Ex Parte Morrissett et al

Patent Trial and Appeal Board

Dec 21, 2016

12705553 (P.T.A.B. Dec. 21, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/705,553 02/12/2010 Donald Morrissett 83140334 8733
28866 7590 12/23/2016
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
ELAHMADI, ZAKARIA
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
docketing @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD MORRISSETT and ROBERT E. MEYER
Appeal 2014-009219
Application 12/705,553
Technology Center 3600
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 2, 3, 5, 8, 9, and 21—23. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Global Technologies LLC.
Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated September 10, 2013
(“Final Act.”).
Appeal 2014-009219
Application 12/705,553
CLAIMED SUBJECT MATTER
Claims 21 and 22 are the independent claims on appeal. Claim 21,
reproduced below, is illustrative of the claims on appeal.
21. A vehicle shifter assembly, comprising:
a shift lever mounted on a console;
a housing attached to the shift lever, covering a shifter
assembly component;
a retainer ring for attaching the housing to the console,
including at a forward end a lateral channel that includes first and
second portions, each portion sloping downward and in mutually
opposite lateral directions from a divider in the channel to
respective first and second forward-directed run-offs.
REJECTIONS
I. Claims 7 and 21—23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hattori (US 6,182,530 Bl; iss. Feb. 6, 2001) and Pedersen
(US 7,032,876 Bl; iss. Apr. 25, 2006).
II. Claims 2, 3, 5, 8, and 9 stand rejected under 35 U.S.C. § 103(a)
as unpatentable overby Hattori, Pedersen, and Aso (US 7,650,849 B2; iss.
Jan. 26, 2010).
ANALYSIS
Rejection I
Appellants argue that Pedersen is non-analogous art and, therefore,
improperly relied on by the Examiner. Appellants submit that the field of
endeavor of Appellants’ invention is “a vehicle shifter assembly of an
automotive vehicle, mounted on a console in the vehicle’s passenger
compartment, configured for directing spilled fluid away from the shifter
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Appeal 2014-009219
Application 12/705,553
components and . . . onto the vehicle floor,” as compared to Pedersen’s field
of endeavor, which is “an in-line fluid flow control valve, which is directed
to allowing or restricting fluid flow through the valve.” Appeal Br. 4.
Appellants conclude that “[Pedersen] has nothing to do with draining fluid,
shifters, vehicle interiors or consoles.” Id.', see also Reply Br. 3. Appellants
further submit that “one skilled in the art of vehicle shifter assemblies would
not look to the in-line valve of Pedersen that is specifically designed to
restrict fluid flow for a drain around a vehicle gear shift lever.” Appeal Br.
5. The Examiner responds that Pedersen is “directed [to] driving . . . fluid.”
Ans. 8.
The “analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986—87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” prong asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325—
27 (Fed. Cir. 2004). “A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Appellants’ invention is directed to “vehicle shifters and fluid diverter
systems designed to guide fluid away from predetermined shifter assembly
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Appeal 2014-009219
Application 12/705,553
components” (Spec. 11), and thus, is in the field of endeavor of fluid
diverter systems. Pedersen’s invention is directed to “fluid valves and, more
particularly, to a valve having an in-line actuating element” (Pedersen, 1:11—
14), and thus, is in the field of endeavor of fluid valves for controlling the
passage of fluid, not fluid diverter systems for changing the course of fluid,
and, in particular, away from components. Critically, Appellants’ invention
involves downwardly sloping channels, dividers, and run-offs, as compared
to the structure of Pedersen’s fluid valve, which includes inlet and outlet
channels, ports, and actuating elements. Moreover, Appellants’ invention
functions to drain fluid away from an area, as compared to the function of
Pedersen’s fluid valve which is to interrupt or restrict the flow of fluid.
Thus, the structure and function of Pedersen’s fluid valve is not sufficiently
similar to the structure and function of Appellants’ claimed vehicle shifter
assembly such that Pedersen’s fluid valve would be considered by a person
of ordinary skill in the fluid diverter art. The Examiner’s determination that
the field of endeavor of Appellants’ claimed subject matter is “driving a
fluid,” as stated supra, is unreasonably broad. Thus, Pedersen is not in the
same field of endeavor as Appellants’ invention.
Applying the second prong of the analogous art test, problems with
which Appellants’ were concerned are identified in the Specification as
(i) “cost-reduction improvements to existing shifter designs” (Spec. 12); and
(ii) “[m]ore consistent fluid spill prevention methods” (id. 14). Pedersen’s
invention addresses (i) the corrosion, abrasion, and contamination of valve
components from harsh chemicals and particulates in fluids used, for
example, within the semiconductor industry (Pedersen, 1:18—21, 37-42); and
(ii) the internal restrictive geometry of other valve designs (id. at 3:17—18).
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Appeal 2014-009219
Application 12/705,553
Therefore, we determine that Pedersen is not reasonably pertinent to the
problems addressed by Appellants and that Pedersen’s fluid valve disclosure
would not have commended itself to Appellants’ attention when considering
how to avoid spilled fluid from damaging components in a vehicle shifter
assembly. Accordingly, failing the second prong, Pedersen is not analogous
art, and the Examiner improperly relied on Pedersen in the rejection of the
claims.
Moreover, the Examiner relies on Pedersen for disclosing, inter alia,
that Pedersen teaches “run-offs (160),” as recited in independent claims 21
and 22. Final Act. 2, 3. Appellants argue, inter alia, that “Pedersen has no
run-offs,” because Pedersen “does not drain fluid,” but “is only concerned
with [the] selective restriction [of the fluid] through the in-line valve, so
there is no need for a run-off.” Appeal Br. 6. Appellants correctly submit
that Pedersen’s “element 160 is an annula[r] region defined between a
flexible element surface (64) and a support element surface (48) when the
valve is open.” Id. at 7 (citing Pedersen, 6:4—15, Fig. 4). Appellants further
submit that Pedersen’s valve is “not. . . used [as a] run-off that would
employ gravity to cause the fluid to flow through channels for draining fluid
from the shifter.” Id. at 6; see also Reply Br. 5. We agree. The claim term
“run-off’ means a structure that causes fluid to flow away.3 The Examiner’s
finding that Pedersen’s annular region 160 is a run-off is unreasonable
because it is not consistent with the ordinary meaning of the term run-off, in
3 See, e.g., Webster’s Third New Int’l Dictionary 1989 (1993) (“runoff’
means “to cause (as molten metals) to flow away : draw off: drain off”).
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Application 12/705,553
view of the Specification; rather, Pedersen’s annular region 160 is simply
that, an annular region through which fluid may pass.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 21 and 22, and claims 7 and 23 depending therefrom.
Rejection II
Claims 2, 3, 5, 8, and 9 depend from claims 21 and 22. The
Examiner’s reliance on Aso does not cure the deficiencies in the Examiner’s
reliance and/or finding with respect to Pedersen as discussed above. Thus,
we also do not sustain the Examiner’s rejection of claims 2, 3, 5, 8, and 9 for
the reasons stated supra.
DECISION
The Examiner’s decisions to reject claims 2, 3, 5, 8, 9, and 21—23
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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