MAGNA ELECTRONICS INC.Download PDFPatent Trials and Appeals BoardMay 13, 202015049570 - (D) (P.T.A.B. May. 13, 2020) 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. 15/049,570 02/22/2016 Joshua L. DeWard MAG04 P-2717-423975 1752 153508 7590 05/13/2020 HONIGMAN LLP/MAGNA 650 TRADE CENTRE WAY SUITE 200 KALAMAZOO, MI 49002-0402 EXAMINER LAU, KEVIN ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 05/13/2020 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 JOSHUA L. DEWARD, STEVEN L. BROWN, KENNETH SCHOFIELD, and NIALL R. LYNAM ____________________ Appeal 2019-001840 Application 15/049,570 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–10 and 12–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to “an accessory module that is mountable or positionable at an interior surface of a windshield of a vehicle,” the accessory module including an imaging sensor and a lens directed or facing 1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37 C.F.R. § 1.42. The real party in interest is Magna Electronics, Inc. Appeal Br. 2. 2 Claim 11 includes allowable subject matter and is only objected to (see Final Act. 15). Appeal 2019-001840 Application 15/049,570 2 through the windshield of the vehicle, the lens disposed in a lens receiving portion or lens mounting portion. (Spec. ¶¶ 2, 22, 25.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An accessory system for a vehicle comprising a windshield having an outer surface that is exterior of the vehicle and an inner surface that is interior of the vehicle, with the windshield at a windshield angle relative to vertical when mounted in the vehicle, said accessory system comprising: a mounting element attached at an inner surface of a windshield of a vehicle equipped with said accessory system; wherein said mounting element is adapted for mounting of an accessory module thereto and demounting of said accessory module therefrom; said accessory module adapted for mounting to and demounting from said mounting element; said accessory module comprising a camera, said camera comprising an imaging sensor and a lens; wherein electrical circuitry associated with said camera is disposed within said accessory module; wherein said accessory module comprises a portion that faces towards the windshield when said accessory module is mounted to said mounting element attached at the windshield; said portion comprising wall structure; wherein said lens of said camera protrudes through said wall structure to exterior of said accessory module; wherein said accessory module and said mounting element are configured so that, with said accessory module mounted to said mounting element, said lens is facing towards the windshield of the equipped vehicle and said camera has a field of view appropriate for a driver assistance system of the equipped vehicle and views forwardly through an area of the windshield that is wiped by a windshield wiper of the equipped vehicle when the windshield wiper is activated; Appeal 2019-001840 Application 15/049,570 3 wherein a multi-pin electrical socket is located at said accessory module and connects with said circuitry disposed within said accessory module; and wherein said electrical socket is configured for electrical connection to at least one of (i) an electrical source of the equipped vehicle, (ii) a power source of the equipped vehicle and (iii) a control of the equipped vehicle. (Appeal Br. 26–27 (Claims Appendix).) REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Campbell et al. US 6,170,955 B1 Jan. 9, 2001 (“Campbell”) Schofield et al. US 6,353,392 B1 Mar. 5, 2002 (“Schofield ’392”) Schofield et al. US 2003/0169522 Al Sept. 11, 2003 (“Schofield ’522”) REJECTIONS The Examiner made the following rejections: Claims 1, 3, 5, 8, 9, and 12 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Campbell. (Final Act. 2–5.) Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Campbell. (Final Act. 5.) Claims 2 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Campbell in view of Schofield ’392. (Final Act. 5– 6.) Appeal 2019-001840 Application 15/049,570 4 Claims 4, 10, and 13–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Campbell in view of Schofield ’522. (Final Act. 7–15.) ANALYSIS 1. 35 U.S.C. § 102(b) – Claims 1, 3, 5, 8, 9, and 12 With respect to independent claim 1, the Examiner finds Campbell’s Figure 5 discloses an accessory module comprising a camera (Campbell’s optical device 2), the camera comprising an imaging sensor (Campbell’s imager 44) and a lens (Campbell’s lens element 45), the accessory module adapted for mounting to and demounting from a mounting element (Campbell’s mounting bracket 1), as claimed. (Final Act. 3 (citing Campbell Figs. 1, 2, 5, 6).) The Examiner also finds Campbell’s accessory module comprises a portion facing towards the windshield, the portion comprising a wall structure shown in Campbell’s Figure 5, wherein the lens of the camera protrudes through the wall structure to exterior of the accessory module, as recited in claim 1. (Final Act. 3 (citing Campbell Figs. 1, 5).) In particular, the Examiner reasons that under the broadest reasonable interpretation, the claim term “‘through’ can be interpreted as ‘so as to make a hole or opening in (a physical object)’, ‘so as to be perceived from the other side of (an intervening obstacle)’, ‘expressing the position or location of something beyond or at the far end of (an opening or an obstacle),’” and the claim term “protrude can be interpreted to mean ‘to extend beyond or above a surface.’” (Final Act. 16 (emphasis added); Ans. 3–4 (emphasis added).) The Examiner then finds Campbell teaches that lens 45 may be located within an opening 35 (the opening located on a front surface 39 of Appeal 2019-001840 Application 15/049,570 5 optical device 2), which discloses that “lens [45] protrudes through into the opening (making an opening, extending into the opening) and can be perceived on the other side,” “the protrusion of the lens [45] extends to the exterior,” and “[t]herefore the lens as disclosed by Campbell are[sic] through the opening,” meeting the protruding limitation of claim 1. (Ans. 4; see also Final Act. 16.) In response, Appellant argues that Campbell does not disclose an accessory module as recited in claim 1, in which “said lens of said camera protrudes through said wall structure to exterior of said accessory module”; rather, Campbell’s lens 45 is recessed within or behind opening 35 and does not protrude through a wall structure to the exterior of the accessory module/optical device 2. (Appeal Br. 13–14 (citing Campbell 4:52–55, Figs. 1 and 5).) Appellant asserts that the Examiner’s interpretation of the claim term “protrudes through” is unreasonably broad. (Reply Br. 3; Appeal Br. 14.) Appellant submits that “the plain meaning of ‘protrudes through’ is to extend from the beginning of the wall structure to beyond the end of the wall structure such that the lens juts from the outer surface of the wall structure,” and “Campbell does not disclose or suggest such a construction, as Campbell’s lens is clearly located within or behind the opening of the housing.” (Reply Br. 3.) We are persuaded by Appellant’s arguments and agree with Appellant’s interpretation of the claim term “protrudes through.” The broadest reasonable interpretation of the claimed “lens of said camera protrudes through said wall structure to exterior of said accessory module” does not encompass Campbell’s lens 45 being “located within or behind opening 35 [opening at a surface of optical device 2].” (See Campbell 4:52– Appeal 2019-001840 Application 15/049,570 6 56, Fig. 5; see also Reply Br. 3; Appeal Br. 14.) Campbell’s “lens element 45 is located within or behind opening 35” of optical device 2 as shown in Figures 5 and 7, and Campbell does not show the lens protruding to the exterior. (See Campbell 4:52–55, Figs. 5 and 7.) Campbell does not disclose lens 45 protruding through a wall structure or wall surface 39 to the exterior of optical device 2. (See Campbell Figs. 5–7.) Campbell also does not provide any dimensional information (e.g., about lens 45, opening 35, or wall thickness of the optical device) that would support the Examiner’s assertions that a “protrusion of the lens [45] extends to the exterior,” or that lens 45 would “extend beyond or above a surface” “through the opening,” or would have a “position or location . . . beyond [the opening].” (See Ans. 3– 4; Final Act. 16.) Therefore, the Examiner has not shown Campbell discloses all of the limitations of claim 1, and we reverse the Examiner’s anticipation rejection of independent claim 1 and dependent claims 3, 5, 8, 9, and 12. Because the above-discussed issues are dispositive as to the anticipation rejections of dependent claims 3, 5, 8, 9, and 12, we do not reach additional issues raised by Appellant’s arguments as to the anticipation rejections of claims 3, 8, and 12. (See Appeal Br. 15–17.) 2. 35 U.S.C. § 103(a) – Claim 6 The Examiner’s additional reliance upon Official Notice to teach the limitations of dependent claim 6 does not remedy the deficiencies of Campbell noted above. (See Final Act. 5.) Therefore, based on the same reasoning set forth for claims 1, 3, 5, 8, 9, and 12 above, we also reverse the Examiner’s obviousness rejection of claim 6. Appeal 2019-001840 Application 15/049,570 7 3. 35 U.S.C. § 103(a) – Claims 2 and 7 The Examiner additionally relies upon the Schofield ’392 reference to teach the limitations of dependent claims 2 and 7, but does not identify how Schofield ’392 remedies the deficiencies of Campbell noted above. (Final Act. 5–6.) Appellant argues claims 2 and 7 on the same basis as Appellant’s arguments for claim 1. (See Appeal Br. 17.) We addressed those arguments above, with respect to claim 1. Therefore, based on the same reasoning set forth for claims 1, 3, 5, 8, 9, and 12 above, we also reverse the Examiner’s obviousness rejection of claims 2 and 7. Appellant has also submitted further arguments with respect to the obviousness rejection of claim 2 and 7. (See Appeal Br. 17.) Because the issues discussed with respect to claim 1 are dispositive as to the obviousness rejection of dependent claims 2 and 7, we do not reach additional issues raised by Appellant’s arguments as to the obviousness rejection of claim 2 and 7. 4. 35 U.S.C. § 103(a) – Claims 4, 10, and 13–20 Similar to claim 1, independent claims 13 and 17 recite a lens protruding through a wall structure to the exterior of an accessory module, and the Examiner relies on Campbell for teaching this limitation. (See claim 13 (“said accessory module comprising a camera, said camera comprising an imaging sensor and a lens,” “said accessory module comprises a portion that faces towards the windshield,” “said portion comprising wall structure,” and Appeal 2019-001840 Application 15/049,570 8 “said lens of said camera protrudes through said wall structure to exterior of said accessory module”), claim 17 (“said accessory module comprising a camera, said camera comprising an imaging sensor and a lens,” “said accessory module comprises a portion that faces towards the windshield,” “said portion comprising wall structure,” and “said lens of said camera protrudes through said wall structure to exterior of said accessory module”); see also Final Act. 9–10, 12–13.) The Examiner additionally relies upon the Schofield ’522 reference to teach additional limitations in independent claims 13 and 17 and limitations of dependent claims 4, 10, 14–16, and 18– 20, but does not identify how Schofield ’522 remedies the deficiencies of Campbell noted above. (Final Act. 7–15.) Appellant argues independent claims 13 and 17 on the same basis as Appellant’s arguments for claim 1. (See Appeal Br. 20–22.) We addressed those arguments above, with respect to claim 1. Therefore, based on the same reasoning set forth for claims 1, 3, 5, 8, 9, and 12 above, we also reverse the Examiner’s obviousness rejections of independent claims 13 and 17, claims 4 and 10 (depending from claim 1), claims 14–16 (depending from claim 13), and claims 18–20 (depending from claim 17). Appellant has also submitted further arguments with respect to the obviousness rejections of claims 4, 10, 13, 17, and 18. (See Appeal Br. 18– 24.) Because the issues discussed with respect to claim 1 are dispositive as to the obviousness rejections of claims 4, 10, and 13–20, we do not reach additional issues raised by Appellant’s arguments as to the obviousness rejection of claim 4, 10, 13, 17, and 18.3 3 With respect to claim 18, the Examiner asserts that Campbell teaches and suggests “wherein said lens of said camera protrudes through said wall Appeal 2019-001840 Application 15/049,570 9 CONCLUSIONS The Examiner erred in rejecting claims 1, 3, 5, 8, 9, and 12 as anticipated under 35 U.S.C. § 102(b). The Examiner erred in rejecting claims 2, 4, 6, 7, 10, and 13–20 based upon obviousness under 35 U.S.C. § 103(a). DECISION For the above reasons, we REVERSE the Examiner’s anticipation rejection of claims 1, 3, 5, 8, 9, and 12 under 35 U.S.C. § 102(b), and we REVERSE the Examiner’s obviousness rejections of claims 2, 4, 6, 7, 10, and 13–20 under 35 U.S.C. § 103(a). structure to exterior of said accessory module into a recess region of said casing” because Campbell’s Fig. 5 shows a “camera in recessed region” and “it would have been obvious to one of ordinary skill in the art that the length of protrusion could be any length, see MPEP 2144.04 Section IV).” (Final Act. 15 (emphasis omitted).) However, the Examiner’s rejection of claim 18 is based on speculation and is unsupported by articulated reasoning because—in addition to Campbell not disclosing a camera in a recessed region, or a lens protrusion—the Examiner has not provided any reason why the person of ordinary skill in the art would have a reason to modify Campbell’s lens element to make the lens protrude through a wall structure to the exterior of the accessory module/optical device and into a recess region of the casing (as required by claim 18). A rejection cannot be based on “speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); see also In re Chaganti, 554 Fed. Appx. 917, 922 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’. . . Such circular reasoning is not sufficient—more is needed to sustain an obviousness rejection.”). Appeal 2019-001840 Application 15/049,570 10 In summary: Claims Rejected 35 U.S.C.§ Basis Affirmed Reversed 1, 3, 5, 8, 9, 12 102(b) Campbell 1, 3, 5, 8, 9, 12 6 103(a) Campbell 6 2, 7 103(a) Campbell, Schofield ’392 2, 7 4, 10, 13–20 103(a) Campbell, Schofield ’522 4, 10, 13–20 Overall Outcome 1–10, 12–20 REVERSED Copy with citationCopy as parenthetical citation