Ex Parte REJ et al

Patent Trial and Appeal Board

Oct 31, 2018

14151963 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/151,963 01/10/2014
86397 7590 11/02/2018
Ford Global Technology LLC c/o Joseph E. Root
1809 Jones Cove Rd.
Clyde, NC 28721
FIRST NAMED INVENTOR
RICH REJ
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.
83401705 2558
EXAMINER
HONG, HENRY Y
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
ip _ docket@qualipat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICH REJ and KAREN SILER
Appeal2018-002218
Application 14/151,963
Technology Center 3700
Before EDWARD A. BROWN, JEFFREY A. STEPHENS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1--4. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Ford Global Technologies, LLC, which the
Appeal Brief identifies as the real party in interest. Appeal Br. 2.
Appeal2018-002218
Application 14/151,963
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "automatic transmission systems
in vehicles, and more specifically, to devices for positioning and installing of
automatic transmission shifters." Spec. ,r 1. Claim 1, reproduced below, is
the only independent claim.
1. A mechanism for locking a shifter of an automatic
transmission in a drive position prior to assembly in an
automotive vehicle having a shift lever carried in a shift gate
mounted in a shifter core, the mechanism comprising:
a locking aperture formed in the shift gate adjacent the
drive position of the shift lever, the locking aperture
extending across a travel path of the shifter; and
a locking pin, including:
an elongated portion, adapted to fit into the locking
aperture; and
a gripping portion adapted for facilitating manual
extraction;
wherein the locking pin is positioned to block the travel
path of the shift lever, preventing movement from the
drive position when the locking pin is inserted in the
locking aperture.
Appeal Br. 14 (Claims App.).
THE REJECTIONS
The Examiner referenced a rejection under 35 U.S.C. § 112, but no
such rejection appears in the Final Office Action or is further explained, and
we therefore do not consider any rejections under that statute on appeal. See
Final Act. 2-3 (referring to "as best understood in view of the 112 rejections
above" in anticipation rejections, with no § 112 rejections "above").
Appellant seeks review of the following rejections before us on appeal:
2
Appeal2018-002218
Application 14/151,963
1. Claims 1--4 under 35 U.S.C. § I02(a)(l) as anticipated by Hu. 2
2. Claims 1 and 2 under 35 U.S.C. § I02(a)(l) as anticipated by
Takikawa. 3
3. Claims 3 and 4 under 35 U.S.C § 103 as unpatentable over
Takikawa.
ANALYSIS
Hu
The Examiner found that Hu discloses all of the limitations of claim 1,
including finding that Ru's lock seat 3 discloses the claimed "locking pin"
and Ru's fastening seat 33 and ratcheting teeth 42 disclose the claimed
"elongated portion" of the "locking pin." Final Act. 2. The Examiner also
found that "multiple elements could read on a pin and aperture" and that
"any protrusion can read on" the claimed locking pin because all protrusions
will have an elongated portion and gripping portion. Adv. Act. 2 (mailed
June 1, 2016).
Appellant argues that Hu does not disclose a locking aperture formed
in a "shift gate," as that term is used in the specification, because Hu does
not disclose a shift gate. Appeal Br. 7. Appellant also argues that Ru's
2 U.S. Patent No. 5,778,710, issued July 14, 1998 ("Hu").
3 U.S. Patent Pub. No. 2008/0034913 Al, published Feb. 14, 2008
("Takikawa"). The rejection refers to claims 1, 2, and 4 as anticipated by
Takikawa, but claim 4 depends from claim 3, and the Examimer rejected
claim 3 under § 103 as obvoius over Takikawa. See Final Act. 3--4; Appeal
Br. 14--15 (Claims App.). Because the Examiner did not find that Takikawa
anticipates claim 3, the rejection of claim 4 should have been for
obviousness under § 103, and we treat it in that manner in this Decision.
Appellant does not address this discrepancy, or separately argue claim 3 or
claim 4 from claim 1.
3
Appeal2018-002218
Application 14/151,963
fastening seat 33 does not correspond to the claimed locking pin because it
does not extend into the shift gate and does not block the travel path of the
shifter because it travels with the shifter. Id. at 8.
We agree with Appellant that the Examiner's findings do not
adequately establish that Hu discloses all of the limitations of claim 1. More
specifically, non-specific references with respect to Ru's disclosure of the
claimed aperture and locking pin fail to inform us of the basis for the
Examiner's findings. The specific structures relied on to disclose these
limitations are important, because claim 1 requires these and other parts of
the claimed structure to interact in a specific manner-i.e., not any aperture
and pin will meet the claim requirements and remain capable of operating in
the claimed manner. Id. at 14 ( Claims App.) ( claim 1 requiring "a locking
aperture ... adjacent the drive position ... extending across a travel path of
the shifter; and a locking pin, including: an elongated portion, adapted to fit
into the locking aperture ... wherein the locking pin ... prevent[ s]
movement ... when the locking pin is inserted in the locking aperture").
As to the locking aperture, the finding refers to Ru's "aperture for
lock seat 3" but does not specify which potential aperture in lock seat 3
corresponds to the claimed aperture. See Final Act. 2. As to the locking pin,
the finding refers to the same Hu structure, "3," without specifying which
portion of lock seat 3 discloses the locking pin. Id. The Examiner's position
that virtually any opening can meet the "aperture" requirement and any
protrusion can meet the "pin" requirement adds to the confusion. See Adv.
Act. 2. In addition, the finding that fastening seat 33 and ratcheting teeth 42
disclose the claimed "elongated portion" of the "locking pin" lacks sufficient
explanation and support. Final Act. 2. Those structures arguably define a
4
Appeal2018-002218
Application 14/151,963
portion of a potential opening or aperture on lock seat 3, but by defining an
aperture they do not appear to "fit into the locking aperture" as the Examiner
found. Id. The Answer does not clear up the confusion, as it refers to Ru's
disclosure of the "locking aperture" and "locking pin" without referring to
any specific structure in Hu, by reference number, figure, or further
explanation. See Ans. 5.
Based on the foregoing, we do not sustain the rejection of claim 1, or
claims 2--4 that depend from claim 1, as anticipated by Hu.
Takikawa
The Examiner found that Takikawa discloses all of the limitations of
claim 1, and more specifically found that Takikawa's position hole 8
discloses the claimed "locking aperture" and position pin 24 discloses the
claimed "locking pin." Final Act. 3. The Examiner also found that
Takikawa's description of a different intended use does not establish that it
fails to disclose a structure capable of performing the claimed function.
Adv. Act. 2.
Appellant argues that Takikawa discloses position pin 24 between
upper rod 20 and lower rod 21, and that a button on the shifter engages those
rods with the lever body. Appeal Br. 9-10. Appellant further argues that
"Takikawa does not provide a description of how the shift mechanism
operates" but submits that "position pin 24 is not stationary but rather travels
with the lever." Id. at 11-12. According to Appellant, this position finds
support in the Background of Takikawa, which discloses a position pin 105
that travels with the lever in a prior art version of a shifter/pin arrangement.
Id. at 12 (citing Takikawa ,r,r 6-7). Appellant argues that Takikawa cannot
5
Appeal2018-002218
Application 14/151,963
disclose a pin that blocks lever movement if it cannot move independently of
the lever. Id.
In the Answer, the Examiner found that Takikawa's locking pin 24
blocks the travel path of the shift lever, relying on "regulators 9 [that] hold
[the] pin in position." Ans. 5. The Examiner agrees with Appellant that
position pin 24 "travels with the shift lever," but found that even though this
is so, "when the pin is held in position, the shift leve[ r] is also held in
position," and the claim does not prevent the locking pin from traveling with
the shift lever. Id.
Appellant has not apprised us of error in the Examiner's findings
regarding the anticipation of claim 1 by Takikawa. We agree with Appellant
that both Takikawa's preferred embodiment that employs position pin 24,
and the prior art embodiment Takikawa describes in the Background,
disclose position pins that travel with the shifter. See Appeal Br. 12 ( citing
Takikawa ,r 6). The position pins also prevent movement of the shifter when
the button on the shifter is not depressed by a user. See Takikawa ,r 6
("[W]hen the knob button (not shown) provided on the upper end of the
lever main unit 102 is pressed, ... the position pin 105 is moved
downwardly ... against a spring force."). We agree with the Examiner that
as long as Takikawa discloses a pin capable of being "positioned to block
the travel path of the shift lever" and therefore "preventing movement" of
the shift lever as claimed, it does not matter that in other configurations, with
the button depressed, the pin does not prevent the shifter from moving and
6
Appeal2018-002218
Application 14/151,963
moves with the shifter. See Ans. 5. 4 That is, the language of claim 1 does
not preclude those other configurations.
Based on the foregoing, we sustain the rejection of claim 1 as
anticipated by Takikawa. Appellant does not raise any additional arguments
with respect to the anticipation of claim 2 by Takikawa, or the obviousness
of claims 3 and 4 over Takikawa, and we therefore sustain the rejections of
those claims for the same reason as discussed above with respect to claim 1.
DECISION
We reverse the decision of the Examiner to reject claims 1--4 as
anticipated by Hu. We affirm the decision of the Examiner to reject claims 1
and 2 as anticipated by Takikawa and claims 3 and 4 as unpatentable over
Takikawa under 35 U.S.C. § 103.
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
4 Appellant does not address this point or the related findings made in the
Answer, and has not apprised us of error in those findings.
7