Ex Parte Martinez et al

Patent Trial and Appeal Board

Sep 24, 2018

14623451 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/623,451 02/16/2015 Alfredo Martinez
23413 7590 09/26/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
IPL1066US2 3620
EXAMINER
BROWN, JOSEPH HENRY
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFREDO MARTINEZ, EDUARDO ESTRADA, IAN DOW,
and FRANCISCO VAZQUEZ
Appeal 2018-001767
Application 14/623,451
Technology Center 3600
Before STEVEN D.A. McCARTHY, BRETT C. MARTIN,
and JILL D. HILL, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1--4 and 6-12. Claim 5 was cancelled during
prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is Inteva Products, LLC. Appeal Br. 2
Appeal2018-001767
Application 14/623,451
THE INVENTION
Appellants' claims are directed generally "to a latch and more
particularly, an actuator for a vehicle latch." Spec. ,r 3. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An actuator for a latch, comprising:
a motor operatively coupled to a gear train; and
a rack moveably mounted to the actuator for linear
movement with respect to a housing of the actuator, wherein the
gear train comprises: a worm; a worm gear and a pinion gear,
wherein the pinion gear is rotatably mounted to the worm gear
and the pinion gear has a plurality of teeth that engage a portion
of the rack, wherein the axis of rotation of the worm is
perpendicular to the axis of rotation of the worm gear and the
pinion gear and rotational movement of the pinion gear with
respect to the worm gear occurs without a corresponding
rotational movement of the worm gear.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kobayashi
Gaucher
Chevalier
US 6,494,505 B2
US 2011/0254288 Al
WO 2010/031997 Al
REJECTIONS
The Examiner made the following rejections: 2
Dec. 1 7, 2002
Oct. 20, 2011
Mar. 25, 2010
Claims 1--4 and 6-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kobayashi and Chevalier. Ans. 2.
2 The Examiner withdrew a rejection of claims 1--4 and 6-12 under 35
U.S.C. § 112(b) in the Answer. See Final Act. 2; Ans. 2.
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Application 14/623,451
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kobayashi, Chevalier, and Gaucher. Ans. 4.
ANALYSIS
Appellants argue that the Examiner's proposed combination of
Kobayashi and Chevalier is improper because the proposed modification
would have rendered the Kobayashi device inoperable for its intended
purpose. Reply Br. 5. Appellants note that "movement of gear 19a and rack
23 is required and in fact desired by the device of Kobayashi." Reply Br. 7.
Appellants further point out that if the Examiner's proposed modification is
made, "initial energization of the motor will not cause any corresponding
movement of the pinion [and thus,] as mentioned above[,] the in concert
movement of the cancel lever 22 and the operational lever 20 will no longer
occur." Id.
The Examiner counters that "[ t ]he combination of Kobayashi and
Chevalier does not have to be physically combinable nor have an ability to
combine their specific structures to render them obvious." Ans. 5. While
this may be true, the Examiner's proposal of utilizing Chevalier's clutch
mechanism in Kobayashi still requires incorporation of some kind of clutch
consistent with the teachings of Chevalier. This added clutch would then
change the operation of the device and, according to Appellants, would do
so in a manner so as to render the device inoperable for its intended purpose.
We understand Appellants' arguments to aver that even if the
Examiner is correct, Kobayashi would no longer operate as intended in the
normal, powered operating mode. Given that the Examiner has not
explained how Kobayashi would still operate as intended when the device is
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Application 14/623,451
powered, we essentially are left with an unrebutted ( and as far as we can see,
correct) statement that the proposed modification would render the device
inoperable for its intended purpose. As such, we do not sustain the
Examiner's rejection.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1--4 and 6-12.
REVERSED
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