Ex Parte Mueller

Patent Trial and Appeal Board

May 27, 2014

12125524 (P.T.A.B. May. 27, 2014)

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,
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Application 12/125,524

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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
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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
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Application 12/125,524

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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.)
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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