Ex Parte Rudelic et al

Board of Patent Appeals and Interferences

Dec 21, 2010

11220257 (B.P.A.I. Dec. 21, 2010)

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

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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

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Application 11/220,257

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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
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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:
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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
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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
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Application 11/220,257

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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
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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
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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