it, claim 16 is directed to a combination
of a rearview mirror, a principal-reflector-surface mirror and a
wedge-shaped support structure attached to the rearview mirror
for holding the principal-reflector-surface mirror over9 the
rearview mirror at the proper angle with respect to the rearview
mirror so that a portion of the rearview mirror serves as a
blind-spot mirror. The claim does not include a vehicle, much
less any particular mounting arrangement or location of the
rearview mirror to a vehicle.
A "blind-spot," as defined on pages 4-5 of appellant's
specification, is the area behind the driver's head, adjacent the
vehicle and extending into the adjacent lane, which the driver
cannot see in a conventional rear-view mirror. As explained on
Appeal No. 2001-1280
Application No. 07/977,163
7
page 5 of appellant's specification, a blind-spot may be inward
(closer to the vehicle relative to the area visible in the
conventional rearview mirror) or outward (further from the
vehicle relative to the visible area). In accordance with
appellant's definition in the specification, a "blind-spot" as
used in appellant's claims is sufficiently broad to include
inward or outward areas which are not visible to a driver in the
conventional rear-view mirror.
While much of the argument in appellant's brief is directed
to the orientation of the wedge-shaped support and the principal-
reflector-surface mirror relative to the conventional rearview
mirror (i.e., the thin edge of the wedge being closer to the
vehicle than the wide edge so as to direct the principal-
reflector-surface mirror inward toward the vehicle), there is no
such limitation in claim 16. Rather, claim 16 merely requires
two mirrors, with one of the mirrors supported on the other
mirror by means of a wedge-shaped support structure. From our
perspective, any orientation of the wedge would fall within the
scope of claim 16.
Lawson discloses a side view mirror assembly 1 which is
attached through an arm or bracket 2 to the side of a vehicle 3.
The mirror assembly includes a housing 4, a flat mirror 5 and a
Appeal No. 2001-1280
Application No. 07/977,163
8
small, flat mirror 6 attached to the mirror 5 by a wedge-shaped
block of pressure sensitive adhesive material 7.
Weureither (Figure 7) discloses a rearview mirror
arrangement very similar to that of Lawson comprising a first
rearview mirror (surface 19) and a second mirror 27 supported on
the first mirror by a wedge-shaped member 18 and double-sided
adhesive strips. Weureither does not designate either of the
mirrors as principal or blind-spot but, rather, points out that
the two mirrors provide two fields of view to the driver
(translation, page 8). The rearview mirror as illustrated in
Figure 7 is disposed on the driver's side of the vehicle
(translation, page 8). Weureither further discloses, as
illustrated in Figure 8 and discussed on page 9 of the
translation, a rearview mirror disposed on the side of the
vehicle opposite the driver's side (i.e., the passenger's side).
The only difference between this mirror assembly and the assembly
of Figure 7 is that the wedge angle between the two mirrors is
smaller in Figure 8.
We recognize, as appellant has, that the mirror 6 is
described by Lawson as the "blind-spot" mirror. This is in
contrast to appellant's claim 16, which recites that the
conventional mirror serves as a "blind-spot mirror" and the
Appeal No. 2001-1280
Application No. 07/977,163
9
mirror supported thereon serves as a "principal-reflector-surface
mirror." Weureither, on the other hand, merely describes the two
mirrors as providing two complementary views, rather than
designating one as a principal view mirror and the other as a
blind-spot mirror. However, we discern no reason why the Lawson
mirror assembly lacks the capability to be used such that the
mirror 5 is the blind-spot mirror and the mirror 6 supported
thereon is the principal-reflector-surface mirror. This would
merely involve the driver adjusting the mirror assembly by
looking into the mirror 6, with the mirror 5 then providing an
auxiliary viewing area not afforded by the mirror 6 and thus
serving as a blind-spot mirror. Similarly, the Weureither mirror
assembly is fully capable of such use. Thus, in essence, the
only difference, if any, between the subject matter of claim 16
and the Lawson or Weureither mirror assembly is in the manner in
which the mirror assembly is used.
It is well settled, however, that the recitation of an
intended use for an old product does not make a claim to that old
product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). It follows then that the
designation of the wedge-supported mirror as a "principal-
reflector-surface mirror" and the conventional rearview mirror as
Appeal No. 2001-1280
Application No. 07/977,163
10 In proceedings before it, the PTO applies to the verbiage of claims
the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded
by the written description contained in the applicant's specification. In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
10
a "blind-spot mirror" does not patentably distinguish claim 16
over either Lawson or Weureither (Figures 7 and 8).
Accordingly, we share the examiner's view that the combined
teachings of Lawson and Weureither are suggestive of the subject
matter of claim 16. The examiner's rejection of claim 16 under
35 U.S.C. § 103 is therefore sustained.
Claim 11 is directed to a combination of a blind-spot mirror
supported in a frame and a principal mirror supported on the
blind-spot mirror by means of a wedge-shaped support structure.
The wedge-shaped support structure and principal mirror are
mounted on the blind-spot mirror such that the thin edge of the
wedge points generally in an inward direction toward the front
and opposite side of the vehicle. Claim 11 is somewhat
imprecise, in that the claim does not positively recite a vehicle
as part of the claimed invention but does refer to the vehicle to
which the rearview mirror is mounted (e.g., lines 7, 14, 50 and
54). Giving the claim its broadest reasonable interpretation10,
for purposes of our review of the rejection before us, we
Appeal No. 2001-1280
Application No. 07/977,163
11
construe claim 11 as being directed only to a rearview mirror,
including a blind-spot mirror, a principal mirror mounted to the
blind-spot mirror by means of a wedge-shaped support structure,
and a frame immediately supporting the blind-spot mirror, with
the wedge-shaped support structure and principal mirror being
oriented with respect to the blind-spot mirror such that, when
the rearview mirror is mounted to a vehicle, the thin edge of the
wedge points inward toward the vehicle. It is also worthy of
note that claim 11 is not limited to a rearview mirror for
mounting on the driver's side of a vehicle.
Consistent with our discussion, supra, the designation of
the wedge-supported mirror as the principal mirror and the mirror
supporting the wedge-shaped support structure and principal
mirror as the blind-spot mirror distinguishes the subject matter
of claim 11 from Lawson's mirror assembly, if at all, only in the
manner of intended use of the mirror assembly. Such a
distinction, as also mentioned above, cannot be relied upon to
support the patentability of the claimed product over the prior
art product.
With regard to the limitation in claim 11 that the thin edge
of the wedge point inward toward the front and opposite side of
the vehicle when mounted to a vehicle, we note that the driver's
Appeal No. 2001-1280
Application No. 07/977,163
12
side mirror arrangement disclosed and illustrated by Lawson
includes a wedge-shaped support having its thin edge pointing
away from the vehicle when the mirror assembly is mounted to the
driver's side of the vehicle. However, Lawson points out in
column 2, lines 38-44, that
the "blind-spot" mirror can be associated with the side
view mirror at the passenger side. In this instance
the mirror may be somewhat larger in area and the
angularity of the block 7 may be slightly different,
depending upon the vehicle, to position the small
mirror at the desired angle to eliminate the blind
spot.
Further, Weureither (Figure 8; translation, page 9) teaches that
the thin edge of the wedge of such a mirror points to the left
(i.e., inward toward the vehicle), albeit forming a shallower
angle between the two mirrors, when mounted on the passenger's
side of the vehicle.
The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Indeed, a prima facie case of
obviousness is established where the reference teachings would
appear to be sufficient for one of ordinary skill in the art
having those teachings before him to make the proposed
Appeal No. 2001-1280
Application No. 07/977,163
13
combination or modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Moreover, in evaluating
such references it is proper to take into account not only the
specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968).
The combined teachings of Lawson and Weureither would have
suggested to one skilled in the art at the time of appellant's
invention a rearview mirror for mounting to the passenger's side
of a vehicle, the rearview mirror having a first mirror supported
by a frame adapted for mounting to the vehicle and a second
mirror mounted to the first mirror by means of a wedge-shaped
support structure, with the thin edge of the wedge pointing
inward toward the opposite side of the vehicle when the rearview
mirror is mounted on the passenger's side of the vehicle. Thus,
as appellant's claim 11 is not limited to a driver's side
rearview mirror, we perceive no error in the examiner's
determination that the teachings of Lawson and Weureither are
sufficient to establish that the subject matter of claim 11 would
have been obvious to one of ordinary skill in the art at the time
of appellant's invention.
Appeal No. 2001-1280
Application No. 07/977,163
14
Appellant's argument on page 11 of the brief with regard to
the age of the references is not well taken, as it is well
established that the mere age of the references is not persuasive
of the unobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem. In re
Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977); In re
Neal, 481 F.2d 1346, 1347, 179 USPQ 56, 57 (CCPA 1973); In re
McGuire, 416 F.2d 1322, 1327, 163 USPQ 417, 421 (CCPA 1969),
cert. denied, 397 U.S. 989 (1970).
Accordingly, we shall sustain the examiner's rejection of
claim 11 as being unpatentable over Lawson in view of Weureither.
We shall also sustain the rejection of dependent claims 12-14 as
being unpatentable over Lawson in view of Weureither since
appellant has not specifically argued separately the
patentability of these claims apart from claim 11. See In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991);
In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
See also In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987).
CONCLUSION
Appeal No. 2001-1280
Application No. 07/977,163
15
To summarize, the decision of the examiner to reject claim
17 under the second paragraph of 35 U.S.C. § 112 and claims 11-14
and 16 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-1280
Application No. 07/977,163
16
PAUL P. LUGER
N. 1107 ASTOR STREET
SPOKANE, WA 99202