MAGNA ELECTRONICS INC.

Patent Trials and Appeals Board

May 13, 2020

2019001840 (P.T.A.B. May. 13, 2020)

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).
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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;
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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.)
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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
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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–
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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.
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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
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“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
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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.”).

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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