Ex Parte Ringger et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10960665 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KURT A. RINGGER, MATTHEW W. HORMANN, MARK A.
THURBER, MARY MC. WESLER, and JOHN F. ROTZ
____________

Appeal 2008-006085
Application 10/960,665
Technology Center 3600
____________

Decided: 1 June 2, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006085
Application 10/960,665

2
STATEMENT OF THE CASE
Kurt A. Ringger et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-30. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b) (2002).

THE INVENTION
The Appellants’ invention is drawn towards a steering wheel 20 for a
vehicle including a central hub 22, a circular rim 24, and spokes 26, 28, 30,
and 32 for joining the rim 24 to the hub 22. Specification 5, ¶ [0023] and
fig. 2. On the right hemisphere of the steering wheel 20 a module 36
includes a mode selection switch 62 for selecting between a manual
operating mode and an automatic mode for the transmission, an upshift
command switch 58 for upshifting the transmission, and a downshift
command switch 60 for downshifting the transmission. Specification 5, ¶¶
[0024] and [0032] and fig. 2.
Claim 17 is representative of the claimed invention and reads as
follows:
17. A steering wheel that has an axis of turning for steering a
motor vehicle that has an engine, a drivetrain, a
transmission that provides different gear ratios for
coupling the engine to the drivetrain, and a transmission
controller that in an automatic mode automatically shifts
the transmission from one gear ratio to another in
response to changing vehicle torque requirements and in
a manual mode shifts the transmission from one gear
ratio to another in response to manual actuation of a shift
command device, the steering wheel comprising:

Appeal 2008-006085
Application 10/960,665

3
a module that contains both the shift command device
and a mode selection device for selecting between the
automatic and manual modes.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gillbrand US 5,335,743 Aug. 9, 1994
Ishii US 6,053,066 Apr. 25, 2000
Menig US 6,151,977 Nov. 28, 2000
Leng US 2001/0002646 A1 Jun. 7, 2001
Yoshitake US 6,626,062 B1 Sep. 30, 2003
Yoshikawa US 6,948,399 B2 Sep. 27, 2005
Merriam-Webster Online Dictionary, available at http://www.m-
w.com/cqi-bin/dictionary?book=Dictionary&va=module

The following rejections are before us for review:
The Examiner rejected claims 1-3, 7-9, 12, 17-182, 25, and 29 under
35 U.S.C. § 103(a) as unpatentable over Menig in view of Yoshikawa.
The Examiner rejected claims 4-6 and 19-21 under 35 U.S.C. § 103(a)
as unpatentable over Menig in view of Yoshikawa and Gillbrand.
The Examiner rejected claims 10-11, 13-16, 22-24, and 26-28 under
35 U.S.C. § 103(a) as unpatentable over Menig in view of Yoshikawa, Ishii,
and Gillbrand.
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Menig in view of Yoshikawa and Yoshitake.

2 Although claim 18 does not appear in the stated ground of rejection,
the Examiner refers to it in the body of the rejection. Ans. 3-4. We consider
this omission of claim 18 from the stated ground of rejection to be a
typographical error on the part of the Examiner.
Appeal 2008-006085
Application 10/960,665

4

THE ISSUES
1. Have the Appellants demonstrated that the Examiner erred in
determining that the combined teachings of Menig and
Yoshikawa would have prompted a person of ordinary skill in
the art to provide a mode selection device and a shift command
device on the steering wheel of Menig?
2. Have the Appellants demonstrated that the Examiner erred in
determining that the combined teachings of Menig and
Yoshikawa disclose a “module” holding a mode selection
device and a shift command device? The issue turns on
whether the Examiner’s interpretation of the term “module” is
unreasonably broad.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Menig discloses a shift control lever 20 including a steering
wheel coupling end 102 for coupling to the steering wheel
column 92 and a free end 104. Menig, col. 4, ll. 16-20 and fig.
4.
Appeal 2008-006085
Application 10/960,665

5
2. Menig further discloses multiple controls located on the control
lever 20 including a manual/automatic transmission selector
switch 106 (mode selection device) for selecting manual or
automatic transmission shifting and a transmission mode
selector switch slide 112 which corresponds to gears settings of
Park (P), Reverse (R), Neutral (N), Drive (D) normal or high,
and Drive Low (L). Menig, col. 5, ll. 21-23 and 42-59 and fig.
4.
3. Menig also discloses that when pulling or pushing the shift
control lever 20 towards or away from the driver, the
transmission upshifts or downshifts, respectively, by one gear.
Menig, col. 6, ll. 16-28 and fig. 3.
4. The position of the control lever 20 is within “nominal fingertip
reach of the driver’s right hand” such that the controls are easily
accessible by the driver. Menig, col. 4, ll. 33-37.
5. Yoshikawa discloses a steering wheel 5 including a wheel ring
5a, a horn pad 5b, first and second horizontal bracing spokes 6
and 7, and a vertical bracing spoke 8. Yoshikawa, col. 3, ll. 26-
31 and fig. 1B.
6. Yoshikawa further discloses a gearshift device (shift command
device) including two shift-down switches 23 and two shift-up
switches 25 which are installed to the first and second
horizontal spokes 6 and 7 of the steering wheel 5. Yoshikawa,
col. 3, ll. 50-61 and fig. 1B.
7. Yoshikawa also discloses the desirability of placing a manual
gearshifting device on the steering wheel of a vehicle so as to
Appeal 2008-006085
Application 10/960,665

6
enable drivers to shift gears without removing their hands from
the steering wheel. Yoshikawa, col. 1, ll. 32-35. By making
the manual gearshifting device accessible to the driver’s fingers
while the driver is using the steering wheel, the placement in
Yoshikawa is user-friendly. Yoshikawa, col. 6, ll. 38-42.
8. The shift-down switches 23 and the shift-up switches 25 of
Yoshikawa are positioned on the respective circumferential
sides of audio switches 21. Yoshikawa, fig. 1B.
9. An ordinary and customary meaning of the term “pod” is a
“protective container or housing.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY 897 (Tenth Ed. 1997).

PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

Obviousness
It is elementary that to support an obviousness rejection “[a]ll words
in a claim must be considered in judging the patentability of that claim
against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Appeal 2008-006085
Application 10/960,665

7
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")

OPINION
Issue (1)
Claims 1-3 and 7
The Appellants argue claims 1-3 and 7 together as a group. App. Br.
11. Claims 4-6 depend directly or indirectly from claim 1 and are not argued
separate from claim 1. App. Br. 13. As such, we select claim 1 as the
representative claim, and claims 2-7 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii)(2008).
The Appellants argue that the lever 20 of Menig which controls
certain functions of a vehicle’s transmission is not located on the steering
wheel of the vehicle, as required by claim 1. Further, the Appellants argue
that the Examiner erred in interpreting the disclosure of Yoshikawa.
Appeal 2008-006085
Application 10/960,665

8
Pointing to the Final Rejection at 3 (mailed Jun. 20, 2007), the Appellants
note that the Examiner erred in determining that
Yoshikawa [understood as Yoshikawa et al.]
discloses a manual gearshift device for an
automatic transmission wherein a mode selection
device for shifting the transmission is disposed on
the steering wheel..etc.
App. Br. 10.
According to the Appellants, the steering wheel of Yoshikawa does
not include a mode selection device for switching between the first and
second modes, where the first mode is automatic transmission shifting and
the second mode is manual transmission shifting. App. Br. 10-11. The
Appellants argue that because the Examiner erred in the interpretation of the
disclosure of Yoshikawa, the Examiner’s conclusion of obviousness based
on the combined teachings of Menig and Yoshikawa is flawed. App. Br. 11.
At the outset, we agree with the Examiner (Ans. 13) that the
Appellants’ arguments appear to attack the teachings of Menig and
Yoshikawa individually, rather than the combination of Menig and
Yoshikawa. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
In this case, we find that Menig discloses a shift control lever 20 for a
vehicle that has multiple controls located thereon including a
manual/automatic transmission selector switch 106 (mode selection device)
for selecting manual or automatic transmission shifting and a transmission
mode selector switch slide 112, and which can also be used to upshift or
Appeal 2008-006085
Application 10/960,665

9
downshift the transmission of the vehicle. FF 1-3. However, as the
Examiner points out, although Menig discloses that the lever 20 is coupled
to the steering column (see FF 1), Menig does not disclose placing the
transmission control switches on the steering wheel. Yoshikawa discloses a
gearshift device (shift command device) including two shift-down switches
23 and two shift-up switches 25 which are installed to the first and second
horizontal bracing spokes 6 and 7 of the steering wheel 5. FF 5 and 6.
Yoshikawa further discloses the desirability of placing the gearshifting
switches 23, 25 on the steering wheel of a vehicle so as to enable drivers to
shift gears without removing their hands from the steering wheel. FF 7.
Moreover, Yoshikawa specifically discloses the desirability of placing the
gearshifting switches 23, 25 (shift command device) on the steering wheel in
order to permit easy access to the driver’s fingers while the driver is using
the steering wheel. Id. Similarly, we note that Menig also discloses the
desirability of placing the control lever 20 within “nominal fingertip reach of
the driver’s right hand” such that the controls are easily accessible by the
driver. FF 4. Hence, both Menig and Yoshikawa disclose the desirability of
having transmission controls (the automatic/manual transmission selector
switch of 106 Menig and the gearshifting switches 23, 25 of Yoshikawa),
i.e., the mode selection device and the shift command device, near the
fingers of the driver. A person of ordinary skill in the art would have
immediately appreciated that positioning all the transmission controls on the
steering wheel would provide easy access for the drivers such as to enable
the drivers to change transmission modes and shift gears without removing
their hands from the steering wheel.
Appeal 2008-006085
Application 10/960,665

10
As such, in view of the teachings of Yoshikawa of placing
transmission controls on the steering wheel, we find that modifying the
steering wheel of Menig to include all the transmission controls of control
lever 20 would not have been uniquely challenging to a person of ordinary
skill in the art, because it is no more than “the mere application of a known
technique to a piece of prior art ready for the improvement.” KSR Int'l. Co.
v. Teleflex lnc., 550 U.S. 398, 417 (2007). Therefore, the modification
appears to be the product not of innovation but of ordinary skill and common
sense. Moreover, the Appellants have not alleged, much less shown, that the
modification of the steering wheel of Menig to provide an automatic/manual
transmission selector switch and gearshifting switches on the steering wheel
would have been beyond the skill of a person of ordinary skill in the art. In
conclusion, we agree with the Examiner that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to have modified Menig by
placing all of the controls that are disposed upon the shift
control lever (Element 20) of Menig upon the same semi-
circumference of a steering wheel, in view of the teachings of
Yoshikawa, which as discussed above and shown in the
reference shows the use of controls mounted on the same semi-
circumference of the steering wheel. The motivation for making
this modification would have been to create a device wherein
the driver could not only shift gears on the transmission but also
additionally conveniently choose between a manual mode or an
automatic mode so that the driver could adapt to various
suitable driving styles without taking his or her hands off the
steering wheel, so as to ensure that the driver has the best
possible control over the vehicle.
Ans. 5-6.
Appeal 2008-006085
Application 10/960,665

11
The Appellants further argue that because the transmission selection
device (for selecting between automatic and manual transmission) in
Yoshikawa is a floor mounted shift lever and not a steering wheel mounted
device, as required by the claimed invention, Yoshikawa in fact teaches
away from placing a transmission selection device on its steering wheel, as
suggested by the Examiner. Reply Br. 3. See also Ans. 5-6. We find the
Appellants’ argument unpersuasive for the following reasons. The
Appellants have not pointed to any disclosure in Menig that would suggest
to a person of ordinary skill in the art that the automatic/manual transmission
selection switch 106 cannot be placed on the steering wheel. Further, Menig
specifically discloses positioning the automatic/manual transmission
selection switch on the control lever 20. Simply that there are differences
between two references is insufficient to establish that such references
"teach away" from any combination thereof. See In re Beattie, 974 F.2d
1309, 1312-13 (Fed. Cir. 1992). We note that the Examiner used the
disclosure of Yoshikawa to merely show the desirability of placing
transmission controls on the steering wheel such as to enable the driver to
use the transmission controls without letting go of the steering wheel while
driving. Ans. 12-13. As noted above, the automatic/manual transmission
selector switch 106 is disclosed in Menig. FF 2.
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 1, and claims 2-7, standing or
falling with claim 1. Therefore, the rejection of claim 1, and claims 2-7,
standing or falling with claim 1 is sustained.

Appeal 2008-006085
Application 10/960,665

12
Claims 8-11
Claims 9-11 depend directly or indirectly from claim 8 and are not
argued separately. App. Br. 11 and 13. Hence, claims 9-11 stand or fall
together with claim 8.
The Appellants argue that although the switches 23, 25 of Yoshikawa
are circumferentially apart, because Yoshikawa does not disclose an
automatic/manual transmission selection switch on the steering wheel it
would not have been obvious to a person of ordinary skill in the art to
position the transmission upshift and downshift switches to respective
circumferential sides of the automatic/manual transmission selection switch,
as required by claim 8. App. Br. 11. See also Reply Br. 4.
Once more, the Appellants appear to argue against the references
individually rather than the combination of Menig and Yoshikawa. There
are a finite number of alternatives for the positioning of the
manual/automatic transmission selector switch on the steering wheel of
Menig and Yoshikawa, namely circumferentially counterclockwise from the
shift-down switch, circumferentially between the shift-down switch and
shift-up switch, and circumferentially clockwise from the shift-up switch 25.
When there is a design need or market
pressure to solve a problem and there are a
finite number of identified, predictable
solutions, a person of ordinary skill has good
reason to pursue the known options within his
or her technical grasp. If this leads to the
anticipated success, it is likely the product not
of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show
that it was obvious under §103.

Appeal 2008-006085
Application 10/960,665

13
KSR, 550 U.S. at 421.
Accordingly, the selection of any of these arrangements appears to be
the product not of innovation but of ordinary skill and common sense.
Furthermore, the Appellants have not alleged, much less shown, that the
positioning of the manual/automatic transmission selector switch between
transmission upshift and downshift switches, would be uniquely challenging
or beyond the technical grasp of a person of ordinary skill in the art. Lastly,
we note that Yoshikawa specifically discloses shift-down switches 23 and
shift-up switches 25 located on the steering wheel 5 on the respective
circumferential sides of separate (audio) switches 21. FF 6 and 8. Hence,
we agree with the Examiner that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have modified Menig, such
that the upshift and downshift commands were disposed to
respective circumferential sides of the mode selection device,
wherein the mode selection device would be located at a
location similar to the location of the outer audio switch
presented as element 21 in Yoshikawa, so as to ensure that this
switch in addition to the shift command switches, was also
easily accessed by a driver's finger, so that a driver could easily
switch between modes as desired, to facilitate improved control
over the transmission of the vehicle, which is desirable on
uneven terrain, if the driver decides it would be beneficial to
switch into manual mode for the purposes of selecting and
holding a lower gear, which could provide both: safer descents
while traveling down hills and also facilitate better acceleration
while going up steep grades or pulling heavy loads. Placement
at this location also advantageously facilitates the driver
making a simple change into the automatic mode, in the event
that the driver would preferably utilize the transmission in
automatic mode, for the purpose of greater ease and/or
convenience.
Ans. 14-15.
Appeal 2008-006085
Application 10/960,665

14
For the foregoing reasons, the Appellants’ arguments do not persuade
us the Examiner erred in rejecting claims 8-11. Therefore, the rejection of
claims 8-11 is sustained.
Issue (2)
The Appellants argue that Yoshikawa fails to disclose a module
including a mode selection device (manual/automatic transmission selector
switch) and a shift command device (shift-up and shift-down switches).
App. Br. 11-12. Pointing to the Merriam-Webster Online Dictionary
definition of the term “module,” the Examiner responds that “module” is
interpreted to mean “the portion of the steering wheel, wherein the controls
are located on the wheel.” Ans. 17. The Examiner goes on to state that the
shift control lever 20 of Menig constitutes a “module” and the portion of the
steering wheel of Yoshikawa where the various controls are positioned
likewise constitutes a “module.” Id. Therefore, according to the Examiner,
when the mode selection device of Menig is
modified in view of Yoshikawa, it is at a minimum
incorporated to form at least a usually packaged
functional assembly of electronic components for
use with other such assemblies. Thus the
limitations of claim 12 are met by the combination.
Id.
We read claim language in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In this case, although the
Appellants’ Specification does not provide an explicit definition of the term
“module,” we note that on Page 6 of the Specification the Appellants refer to
the switch “modules” 36, 38 as “pods.” An ordinary and customary
meaning of the term “pod” is a “protective container or housing.” FF 9.
Appeal 2008-006085
Application 10/960,665

15
Further, claim 12 specifically requires that “the mode selection device and
the shift command device are disposed in a module.” Emphasis added.
Similarly, claim 17 requires a “module that contains both the shift command
device and a mode selection device.” Emphasis added. Hence, a person of
ordinary skill in the art would have reasonably understood from the explicit
language of claims 12 and 17 and the Appellants’ Specification that the
mode selection device and the shift command device are contained or
disposed within a protective housing, namely, a “module.” To read the term
“module” as simply a “portion of the steering wheel, wherein the controls
are located on the wheel,” as the Examiner would have us do, would in
essence read out the limitation of a “module” from claims 12 and 17 because
the steering wheel would constitute the claimed “module.” Claims are
construed with an eye toward giving effect to all terms in the claim. Bicon
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See also Stumbo
v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions which render phrases in claims
superfluous). As such, we agree with the Appellants that the combined
teachings of Menig and Yoshikawa fail to disclose a steering wheel having a
“module” containing both the shift command device and the mode selection
device. In conclusion, we will not sustain the rejection of claims 12 and 17,
or their dependent claims 18, 25, and 29. See In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35
U.S.C. § 103, then any claim dependent therefrom is nonobvious).
Appeal 2008-006085
Application 10/960,665

16
With respect to claims 13-163, 22-24, and 26-28, we find that the
application of Ishii and Gillbrand does not make up for the deficiency in the
combined teachings of Menig and Yoshikawa as discussed above. Hence,
the rejection under 35 U.S.C. § 103(a) of claims 13-16, 22-24, and 26-28 as
unpatentable over Menig, Yoshikawa, Ishii, and Gillbrand is likewise
reversed.
Regarding claims 19-21, we find that the application of Gillbrand
does not make up for the deficiency in the combined teachings of Menig and
Yoshikawa as discussed above. Hence, the rejection under 35 U.S.C.
§ 103(a) of claims 19-21 as unpatentable over Menig, Yoshikawa, and
Gillbrand likewise cannot be sustained.
Finally, with respect to claim 30, we find that the application of
Yoshitake does not make up for the deficiency in the combined teachings of
Menig and Yoshikawa as discussed above. Hence, the rejection under 35
U.S.C. § 103(a) of claim 30 as unpatentable over Menig, Yoshikawa, and
Yoshitake is likewise reversed.

CONCLUSIONS
1. The Appellants have failed to demonstrate that the Examiner erred
in determining that the combined teachings of Menig and
Yoshikawa would have prompted a person of ordinary skill in the
art to provide a mode selection device and a shift command device
on the steering wheel of Menig.

3 Although claim 16 depends from claim 11, we note that it includes the
limitation of a “module.” As such, for the purpose of this appeal we have
grouped claim 16 with claim 12. We note, however, that as drafted, the
limitation “the module” in claim 16 lacks antecedent basis.
Appeal 2008-006085
Application 10/960,665

17
2. The Appellants have demonstrated that the Examiner erred in
determining that the combined teachings of Menig and Yoshikawa
disclose a “module” holding a mode selection device and a shift
command device.

SUMMARY
The Examiner’s decision is affirmed as to claims 1-11 and reversed as
to claims 12-30.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

LV:

INTERNATIONAL TRUCK INTELLECTUAL PROPERTY COMPANY,
4201 WINFIELD ROAD
WARRENVILLE, IL 60555