Ex Parte Oldani

Patent Trials and Appeals Board

May 21, 2019

14957086 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/957,086 12/02/2015
121691 7590 05/23/2019
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
FIRST NAMED INVENTOR
Raymond Anthony Oldani
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.
83566492 1281
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
05/23/2019 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND ANTHONY OLDANI 1
Appeal2018-006850
Application 14/957 ,086
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7 and 9-19 under 35 U.S.C. § 102(a)(l) or
§ 102(a)(2) as being anticipated by Piekny (US 2009/0295183 Al, pub. Dec.
3, 2009). 2 Final Act. 2-3. We have jurisdiction over the appeal under
35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Ford Global Technologies, LLC ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real paiiy in interest.
Appeal Br. 3.
2 Claim 8 is cancelled. Appeal Br. 15 (Claims App.).
Appeal2018-006850
Application 14/957 ,086
THE CLAIMED SUBJECT MATTER
Claims 1, 7, and 14 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A vehicle storage compartment assembly, comprising:
a housing;
a pivoting door; and
a storage bin pivotally connected to each of the housing
and the pivoting door.
OPINION
Claims 1-3, 6, 7, 9, 10, 13-16, and 19
Appellant presents arguments for independent claims 1, 7, and 14
together (Appeal Br. 9-12), and does not present separate arguments for
dependent claims 2, 3, 6, 9, 10, 13, 15, 16, and 19 (see id. at 12-13
(separately arguing only claims 4, 5, 11, 12, 17, and 18)). We select claim 1
as representative of the issues that Appellant presents together in the appeal,
and claims 2, 3, 6, 7, 9, 10, 13-16, and 19 stand or fall therewith. See
37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting independent claim 1, the Examiner finds that Piekny
discloses "a vehicle storage compartment assembly, comprising: a housing
12,27; a pivoting door (shown but not numbered, FIG. I) and exterior part of
18; and a storage bin 16 pivotally connected to each of the housing and the
pivoting door." Final Act. 2. The Examiner explains that first storage
compartment 14 "includes a side facing out towards the cabin of the vehicle
when the storage system is closed. It is this exterior part, this exterior
surface, which is considered by the [E]xaminer to be the recited pivoting
door." Ans. 4 (including an annotated reproduction of Figure 1 of Piekny).
The Examiner acknowledges that the pivoting connection between the
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Application 14/957 ,086
exterior part of 18 and storage bin 16 is an indirect connection, but
"contends that an indirect connection is still a connection." Id. at 3; see also
id. ("Since the exterior part of 18 is a component of first bin 14 and first bin
14 is coupled pivotally with the second bin 16, the exterior part of 18 is
coupled pivotally with the second bin 16."). Alternatively, the Examiner
takes the position that "the bin 14 [is] a part of the door (an inner part of the
door)." Id.; see also id. ("The entire bin 14 acts as a pivoting door ( or
hinged barrier) which is coupled pivotally to the bin 16.").
Appellant argues that "Piekny' s second storage bin 16 is not coupled,
pivotally or otherwise, to the feature(s) relied on by the [E]xaminer as
teaching a pivoting door." Appeal Br. 9-10. In particular, Appellant asserts
that "Piekny' s second storage bin 16 is pivotally coupled to a side wall of
first storage bin 14 by way of armatures 26, 28 and rotatable coupling
devices 30, not to any 'exterior part of 18. "' Id. at 9 ( citing Piekny, Figs. 1,
2; quoting Final Act. 2).
To the extent that Appellant is arguing that Piekny's second storage
compartment 16 is not pivotally connected directly to the feature identified
by the Examiner as the pivoting door, such an argument is not
commensurate with the scope of claim 1. As stated by our reviewing court
in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the
game is the claim." It is well established that limitations not appearing in
the claim cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Here, claim 1 only recites, in relevant part, "a
storage bin pivotally connected to each of the housing and the pivoting
door." Appeal Br. 14, Claims App. The claim does not require that the
storage bin is pivotally connected directly to the pivoting door, and does not
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Application 14/957 ,086
preclude an indirect connection between the storage bin and pivoting door.
Given that the feature identified by the Examiner as the pivoting door (i.e.,
exterior of interior surfaces 18) is a part of first storage compartment 14,
which is pivotally connected to second storage compartment 16, we are not
apprised of a deficiency in the Examiner's finding that second storage
compartment 16 is pivotally connected to the feature identified as the
pivoting door. See Ans. 3 (explaining that "storage bin 16 [is] pivotally
connected (indirectly) to the pivoting door (exterior part of 18)").
Appellant also suggests that it would be improper to consider the
entire first storage compartment 14 as a pivoting door. Appeal Br. 10-11.
Appellant argues that Piekny' s "first storage compartment 14 does not in
fact serve the function of a door to second storage compartment 16 ...
[because] no portion of first storage compartment 14 serves to close or open
an entrance to second storage compartment 16." Reply Br. 2 ( citing Piekny,
Figs. 1, 2); see also id. (asserting that "[a] 'door' as that term is understood
by the skilled artisan is 'a usually swinging or sliding frame or barrier by
which an entrance ... is closed and opened" ( citing www.merriam-
webster.com)). According to Appellant, "[t]he only structure that appears to
seal the opening leading to the interior of the stowed second storage
compartment 16 is an inner wall 27 of support structure 12." Id. (citing
Piekny ,r,r 24, 28). We are not persuaded by this argument.
Although we acknowledge Appellant's observation that, in Piekny's
closed position, inner wall 27 covers opening 25 of second storage
compartment 16 (Reply Br. 2.; Piekny ,r 28, Fig. 1), Appellant does not
persuasively explain why such a fact would preclude first storage
compartment 14 from also functioning as a door. Instead, we agree with the
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Application 14/957 ,086
Examiner that first storage compartment 14, including its exterior surface,
would also act as a barrier to second storage compartment 16. See Ans. 3
( explaining that "the exterior, in combination with the rest of the
compartment 14, pivots ('pivoting') and acts as a barrier ('door') to the bin
16") ). In other words, in a closed position, first storage compartment 14
prevents access to second storage compartment 16, and, in an open position,
first storage compartment 14 allows access to second storage compartment
16. See Piekny, Figs. 1, 2; id. ,r 27 ("As shown in FIG. 1, the first storage
compartment 14 is in a closed position or a stored position. As shown in
FIG. 2, the first compartment is in an open position.").
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's finding that Piekny discloses all of the limitations of
independent claim 1. Accordingly, we sustain the rejection of claim 1, and
of claims 2, 3, 6, 7, 9, 10, 13-16, and 19 falling therewith, under 35 U.S.C.
§ 102(a)(l) or§ 102(a)(2) as being anticipated by Piekny.
Claims 4, 5, 11, 12, 17, and 18
Each of dependent claims 4, 11, and 17 recites "a link arm
arrangement fixedly attached at a first end to the pivoting door and pivotally
connected at a second end to the storage bin." Appeal Br. 14--16, Claims
App. (emphasis added). Each of claims 5, 12, and 18 depends, respectively,
from one of these claims. See id. The Examiner finds that Piekny discloses
"a link arm arrangement 26,28 fixedly attached at a first end 30 to the
pivoting door and pivotally connected at a second end 30 to the storage bin."
Final Act. 2. The Examiner takes the position that Piekny' s "rotatable
coupling device [30] constitutes a 'fixed' attachment as broadly recited and
interpreted ... [because] a 'fixed' attachment can also, at the same time, be
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Application 14/957 ,086
a 'rotatable' one as fixed does not [mean] immovable or immobile or
stationary." Ans. 5; see also id. (explaining that "a rotatable or pivotable
connection can be fixed, as it is securely fastened in position, while still
allowing for hinging or rotation of the components that it is
fixing/ securing").
Appellant argues that Piekny "does not teach or even suggest any
fixed attachment for any of armatures 24, 26, 28, much less specifically a
fixed attachment to a pivoting door. Instead, only couplings providing for
rotation of the articulating armatures along a desired plane are taught."
Appeal Br. 13. In particular, Appellant asserts that the
use of the term "fixed" to describe the attachment of an end of a
link arm to the pivoting door and the use of the term "pivotally"
to describe the attachment of another end of the link arm to the
storage bin distinguishes each term from the other, i.e., if one
attachment pivots, the other cannot whatever the meaning of
"fixed."
Reply Br. 4. \Ve are persuaded by Appellant's argument.
Although the term "fixedly," on its own, does not necessarily preclude
an attachment that pivots or rotates ( so long as it is "fixed" from some
movement), we agree with Appellant that the use of the terms "fixedly" and
"pivotally" in claims 4, 11, and 17 distinguishes the attachment at each end
of the link arm. Id. In other words, given the recitation that the second end
of the link arm is "pivotally connected," the recitation that the first end of
the link arm is "fixedly attached" must mean something different than a
pivotal connection. Such an interpretation of "fixedly attached" as requiring
a non-pivoting attachment is consistent with Appellant's Specification,
which describes that "[ a ]t least a portion of storage bin 208 is fixedly
attached to an interior surface 210 of the door 204. This may be by any
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suitable attachment means, including without intending any limitation
fasteners, adhesives, welding, fabricating the door and storage bin as a single
molded piece, etc." Spec. ,r 4 ( emphasis added); see also id. ,r 23 ( describing
that "link arm 314 ... is fixedly attached at a first end to an interior surface
316 of the pivoting door 304[, and] ... is pivotally attached at a second,
opposed end to the storage bin 308 by way of a pivoting connection 312").
In short, the Examiner's construction of "fixedly attached," as recited
in claims 4, 11, and 17, is unreasonably broad, such that the rejection based
upon this claim construction is in error. In particular, the Examiner has not
established a finding supported by a preponderance of the evidence that
Piekny, as relied upon in the rejection presented, teaches or suggests a link
arm arrangement having an end that is pivotally connected to the storage bin
and another end that is fixedly attached (i.e., not pivotally connected) to the
pivoting door.
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Piekny discloses all of the limitations of claims 4, 11, and 17.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 102(a)(l) or
§ 102(a)(2) as being anticipated by Piekny of: claim 4 and its dependent
claim 5; claim 11 and its dependent claim 12; and claim 17 and its
dependent claim 18.
DECISION
The Examiner's decision to reject claims 1-7 and 9-19 under
35 U.S.C. § 102(a)(l) or§ 102(a)(2) as being anticipated by Piekny is:
AFFIRMED as to claims 1-3, 6, 7, 9, 10, 13-16, and 19; and REVERSED
as to claims 4, 5, 11, 12, 17, and 18.
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Application 14/957 ,086
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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