Ex Parte Nedelman et al

Patent Trial and Appeal Board

Dec 28, 2016

12564952 (P.T.A.B. Dec. 28, 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.
48259.0750/EMCO. 149518 9479
EXAMINER
MCDUFFIE, MICHAEL D
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
12/564,952 09/23/2009
67318 7590
LeClairRyan (Ford Global)
2318 Mill Road
Suite 1100
Alexandria, VA 22314
12/30/2016
Marc David Nedelman
12/30/2016 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):
phoebe.jones@leclairryan.com
marcia.taylor@leclairryan.com
uspatentsalexandria@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC DAVID NEDELMAN, JOHN ANDREW STAKOE,
DONALD JOSEPH WOODWARD, and LESLIE RAYMOND HINDS
Appeal 2015-002573
Application 12/564,952
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc David Nedelman et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final rejection of claims 1—7, 11—16, 19, and
20.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Ford Global Technologies, LLC, is identified as the real party in interest.
Appeal Br. 3.
2 Claims 8—10, 17, and 18 are cancelled. Appeal Br. 5.
Appeal 2015-002573
Application 12/564,952
CLAIMED SUBJECT MATTER
The independent claims on appeal are 1, 5, and 13. Claim 1 is
reproduced below.
1. A windshield visor for a vehicle comprising:
a visor wall having an outer surface and an inner surface,
which opposes the outer surface;
a receptacle coupled to the visor having a body, said body
having an upper surface with an aperture formed therein, said
aperture having a central portion and arm-receiving slots
extending from said circular central portion, said body including
attachment tabs extending from the body, the tabs extending
through the wall, such that the tabs engage the inner surface; and
a connector having a body with arms extending generally
perpendicular therefrom, wherein the body is insertable into the
central portion of the receptacle and the arms are [insertable] into
the arm-receiving slots.
Appeal Br. 16 (Claims App.).
REJECTIONS
Claims 1—7, 11—16, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Palmer (US 6,659,529 B2, issued Dec. 9, 2003), Kim (US
2007/0091557 Al, published Apr. 26, 2007), and Jensen (US 5,906,031,
issued May 25, 1999).3
3 Although claim 20 is listed in the heading of the rejection (Final Act. 2), it
is not mentioned in the statement of the rejection {id. at 2-4). We
understand that claim 20 is not included in this rejection. Our understanding
is supported by claim 20 being rejected over Palmer, Kim, Jensen and
several additional references. Id. at 5. In rejecting claim 20, the Examiner
states that Palmer, Kim, and Jensen fail to disclose “a pen clip, tissue holder,
coin holder, compact disk holder, note pad holder, or sunglass holder,” and
relies on the additional references to address these features. Id.
2
Appeal 2015-002573
Application 12/564,952
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Palmer, Kim, Jensen, Musler (US 2,826,334, issued Mar. 11, 1958),
Salacuse (US 4,527,760, issued July 9, 1985), and Plocher (US 6,216,930
Bl, issued Apr. 17, 2001).
ANALYSIS
Obviousness of claims 1—7, 11—16, and 19
Appellants present arguments for the patentability of claim 1
(Appeal Br. 11—13), and rely on those same arguments for the
patentability of independent claims 5 and 13 and dependent claims 2—
4, 6, 7, 11, 12, 14—16, and 19 {id. at 14). Accordingly, we select claim
1 as representative to decide the appeal as to the rejection, with claims
2—7, 11—16, and 19 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Palmer discloses vehicle windshield visor 48
having accessory storage apparatus 10. Final Act. 2. The Examiner
determines that Palmer does not disclose a receptacle, as claimed, coupled to
visor 48. Id. at 3. The Examiner finds that Kim discloses receptacle 112
and connector 120. Id. (citing Kim, Fig. 3A). The Examiner concludes that
it would have been obvious to use Kim’s connector 120 and receptacle 112
with Palmer’s visor, to provide an alternate means of connecting and
disconnecting the accessories. Id. (citing Kim | 5). The Examiner
determines that Palmer and Kim fail to teach attachment tabs on the
receptacle, as claimed. Id. The Examiner finds that Jensen discloses
connector 10 having attachment tabs 64. Id. The Examiner concludes that it
would have been obvious to combine Jensen’s tabs with Kim’s receptacle.
Id. at 4 (citing Jensen, col. 5,11. 8—17).
3
Appeal 2015-002573
Application 12/564,952
Appellants contend that the Examiner’s proposed combination would
render Palmer unsuitable to accomplish its objective. Appeal Br. 11.
Particularly, Appellants contend that replacing Palmer’s patch 66 with
Kim’s connector system “would render Palmer unsuitable for an intended
purpose because a user would no longer be able to wear the pocket 26 on his
or her belt, since there is no longer a patch behind which the belt could be
threaded.” Id. at 13.
As depicted in Figures 2 and 10 of Palmer, pocket 26 includes patch
66 of hook-and-loop fastening material, and body portion 12 of visor 10
includes corresponding patch 68 of the same material, to allow pocket 26 to
be attached to, and detached from, body portion 12. See Palmer, col. 3,11.
10-22, Figs. 2, 10. As depicted in Figure 10, Palmer discloses that pocket
26 may include opening 70 located on its rear surface 28. See id. at col. 3,11.
23—34, Fig. 10. Palmer describes that “opening 70 is preferably sized and
shaped to receive a belt 32 therethrough.” Id. at col. 3,11. 29-30 (emphasis
added); see also id. at Fig. 10. This allows pocket 26 to be attached to the
belt when pocket 26 is used separately from body portion 12. Id. at col. 3,11.
30-34. Palmer’s description that pocket 26 may include opening 70, and
opening 70 is preferably sized and shaped to receive a belt, teaches that
opening 70 is not required to be provided on pocket 26. This disclosure
further indicates that, even when opening 70 is provided on pocket 26,
opening 70 is not required to be sized and shaped to receive a belt. In light
of this disclosure, Appellants’ contention that modifying Palmer with Kim’s
connector system would render Palmer unsuitable to accomplish its
objective is unpersuasive.
4
Appeal 2015-002573
Application 12/564,952
The Examiner answers that substituting Palmer’s connecting
mechanism with Kim’s “would merely involve providing an alternate means
of attaching one element to another.” Ans. 2. The Examiner reasons that
one of ordinary skill in the art could have combined the claimed elements by
known methods, without changing the principle of operation (of Palmer),
and the combination would have yielded predictable results. Id. at 3.
Appellants respond by challenging the Examiner’s rationale for
combining Palmer and Kim, contending that Palmer’s pocket 26 is
advantageous because it can slide onto any belt, and, in contrast, Kim’s
connector mechanism would require that a user have a specialized belt with
receptacle 112 constructed into the side wall of the belt. Reply Br. 2.
According to Appellants, this would significantly limit the flexibility and
usefulness of Palmer’s pocket 26 by limiting the types of belts to which
pocket 26 could attach. Id.
Appellants’ contentions are not persuasive. Palmer does not require
pocket 26 to include opening 70 for receiving a belt. Accordingly, we are
not persuaded that the Examiner’s proposed modification of Palmer would
render Palmer inoperable for its intended purpose even if pocket 26 did not
include opening 70 in the combination. Moreover, even if a benefit
provided by having opening 70 in some embodiments in Palmer were lost by
not including opening 70 in the proposed combination with Kim, we do not
agree that this would render the Examiner’s rationale for modifying Palmer
inadequate. In this regard, claim 1 does not require the benefit of using
opening 70 taught by Palmer. See In re Urbanski, 809 F.3d 1237, 1244
(Fed. Cir. 2016) (“As the Board properly found, one of ordinary skill would
have been motivated to pursue the desirable properties taught by Wong,
5
Appeal 2015-002573
Application 12/564,952
even if that meant foregoing the benefit taught by Gross. And Urbanski’s
claims do not require Gross’s benefit that is arguably lost by combination
with Wong.”). Here, incorporating Kim’s connector mechanism in the
combination would, for example, provide robust, yet detachable, connection.
Weighing the benefits lost and gained by the Examiner’s proposed
combination, we agree with the Examiner that it would have been obvious to
modify Palmer in view of the teachings of Kim.
Further, the Examiner proposes to substitute Kim’s connecting
mechanism for Palmer’s. “[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSRIntl. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Appellants do
not provide any persuasive reasoning or evidence to show that the
Examiner’s substitution of one known connecting mechanism with another
would fail to yield a predictable result, or that this modification of Palmer
would have been beyond the level of skill of one of ordinary skill in the art.
Consequently, Appellants have not apprised us of any error in the
Examiner’s rejection.
Thus, we sustain the rejection of claim 1, and claims 2—7, 11—16, and
19, which fall with claim 1, as unpatentable over Palmer, Kim, and Jansen.
Obviousness of claim 20
Appellants do not contest the rejection of claim 20. Therefore,
we summarily affirm this rejection. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining summary affirmance without
6
Appeal 2015-002573
Application 12/564,952
consideration of the substantive merits is appropriate where an
appellant fails to contest a ground of rejection).
DECISION
We affirm the rejections of claims 1—7, 11—16, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7