Ex Parte Wilson

Board of Patent Appeals and Interferences

Aug 31, 2009

10720821 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS B. WILSON
____________

Appeal 2009-005608
Application 10/720,821
Technology Center 3600
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Decided: August 31, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Douglas B. Wilson (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 20-28. We have jurisdiction under 35
U.S.C. § 6(b) (2002). Appellant’s counsel presented oral arguments on
August 13, 2009.

THE INVENTION
The invention is to a hand and arm rest or support that prevents or
lessens the amount of fatigue that occurs in the hand and arms from driving
or steering a vehicle or vessel over an extended period.
Claim 20, reproduced below, is representative of the subject matter on
appeal.
20. A fatigue relieving/preventing apparatus
associated with a steering wheel for controlling a
vehicle comprising:
a first section that connects to a peripheral
portion of the steering wheel; and
a second section that connects to, and
extends from, the first section at the peripheral
portion of the steering wheel, the second section
extends from the first section outward at an angle
to a plane across a face to the steering wheel, the
second section for supporting at least a portion of a
vehicular operator’s body when pressure from the
portion of the vehicular operator’s body on the
second section is less than the pressure for
deforming the second section out of interference
with the vehicular operator’s ability to operate the
steering wheel, and deforming out of interference
with the vehicular operator’s ability to operate the
steering wheel when pressure from the portion of
the vehicular operator's body on the second
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section is equal to or greater than the pressure for
deforming the second section out of interference
with the vehicular operator’s ability to operate the
steering wheel.
(App. Br., Claims App’x.; emphasis added.)

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Laubach US 1,575,848 Mar. 9, 1926
Van Arsdel US 2,118,540 May 24, 1938
Anson US 2,134,020 Oct. 25, 1938

THE REJECTIONS
The following Examiner’s rejections are before us for review:
Claims 20-26 and 28/20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Van Arsdel.
Claims 20-26 and 28/20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Anson.
Claims 20, 27, 28/20, and 28/27 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Laubach.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

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ISSUES
The issues before us are:
Whether the Appellant has demonstrated error in the Examiner’s
rejection of claims 20-26 and 28/20 as being anticipated by Van Arsdel.
This issue turns on whether the Appellant has shown that the Examiner erred
in finding that, because Van Arsdel explicitly discloses that the driver may
remove and then reattach in another location the grip rest, this operation
reads on the capability of the claimed second section to deform out of
interference with the vehicular operator’s ability to operate the steering
wheel when the pressure from the portion of the vehicular operator’s body
on the second section is equal to or greater than the pressure for deforming
the second section out of interference with the vehicular operator’s ability to
operate the steering wheel.
Whether the Appellant has demonstrated error in the Examiner’s
rejection of claims 20-26 and 28/20 as being anticipated by Anson. This
issue turns on whether the Appellant has shown that the Examiner erred in
finding that Anson’s explicit disclosure that the grip portion being made
from a pliable and semi-rigid material permits this structure to read on the
capability of the claimed second section to deform out of interference with
the vehicular operator’s ability to operate the steering wheel when the
pressure from the portion of the vehicular operator’s body on the second
section is equal to or greater than the pressure for deforming the second
section out of interference with the vehicular operator’s ability to operate the
steering wheel.
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Whether the Appellant has demonstrated error in the Examiner’s
rejection of 20, 27, 28/20, and 28/27 as being anticipated by Laubach. This
issue turns on whether the Appellant has shown that the Examiner erred in
finding that, because a vehicle operator could unscrew Laubach’s knobs and
fasten the knobs to another position, this permits this structure to read on
capability of the claimed second section to deform out of interference with
the vehicular operator’s ability to operate the steering wheel when the
pressure from the portion of the vehicular operator’s body on the second
section is equal to or greater than the pressure for deforming the second
section out of interference with the vehicular operator’s ability to operate the
steering wheel.

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
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. The Appellant does not contest the Examiner’s finding that Van
Arsdel, Anson, and Laubach disclose a first section that connects to a
peripheral portion of a steering wheel. App. Br. and Reply Br.,
passim.
2. The Appellant does not contest the Examiner’s finding that Van
Arsdel, Anson, and Laubach disclose a second section that connects
to, and extends from, the first section. App. Br. and Reply Br.,
passim.
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3. The Appellant does not contest the Examiner’s finding that Anson’s,
and Laubach’s second section is for supporting a portion of a
vehicular operator’s body when pressure from the operator’s body
portion is less than the pressure needed to deform the second section.
App. Br. and Reply Br., passim. Van Arsdel discloses as its objective
to provide a second section (grip-rest 2)1 to an automobile steering
wheel which will support the thumb and fingers and keep the hand in
a proper steering position (comfortable for his thumb and fingers and
which will keep the hand in a proper steering position). (Page 1, left
column, lines 1-5). Additionally, Van Arsdel discloses that
[t]he weight of the hand and arm are comfortably
supported with the bottom of the hand resting in the
concavity of the grip-rest ... or with the ball of the thumb
seated in the concavity as shown [in the figure] ... and the
two operational positions afford opportunity for change
which will keep the hand and arm from the cramp or
strain from long driving.
(Page 1, right column, lines 41-48). An device that has as its
objective and is disclosed to comfortably support the hand and arm
would not deform under pressure that is needed to deform such an
device. As such, we find that Van Arsdel explicitly disclose its
second section (grip-rest 2) is for supporting a portion of a vehicular
operator’s body when pressure from the operator’s body portion is
less than the pressure needed to deform the second section.
4. As such, we find that each of Van Arsdel, Anson, and Laubach,
explicitly discloses

1 Parenthetical nomenclature, Van Arsdel.
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[a] fatigue relieving/preventing apparatus
associated with a steering wheel for controlling a
vehicle comprising: a first section that connects
to a peripheral portion of the steering wheel; and
a second section that connects to, and extends
from, the first section at the peripheral portion of
the steering wheel, ... the second section for
supporting at least a portion of a vehicular
operator’s body when pressure from the portion
of the vehicular operator’s body on the second
section is less than the pressure for deforming the
second section out of interference with the
vehicular operator’s ability to operate the
steering wheel . . .
See Claim 20, supra.
Van Arsdel
5. The Examiner finds from Van Arsdel’s disclosure (page 1, right
column at line 49 to page 2, left column at line 2 and at lines 28-32)
that the grip-rest 2 is adjustable. Lines 28-32 explain that loosening
or reversing the screw 14 sufficiently permits the grip-rest 2 to shift
position. From this disclosure, the Examiner finds the grip-rest 2
could be placed at a position where it does not interfere with the
operation of the steering wheel (see Ans. 9-10). As such, the
Examiner finds that Van Arsdel’s grip-rest 2 has the capability of
deforming out of interference with the vehicular operator’s body when
the pressure from the vehicular operator’s body is equal to or greater
than the pressure needed to deform the second section out of
interference.
6. The Appellant argues that the portion of Van Arsdel’s disclosure that
the Examiner is using (Van Arsdel, page 2, left column at lines 28-32)
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to find that Van Arsdel’s grip-rest 2 is deformable does not in fact
support the Examiner’s finding. Instead, this portion of Van Arsdel
supports a finding that to move the grip-rest 2, the screw 14 must be
loosened, the rest repositioned, and screw 14 tightened. The
Appellant argues that this operation is not deforming according to
claim 20 during normal use of the second section (grip-rest)
(parenthetical nomenclature to Van Arsdel). The Appellant argues,
instead, once positioned, the grip-rest is fixed. App. Br. 8.
7. The Appellant argues, further, that based on Van Arsdel’s disclosure
at page 1, right column, lines 22-28, reproduced below,
These flanges 4 and 5 enable the operator instantly
to feel any deviation of the car from a straight
course and gives him something substantial to
push against in resistance and also in rotating the
wheel to steer the car around corners and curves
and away from obstructions or bad places in the
roadway.
supports the position that the grip-rest 2 of Van Arsdel does not
deform according to claim 20 when pressure is applied to it. App. Br.
8. See also Reply Br. 5-6.
Anson
8. The Examiner finds that Anson’s grip portion 11 is constructed from a
pliable and semi-rigid composition. See Ans. 5 and Anson, page 1,
right column lines 5-24, page 2, right column 25-40. As such, the
Examiner finds Anson’s steering wheel attachment is capable of
deforming out of interference with the vehicular operator’s ability to
operate the steering wheel when the pressure applied is greater than or
equal to the pressure needed to deform the attachment while the
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vehicular operator is operating the steering wheel. Ans. 5 and 10. An
article of manufacture made from a pliable and semi-rigid
composition, e.g., rubber, would inherently have a capability to
deform out of interference.
9. The Appellant cites to Anson, page 1, left column, lines 6-25 and
right column, line 49 to page 2, left column line 18, to counter the
Examiner’s findings. Appellant then argues, based on the citation and
quoted Anson passages:
when the Anson handgrip is in use, it is in the
pendant position below the steering wheel and is
used to steer the vehicle. If, during normal
operations, the driver were to grab the steering
wheel in an emergency situation, he would release
the handgrip and grab the wheel, for example, at
the 10 and 2 o’clock positions. In doing so, the
pendant-hanging handgrip would not be deformed
as set forth in claim 20 because it would not be in
use at all.
App. Br. 10.
10. In responding to the Examiner’s finding that movement of the
steering wheel attachment provides further reason to find the
attachment is capable of deforming out of interference, the Appellant
argues:
when the handgrip is moved to the top, it is moved
there to be placed purposefully out of use all the
time. If the handgrip is moved to the top of the
steering wheel, as suggested by the Examiner, it
would be awkward and dangerous to use for
driving because the driver’s hands would be
disposed through the steering wheel. In this
position, it also would not provide any of the
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benefits recited in Anson to relieve fatigue in the
arms and hands of the driver. In order to move the
handgrip, it would be understood that the vehicle
would have to be stopped, the handgrip detached
and repositioned at the top, and reattached.
App. Br. 10.
Laubach
11. The Examiner finds that portion 10 is capable of deforming out of
interference because the driver can unscrew Laubach’s knobs and
move them to another position as desired by the driver. Ans. 12.
12. The Appellant argues that:
The description of the knobs and a review of
the Figures makes plain that the knobs are not
deformable and they are not disposed at an angle
with respect to the plane across the face of the
steering wheel. The knobs are rigidly connected to
the steering wheel by screws 5. Any movement of
them requires removing the screws, drilling the
wheel at a new location, and reattaching the knobs
at the new location. At this new location, the
knobs will be in a plane parallel to the plane across
the face of the steering wheel.
The knobs do not deform out of interference
with the operation of the steering wheel as does the
second section of claim 20. In fact, once the
Laubach knobs are secured by screws 5 as shown
and described, they are fixed and not movable
during normal operations. If they are not
unscrewed, the only movement would be to apply
a destructive force to the knobs, thereby breaking
them. Moreover, if the driver were to attempt to
grab the steering wheel at the locations of the
knobs in an emergency, the knobs would not
deform and would prevent the driver from
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grabbing the wheel at these knob locations.
Therefore, Laubach does not support a prima facie
basis of anticipation because it is missing at least
one element of claim 20 relating to deformation of
the knobs out of interference with the operation of
the steering wheel in the normal operation of the
knobs.
See e.g., page 1, lines 43-71. App. Br. 11-12.

PRINCIPLES OF LAW
A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). Thus, a prior art reference without
express reference to a claim limitation may nonetheless anticipate by
inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated
in Swinehart, 439 F.2d at 213:
. . . where the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
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the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.

ANALYSIS
Appellant does not separately argue the claims in each ground of
rejection. See App. Br. 6-12. We select independent claim 20 as the
representative claim for deciding whether the Appellant has demonstrated
error in the rejections set forth by the Examiner. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008). Accordingly, the dependent claims also rejected
under each ground of rejection will stand or fall with claim 20 for each
rejection.
We find that the prior art used by the Examiner explicitly discloses a
fatigue relieving/preventing apparatus associated with a steering wheel for
controlling a vehicle comprising a first section that connects to a peripheral
portion of the steering wheel and a second section that connects to, and
extends from, the first section at the peripheral portion of the steering wheel,
where the second section is for supporting at least a portion of a vehicular
operator’s body when pressure from the portion of the vehicular operator’s
body on the second section is less than the pressure for deforming the second
section out of interference with the vehicular operator’s ability to operate the
steering wheel. See Facts 1-4. The issue becomes whether the Appellant
has shown error in the Examiner’s finding that structures explicitly
described in the prior art can satisfy the functional aspect of the second
section being able to deform out of interference with the vehicular operator’s
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ability to operate the steering wheel when the pressure from the portion of
the vehicular operator’s body on the second section is equal to or greater
than the pressure for deforming the second section out of interference with
the vehicular operator’s ability to operate the steering wheel. Below we
address whether the Appellant has shown error in the Examiner’s rejection
with respect to this issue for each piece of prior art.
Anticipation with Van Arsdel
We conclude that Appellant has met his burden in showing that Van
Arsdel’s second section is not capable of deforming out of interference with
the vehicular operator’s ability to operate the steering wheel when pressure
from the portion of the vehicular operator’s body on the second section is
equal to or greater than the pressure for deforming the second section out of
interference with the vehicular operator’s ability to operate the steering
wheel. As the Appellant has stated, Van Arsdel’s second section (grip rest)
needs to be repositioned in order to be moved to a position out of
interference with a driver’s ability to steer the steering wheel (Fact 6) and
parts of the second section (the flanges 4 and 5) give the driver something to
push against to steer the car around corners and curves (Fact 7). A structure,
as the Examiner has found, see Fact 5, that requires disassembly and
reassembly and permits the driver to push against cannot reasonably be
considered a structure that is capable of deforming out of interference as has
been claimed. Accordingly, Appellant has met his burden in showing that
Van Arsdel’s structure in not capable of the performing the deformation out
of interference function claimed. Thus, Appellant has demonstrated error in
the Examiner’s rejection of claims 20-26 and 28/20.
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Anticipation with Anson
We conclude that Appellant has not met his burden in showing that
Anson’s second section is not capable of deforming out of interference with
the vehicular operator’s ability to operate the steering wheel when pressure
from the portion of the vehicular operator’s body on the second section is
equal to or greater than the pressure for deforming the second section out of
interference with the vehicular operator’s ability to operate the steering
wheel. The Examiner has clearly found that Anson prefers to use a pliable
and semi-rigid composition to form the grip portion 11 that the Examiner is
utilizing to read on the second structural aspect. See Fact 8. An article of
manufacture made from a pliable and semi-rigid composition, e.g., rubber,
would inherently have a capability to deform out of interference. See id.
The amount of deformation out of interference would be dependent upon the
resilience property of the cured rubber and not its form. Appellant tries to
show Anson does not inherently possess the characteristic of deforming out
of interference because the grip would either not be used in operation (Fact
9), would be dangerous to operate, or would not achieve the recited benefits
(Fact 10). Neither argument outweighs the explicit disclosure that Anson’s
device is manufactured from a material that is pliable and semi-rigid and
thus would have an inherent property of being deformable. In this case, the
Examiner has good reason (Fact 8) to believe that the functional limitation
(deforming out of interference) asserted to be critical in establishing novelty
in the claimed subject matter, may, in fact, be an inherent characteristic of
Anson’s steering attachment. In such a case, the Appellant must provide
evidence that Anson’s steering attachment is not capable of deforming out of
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interference. See Swinehart, 439 F.2d at 212. Arguments that focus on a
particular envisioned use of a device in a particular driving condition is not
evidence that the device is not inherently capable of deforming out of
interference. As such, Appellant has not met his burden of showing Anson’s
steering attachment is not capable of deforming out of interference as set
forth in claim 20. Claims 20-26 and 28/20 fall with claim 20.
Anticipation with Laubach
We conclude that Appellant has met his burden in showing that
Laubach’s second section does not inherently possess the characteristic of
being capable of deforming out of interference with the vehicular operator’s
ability to operate the steering wheel when pressure from the portion of the
vehicular operator’s body on the second section is equal to or greater than
the pressure for deforming the second section out of interference with the
vehicular operator’s ability to operate the steering wheel. As Appellant
argues, in the manner in which the Examiner has utilized Laubach in order
to reach the deforming out of interference function, the knobs need to be
disassembled and reassembled in order to be repositioned. See Facts 11 and
12. We agree with Appellant that the disassembly and reassembly of the
knobs demonstrates that the knobs are fixed and the only manner of
movement to the knobs, short of disassembly, would be destructive in nature
to Laubach’s device. As such, to find that the functional limitation of the
second section deforming out of interference, as set forth in claim 20, is
inherently satisfied on a manner of movement that either requires
disassembly and reassembly or is destructive is unreasonable. Accordingly,
the Appellant has met his burden in showing that Laubach does not possess
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the capability of deforming as set forth in claim 20. Thus, Appellant has
demonstrated error in the Examiner’s rejection of claims 20, 27, 28/20, and
28/27.
CONCLUSIONS
Appellant has met his burden of showing that the structures in Van
Arsdel and Laubach are not capable of deforming out of interference with
the vehicular operator’s ability to operate the steering wheel when the
pressure from the portion of the vehicular operator’s body on the second is
equal to or greater than the pressure for deforming the second section out of
interference with the vehicular operator’s ability to operate the steering
wheel.
Appellant has not met his burden of showing that the steering wheel
attachment disclosed in Anson is not capable of deforming out of
interference with the vehicular operator’s ability to operate the steering
wheel when the pressure from the portion of the vehicular operator’s body
on the second is equal to or greater than the pressure for deforming the
second section out of interference with the vehicular operator’s ability to
operate the steering wheel.

DECISION
The Examiner’s decision to reject claims 20-26 and 28/20 as being
anticipated by Van Arsdel is reversed.
The Examiner’s decision to reject claims 20-26 and 28/20 as being
anticipated by Anson is affirmed.
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The Examiner’s decision to reject claims 20, 27, 28/20, and 28/27 as
being anticipated by Laubach 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

Klh

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