Ex Parte MuellerDownload PDFPatent Trial and Appeal BoardMay 27, 201412125524 (P.T.A.B. May. 27, 2014) Copy Citation 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. 12/125,524 05/22/2008 Dirk Mueller 7742.3047.001 4675 23399 7590 05/28/2014 REISING ETHINGTON P.C. P O BOX 4390 TROY, MI 48099-4390 EXAMINER SHAFER, RICKY D ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 05/28/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIRK MUELLER __________ Appeal 2012-005604 Application 12/125,524 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1, 5, 6, and 8. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is said to be directed to a rearview mirror for vehicles comprising a mirror housing in which a mirror glass is disposed, Appeal 2012-005604 Application 12/125,524 2 which is surrounded by a rim portion wherein at least a part of the rim portion is configured moveable relative to the mirror housing (Spec. 1). Claim 1 is illustrative: 1. A rear-view mirror for vehicles, comprising: a mirror housing defining an opening facing rearward when said rear- view mirror is secured to the vehicle; a mirror glass disposed within said opening and pivotal therewithin; and said mirror housing including a rim portion operatively secured to said mirror housing having a gap disposed therebetween, said rim portion extending around said opening and spaced apart from said mirror glass, said rim portion movable with respect to said mirror housing and pivotally movable with respect to said mirror glass to vary the amount of space between said rim portion and said mirror glass assisting in the removal of foreign objects that may lodge between said rim portion and said mirror glass. Appellant appeals the following rejection: Claims 1, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Takeda (US 3,711,179, patented Jan. 16, 1973). ISSUE Did the Examiner reversibly err in failing to provide sufficient facts or sufficient technical reasoning to support the finding that Takeda’s ring member 11 (identified by the Examiner as a rim portion) is inherently “movable with respect to said mirror housing and pivotally movable with respect to said mirror glass to vary the amount of space between said rim portion and said mirror glass assisting in the removal of foreign objects that may lodge between said rim portion and said mirror glass” as recited in claim 1 on appeal? We decide this issue in the affirmative. Appeal 2012-005604 Application 12/125,524 3 FINDINGS OF FACT AND ANALYSES Claim 1 requires that the mirror housing include a rim portion operatively secured to the mirror housing having a gap disposed therebetween, the rim portion extending around the opening of the mirror housing into which the mirror glass is situated, the rim portion is moveable with respect to the mirror housing and pivotally moveable with respect to said mirror glass to vary the amount of space between the rim portion and the mirror glass. In light of Appellant’s arguments, we focus on the claim limitations that the rim portion is moveable with respect to the mirror housing and pivotally moveable with respect to the mirror glass. The Specification describes that the rim (5) portion may be pivotally supported by having gap (30) that terminates in bar (24) around the rim portion of the housing to facilitate movement of the rim relative to the mirror housing (Spec. 6; Fig. 3). The thickness of bar (24) determines the amount of load necessary to break off the rim from the mirror housing. Id. The Specification further discloses that the rim 5 may be attached to the mirror housing with glue (39) to permit the rim (5) to separate from the mirror housing under a respective load (Spec. 7; Fig. 6). The Figure 6 embodiment is structured so that the connection point of the rim 5 to the mirror housing is a distance from the mirror (16) to permit easier pivoting of the rim (5) upon force applied by the mirror. The Specification further discloses that the rim (5) may be formed of elastic material 32 or attached to the mirror housing by elastic material intermediate layer 32 (Spec. 7; Figs. 4 & 5). In each of these embodiments the rim is made of particular flexible material and particularly structured so that it can pivotally move with respect to the mirror glass and is moveable with respect to the mirror housing. All Appeal 2012-005604 Application 12/125,524 4 of the disclosures in the Specification relate to rim and/or mirror housing materials that are sufficiently flexible or have been made sufficiently flexible by adjusting the material thickness, with the connection point of the rim to the mirror housing being a sufficient distance from the mirror, to provide the movable and pivoting function recited in claim 1. Accordingly, we construe the claim limitations “rim portion moveable with respect to the mirror housing and pivotally moveable with respect to the mirror glass” to mean that the rim portion is sufficiently flexible and properly structured so that it can move or bend with respect to the mirror housing and pivots with respect to the mirror glass. Appellant argues that the Examiner’s rejection over Takeda fails to teach or suggest to one of ordinary skill in the art to “fabricate a mirror having a rim portion that is moveable with respect to either the mirror or the rest of the housing allowing to vary the spacing between the rim portion and the mirror to facilitate the removal of foreign objects” (App. Br. 7). Appellant contends that Takeda’s front edge is fixed in a defined position with respect to mirror 8. Id. The Examiner finds that Takeda teaches all the features of claim 1, except for using mirror glass (Ans. 4-5). The Examiner finds that the use of mirror glass for Takeda’s mirror would have been obvious (Ans. 5). With respect to the claim limitation that the rim portion moveable with respect to the mirror housing and pivotally moveable with respect to the mirror glass, the Examiner finds that Takeda inherently teaches that the rim portion (i.e., ring member 11) is detachable from the mirror housing when a force greater than a rated break point is applied for the material (Ans. 5). The Examiner further finds that Takeda inherently teaches that the rim portion being Appeal 2012-005604 Application 12/125,524 5 pivotally moveable with respect to the mirror 8 when a predetermined force is applied because all materials inherently have a certain degree of flexibility or resiliency. Id. On this record, the Examiner has not established that Takeda’s material used to make ring member 11(a rim portion) is capable of moving with respect to mirror housing (A) or pivoting with respect to mirror glass (8). The Examiner finds that Takeda’s material must inherently be detachable, flexible or resilient due to the “fact” that all materials have a certain degree of flexibility or resiliency (Ans. 5). The Examiner further finds that all materials have a predetermined breaking point such that a material will detach when a force greater than the rated break point of the material is applied to the material. Id. However, missing from the Examiner’s analysis is any technical reasoning or basis in fact that Takeda’s material used to form ring member (11) (rim portion) or housing (A) necessarily has the characteristic of being sufficiently flexible such that it can move or bend with respect to the mirror housing and pivots with respect to the mirror glass as required by the claim language. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”). The Examiner has not shown that Takeda’s material used to form ring member (11) (rim portion) or housing (A) is the same material as that employed by Appellants. (Ans. 5.) Nor has the Examiner shown that the thickness of Takeda’s ring member (11) (rim portion) or housing (A) has the same thickness as that employed by Appellants. (Id.) Appeal 2012-005604 Application 12/125,524 6 Moreover, the Examiner has not provided any technical reasoning and/or facts regarding the materials commonly used for making rearview mirror housings in 1973, the year Takeda’s patent issued, to show or explain why such materials for the rim and housing taught by Takeda would necessarily be capable of moving relative to one another or pivotally moving with respect to the mirror glass. In the present appeal, the Examiner has not provided any specific facts and analysis of the material or thicknesses used by Takeda and Appellants to establish inherency. Rather, the Examiner bases the finding of inherency on the unsupported statement that all materials have flexibility, resiliency, and a break point. The Examiner’s inherency analysis is based upon the mere possibility that Takeda’s material used to make ring member 11(rim portion) may be sufficiently flexible enough to move or bend with the respect to the mirror housing and pivots with respect to the mirror glass as required by the claims on appeal. Inherency cannot be established by possibilities or probabilities. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). On this record, we reverse the Examiner’s § 103 rejection as failing to establish a prima facie case of obviousness due to unsupported findings of inherency. DECISION The Examiner’s decision is reversed. ORDER REVERSED cdc Copy with citationCopy as parenthetical citation