John T. Uken et al.

Patent Trials and Appeals Board

Aug 8, 2019

14712200 - (D) (P.T.A.B. Aug. 8, 2019)

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.
14/712,200 05/14/2015 John T. Uken DON01-P2526/425043 2511
153508 7590 08/08/2019
Honigman LLP/Magna
650 Trade Centre Way
Suite 200
KALAMAZOO, MI 49002-0402
EXAMINER
RETALLICK, KAITLIN A
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
asytsma@honigman.com
patent@honigman.com
tflory@honigman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN T. UKEN, DARRYL P. DE WIND, and
GREGORY A. HUIZEN
____________________

Appeal 2018-007930
Application 14/712,2001
Technology Center 2400
____________________

Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).

1 The real party in interest is listed as Magna Mirrors of America, Inc.
Appeal Brief 2.
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STATEMENT OF THE CASE
Introduction
The Application is directed to “mirror elements for use in rearview
mirror assemblies and visors for vehicles.” Specification ¶ 2. Claims 10–26
are pending; of these, claims 10 and 18 are independent. Appeal Brief 29–
32. Independent claim 10 is reproduced below for reference (emphasis
added):
10. An interior rearview mirror assembly for a vehicle, said
interior rearview mirror assembly comprising:
a mirror mount configured to attach at an interior portion
of a vehicle equipped with said interior rearview mirror
assembly, said mirror mount comprising a first pivot element;
a mirror head comprising a mirror casing and a mirror
reflective element, said mirror head comprising a second pivot
element;
wherein said second pivot element pivotally attaches at
said first pivot element forming a ball and socket joint to
pivotally mount said mirror head at said mirror mount;
wherein said mirror head comprises a reduced profile
mirror casing having a thickness dimension between a front
generally planar surface of said mirror reflective element and a
rear surface of a generally central region of said mirror casing,
and wherein said thickness dimension is less than 20 mm;
a circuit board having circuitry associated with at least one
accessory of said mirror head of interior rearview mirror
assembly; and
wherein said circuit board is disposed in said mirror mount
and wherein wiring passes through said ball and socket joint to
electrically connect said at least one accessory to said circuitry.

References and Rejections
Claims 10–12, 14, 16, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hutzel (US 2003/0117728 A1; June 26, 2003), De
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Wind (US 2012/0236388 A1; Sept. 20, 2012), and Turnbull (US
2002/0158805 A1; Oct. 31, 2002). Final Action 4.
Claims 18, 20, and 24–26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hutzel, De Wind, Turnbull, and Carter (US
2004/0207940; Oct. 21, 2004). Final Action 14.
Claims 13, 15, 19, and 21–23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over various combinations of Hutzel, De Wind, Turnbull,
and other prior art references. Final Action 12–13, 22–28.

ANALYSIS
We have reviewed the appealed rejections for error based upon the
issues identified by Appellants and in light of the arguments and evidence
produced thereon. See In re Jung, 637 F.3d 1356, 1366 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections”).
Appellants argue the Examiner’s rejections are in error because
“[t]here is no disclosure or suggestion in the cited art (alone or in
combination) of a reduced profile rearview mirror assembly having a
thickness dimension of less than 20 mm between a front surface of the
substrate and a rear surface of the mirror casing, as claimed.” Appeal Brief
6. Appellants argue the Examiner errs in relying on De Wind for this
limitation, because “Figure 6 of De Wind is clearly a hand sketched drawing
meant to draw attention and illustrate specific components and therefore
lacks any basis that the figure conforms to scale.” Id. at 16. Appellants also
argue the Examiner errs in “assert[ing] that ‘the thickness of a material is not
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considered patentable, otherwise a patent would be given for every
thickness.’” Id. (quoting Final Action 9).
We are persuaded the Examiner’s rejection is in error. First, we find
De Wind does not teach the claimed thickness range. De Wind teaches a
thickness of the glass used in a mirror assembly as depicted in Figure 6, but
is silent regarding a thickness of the mirror assembly casing as claimed. See
De Wind ¶ 77 (“[A] larger flat glass sheet that typically has a thickness in
the range of about 1.1 mm thickness to about 2.3 mm thickness . . . when the
glass substrate is the front substrate of an electrochromic mirror
construction.”). De Wind provides no indication that Figure 6 is drawn to
scale. See De Wind ¶ 57. Nor does the Examiner provide any additional
findings or analysis that De Wind’s Figure 6 can be relied upon to teach the
dimensions of the mirror casing. See Answer 68 (“Further, if the diagram of
Figure 6 were to scale, then it would meet the claim limitation because one
of ordinary skill in the art could determine that the thickness of the mirror
casing would be less than 20 mm.”) (emphasis added). Thus, we agree with
Appellants that Figure 6 of De Wind, by itself, is insufficient to support the
rejection of the claimed thickness range. See Appeal Brief 15–16; see also
MPEP 2125 (II) (“When the reference does not disclose that the drawings
are to scale and is silent as to dimensions, arguments based on measurement
of the drawing features are of little value.”).
Second, the Examiner provides no reasoning to explain why one of
ordinary skill in the art would modify the references, including De Wind’s
Figure 6. As noted by Appellants, the Examiner states that “the thickness of
a material is not considered patentable, otherwise a patent would be given
for every thickness.” Reply Brief 3 (citing Answer 28). Based upon our
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controlling case law, we disagree with the Examiner’s categorical statement.
“The Patent and Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior art.” In re
Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994). Further, to reject a claim under
35 U.S.C. § 103, the obviousness “analysis should be made explicit.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here the Examiner has
not identified, in the Final Action and in almost 100 pages of response to
attorney arguments, a reason why one of ordinary skill would modify the
cited art’s rearview mirrors to have the recited thickness dimension of less
than 20 mm. See Answer 26–121. Accordingly, we find the Examiner’s
rejection is in error.
We are constrained by the record, and therefore we do not sustain the
Examiner’s obviousness rejection of independent claim 10, or the claims
dependent thereon. The Examiner provides a similar analysis for
independent claim 18’s recitation of “said thickness dimension is less than
25 mm,” thus, for similar reasons we do not sustain the Examiner’s
obviousness rejection of claim 18 or the claims dependent thereon. See
Final Action 18–20.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection and separately reject independent claim 10 under
35 U.S.C. § 103, as obvious in view of Carter (US 2004/0207940 A1; Oct.
21, 2004).
We incorporate and adopt as our own the Examiner’s findings with
respect to Carter. See Final Action 19–20; Answer 39–40, 95–96.
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We further find Carter teaches all claim limitations recited by
independent claim 10 except for the recited thickness limitation.
Particularly, Carter teaches or suggests an interior rearview mirror assembly
for a vehicle, including the recited “a mirror mount configured to attach at
an interior portion of a vehicle equipped with said interior rearview mirror
assembly, said mirror mount comprising a first pivot element.” See Carter
Figures 1–6, 31–34D; ¶ 38 (“The mirror 20 is supported by an angularly
adjustable ball-and socket connection 30 (FIG. 6) formed by a ball section
31 on a glass-attached mount 33.”); see also Carter ¶ 77. Carter teaches or
suggests the recited “a mirror head comprising a mirror casing and a mirror
reflective element, said mirror head comprising a second pivot element;
wherein said second pivot element pivotally attaches at said first pivot
element forming a ball and socket joint to pivotally mount said mirror head
at said mirror mount.” See Carter Figures 4, 6, 31, 32, ¶ 4 (“Modern interior
rearview mirrors are typically mounted from their hidden backside by an
elongated mount, and are made to be angularly adjustable by a ball-and-
socket connector that connects the mirror to the mount.”). Carter further
teaches or suggests the recited “a circuit board having circuitry associated
with at least one accessory of said mirror head of interior rearview mirror
assembly,” and “wherein said circuit board is disposed in said mirror mount
and wherein wiring passes through said ball and socket joint to electrically
connect said at least one accessory to said circuitry.” See Carter Figures 4–
9, 32, ¶ 52 (“A wireway is formed through the ball section 31 and stem 70
for routing wires from the mirror 20”), ¶ 77 (“a host of accessories may be
incorporated into the mount 757 and/or onto the plate frame 621 in addition
to a power pack adjuster, such as a rain sensor, a camera, a headlight control,
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an additional microprocessor, additional information displays, compass
sensors, etc.”); see also Carter ¶¶ 58, 69–76, 81, 83.
Carter, however, does not disclose the recited “wherein said mirror
head comprises a reduced profile mirror casing having a thickness
dimension between a front generally planar surface of said mirror reflective
element and a rear surface of a generally central region of said mirror casing,
and wherein said thickness dimension is less than 20 mm.” Instead, Carter
recites “the present mirror 20 (and mirrors 20A-20C) is surprisingly thin,
with at least 50% of the depth dimension Dl (FIG. 3) being less than about 3
cm, and at least 50% of the depth dimensions being less than 15% of the
maximum width dimension W1.” Carter ¶ 39; see also Carter Figures 3, 6,
¶ 55 (“mirror subassembly 20’ including back cover 26’ [is] 30% thinner in
depth.”). That is, Carter does not recite the claimed thickness dimension
(“less than 20 mm”) measured at a “generally central region of said mirror
casing,” as claimed.
Based on the record before us, we see no unexpected properties or
other secondary considerations that result from the “reduced profile mirror
casing” measurement claim limitation. Rather, one of ordinary skill would
know—as evidenced by Carter—that the various benefits to reducing the
mirror casing profile include improved aesthetics, lower cost, and reduced
mirror movement. See Carter ¶¶ 3, 39, 48.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
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KSR, 550 U.S. at 402–03. Here, there is a design need for a reduced profile
mirror (see, e.g., Carter ¶ 3) and there are a finite number of identified and
predictable thickness ranges that are possible when constructing a vehicle
mirror head. Thus, we find it would have been obvious to one of ordinary
skill at the time the invention was made, to modify the rearview mirror of
Carter so that “[the] mirror head comprises a reduced profile mirror casing
having a thickness dimension between a front generally planar surface of
said mirror reflective element and a rear surface of a generally central region
of said mirror casing, and wherein said thickness dimension is less than 20
mm” as recited by claim 10.
Accordingly, we reject independent claim 10 as obvious in view of the
teachings of Carter. We note the Patent Trial and Appeal Board is a review
body, rather than a place of initial examination. We have rejected
independent claim 10 based on our authority under 37 C.F.R. § 41.50(b).
We have not, however, reviewed remaining claims 11–26 to the extent
necessary to determine whether those claims are similarly unpatentable. We
leave it to the Examiner to ascertain whether these claims should be rejected
on similar grounds to those set forth herein or in combination with additional
prior art.

DECISION
The Examiner’s decision rejecting claims 10–26 is reversed.
We enter a new ground of rejection of claim 10 under 35 U.S.C.
§ 103.
This Decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record.

REVERSED; 37 C.F.R. § 41.50(b)