Ex Parte Newman et al

Patent Trial and Appeal Board

Feb 19, 2016

12784010 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121784,010 05/20/2010
26096 7590 02/23/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Todd R. Newman
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.
67596-011 PUS2 7961
EXAMINER
EUSTAQUIO, CAL J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD R. NEWMAN and JOHN M. W ASHELESKI
Appeal2014-000605
Application 12/784,010
Technology Center 2600
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
NAPPI, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1---6, 8-18, and 20-22. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm and enter a new ground of rejection.
INVENTION
The invention is directed to a keyless entry assembly including a
capacitance sensor for detecting objects. See Title and Abstract of
Appellants' Specification.
Appeal2014-000605
Application 12/784,010
Claim 1 is illustrative of the invention and is reproduced below.
1. A keyless entry assembly comprising:
a vehicle opening of a metal construction movable
between a locked position and an unlocked position;
an electrical conductor mounted to an exterior surface of
the vehicle opening, wherein the conductor capacitively couples
to an electrically conductive object proximal to the conductor
while the conductor is driven with an electrical charge such that
capacitance of the conductor changes due to the conductor
capacitively coupling with the object, wherein the conductor
itself is preformed in the shape of an emblem identifying a
vehicle to be associated with the vehicle opening; and
a controller operable for driving the conductor with the
electrical charge and measuring the capacitance of the
conductor to determine whether an electrically conductive
object is proximal to the conductor, the controller further
operable for controlling the vehicle opening to move the vehicle
opening from one of the positions to the other of the positions
upon determining that an electrically conductive object is
proximal to the conductor;
wherein the conductor is flexible such that the conductor
displaces toward the vehicle opening upon an object touching
the conductor in a direction toward the vehicle opening;
wherein the conductor is capacitively coupled to the
vehicle opening while the conductor is driven with the electrical
charge such that the capacitance of the conductor changes due
to the conductor being displaced toward the vehicle opening
upon an object touching the conductor.
REJECTION AT ISSUE
The Examiner has rejected claims 1---6, 8-18, and 20-22 under
35 U.S.C. § 103(a) as being unpatentable over Nahata et al. (US
2
Appeal2014-000605
Application 12/784,010
2001/0052839 Al; Dec. 20, 2001), Pudney (US 2003/0216817 Al; Nov. 20,
2003), and Bingle (US 7,576,631 Bl; Aug. 18, 2009). Final Action 2-12. 1
ISSUES
Appellants present several arguments on pages 4--14 of the Appeal
Brief and pages 1--4 of the Reply Brief, directed to the Examiner's rejection
of independent claims 1, 11, and 21. These arguments present us with the
following four issues:
a) Did the Examiner err in finding the skilled artisan would combine
Nahata and Bingle?
b) With respect to claims 1 and 11, did the Examiner err in finding
Bingle teaches a flexible conductor whose capacitance changes due
to the conductor being displaced toward a vehicle opening upon an
object touching the conductor?
c) With respect to independent claims 1, 11, and 21, did the Examiner
err in finding that Pudney teaches a conductor in the shape of an
emblem identifying a vehicle?
d) With respect to claim 21, did the Examiner err in finding Bingle
teaches control of a vehicle opening based on an electrically
conductive object moving in proximity relative to the conductor
without touching the conductor in accordance with an expected
sequence of movements?
1 Throughout this opinion we refer to the Appeal Brief filed July 17, 2013,
the Reply Brief filed Oct. 4, 2013, the Final Action mailed Dec. 4, 2012, and
the Examiner's Answer mailed Aug. 5, 2013.
3
Appeal2014-000605
Application 12/784,010
Appellants' arguments on pages 4 and 11-13 of the Appeal Brief
directed to dependent claims 2-6, 8-10, 12-18, 20, and 22 present us with
the same dispositive issues as respective independent claims 1, 11, and 21.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to Appellants' arguments. We disagree with
Appellants' conclusion that the Examiner erred in rejecting claims 1---6, 8-
18, and 20-22 under 35 U.S.C. § 103.
First issue
Regarding issue (a), Appellants argue changing the no-contact sensor
ofNahata to include a touch sensor, such as that taught by Bingle, would
change Nahata's principle of operation "from an 'effortless' system to one
that requires particular effort." Reply Br. 2; App. Br. 5-7. The Examiner
finds that the principle of operation ofNahata includes a touch option in
which the user directly contacts the sensor, and that the teachings of Bingle,
when combined, would not change that principle of operation. Ans. 5---6
(citing Nahata i-f 25 ("the proximity sensor is now a touch sensor")). We
agree. We are therefore not persuaded of error in the Examiner's
combination ofNahata with Bingle.
Appellants further assert one of ordinary skill in the art would not
modify N ahata' s proximity sensor to include sensing by touch as required in
claim 1 because Nahata teaches away from sensor activation by touch. App.
4
Appeal2014-000605
Application 12/784,010
Br. 8; Reply Br. 2-3. In particular, Appellants argue Nahata prefers no-
touch sensor activation and avoids requiring touch. Reply Br. 2-3.
We are not persuaded Nahata teaches away from sensor activation by
touch. "[M]ere disclosure of alternative designs does not teach away." In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Nahata does not
suggest contactless sensing is the only solution likely to work, but positively
discloses that its sensor can also function as a touch sensor. Ans. 5---6 (citing
Nahata ,-r 25).
Appellants also contend the Examiner relied on impermissible
hindsight by failing to provide adequate reasoning to combine the
references. App. Br. 9. We disagree, as the Examiner has provided a
reasoned rationale to combine the teachings (Final Act. 5; Ans. 6). We have
reviewed the findings upon which the rationale is based and conclude there
is sufficient support for the finding of obviousness.
Accordingly, we are not persuaded that the Examiner erred in finding
the skilled artisan would combine the teachings ofNahata with the teachings
of Bingle.
Second Issue
Regarding issue (b ), Appellants argue Bingle does not teach a
capacitance sensor activated by deflection such that the conductor's
capacitance changes due to the conductor being displaced by an object
touching the conductor, as required by independent claim 1. App. Br. 10-12
(citing Bingle col. 5, 11. 32-37); Reply Br. 3--4.2 According to Appellants,
2 We count Reply Brief pages (which are not numbered) starting from the
first page.
5
Appeal2014-000605
Application 12/784,010
Bingle teaches capacitance sensors activated by touch, and mechanical
sensors activated by pressure, but does not teach capacitance sensors
activated by pressure; instead, "Bingle only mentions 'touch' as a way of
activating a capacitance sensor." Reply Br. 4.
In response to Appellants' argument, the Examiner states:
it is known in the art that keyboards and keypads include flexible keys
that involve a user mechanically depressing a button that invokes not
only a corresponding keypad input but also as tactile feedback to the
user as an unstated assurance that the selected button has entered the
selected data into the device. Therefore, mechanical manipulation is
not limited to mechanical sensors, as the applicant's argument alleges,
but also as a means to manipulate capacitance sensors in which
depressing a flexible keypad changes the distance a user's extremity is
to a sensor which results in a change in capacitance that affects a
vehicle locking/unlocking, as taught in N ahata.
Answer 7.
We concur with the Examiner, and are not persuaded by Appellanst
that a capacitance sensor activated by deflection is not known in the art.
Specifically, we note Aimi et al. (US 2008/0024451 A 1; published Jan. 31,
2008)3 describes "flexible conductive members [that] may be stacked to
detect electrostatic capacitance that varies according to the amount of
depression" (Aimi i-f 36), which teaches a capacitance sensor activated by
deflection as required by claim 1.
Thus, Appellants' arguments have not persuaded us of error in the
Examiner's finding that a deflection-activated capacitance sensor is known
in the art. Ans. 7. As our rationale relies upon additional evidence (Aimi)
3 The Aimi reference was cited to Appellants in related Application
13/084,611.
6
Appeal2014-000605
Application 12/784,010
not asserted by the Examiner, we designate this rejection as a new ground of
rejection under 37 C.F.R. § 41.50(b).
Third issue
Regarding issue ( c ), Appellants argue that Pudney discloses "a sensor
could be included in an emblem, but it does not disclose that the sensor itself
is in the shape of an emblem." App. Br. 14 (emphasis added). The
Examiner finds Pudney teaches a sensor molded to a housing in the shape of
"virtually any emblem," the joined sensor-housing integrally functioning as
an emblem-shaped sensor. Ans. 8 (citing Pudney i-f 28 and Figure 8). We
agree with the Examiner's finding and reasoning, which Appellants have not
rebutted in the Reply Brief. We further note Pudney' s emblem, the housing
of which "generally surrounds or encapsulates [the] sensor" (see Pudney i-f
28), is commensurate with the broad description of an emblem-shaped
sensor in Appellants' Specification. 4
Bingle also teaches a sensor in the shape of a CIVIC emblem, and
Appellants' arguments have not addressed these additional findings by the
Examiner. Final Act. 4--5 (citing Bingle Figs. 7-11 ).
Accordingly, we are not persuaded the Examiner erred in finding the
art of record teaches or makes obvious a conductor sensor in the shape of an
emblem.
4 Appellants' Specification provides that a sensor in the shape of an emblem
includes an overlay together with sensors "patterned to conform to the
emblem arrangement of [the] overlay" (Spec. 18:23-26).
7
Appeal2014-000605
Application 12/784,010
Fourth issue
Regarding issue ( d), Appellants argue that claim 21 is separately
patentable as Bingle does not teach controlling a vehicle opening based on
an electrically conductive object moving in proximity relative to the
conductor "without touching the conductor in accordance with an expected
sequence of movements" as required by claim 21. App. Br. 12-13.
According to Appellants, "the non-numerical sequence of Bingle [for
opening a car door] requires touch." App. Br. 13 (emphasis added). We
disagree with Appellants' conclusion. As discussed above we are not
persuaded of error in the Examiner's finding that the combination ofNahata
and Bingle teaches using a proximity sensor and a touch sensor. Further,
Bingle describes detection of a finger's contactless presence near a
capacitance sensor. See Final Act. 11-12 (citing Bingle col. 5, 11. 27-37
("The sensors 82 can be any suitable type of sensor, such as field effect
sensors or capacitance sensors, that can be activated when a finger is in the
vicinity of the sensor" (emphasis added))). We therefore agree with the
Examiner's finding that Bingle teaches the disputed limitation of claim 21.
Final Act. 11-12.
As Appellants' arguments to these four issues have not persuaded us
of error in the Examiner's obviousness rejections, we sustain the Examiner's
obviousness rejections of independent claims 1 and 21.
Appellants' arguments directed to the rejection of independent claim
11 assert that claim 11 is allowable for reasons argued with respect to claim
1. App. Br. 10, 14. Appellants further state claim 11 includes other
limitations not found in claim 1, but do not specifically discuss those
8
Appeal2014-000605
Application 12/784,010
limitations. App. Br. 12; Reply Br. 4. Such arguments are not substantive
arguments of Examiner error. See 37 C.F.R. § 41.37(c)(iv). Thus, we are
not presented with additional issues with respect to claim 11, and we sustain
the Examiner's rejection of this claim for the same reasons discussed above
with respect to claim 1.
With respect to claim 9, Appellants' arguments are substantially the
same as for independent claim 1 and provide us with the same issues as
claim 1. App. Br. 11. Thus, we also sustain the Examiner's rejection of
dependent claim 9.
Appellants also recite the language of dependent claim 22 and assert
the recited limitations are not found in the prior art. App. Br. 13. Such
arguments are not persuasive of Examiner error. (See 37 CPR
41.37(c)(l)(iv) (2013) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.").) Thus, for the same reasons as independent claim 21, we sustain
the rejection of dependent claim 22, which Appellants do not argue with
particularity.
Further, as Appellants have not presented additional arguments with
respect to the rejections of dependent claims 2---6, 8, 10, 12-18, and 20, we
similarly sustain the Examiner's rejection of these claims.
9
Appeal2014-000605
Application 12/784,010
DECISION
We sustain the Examiner's rejections claims 21 and 22 under 3 5
U.S.C. § 103 based upon Nahata, Pudney, and Bingle.
We sustain the Examiner's rejection of claims 1---6, 8-18, and 20
under 35 U.S.C. § 103 based upon Nahata, Pudney, and Bingle further in
view of Aimi, which we designate as a new ground of rejection.
The decision of the Examiner to reject claims 1---6, 8-18, and 20-22 is
affirmed.
This Decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that "[a] new ground of rejection .. shall
not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
37 C.F.R. § 41.50(b) (2012).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
10
Appeal2014-000605
Application 12/784,010
AFFIRMED
37 C.F.R. 41.50(b)
11