Ex Parte Samie

Patent Trial and Appeal Board

Mar 24, 2014

11436313 (P.T.A.B. Mar. 24, 2014)

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.
11/436,313 05/18/2006 Farzad Samie GP-304135-RD-KAM 7860
65798 7590 03/24/2014
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
NGUYEN, CHUONG P
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
03/24/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FARZAD SAMIE
____________________

Appeal 2011-009120
Application 11/436,313
Technology Center 3600
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 6, 7, 9, 11, 21, 23, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is representative of the
claimed subject matter and reads:
1. A system for adjusting the shift pattern of a
vehicle depending on the weight of a trailer that
the vehicle is towing, said system comprising:
a device configured to indicate the weight of
the trailer, said device configured to provide a
weight signal, wherein the device is an operator
switch that is configured to be activated by a
vehicle operator, said operator switch configured
to be selectively activated to identify the weight of
the trailer; and
a controller responsive to the weight signal,
said controller varying the shift pattern of a
transmission of the vehicle depending on the
weight of the trailer.

REJECTIONS
I. Claims 1, 3, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Admission of Prior Art (hereinafter “APA”) and Gutierrez
(US 7,430,491 B2; iss. Sep. 30, 2008). Ans. 3.
II. Claims 6, 11, 21, and 25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over APA, Gutierrez, and Uken (US 2006/0155447 A1; pub.
Jul. 13, 2006). Ans. 6, 8.
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III. Claims 1, 3 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirstein (US 4,850,249; iss. Jul. 25, 1989) and Gutierrez.
Ans. 3.
IV. Claims 6, 11, 21, and 25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kirstein, Gutierrez, and Uken. Ans. 6, 8.
V. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kirstein, Gutierrez, and Sugawara (JP 10138795; pub. May 20, 1998).
Ans. 7.
VI. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kirstein, Gutierrez, Uken, and Sugawara. Ans. 11.

ANALYSIS
Rejection I – APA and Gutierrez
As to claim 1, the Examiner found that APA discloses “a controller
(i.e. a switch) responsive to the weight signal, the controller varying the shift
pattern of a transmission of the vehicle depending on the weight of a trailer,”
and an operator switch activated by a vehicle operator. Ans. 4 (citing Spec.
paras. [0002]-[0003]; fig. 1)). The Examiner determined that APA does not
disclose the “device,” as claimed. Id. at 5.
The Examiner found that Gutierrez discloses a device configured to
indicate the weight of the trailer and provide a weight signal (“load sensor
32 and strain sensor 34 in communication with MCU 36”), and which is an
“operator switch” configured to be selectively activated by the vehicle
operator to identify the weight of the trailer (“broadly read on the weight
measurement request that can be initiated by the driver”). Ans. 5 (citing
Gutierrez, col. 4, l. 38 – col. 5, l. 3; col. 6, ll. 15-20); see also id. at 14. The
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Examiner concluded that it would have been obvious to one of ordinary skill
in the art to incorporate Gutierrez’s device in the system of APA because the
device does no more than yield the predictable results of identifying the
weight of the trailer and varying the shift pattern of the vehicle transmission
depending on that weight. Id. at 14.
APA discloses:
These vehicles may include a switch, possibly on
the steering column or dashboard, that can be
switched to one position when the vehicle is not
towing a trailer to provide a shift pattern for the
transmission that provides the best performance
and fuel economy based on the weight of the
vehicle, and can be switched to another position
when the vehicle is towing a trailer to provide
another shift pattern more appropriate for the
weight of the vehicle and the trailer.
Spec. para. [0002] (emphasis added).
Appellant acknowledges this disclosure, but states that the
Specification also discloses that “the known towing switches only switch
between towing and no towing, and do not consider the weight of the
trailer.” App. Br. 12-13 (citing para. [0004]) (emphasis added). Thus,
Appellant contends that the Specification does not support the Examiner’s
finding that APA discloses “a controller configured to vary the shift pattern
of a transmission depending on the weight of the trailer.” Id. at 13.
Appellant’s contentions are persuasive. Claim 1 recites “said operator
switch configured to be selectively activated to identify the weight of the
trailer” and the device (operator switch) is “configured to provide a weight
signal.” We construe the term “weight signal” as a signal corresponding to
“the weight of the trailer,” identified by the vehicle operator activating the
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switch. Claim 1 further recites “a controller responsive to the weight signal,
said controller varying the shift pattern of a transmission of the vehicle
depending on the weight of the trailer.” Emphasis added. We construe the
recitation “depending on the weight of the trailer” to mean depending on the
actual weight of the trailer identified by the vehicle operator activating the
switch.
APA does not disclose that the switch position used when a vehicle is
pulling a trailer depends on the trailer’s actual weight. While the trailer
would have a weight, APA does not indicate that the operator would know
that weight. Indeed, APA states that the known towing switches “do not
consider the weight of the trailer.” Emphasis added. As such, the operator
is not required to know the weight of the trailer in order to use the switch, as
its use does not depend on that weight. Rather, APA indicates that in
vehicles having such known towing switches, a single transmission shift
pattern is used for towing all trailers, regardless of their weight. See Spec.
para. [0004].
While APA discloses use of a different transmission shift pattern
when pulling a trailer, APA does not disclose that the shift pattern
“depend[s] on the weight of the trailer.” Thus, APA does not disclose a
“controller,” as claimed.
In view of the above, we reverse the rejection of claim 1, and its
dependent clams 3 and 9, over APA and Gutierrez.

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Rejection II – APA, Gutierrez, and Uken
Claim 6
Claim 6 depends from claim 1 and recites “further comprising a
display, said display displaying the weight selected by the device.” The
Examiner relied on Uken for teaching a display, as claimed. Ans. 6.
The Examiner’s application of Uken for the rejection of claim 6 does
not cure the deficiencies of the Examiner’s reliance on APA and Gutierrez
for the rejection of claim 1, as discussed supra. Thus, we reverse the
rejection of claim 6 over APA, Gutierrez, and Uken.
Claims 11, 21, and 25
Claim 11 is directed to a system comprising, inter alia, “an operator
switch that is configured to be activated by a vehicle operator to identify the
weight of the trailer, said switch configured to provide a weight signal” and
“a controller responsive to the weight signal, said controller varying the shift
pattern of a transmission of the vehicle depending on the weight of the
trailer.” The Examiner’s findings and conclusions for the rejection of claim
11 (Ans. 8-10) and Appellant’s contentions (App. Br. 11-15) are
substantially the same as those discussed supra for the rejection of claim 1
under Rejection I.
For reasons similar to those discussed supra regarding the rejection of
claim 1 under Rejection I, we agree with Appellant that APA and Gutierrez
do not teach or suggest “an operator switch” or “a controller,” as recited in
claim 11. The Examiner further relied on Uken for teaching “a display,” as
claimed. Ans. 10. As such, the Examiner’s application of Uken does not
cure the deficiencies of APA and Gutierrez. Thus, we reverse the rejection
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of claim 11, and its dependent claims 21 and 25 over APA, Gutierrez, and
Uken.
Rejection III – Kirstein and Gutierrez
Claims 1 and 9
As to claim 1, the Examiner found that Kirstein discloses a controller
10, as claimed, and a device (load sensor 8) configured to indicate the
weight of the trailer and provide a weight signal. Ans. 4 (citing Kirstein,
col. 2, ll. 13-24; col. 3, l. 64 – col. 4, l. 46; col. 5, l. 24+; Abstract; figs. 1-3).
The Examiner found that Kirstein does not disclose that the “device” has
each of the claimed features. Id. at 5. However, the Examiner concluded
that it would have been obvious to incorporate the device of Gutierrez in
Kirstein’s system for the same reasons discussed supra for the rejection of
claim 1 under Rejection I. Id.
Appellant appears to contend that Kirstein does not disclose a switch
that is selectively activated by an operator to provide a weight signal. App.
Br. 14. However, the Examiner relied on Gutierrez, not Kirstein, for
teaching this feature. Accordingly, this contention is not persuasive.
Appellant also does not apprise us of any error in the Examiner’s
finding that Kirstein discloses a controller, as recited in claim 1.
Appellant also contends that Gutierrez does not disclose or suggest an
“operator switch configured to indicate the weight of a trailer when activated
by a vehicle operator.” App. Br. 11. In particular, Appellant contends that
Gutierrez’s load sensor and strain sensor provide the signal to estimate the
weight of the trailer, “not the switch when selectively activated by the
operator.” App. Br. 14. Appellant also contends that a “‘weight
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measurement request’” in Gutierrez does not disclose or suggest a switch
activated by the operator, as claimed. Id.
These contentions are not persuasive. The Examiner found that load
sensor 32, stain sensor 32, and MCU 36 of Gutierrez correspond to the
claimed “operator switch.” Ans. 5. We understand that the Examiner
further determined that the “weight request” disclosed by Gutierrez
corresponds to the operator switch being “selectively activated to identify
the weight of the trailer.” Id.
Claim 1 does not define the “switch,” or specify any particular
structure or location for this element. In addition, Appellant does not
contend that the claimed “switch” has a particular meaning. In this regard,
Appellant does not direct us to a specific definition of this term in the
Specification, or to any disclosure therein that precludes the Examiner’s
construction of “switch” as reading on the combination of elements of
Gutierrez. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); In re
Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
In addition, Appellant does not provide any persuasive argument that
the elements of Gutierrez’s “switch” found by the Examiner do not “indicate
the weight of the trailer” and “provide a weight signal,” as does the claimed
“operator switch.” In addition, Appellant does not provide any persuasive
argument why Gutierrez’s “weight request,” which is “initiated by the driver
of the tractor” (see Gutierrez, col. 6, ll. 17-19), does not “selectively
activate[] [the operator switch] to identify the weight of the trailer.”
Further, Appellant does not apprise us of any error in the Examiner’s
articulated reasoning for combining the teachings of Kirstein and Gutierrez.
Thus, we sustain the rejection of claim 1 over Kirstein and Gutierrez.
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Claim 3
Claim 3 depends from claim 1 and recites “the switch is selectively
activated to provide trailer weights between 1,000 and 10,000 pounds in
1,000 pound increments.” The Examiner found that Kirstein and Gutierrez
do not disclose this limitation, but found that it is “not [an] essentially
critical element of the invention since the combination of the references
teach[es] the shift pattern of a transmission of the vehicle varies depending
on the weight of the trailer.” Ans. 5. The Examiner also determined that
Kirstein and Gutierrez do not disclose this limitation, but concluded that it
would have been obvious because “omission of an element and its function
in a combination where the remaining elements perform the same function
as before involves only routine skill in the art.” Id. at 6.
In contrast, Appellant contends that Gutierrez does not teach or
suggest a switch selectively activated by the operator, as claimed. App. Br.
15. For reasons discussed supra, this contention is not persuasive.
However, we agree with Appellant that Gutierrez does not disclose or
suggest that the “switch” is selectively activated to provide trailer weights in
the particular increments recited in claim 3.
The Examiner also did not make a finding that Kirstein discloses
providing trailer weights in the claimed increments.
The Examiner also did not adequately explain what particular
“element and its function in a combination” would be omitted, or what is the
“combination.” We agree with Appellant that the Examiner did not
articulate adequate reasoning with rational underpinnings as to why one
skilled in the art would have combined the teachings of APA and Gutierrez
to result in the switch having the particular trailer weight settings recited in
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claim 3. Accordingly, we reverse the rejection of claim 3 over Kirstein and
Gutierrez.
Rejection IV – Kirstein, Gutierrez, and Uken
Claim 6
As Appellant does not present any argument for claim 6, we sustain
the rejection of claim 6 over Kirstein, Gutierrez, and Uken for the same
reasons as those discussed supra regarding the rejection of claim 1 under
Rejection III.
Claims 11 and 25
For claim 11, Appellant relies on substantially the same arguments as
those presented regarding the rejection of claim 1 under Rejection III, as
discussed supra. App. Br. 11-14; Reply Br. 1-3. However, we find no
deficiency in the rejection of claim 1 under Rejection III, thus we sustain the
rejection of claim 11 and dependent claim 25 over Kirstein, Gutierrez, and
Uken for similar reasons.
Claim 21
Claim 21 depends from claim 11 and recites the same limitation as
claim 3. The Examiner’s findings and conclusions for the rejection of claim
21 (Ans. 10-11) are substantially the same as those discussed supra
regarding the rejection of claim 3 under Rejection I. Accordingly, we
reverse the rejection of claim 21 over APA, Gutierrez, and Uken.
Rejection V – Kirstein, Gutierrez, and Sugawara
Appellant does not present any separate argument for claim 7, which
depends from claim 1. Accordingly, we sustain the rejection of claim 7 over
Kirstein, Gutierrez, and Sugawara for the same reasons as for claim 1.

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Rejection VI - Kirstein, Gutierrez, Uken, and Sugawara
Appellant does not present any separate argument for claim 23, which
depends from claim 11. Accordingly, we sustain the rejection of claim 23
over Kirstein, Gutierrez, Uken, and Sugawara for the same reasons as for
claim 11.

DECISION
The Examiner’s decision rejecting claims 1, 6, 7, 11, 23, and 25 is
AFFIRMED, and rejecting claims 3 and 21 is REVERSED.
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).

AFFIRMED-IN-PART

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