Ex Parte WestDownload PDFPatent Trial and Appeal BoardNov 8, 201713464702 (P.T.A.B. Nov. 8, 2017) 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. 13/464,702 05/04/2012 MARK WEST P017884-GMVE-DPH/003.0921 6712 70422 7590 11/13/2017 LKGlobal (GM) 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 EXAMINER DANIELS, JASON S ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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): docketing@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK WEST Appeal 2015-001338 Application 13/464,702 Technology Center 3600 Before LINDA E. HORNER, WILLIAM V. SAINDON, and MITCHELL G. WEATHERLY, Administrative Patent Judges. WEATHERLY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the decision of the Examiner rejecting claims 1—3, 5—13, 15—19, and 21—23. Claims 4, 14, and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a vanity mirror assembly for a vehicle or a vehicle having such an assembly. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A vanity mirror assembly for a vehicle, the vehicle having front seats and a rear portion behind the front seats, the vanity mirror assembly comprising: a housing; Appeal 2015-001338 Application 13/464,702 a mirror disposed within the housing in the rear portion of the vehicle, the mirror being partially reflective and partially transparent; a display screen disposed within the housing between the front seats and the mirror; a light source disposed within the housing; and a switch movable between: a first position, in which the light source is turned on and the display screen is turned off; and a second position, in which the light source is turned off and the display screen is turned on. REFERENCES The Examiner relies upon the following evidence: Hermansson et al. US 5,174,644 Dec. 29, 1992 Frankhouse et al. US 5,940,120 Aug. 17, 1999 REJECTIONS Appellant seeks our review of the following rejections: Claims 8—12 and 15—18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Frankhouse. Office Act. 2. Claims 1—3, 5—7, 13, 19, and 21—23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Frankhouse and Hermansson. Id. at 4. OPINION Of the claims at issue, claims 1, 8, and 15 are independent. In all rejections, the Examiner relies upon Frankhouse as describing the “switch” recited in each independent claim. Id. at 4 (claim 1), 2—3 (claims 8 and 15). More specifically, the Examiner identifies Frankhouse’s switch 70, 72, 74 as “movable between a first position in which the light source is turned on and 2 Appeal 2015-001338 Application 13/464,702 the display is off, and a second position in which the light source is turned off and the display is on” as recited in all claims. Id. (citing Frankhouse, 6:37-43). The Examiner explains that when Frankhouse’s switch is depressed to the off position, then Frankhouse’s mirror may be used with the light source turned on. Id. at 3. Appellant argues that Frankhouse fails to describe the claimed switch because “in Frankhouse, the light source and display screen are controlled separately from one another.” App. Br. 4. The Examiner responds by determining that “Appellant argues, but does not claim, a switch that controls both the display screen and the light source simultaneously.” Ans. 7. The Examiner summarized the interpretation of “switch” as follows: Appellant has merely claimed a switch which is movable between two positions along with a set of parameters associated to those positions, but has not claimed that a single switch controls both sets of parameters simultaneously, the broadest reasonable interpretation is that the switch need not control both the display and the light simultaneously, but that both sets of conditions must be met when the switch is either the first or second positions. Id. at 7—8. Appellant disagrees, and argues that the only reasonable interpretation of the claimed “switch” would cover a single switch: in control of both the light source and the display screen, such that (a) the light source is turned on and the display screen is turned off when the switch is moved to the first position, and (b) the light source is turned off and the display screen is turned on when the switch is moved to the second position. Reply Br. 3. Thus, resolution of this appeal turns on the interpretation of the following claim language, which is recited in every pending claim: a switch movable between: a first position, in which the light source is turned on and the display screen is turned off; and 3 Appeal 2015-001338 Application 13/464,702 a second position, in which the light source is turned off and the display screen is turned on. For the reasons stated below, we agree with Appellant’s interpretation of “switch” and do not sustain the Examiner’s rejections. The Federal Circuit recently described the standard for interpreting claim language in Office proceedings as follows: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). Appellant’s Specification first describes a “switch” broadly as follows: “light source 206 is turned on and off via a switch 207 that is disposed within the housing 118.” Spec. 126. The Examiner’s interpretation of “switch,” if other limitations were not also present in the claim language, is consistent with this broad description. However, the claims further limit the switch such that it must have two positions, each of which cause specific on/off states for the display screen and light source. Appellant’s Specification describes this embodiment of “switch” as follows Specifically, if the switch 207 is in a first position while the display 120 is in the open position of FIGS. 2 and 3, the light source 206 is powered on and the display screen 304 is powered off. Conversely, if the switch 207 is in a second position while the display 120 is in the open position of FIGS. 2 and 3, the light 4 Appeal 2015-001338 Application 13/464,702 source 206 is powered off and the display screen 304 is powered on. Id. 135. In our view, Appellant has successfully limited its claimed switch to a single switch with two operative positions that control the on/off state of both the display screen and light source as recited. The Examiner noted, and we agree, that the rejections were not based on a determination that “Frankhouse discloses a single switch which controls both the display screen and the light source together.” Ans. 7. For the rejection of claims as obvious over Frankhouse and Hermansson, the Examiner does not rely upon Hermansson as describing any aspect of the switch. Id. at 6—9. Given our interpretation of the claim language at issue, we do not sustain any of the Examiner’s rejections of the claims. DECISION For the reasons stated above, we: 1. reverse the Examiner’s rejection of claims 8—12 and 15—19 as being anticipated by Frankhouse; and 2. reverse the Examiner’s rejection of claims 1—3, 5—7, 13, 19, and 21— 23 as obvious over Frankhouse and Hermansson. REVERSED 5 Copy with citationCopy as parenthetical citation