Ex Parte Rudelic et alDownload PDFBoard of Patent Appeals and InterferencesDec 21, 201011220257 (B.P.A.I. Dec. 21, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/220,257 09/06/2005 Joseph E. Rudelic 706939US1 4896 24938 7590 12/22/2010 Chrysler Group LLC CIMS 483-02-19 800 CHRYSLER DR EAST AUBURN HILLS, MI 48326-2757 EXAMINER BOES, TERENCE ART UNIT PAPER NUMBER 3656 MAIL DATE DELIVERY MODE 12/22/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOSEPH E. RUDELIC, WILLIAM E. DUTKA II, and CHRISTOPHER EANES ____________ Appeal 2009-009263 Application 11/220,257 Technology Center 3600 ____________ Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and STEFAN STAICOVICI, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009263 Application 11/220,257 2 STATEMENT OF THE CASE Joseph Rudelic et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 2, 3, 6, 8-10, 12, 13, 16, 17, 19 and 20 under § 103(a) as unpatentable over Nagatomo (JP 56-47822, published Apr. 30, 1981) (as translated) in view of Hasegawa (US 6,575,049 B1, issued Jun. 10, 2003). Claims 1, 4, 5, 7, 11, 14, 15, 18 and 21 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellants’ invention relates to a gear selection apparatus of a shift mechanism for a motor vehicle. Spec. [0001] and fig. 2. Claim 3 is representative of the claimed invention and reads as follows: 3. A shift mechanism for a vehicle, comprising: a shifter gate; a lever portion movable between two or more shift states; an engagement mechanism that selectively allows the lever portion to move between the two or more shift states, the engagement mechanism including a locking pin that cooperates with the shifter gate to selectively allow the lever portion to move between the two or more shift states; a rotatable knob that cooperates with the engagement mechanism such that the engagement mechanism allows the lever portion to move between the shift states when the rotatable knob is rotated in at least a first rotational direction: and Appeal 2009-009263 Application 11/220,257 3 wherein the engagement mechanism further includes a rod assembly that passes through the lever portion and a ramped element in cooperation with the rod assembly, and the locking pin extends away from the rod assembly in opposite directions. SUMMARY OF DECISION We AFFIRM. OPINION Appellants present essentially the same arguments with respect to the rejection of each of independent claims 3, 13 and 19 under 35 U.S.C. § 103(a) as unpatentable over Nagatomo and Hasegawa. See App. Br. 6 and Reply Br. 6-7. As such, the following analysis applies equally to each of independent claims 3, 13 and 19 rejected over the combined teachings of Nagatomo and Hasegawa. In view of Appellants’ arguments, we will address the rejection of claims 6, 10 and 20 separately. Claims 2, 3, 8, 9, 12, 13, 16, 17 and 19 Appellants argue that the proposed modification or combination of Nagatomo and Hasegawa would “change the principle of operation” of Nagatomo. App. Br. 7. Specifically, Appellants argue that modifying Nagatomo with a locking mechanism that extends in opposite directions as taught by Hasegawa “would prevent the locking pawl 22 from rotating to the left 180 degrees as required by Nagatomo to disengage the locking pawl 22 from the locking groove 12a of the shift plate.” App. Br. 7. We agree with the Examiner that “locking pawl 22 is not required to rotate (emphasis added) in order to disengage the locking pawl 22 from the Appeal 2009-009263 Application 11/220,257 4 locking groove 12a of the shift plate . . . Rather, locking pawl 22 merely undergoes a translational downward movement in order to disengage recesses 12a, 12b, or 12c.” Ans. 6-7. See also Nagatomo, p. 3, ll. 32-36, and figs. 3-5. Hence, since the locking pawl of Nagatomo undergoes translational downward movement to disengage from the locking groove, and does not rotate to disengage from the locking groove, as Appellants argue, we conclude that the combination of Nagatomo and Hasegawa would not change the principle of operation of Nagatomo. Moreover, we note that Appellants have not provided any evidence to show that the locking mechanism of Hasegawa is not capable of working with the device of Nagatomo. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants further argue that “one of ordinary skill in the art would not modify Nagatomo to include a locking pawl 22 that extends in opposite directions as there is no evidence or suggestion of such a configuration in Nagatomo.” App. Br. 7. As far as we understand, Appellants appear to argue that the rejection does not have any suggestion or motivation to modify the reference. However, this argument is foreclosed by KSR, in which the Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 418-19 (2007). The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellants also argue that: Appeal 2009-009263 Application 11/220,257 5 Figure 3 of Nagatomo appears to present an alternative embodiment not requiring rotation of the shift knob 20. Rather, in Figure 3, as clearly shown by the knob in phantom, the shift lever is depressed against the force of spring 13 to disengage locking pawl 22 from gate slot 12a. App. Br. 8. Emphasis added. At the outset, it appears as though Appellants have misinterpreted the embodiment presented in Figures 3-5 of Nagatomo. Like the Examiner, we find that when knob 20 of Nagatomo rotates, top stick 19a rotates axially downward, while at the same time, bottom stick 19b is depressed against the force of spring 13 and locking pawl 22 is removed, without rotating, from the locking recess 12a. Nagatomo, p. 3, ll. 6-7 and 32-36, and figs. 3-5. See also Ans. 9-10. As such, in contrast to Appellants’ position, the knob 20 of Nagatomo rotates in order to allow removal of locking pawl 20 from locking recess 12a. Lastly, Appellants argue that Nagatomo alone or in combination with Hasegawa fails to teach or suggest a ramped element that cooperates with a rod assembly or a rotatable knob having a ramped surface that cooperates with a ramped element. Reply Br. 4. Specifically, Appellants argue that engaging pin 27 of Nagatomo does not cooperate with rod assembly 19b but engages with top end stick 19a. Reply Br. 5. In response, the Examiner takes the position that rotatable knob 19a, 20 has a ramped surface 26 that cooperates with ramped element 27, which cooperates with rod assembly 19b. Ans. 4-5 and 10. We begin our analysis by construing the term “cooperate.” When construing claim terminology in the United States Patent and Trademark Appeal 2009-009263 Application 11/220,257 6 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). Appellants’ Specification does not expressly define the term “cooperate” or otherwise indicate that this term is used in a manner other than its ordinary and customary meaning. We construe the term “cooperate” in accordance with its ordinary and customary meaning and find that an ordinary and customary meaning of the term “cooperate” is “1 : to act or work with another or others: act together or in compliance.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th Ed. 2005). Since top stick 19a turns axially downward while guided by engaging pin 27 and engaging spiral recess 26 to press upon bottom stick 19b downward, we agree with the Examiner that Nagatomo discloses a rotatable knob 19a, 20 that has a ramped surface 26 that cooperates (works with) with ramped element 27, which cooperates (works with) with rod assembly 19b. Ans. 4-5 and 10. In conclusion, for the foregoing reasons, the rejection of independent claims 3, 13, and 19 under § 103(a) as unpatentable over Nagatomo and Hasegawa is sustained. Appellants do not present any additional arguments with respect to dependent claims 2, 8, 9, 12, 16, and 17. Accordingly, the rejection of dependent claims 2, 8, 9, 12, 16, and 17 is likewise sustained. Claim 6 With respect to claim 6, Appellants argue that Nagatomo does not disclose a guide portion proximate the locking pin and a tubular portion extending from the guide portion, as called for by claim 6. However, the Appeal 2009-009263 Application 11/220,257 7 Examiner found that Nagatomo discloses a guide portion extending through body 7 and a tubular portion extending from body 7 (guide portion) to a location proximate the ramped element 19a. Ans. 4-5. Appellants have not shown why the Examiner’s interpretation of Nagatomo does not satisfy the limitations of claim 6. Accordingly, the rejection of claim 6 is also sustained. Claim 10 Appellants argue that knob 20 of Nagatomo is not supported on cylinder 8, because “knob 20 is maintained in spaced relation to cylinder 8 and therefore does not contact cylinder 8.” Reply Br. 5. The Examiner takes the position that the knob of Nagatomo is rotatably supported on the lever portion. Ans. 5. Appellants’ Specification does not expressly define the term “supported” or otherwise indicate that this term is used in a manner other than its ordinary and customary meaning. We find that an ordinary and customary meaning of the term “supported” is “4 a : to hold up or serve as a foundation or prop for” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th Ed. 2005). Since, the lever portion 8 holds top stick 19a, which holds knob 20, it is our finding that lever portion 8 holds up, that is, supports, knob 20, as required by claim 10. Furthermore, we find Appellants’ interpretation of the term “supported” to mean “contact” to be overly narrow. See Reply Br. 5. It is well established that we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The challenge is to Appeal 2009-009263 Application 11/220,257 8 interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). In conclusion, we agree with the Examiner that the knob 20 of Nagatomo is rotatably supported (held up) on the lever portion 8. Ans. 5. As such, the rejection of claim 10 is likewise sustained. Claim 20 The Examiner found that knob 20 and top stick 19a of Nagatomo constitute a rotatable knob, as called for by claim 20. Ans. 4. Appellants argue that since knob 20 of Nagatomo is a separate and distinct element from top stick 19a and since top stick 19a has a recess that engages with pin 27, knob 20 of Nagatomo does not constitute a rotatable knob having a ramped surface that cooperates with a ramped element, as called for by claim 20. Reply Br. 6. Although we appreciate Appellants’ position that knob 20 and top stick 19a of Nagatomo are described as separate elements, nonetheless, because knob 20 is screwed onto top stick 19a and they rotate together, they constitute a single component, that is, they constitute a rotatable knob, as called for by claim 20. See Nagatomo, page 3, ll. 20-21 and 32-36 and fig. 5. Moreover, the use of the transitional phrase “includes” is inclusive or open-ended and does not exclude additional unrecited elements. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004). In conclusion, we agree with the Examiner that Nagatomo discloses a rotatable knob 19a, 20 as called for by claim 20. See Ans. 4. Accordingly, for the reasons Appeal 2009-009263 Application 11/220,257 9 discussed supra, the rejection of claim 20 over the combined teachings of Nagatomo and Hasegawa is sustained. DECISION The Examiner’s decision to reject claims 2, 3, 6, 8-10, 12, 13, 16, 17, 19 and 20 is affirmed. AFFIRMED mls CHRYSLER GROUP LLC CIMS 483-02-19 800 CHRYSLER DR EAST AUBURN HILLS, MI 48326-2757 Copy with citationCopy as parenthetical citation