Ex parte Palalau et al.

Board of Patent Appeals and Interferences

Sep 26, 2001

08650038 (B.P.A.I. Sep. 26, 2001)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SILVIU PALALAU and TIMOTHY J. BOMYA

_____________
Appeal No. 1999-2068
Application 08/650,038
______________
ON BRIEF
_______________
Before FLEMING, SMITH and LALL, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-14, 17, 19 and 20, all of the claims pending in the
present application. Claims 15, 16 and 18 have been
Appeal No. 1999-2068
Application 08/650,038
Amendment received March 11, 1998.1
2
canceled .1
The invention relates to (specification, page 1, lines
24-25 through page 2, lines 1-8) a driver control interface
system (figure 1, item numbered 20) for a vehicle having
plural feature groups, such as audio and climate, and each
feature group having a plurality of associated features, such
as volume, balance, tuning, temperature and fan speed. Each
of these features has an associated value which is adjustable
by the driver. Other features have a value which is only
communicated to the driver for information purposes, such as
engine temperature, tachometer, fuel level, and speed.
The driver controlled interface system includes a display
(figure 1, item numbered 22) located on the instrument panel
(figure 1, item numbered 24) in front of the steering wheel
(figure 1, item numbered 26), or as a heads-up display
projected onto the windshield. A plurality of feature group
switches (figure 1, item numbered 28) are located inside the
periphery of the steering wheel and a plurality of select
switches (figure 1, item numbered 30) are located inside the
Appeal No. 1999-2068
Application 08/650,038
3
periphery of the steering wheel spaced from the feature group
switches. Control circuitry (figures 12a or 12b or 13a or
13b) implement the value adjustments of the activated features
of the vehicle.
This system is said (specification, page 1, lines 24-25
through page 2, lines 1-2) to minimize the time and travel
distance that the driver's attention is diverted from the
road, and the time and distance that the driver's hands are
diverted from the steering wheel while operating the various
systems.
Independent claim 1 is reproduced as follows:
1. A driver control interface for controlling the values
of a plurality of user-adjustable features in a vehicle, said
driver control interface comprising:
a steering wheel for steering the vehicle;
a plurality of feature group switches supported on said
steering wheel, each said feature being associated with a
feature group, said feature group switches selectively
activating said feature groups;
a plurality of selection switches supported on said
steering wheel and spaced from said feature group switches,
said selections switches adjusting the values of said features
associated with said activated feature group;
a display supported on an instrument panel in the vehicle
Appeal No. 1999-2068
Application 08/650,038
The Brief was received December 15, 1998.2
The Reply Brief was received February 22, 1999. The3
Examiner mailed a letter March 9, 1999 stating that
Appellants' Reply Brief had been entered and considered but no
further response by the Examiner was deemed necessary.
The Examiner's Answer was mailed January 21, 1999. The4
amendment after final received July 30, 1998 was not entered.
4
forward of said steering wheel and displaying an activated
feature group, said display indicating the current value of a
feature in said activated feature group; and
control circuitry for implementing said adjusted value of
said activated feature in said vehicle.
The Examiner relies on the following reference:
Fujisawa et al. (Fujisawa) 5,467,277 Nov. 14,
1995
Yano et al. (Yano) 5,539,429 Jul. 23,
1996
Claims 1-14, 17, 19 and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yano in view of Fujisawa.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief , Reply Brief , and2 3
the Examiner's Answer for the respective details thereof. 4
OPINION
Appeal No. 1999-2068
Application 08/650,038
5
We will not sustain the rejections of claims 1-14, 17, 19
and 20 under 35 U.S.C. § 103 as being unpatentable over Yano
in view of Fujisawa.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). The Federal Circuit states
that “[t]he mere fact that the prior art may be modified in
the manner suggested by Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n. 14 (Fed.
Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). It is further established that
“[s]uch a suggestion may come from the nature of the problem
to be solved, leading inventors to look to references relating
to possible solutions to that problem.” Pro-Mold & Tool Co.
Appeal No. 1999-2068
Application 08/650,038
6
v. Great Lakes Plastics, 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996) citing In re Rinehart, 531 F.2d 1048,
1054, 189 USPQ 143, 149 (CCPA 1976) (considering the problem
to be solved in a determination of obviousness). The Federal
Circuit reasons in Para-Ordnance Mfg. v. SGS Importers Int’l
Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed.
Cir. 1995), that for the determination of obviousness, the
court must answer whether one of ordinary skill in the art who
sets out to solve the problem and who had before him in his
workshop the prior art, would have reasonably expected to use
the solution that is claimed by Appellants. However,
“[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention.” Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc. 721 F.2d 1551, 1553, 220 USPQ 311, 312-13. In addition,
our reviewing court requires the PTO to make specific findings
on a suggestion to combine prior art references. In re
Dembiczak, 175 F.3D 994, 1000-01, 50 USPQ2d 1614, 1617-19
(Fed. Cir. 1999).
Appeal No. 1999-2068
Application 08/650,038
Brief, pages 6-9.5
Column 1, line 56 through column 2, line 19.6
7
On pages 5 and 6 of the Appeal Brief (hereinafter
"brief"), Appellants assert that the Examiner does not provide
any indication of any suggestion or motivation to make the
modification and combination of the cited references from
within the references themselves, and the Examiner is not
entitled to rely on Appellants' disclosure or claims to
provide the necessary motivation to modify the teachings of
the prior art or to make a combination of the references.
In addition, Appellants argue that both Yano and5
Fujisawa teach away from the Examiner's proposed combination.
Firstly, as to Yano, Appellants assert that Yano discloses6
that the primary object of his invention is to provide a touch
screen device where switches are displayed directly on a touch
screen. Therefore, if one were to modify the teachings of
Yano and separate the activation switches from the display
screen, that would defeat the very object of Yano.
Secondly, as to Fujisawa, Appellants argue that the
Fujisawa system is taught to operate only when the vehicle is
Appeal No. 1999-2068
Application 08/650,038
Answer, page 4.7
8
not moving, whereas the Examiner's reasons for the combination
of the references requires that the vehicle be in motion.
In addition, Appellants assert that one skilled in the
art would not be motivated to place a touch screen device
forward of a steering wheel and on an instrument panel of the
vehicle, as the driver's access to the screen would be
hindered by the steering wheel, and the resulting system would
be awkward and most likely unsafe to utilize.
In the answer the Examiner admits that Yano does not7
disclose a display located forward of the steering wheel, a
plurality of switches located on the steering wheel for
selectively activating a feature group on the display, and
means located on the steering wheel for activating a feature
from the activated feature group on the display and for
adjusting a value of the activated feature. All of these
limitation are required by the pending claims. However, the
Examiner asserts that it would have been obvious to a person
of ordinary skill in this art at the time the invention was
made to have the switching means, as taught by Fujisawa, in
Appeal No. 1999-2068
Application 08/650,038
Answer, page 5.8
Answer, page 7.9
9
the apparatus of Yano because by having the switching means
located on the steering wheel of the automobile the driver has
the switching means closer, which minimizes the driver's
distraction from the road while trying to reach the switching
means.
The Examiner also finds it obvious to one of ordinary8
skill in the art to have the touch screen feature group
switches separate from the display device because it is
commonly known in the art to integrate or not circuit elements
into one integrated circuit in order to make the device more
or less compact, and by having the display on the front panel
of the vehicle, the driver does not have to distract the view
from the road.
Finally, the Examiner asserts that it is not necessary9
that the references actually suggest the changes or
improvements that Appellant has made, but that the test for
combining the references is what the references as a whole
would have suggested to one of ordinary skill in the art.
Appeal No. 1999-2068
Application 08/650,038
10
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d at, 1266 n.14, 23 USPQ2d at 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d at, 902, 221
USPQ at 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d at
1551, 1553, 220 USPQ at 311, 312-13. In addition, our
reviewing court requires the PTO to make specific findings on
a suggestion to combine prior art references. In re
Dembiczak, 175 F.3d at 1000-01, 50 USPQ2d at 1617-19 (Fed.
Cir. 1999).
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998).
Appeal No. 1999-2068
Application 08/650,038
11
Turning first to Appellants' claim 1, we first note that
the Examiner admits that Yano does not disclose the following
claim limitations: the display located forward of the steering
wheel; a plurality of switches located on the steering wheel
for selectively activating a feature group on the display; and
means located on the steering wheel for activating a feature
from the activated feature group on the display and for
adjusting a value of the activated feature group.
The Examiner has made multiple assertions of obviousness
in the rejection to allocate the components of the references
to provide these limitations. The first assertion is that it
would have been obvious to a person of ordinary skill in this
art at the time the invention was made to have the switching
means, as taught by Fujisawa, in the apparatus of Yano because
by having the switching means located on the steering wheel of
the automobile the driver has the switching means closer,
which minimizes the driver's distraction from the road while
trying to reach the switching means.
The second assertion is that it would have been obvious
to one of ordinary skill in the art to have the touch screen
feature group switches separate from the display device
Appeal No. 1999-2068
Application 08/650,038
12
because it is commonly known in the art to integrate or not
circuit elements into one integrated circuit in order to make
the device more or less compact, and by having the display on
the front
panel of the vehicle, the driver does not have to distract the
view from the road. These statements of obviousness are bald
assertions without evidentiary basis.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) the following:
Appeal No. 1999-2068
Application 08/650,038
Column 12, lines 45-50 and column 8, lines 40-52.10
13
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion
under Section 103. As adapted to ex parte
procedure, Graham is interpreted as continuing to
place the "burden of proof on the Patent Office
which requires it to produce the factual basis for
its rejection of an application under section 102
and 103". Citing In re Warner, 379 F.2d 1011,
1020, 154 USPQ 173, 177 (CCPA 1967).
In addition, one important indicium of non-obviousness is
"teaching away" from the claimed invention by the prior art.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532
(Fed. Cir. 1988), In re Bell, 991 F.2d 781, 784, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993). Here Fujisawa teaches away from
the reason proposed by the Examiner for the combination, as
the system operation unit of Fujisawa is disclosed to operate10
only when the vehicle is at a stop, in an idling state, or in
a park position. In fact, Fujisawa states "Since the driver
watches the display . . . steps 524, 526 are executed for
danger averting purposes only under conditions where the
Appeal No. 1999-2068
Application 08/650,038
14
engine is idling or where the select lever 60 is in a parked
state." As this system operates when the vehicle is not in
motion there is no concern of driver's distraction from the
road.
Therefore, we will not sustain the rejections of claims
1-14, 17, 19 and 20 under 35 U.S.C. § 103 as being
unpatentable over Yano in view of Fujisawa. Accordingly, the
Examiner's decision is reversed.
REVERSED
Appeal No. 1999-2068
Application 08/650,038
15
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
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