Ex Parte Wilce et al

Board of Patent Appeals and Interferences

Oct 21, 2008

09916881 (B.P.A.I. Oct. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL HOCK and ALEXANDER BUTTNER
____________

Appeal 2008-2007
Application 10/664,124
Technology Center 3600
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Decided: October 21, 2008
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and MICHAEL
W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Hock and Alexander Buttner (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1-4, 6-15, and 17-23.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
The claimed invention relates to a sunshade guide mechanism.
Claims 1, reproduced below, is representative of the subject matter on
appeal.
1. A sunshade guide mechanism, comprising:
at least one guide rail having a brake face; and
a sliding carriage shiftable in the at least one guide rail,
the sliding carriage having
a body that shifts in the at least one guide rail,
a brake member connected to the body and that
cooperates with the brake face to lock the sliding
carriage in the at least one guide rail,
at least one spring having a biasing force that acts
upon the sliding carriage to press the brake member
against the brake face, and
at least one tilt edge spaced away from the brake
member, wherein the sliding carriage swivels about
the at least one tilt edge against the biasing force of
the at least one spring to release the brake member
from the brake face.

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Jan. 16, 2006), Reply Brief (“Reply Br.,” filed Jun. 23, 2006), and the
Examiner’s Answer (“Answer,” mailed Nov. 30, 2006).
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THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Milans US 729,630 Jun. 2, 1903

THE REJECTIONS
The following rejections are before us for review:
Claims 1-3, 6, 9-13, 21, 22 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Milans.
Claims 4, 7, 8, 14, 15, 17-20, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Milans.

ISSUES
The first issue before us is whether Milans’s truck E is capable of
being swiveled about one edge against the biasing force of spring F to
release the brake member (wheels e) from the brake face (guide d’).
The second issue before us is whether the material that is used to
make at least a portion of Milans’s truck E has a low coefficient of friction.
The third issue before us is whether the material that is used to make
Milans’s brake member (wheels e) has a high coefficient of friction.
The fourth issue before us is whether Milans’s brake member
(wheels e) comprises a pair of braking cushions.

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
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F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
Facts involving claim construction
1. The Specification is silent with respect to a material that constitutes “a
material having a low coefficient of friction.”
2. The Specification fails to provide guidance as to a type of material
that constitutes “a material having a high coefficient of friction.”
3. The Specification fails to provide guidance as to a structure that
satisfies a “braking cushion.”
4. Cushion means “an elastic body for reducing shock.” Webster’s
Collegiate Dictionary (entry 3e) 285 (10th edition 1999).
Facts involving the scope and content of the prior art
5. Milans describes a friction holding device for a spring actuated shade.
6. Milans’s Figure 2 shows the construction of the truck body E.
Milans’s Figure 2 is reproduced below:

Milans’s Figure 2 depicts the truck body E.
7. Milans’s Figure 3 shows the profile of the guide strips D and D’. As
can be seen in the figure a gap exists between surface D2 and the truck
body E. Further, a gap exists between the surface denoted by C (the
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window casing that guide strips D and D' are affixed to) and the truck
body E.
Milans’s Figure 3 is reproduced below:

Milans’s Figure 3 depicts the guide strips’ profile.
8. Truck E is constructed of a truck-body having wheels e at its upper
and lower ends. Wheels e are arranged to engage and rest against the
straight vertical guide d'. (Milans, pg. 2, ll. 37-41.)
9. Secured on the side opposite of wheels e is a substantially U-shaped
spring F. Spring F is bowed outwardly and its opposite branches are
slightly curved and arranged to engage or lie against the inclined side
of the guide bead d'. (Milans, pg. 2, ll. 41-47.)
10. Spring F biases the wheels e against guide d' to create sufficient
friction to retain the curtain in its proper adjustment and to prevent
binding. (Milans, pg. 2, ll. 56-60 and 86-97.)
11. Exertion of pressure opposing the biasing force of spring F will
release wheels e from guide d'.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Anticipation is determined by first construing the
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claims and then comparing the properly construed claims to the prior art. In
re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002).
After the PTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the appellant to prove that the subject matter
shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); In
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.
All the claim limitations must be taught or suggested by the prior art
to establish a prima facie case of obviousness. In re Royka, 490 F.2d 981
(CCPA 1974). In rejecting claims under 35 U.S.C. § 103(a), the examiner
bears the initial burden of establishing a prima facie case of obviousness. In
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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does
the burden of coming forward with evidence or argument shift to the
appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at
1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. Id.

ANALYSIS
Claims 1-3, 9, 11-13, 21, and 22
The Appellants argue claims 1-3, 9, 11-13, 21, and 22 as a group. We
select claim 1 as representative. Claims 2, 3, 9, 11-13, 21, and 22 stand or
fall with claim 1.
As such, the first question before us is whether Milans’s truck body E
is capable of swiveling about one of its edges against the biasing force of the
spring F to release the brake member (wheel e) from the brake face
(surface d'). If so, then Milans anticipates claim 1 under the doctrine of
inherency, because there is no express disclosure of this feature as
acknowledged by the Examiner (Answer 3).
Viewing Figure 3 of Milans (Fact 7), we find a gap between surface
D2 and the truck body E. Further, we find a gap between the surface denoted
by C and the truck body E.
In operation, we find a person would grasp the curtain-stick A' (see
Fig. 5) and move the curtain-stick A' up or down depending on whether the
person want the shade A open or close. We further find as curtain-stick A' is
raised or lowered, truck body E moves accordingly. We find when a person
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releases curtain-stick A' that truck bodies E will stay in position because of
the tension of spring F. We further find, while the spring tension in spring F
is an amount to hold truck body E at the position upon release of the curtain-
stick A' by the person, this tension is not an amount so great as to prohibit
the truck from being moved within the gaps present between surfaces D2 and
C and truck body E. In other words, while spring F biases the wheels e
against guide d' to create sufficient friction to retain the curtain in its proper
adjustment and to prevent binding (fact 10), exertion of pressure opposing
the biasing force of spring F on one side of the curtain-stick A' will release
the wheels e of the truck body E on that side from guide d' (fact 11) to
permit swiveling of the truck body E. Accordingly, within the gaps
mentioned above truck body E is capable of being swiveled around a plane
parallel to the shade A whereby an edge near a brake member (either wheel
e) would be the axis of rotation.
For these reasons, we will sustain the Examiner’s rejections of claims
1-3, 9, 11-13, 21, and 22.
Claim 6
In addition to referring to the reasons given for the patentability of
claim 1, the Appellants argue Milans’s asymmetrical spring configuration
could not allow tilting about a second tilt edge. (App. Br. 13.) We are not
persuaded by this argument for the same reasoning as given above with
respect to swiveling about the first tilt edge. That is, while spring F provides
sufficient friction to retain the curtain in its proper adjustment and to prevent
binding (see fact 10), exertion of pressure opposing the biasing force of
spring F on one side of the curtain-stick A' will release the wheels e of the
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truck body E on that side from guide d' (see fact 11) regardless of the
spring’s asymmetrical configuration.
For these reasons, we will sustain the Examiner’s rejection of claim 6.
Claim 10
The Appellants argue “that the wheels (e) of Milans are not
‘cushions’” and that the wheels e are not on opposite sides of the block body
E (App. Br. 13-14.) As such, the next question before us is whether
Milans’s wheels e can satisfy the brake member comprising a pair of braking
cushions arranged on opposite sides of the carriage (truck body E). The
issue will depend upon the broadest reasonable meaning of “cushion” as one
of ordinary skill in the art would understand the term.2
The Specification fails to provide guidance as to what structure would
satisfy a “braking cushion.” (Fact 3.). In our view, one skilled in the art
would interpret cushion to mean an elastic body for reducing shock. (Fact
4.) Therefore, the term “braking cushion” would encompass any structure or
body that facilitates retarding motion (brakes) and reduces shock. As such,
the question becomes whether Milans’s wheels e satisfy a structure or body
that facilitates retarding motion and reducing shock.
Milans’s wheels e are arranged to engage and to rest against the guide
strip d'. (Facts 6 and 8.) On the opposite side of the wheels e is spring F.
(Fact 6.) Spring F provides a compression force to truck body E that in turn

2 The term “braking” is “readily apparent even to lay judges and [this] claim
construction ... involves little more than the application of widely accepted
meaning of commonly understood words.” Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005). In this case, “braking” means to retard or stop
motion.
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provides a compression force onto wheels to keep the wheels engaged and
resting against the guide surface d'. The wheels e have to be constructed
from a material with a coefficient of friction that is able to resist the force of
gravity, else the trucks E would not be able to be maintained in a fixed
position once a person releases the curtain-stick A'. As such, the wheels
facilitate retarding motion. In addition, the material of wheels e would
provide a cushioning effect inasmuch as they reduce shock to the truck body
E . Accordingly, wheels e satisfy the claimed subject matter of a braking
member comprised of braking cushions as the term “braking cushions,” as
we find, would be understood by one of ordinary skill in the art. In addition,
wheels e are disposed on opposite sides of the truck body E.
For these reasons, we will sustain the Examiner’s rejection of claim
10.
Claims 4, 7, and 17
We will not sustain the Examiner’s rejections of claims 4, 7, and 17.
The Appellants do not specifically define in their Specification what is
meant by “low coefficient of friction” (fact 1), but we find that a person of
ordinary skill in the art would understand a low coefficient of friction
material to be one which encourages relative sliding between surfaces.
While we find the wheels e would be constructed from a material having a
sufficiently high coefficient of friction to prevent the truck body E from
sliding down the guide strip D when a person releases the curtain-stick A',
we do not find any structure described in Milans, either expressly or
inherently, to make a finding that any portion of the truck body is made from
a material having a low coefficient of friction. As such, we agree with the
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Appellant that because the truck body E never contacts the engagement
surfaces d', there appears to be no reason to find the truck body E is made
from a low coefficient material other than with hindsight gleaned from the
Appellants’ disclosure.
Claim 8
However, we will sustain the Examiner’s rejection of claim 8, because
we are not persuaded by the Appellants’ argument that the wheels e must be
capable of easily rolling within the guide strips. (App. Br. 16.) There is
nothing in Milans that requires the wheels to “easily roll.” What is required
is that the wheels roll and that the wheels have a coefficient of friction that
resists the force of gravity when a person releases the curtain-stick A' in
order for the shade, and thus truck body E, to maintain its position.
Moreover, the Appellants chose to quantify the claim subject matter within
claim 8 with the term “high” The Specification is silent with respect to a
definition of “high” or, moreover, a material that would satisfy the claimed
subject matter of a material having a high coefficient of friction. As such,
we are left with what one of ordinary skill in the art would understand as
“high” for a material in this art. We hold that one of ordinary skill in the art
would consider a material that discourages relative slippage between
surfaces as having a high coefficient of friction. Milans’s wheels e act in
concert with the spring F to resist the force of gravity by discouraging
slippage between wheels e and guide d'. Accordingly, the wheel e material
satisfies the claimed subject matter of a material having a high coefficient of
friction as such would be understood by one of ordinary skill in the art in
light of the Specification.
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Claims 14, 15, 18, 20, and 23
Appellants have argued claims 14, 15, 18, 20, and 23 as a group. We
select claim 14 as representative. Claims 15, 18, 20, and 23 will stand or fall
with 14.
We will sustain the Examiner’s rejections of claims 14, 15, 18, 20,
and 23 for the same reasons given supra with respect to claims 1, and 8
because the Appellants have provided similar arguments to the arguments
raised against the rejections of claims 1 and 8.
Claim 19
We will sustain the Examiner’s rejection of claim 19 for the same
reasons given supra with respect to claim 10 because the Appellants have
provided similar arguments to the arguments raised against the rejection of
claim 10.

CONCLUSIONS OF LAW
We conclude that the Appellants have not shown an error in the
Examiner’s rejections of claims 1-3, 6, 8-15, and 18-23 as being
unpatentable over Milans.
We conclude that the Appellants have shown an error in the
Examiner’s rejection of claims 4, 7, and 17.

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DECISION
The Examiner’s decision to reject claims 1-3, 6, 8-15, and 18-23 is
affirmed.
The Examiner’s decision to reject claims 4, 7, and 17 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) (2007).

AFFIRMED-IN-PART

JRG

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