Ex Parte Salter et alDownload PDFPatent Trials and Appeals BoardMay 23, 201915184602 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/184,602 06/16/2016 121691 7590 05/28/2019 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 FIRST NAMED INVENTOR Stuart C. Salter 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. 83658035 1237 EXAMINER BEE, ANDREW W. ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): uspto@iplawl.net laura@iplawl.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte STUART C. SALTER, CORNEL LEWIS GARDNER, PAUL KENNETH DELLOCK, and THOMAS F. BOETTGER Appeal 2018-0081 78 Application 15/184,602 1 Technology Center 2600 Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1 and 6-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Ford Global Technologies, LLC. App. Br. 3. Appeal 2018-0081 78 Application 15/184,602 Disclosed Invention and Exemplary Claim The disclosed invention relates to a device for indicating lock status of a motor vehicle door. Abstract. The device includes a door lock status indicator carried on a window of the motor vehicle door. Abstract. The indicator may include luminescent markers excited by a light source so as to change the markers from an invisible to a visible state. Spec. ,i 6. Additionally, such indicators may be used on a window of the motor vehicle to indicate tum signal or blind spot information. Abstract. Independent claims 1 and 11 are argued separately, and are exemplary of the disclosed invention. Independent claim 1 reads as follows: A device for indicating lock status of a motor vehicle door, compnsmg: a door lock status indicator carried on a window of said motor vehicle door; a first luminescent marker having an invisible state and a visible state; and a first light source configured to project excitation light upon said first luminescent marker and change said first luminescent marker from said invisible state to said visible state wherein said first light source is selected from a first group consisting of a UV light source and an IR light source. Independent claim 11 reads as follows: A window for a motor vehicle, comprising: a window body; and a plurality of indicators carried on said window body including a luminescent door lock status indicator and at least one of a luminescent tum signal indicator and a luminescent blind spot indicator, wherein the at least one of a luminescent tum signal indicator and a luminescent blind spot indicator are visible from an interior and an exterior of the motor vehicle. 2 Appeal 2018-0081 78 Application 15/184,602 Dependent claims 6-10 and 12-19 each incorporate the limitations of their respective independent claims, and are not argued separately by Appellants. Accordingly, we select claims 1 and 11 as representative per 37 C.F.R. § 41.37(c)(iv). Examiner's Rejection The Examiner rejects claims 1 and 6-19 under 35 U.S.C. § 103 as being obvious over the combination of Gardner et al. (U.S. 5,698,906, issued Dec. 16, 1997) (hereinafter Gardner) and Szczerba et al. (U.S. 2010/0253493 Al, published Oct. 7, 2010) (hereinafter Szczerba). ANALYSIS We have reviewed the Examiner's rejections (Final Act. 2-8) in light of Appellants' contentions that the Examiner has erred (App. Br. 9-14). Further, we have reviewed the Examiner's response to Appellants' contentions (Ans. 2-4) and Appellants' Reply Brief. We are not persuaded by Appellants' arguments of error in the Examiner's rejection. Appellants argue the Examiner erred in rejecting claims 1 and 6-19 under 35 U.S.C. § 103 as being obvious over the combination of Gardner and Szczerba for failing to teach or suggest the claimed invention. App. Br. 9. Appellants argue for claim 1 whether the references teach a luminescent marker having an "invisible" state as claimed, and whether the Examiner has set forth a proper rationale for combining those references. App. Br. 9-13. Appellants argue for claim 11 whether the references teach both a door lock status indicator and either a tum signal or a blind spot indicator as claimed, and whether the Examiner has set forth a proper rationale for combining those references. App. Br. 13-14. 3 Appeal 2018-0081 78 Application 15/184,602 With respect to the limitation at issue in claim 1, the Examiner finds Gardner to teach or suggest a marker having an invisible state and a visible state, although made through diffractive material rather than a luminescent material as claimed. Final Act. 3. The Examiner finds Szczerba to teach a display that can be visible and invisible through the use of luminescent material, although not in a discrete marker as claimed. Id. Appellants first contend that the markers of Gardner are decals attached to the window surface, and as such are not invisible despite being transparent. App. Br. 11. Appellants cite Gardner as teaching "nearly invisible" decals, not "invisible" markers. Id. We do not find Appellants' argument persuasive for two reasons. First, although Appellants attempt to distinguish the markers of Gardner as not "invisible," Appellants have not construed the claim term "invisible" in light of the Specification as would be understood by one having ordinary skill in the art. The Specification uses the term "invisible" in the sense that the markers "comprise inks that are invisible when subjected to visible light." Spec. ,-J 22. Appellants admit that the markers of Gardner are transparent (to visible light), but not invisible in the sense that they are decals attached to a window surface that would be visible. Reply Br. 2. However, consistent with the Examiner's discussion (Ans. 2), we determine that since it is uncontested that Gardner's markers are transparent to visible light, they are "invisible" as one having ordinary skill would understand the term in light of the Specification. Second, it is well established that one cannot show obviousness by attacking references individually where the rejections are based on 4 Appeal 2018-0081 78 Application 15/184,602 combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). In the rejection, the Examiner substitutes the luminescent material of Szczerba for the decals of Gardner. Final Act. 3. In Szczerba, the luminescent material is embedded within the window itself, and is transparent until illuminated with excitation light. Szczerba ,i 57 ( cited at Final Act. 3). To the extent that Appellants argue only the potentially non-invisible features of the decal of Gardner, and not the relied-upon features of Szczerba, Appellants are not addressing the Examiner's combination based on the teachings or suggestions of both Gardner and Szczerba. Accordingly, we do not find Appellants' contention persuasive. Appellants next argue that the rejection "fails to provide any reason based on a rational underpinning for combining the references." App. Br. 11. Appellants argue that "there is no direct teaching in either reference to make the proposed combination," because, inter alia, Szczerba does not contemplate a door lock status indication and Gardner is silent regarding the use of luminescent markers. Id. at 12. Appellants further argue that such a combination would change the principle of operation of Gardner, requiring a complete redesign. Id. at 13. Appellants conclude that the only motivation for combining the references is that improperly derived from hindsight as directed by Appellants' disclosure. Id. at 12. We address each of these in tum. With respect to the rationale to combine, the Examiner states that the rejection relies upon "KSR rationale and additional teachings of benefits of luminescent material in Szczerba." Ans. 3. We concur. The Examiner provides reasoned analysis in the rejection. Final Act. 4. The Examiner 5 Appeal 2018-0081 78 Application 15/184,602 states, "the motivation is because, as shown in Szczerba, luminescent material is known in the art of displaying information on a window, and thus is a reasonable substitution for the diffractive material, since it would have the predictable result of still providing information that is selectively visible or invisible on the window (Szczerba, [0004] and [0006])." Final Act. 4. Here, we understand the Examiner's explanation to rely on the KSR rationale of"[ s ]imp le substitution of one known element for another to obtain predictable results" in accordance with examination procedure. MPEP § § 2141 (III) ( summarizing permissible rationales under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)), 2143(I)(B) (collecting cases). Further, the Examiner states that Szczerba teaches the luminescent material provides for a more transparent window with more versatility in the display, including display on more portions of the window, providing further explanation as to the rationale for combining the references. Final Act. 4. Accordingly, we are not persuaded that the Examiner failed to present any reasoned underpinning to combine the references. Appellants' argument that the rationale to combine is not based upon direct teachings in either reference is not persuasive, because the Court in KSR rejected any requirement of "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." KSR, 550 U.S. at 418. The Examiner's rationale is in accordance with the principle that "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a 6 Appeal 2018-0081 78 Application 15/184,602 predictable result." Id. at 416 (citing United States v. Adams, 383 U.S. 39 (1966)). Appellants' argument that the principle of operation of Gardner would be changed so as to require a complete redesign is not persuasive, citing In re Ratti, 270 F.2d 810 (CCPA 1959). However, Appellants have not identified any particular change in the principle of operation of Gardner that would be required through combination with the teachings or suggestions of Sczcerba. Instead, Appellants admit that the proposed combination is still directed to causing a marker to be illuminated. Reply Br. 3. The remainder of Appellants' argument is that, under the Examiner's combination, a number of elements of Gardner would need to be replaced and redesign would be necessary. Reply Br. 2-3. However, the test for obviousness is "not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference," but instead "what the combined teachings of the references would have suggested to those of ordinary skill in the art"). In re Keller, 642 F.2d at 425. As discussed, infra, the Examiner has provided a reasoned rationale for what the combined teachings of the references would have suggested. Accordingly, Appellants' argument is not persuasive. Furthermore, for the reasons discussed, infra, we conclude that the Examiner's rationale for combining the references is not based solely from hindsight reconstruction based upon Appellants' disclosure. Accordingly, Appellants have not shown that the Examiner erred in rejecting claim 1. Since Appellants rely on the identical argument for claims 6-10 and 18-19, Appellants have not shown that the Examiner erred in rejecting those claims as well. See 37 C.F.R. § 41.37(c)(l)(iv). 7 Appeal 2018-0081 78 Application 15/184,602 With respect to claim 11, Appellants argue that neither reference discloses both a luminescent door lock status indicator and a luminescent tum signal indicator or a luminescent blind spot indicator. App. Br. 14. Appellants argue that the images of Szczerba are not visible to the exterior of the vehicle as required by claim 11. Id. Appellants further argue that the Examiner has not provided an articulated reason for combining the references that would lead a skilled artisan to arrive at the claimed invention. Id. Appellants' first argument, that neither reference, by itself, discloses all of the limitations of claim 11, is not persuasive because, as discussed infra, the test for obviousness is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." Here, the rejection is based upon the combined teachings or suggestions of both Gardner and Szczerba. Accordingly, Appellants have not shown persuasively that the combination of Gardner and Szczerba fails to teach or suggest all of the limitations of claim 11. Appellants' second argument is also not persuasive. Appellants contend that the combination of references does not teach or suggest indicators that are visible from the exterior of the vehicle. App. Br. 14. Appellants state that in Szczerba, the light emitting material at the substrate positioned on the windshield emits visible light such that images may be created at the substrate and object 12 through the substrate, which are visible to the driver. Id. ( citing Szczerba Fig. 2, ,-J 56). The Examiner determines that these images would also be visible from the outside because the windshield is transparent. Ans. 4. We additionally note that the luminescent material of Szczerba may be "dispersed throughout substrate 14," which is a 8 Appeal 2018-0081 78 Application 15/184,602 transparent substrate. Szczerba ,i,i 56, 74. For the above reasons, we are not persuaded of error in the Examiner's determination. Appellants' third argument, that the Examiner has not provided an articulated reason for combining the references, is also not persuasive for reasons discussed infra at 5-6. As discussed, the Examiner has provided reasoning, using facts to support rationales for combining the references. Final Act. 4. Accordingly, Appellants have not persuasively shown that the Examiner has not articulated a reason to combine the references. Accordingly, Appellants have not shown that the Examiner erred in rejecting claim 11. Since Appellants rely on the identical argument for claims 12-17, Appellants have not shown that the Examiner erred in rejecting those claims as well. See 37 C.F.R. § 41.37(c)(l)(iv). CONCLUSION We conclude that Appellants have not shown that the Examiner has erred in rejecting independent representative claims 1 and 11 under 35 U.S.C. § 103 as being obvious over the combination of Gardner and Szczerba. Accordingly, we sustain the Examiner's obviousness rejection of claims 1 and 11, and respective dependent claims 6-10 and 12-19 grouped therewith. DECISION We AFFIRM the Examiner's rejection of claims 1 and 6-19 under 35 U.S.C. § 103. 9 Appeal 2018-0081 78 Application 15/184,602 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation