~ ....... , .. ~
`~3 UNITED STATES PATENT AND TRADEMARK O FFICE
`~ ·~ .. "'~
`
`)I ·f}
`
`UNITED STATF.S DEPARTMENT OF COMMERO:
`United States P~tcnt and T rodcmork 001ce
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria. Vir~inio 2231 3·14SO
`www.usp1o.gO\'
`
`API'I.ICA TION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/765.487
`
`01 /27/2004
`
`Mario Boisvert
`
`14-733C2DI
`
`9537
`
`1011612006
`7590
`2S060
`WATTS HOFFMANN CO. L.P.A.
`I 100 SUPERIOR AYE., SUITE 1750
`CLEVELAND, OH 44114
`
`EXAMINER
`
`FLETCHER. MARLON T
`
`ART UNIT
`
`2SJ7
`
`I'AI'ER NUMI:l(R
`
`DATE MAILED: 10116/2006
`
`Please find below and/or attached art Office communication concerning this application or proceeding.
`
`I'T0-90C (Rev. 10/03)
`
`t ,:
`' ~.
`
`~ ..
`
`. ..
`
`iJ
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 1
`
`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`10n65,487
`
`Examiner
`
`BOISVERT ET AL.
`
`Art Unit
`
`2837
`Marlon T. Fletcher
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event. however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of lhis communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1. 704(b).
`Status
`
`-
`
`1)[83 Responsive to communication(s) filed on 05 June 2006.
`2a)0 This action is FINAL.
`2b)[83 This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C. D. 11 , 453 O.G. 213.
`
`Disposition of Claims
`
`4)[83 Claim(s) 1-35 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdraWn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[83 Claim(s) 1-35 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S. C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received .
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) [8] Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 lnfonnation Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)IMail Date __ .
`
`4) D Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Palen! and Trademark Offi~
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20061010
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 2
`
`

`

`Application/Control Number: 1 0/765,487
`Art Unit: 2837
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections - ~5 USC§ 102
`
`1.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public
`use or on sale in this country, more than one year prior to the date of application for patent in the United
`States.
`
`2.
`
`Claims 1-20, 23, 25, 28-33, and 35, are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Jones et al. (4,831 ,509).
`
`As recited in claims 1 and 2, Jones et al. disclose an apparatus for controlling
`
`motion of a motor driven element in a vehicle over a range of motion and for altering
`
`said motion when undesirable resistance to the motion is encountered, said apparatus
`
`comprising: a sensor for measuring a parameter of a motor coupled to the motor driven
`
`element that varies in response to a resi~tance to motion during all or part of a range of
`
`motion of the motor driven element (column 3, lines 7-16); a memory for storing a
`
`number of measurement values from the sensor based on measurements of said
`
`parameter over at least .a portion of the range of motion (aqstract; column 3, line 56
`
`through column 4, line 14; and column 5, lines 26-57); a controller (microprocessor',
`
`figure 8) coupled to the memory for determining to de-activate the motor based on the
`
`measurement values stored in the memory as the motor driven element moves over its
`
`range of motion (column 4, lines 49-55); and a controller interface coupled to the motor
`
`for altering motion of said motor driven element in response to a determination made by
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 3
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page 3
`
`the controller (column 4, lines 53-57}, wherein altering is also in response to a
`
`determination that the parameter is outside the parameter range.
`
`As recited in claims 3 and 31, Jones et al. disclose the method, wherein the
`
`motor driven element is a window or panel and additionally comprising reverse
`
`actuating the window or panel prior to moving said window or panel in a direction to
`
`close the window or panel (column 4, lines 55-57).
`
`As recited in claim 4 , Jones et al. disclose the method, additionally comprising
`
`maintaining a position of the window or panel based on the sensed parameter and the
`
`reverse actuation is initiated if a leading edge of the window or panel is near a closed
`
`position (column 3, lines 17-28).
`
`As recited in claims 5, 10, and 11 , Jones et al. disclose the method, movement is
`
`first initiated toward a closed position when a leading edge of the window or panel is
`
`near the closed position and wherein the reverse actuation is performed upon a sensing
`
`of an obstacle that is based on determining the parameter is outside the parameter
`
`range (column 3, lines 17-28; and column 4, lines 49-57).
`
`As recited in claims 6 and 33, Jones et al. disclose an apparatus for controlling
`
`activation of a motor coupled to a motor vehicle window or panel for moving said.
`
`window or panel along a travel path and deactivating the motor if an obstacle is
`
`encountered by the window or panel, said apparatus comprising: a sensor for sensing
`
`movement of the window or panel and providing a sensor output signal related to a
`
`speed of movement of the window or panel (discussed above; a switch for controllably
`
`actuating the motor by providing an energization signal (figure 7), and a controller
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 4
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page4
`
`having an interface coupled to the sensor and the switch for controllably energizing the
`
`motor (figures 7 and 8); said controller sensing a collision with an obstruction when
`
`power is applied to the controller by: monitoring movement of the window or panel by
`
`monitoring a signal from the sensor related to the movement of the window or panel
`
`(column 3, Lines 9-28), identifying a collision of the window or panel with an obstacle
`
`due to a change in the signal from the sensor that is related to a change in movement of
`
`the window or panel (column 3, line 56 through column 4, line 55); and outputting a
`
`control signal to said switch to deactivate said motor in response to a sensing of a
`
`collision between an obstacle and said window or panel (column 4, Lines 55-57).
`
`As recited in claims 7, 29, and 35, Jones et al. disclose the apparatus, wherein
`
`the controller comprises a programmable controller including a processing unit for
`
`executing a control program and including a memory for storing multiple window or
`
`panel speed values corresponding to a signal received from the sensor (column 3, line
`
`36 through column 4, line 39).
`
`As recited in claims 8 and 30, Jones et al. disclose the apparatus, additionally
`
`comprising one or more limit switches for use by the controller to determine window or
`
`panel position for use in identifying a collision (column 5, Lines 26-57).
`
`As recited in claim 9, Jones et al. disclose the apparatus. wherein the control
`
`program adjusts an obstacle detection threshold in real time based on immediate past
`
`measures of the signal sensed by the sensor to adapt to varying conditions encountered
`
`during operation of the window or panel (column 4 , Lines 49-68).
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 5
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page 5
`
`As recited in claims 12, 19, 20, and 28, Jones et al. disclose apparatus for
`
`controlling activation of a motor for moving an object along a travel path and de-
`
`activating the motor if an obstacle is encountered by the object comprising: a) a
`
`movement sensor for monitoring movement of the object as the motor moves said
`
`object along a travel path (discussed above; a switch for controlling energization of the
`
`motor with an energization signal (figure 7); and a controller (microprocessor) including
`
`an interface coupled to the switch means for controllably energizing the motor and said
`
`interface additionally coupling the controller to the movement sensor for monitoring
`
`signals from said movement sensor (discussed above; said controller comprising a
`
`stored program that: determines motor speed from an output signal from the movement
`
`sensor {column 3, lines 17-28); calculates an obstacle detect threshold based on motor
`
`speed of movement detected during at least one prior period of motor operation (column
`
`3, lines 39-47); compares a value based on currently sensed motor movement with the
`
`obstacle detect threshold (column 3, lines 48-55. , and column 3, Line 56 through
`
`column 4 , line 14); and outputs a signal from the interface to said switch for stopping the
`
`motor if the comparison based on currently sensed motor movement indicates the
`
`object has contacted an obstacle (column 4, lines 49-57).
`
`As recited in claim 13, Jones et al. disclose the apparatus, wherein the controller
`
`includes a buffer memory for storing successive values of motor movement for use in
`
`determining the obstacle detect threshold (column 3, Line 56 through column 4, Line
`
`39).
`
`As recited in claim 14, Jones et al. disclose the apparatus, wherein the controller
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 6
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page6
`
`includes a clock and an input from the movement sensor is in a form of a sequence of
`
`pulses and further wherein the controller counts clock signals occurrences between
`
`receipt of pulses to provide an indication of motor speed (column 3, Lines 9-10).
`
`As recited in claim 15, Jones et al. disclose the apparatus, wherein the controller
`
`includes an interface for monitoring user actuation of control inputs for controlling
`
`movement of the window or panel and wherein the controller maintains a motor
`
`energization sequence a specified minimum time period in response to a short period
`
`user actuation of said control inputs to maintain position accuracy in monitoring a
`
`window or panel movement (column 3, Line 67 through column 4, line 14).
`
`As recited in claim 16, Jones et al. disclose the apparatus, wherein the controller
`
`includes an interface for monitoring user actuation of control inputs for controlling
`
`movement of the object and wherein in response to a specified input the controller
`
`conducts a calibration motor energization sequence to determine parameters of object
`
`(column 4, Lines 49 through column 5, Line 6).
`
`As recited in claims 17 and 32, Jones et al. disclose the apparatus, wherein the
`
`motor is coupled to a motor vehicle window or panel and wherein the controller includes
`
`an interface for monitoring user actuation of control inputs for controlling movement of
`
`the window or panel and wherein the controller maintains a position indication which is
`
`updated in response movement of the window or panel and further wherein the
`
`controller reverse actuations the motor near an end point in an object path of travel to
`
`avoid false obstacle detection in the region of closure of the window or panel (column 4,
`
`lines 58-68).
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 7
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page 7
`
`As recited in claim 18, Jones et al. disclose the apparatus, wherein the sensor is
`
`a current sensor and wherein the controller includes means for adjusting the obstacle
`
`threshold based on dynamic motor current as sensed from the current sensor to take
`
`into account varying loads experienced by the motor (column 4, Lines 15-46; and
`
`column 5, Line 60 through column 6, Line 34).
`
`As recited in claim 23, Jones et al. disclose the apparatus, additionally
`
`comprising an obstacle detector having an output coupled to the controller that senses a
`
`disruption in a region through which the window or panel moves (discussed above).
`
`As recited in claim 25, Jones et al. disclose the apparatus, wherein the obstacle
`
`detector comprises an infrared light source and detector (column 3, Lines 9-16).
`
`Claim Rejections- 35 USC§ 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if 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.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`4.
`
`Claims 21, 22, 24, 26, 27, and 34, are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Jones et al.
`
`Jones et al. are discussed above. Jones et al. do disclose optoelectronic
`
`sensors or transducers. Jones et al. do not disclose a variety of pickups or transducers.
`
`Official notice is taken with respect to it being well known in the are to detect
`
`motion, movement, or an obstacle, using any of: a Hall-effect sensor, a magnetic
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 8
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page 8
`
`pick-up, a microwave generator and a reflected wave transducer, and a field effect
`
`device which can be a magnetic field inductive sensor.
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to utilize any of the following sensors or detectors with the apparatus of Jones
`
`et al. , because the teachings merely provide alternate means for providing the same,
`
`wherein one could substitute one sensor or detector for another.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Marton T. Fletcher whose telephone number is 571-272-
`
`2063. The examiner can normally be reached on M-w, F.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, David Martin can be reached on 571 -272-2107. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 9
`
`

`

`Application/Control Number: 10/765,487
`Art Unit: 2837
`
`Page 9
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system . Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system , see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`--
`-··
`--
`
`10/03/06
`
`a.rl~"' Fi -t-kht:r
`. *·i~.-J ·@tvl:nt>r
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 10
`
`

`

`Application/Control No.
`
`10/765,487
`
`Examiner
`
`Marion T. Fletcher
`
`U.S. PATENT DOCUMENTS
`
`Name
`
`Ouhame, Dean
`
`Schap, William W.
`Lamirande, Rodger p.
`Jones et al.
`
`Date
`MM-YYYY
`
`06-1993
`
`08-1991
`
`08-1989
`
`05-1989
`
`05-1983
`
`Matsuoka et al.
`
`Notice of References Cited
`
`Document Number
`Country Code-Number-Kind Code
`
`US-5,218,282
`
`*
`*
`A
`*
`B US-5,039,925
`*
`c US-4,855,653
`* D US-4,831,509
`*
`E US-4,383,206
`F US-
`G US-
`H US-
`US-
`
`I
`
`Applicant(s)/Patent Under
`Reexamination
`BOISVERT ET AL.
`
`Art Unit
`
`2837
`
`Page 1 of 1
`
`Classification
`
`318/603
`
`3181282
`
`318/282
`700190
`
`318/445
`
`US-
`J
`K US-
`US-
`
`l
`M US-
`
`*
`
`Document Number
`Country Code-Number-Kmd Code
`
`Date
`MM-YYYY
`
`Country
`
`Name
`
`ClassifiCation
`
`FOREIGN PATENT DOCUMENTS
`
`*
`
`N
`
`0
`
`p
`a
`R
`s
`T
`
`u
`
`v
`
`w
`
`X
`
`NON-PATENT DOCUMENTS
`Include as applicable: Author, Title Date, Publisher, Edition or Volume. Pertinent Pages)
`
`/
`
`/
`
`I ,
`
`/
`
`.
`
`~
`
`·-
`
`..
`
`. A copy of th1s reference IS not being furn1shed With this Office act10n. (See MPEP § 707 .05(a).)
`
`Dates in MM·YYYY format are publication dates. Classifications may be US or foreign.
`
`U.S. Palen! and Trademarl< Offlca
`PT0-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20061010
`
`/
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 11
`
`

`

`Index of Claims
`
`II Ill 1111 I Ill 1111
`
`Application/Control No.
`
`10/765,487
`Examiner
`
`Applicant(s)/Patent under
`Reexamination
`
`BOISVERT ET AL.
`Art Unit
`
`Marlon T. Fletcher
`
`2837
`
`.J Rejected
`
`Claim
`
`Date
`
`= Allowed
`iij ~ ,,
`
`c
`i.i:
`
`.g N
`0 I~
`1 v
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`33
`II
`34
`35 v
`36
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`48
`49
`50
`
`A
`
`0
`
`Appeal
`
`Objected
`
`Date
`
`-
`
`+
`
`(Through numeral)
`Cancelled
`
`N Non-Elected
`
`Restricted
`
`I
`
`Interference
`
`Claim
`
`Date
`
`C)
`
`iij
`c:
`
`iij
`.!:
`i.i: 5
`51
`52
`53
`54
`55
`56
`57
`58
`59
`60
`61
`62
`63
`64
`65
`66
`67
`68
`69
`70
`71
`72
`73
`74
`75
`76
`77
`78
`79
`80
`81
`82
`83
`84
`85
`86
`87
`88
`89
`90
`91
`92
`93
`94
`95
`96
`97
`98
`99
`100
`
`(ij
`c:
`
`Claim
`n;
`c:
`:g,
`u:: 0
`101
`102
`103
`104
`105
`106
`107
`108
`109
`110
`111
`112
`113
`114
`115
`116
`117
`118
`119
`120
`121
`122
`123
`124
`125
`126
`127
`128
`129
`130
`131
`132
`133
`134
`135
`136
`137
`138
`139
`140
`141
`142
`143
`144
`145
`146
`147
`148
`149
`150
`
`U.S. Patent and Trademar1< Office
`
`Part of Paper No. 20061010
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 12
`
`

`

`Search Notes
`
`111111111111 II II
`
`II
`
`Application/Control No.
`
`10/765,487
`Examiner
`
`Applicant(s}/Patent under
`Reexamination
`
`BOISVERT ET AL.
`Art Unit
`
`Marian T . Fletcher
`
`2837
`
`SEARCHED
`
`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`
`Class
`
`Subclass
`
`Date
`
`Examiner
`
`DATE
`
`EXMR
`
`318
`
`264-266
`
`10/2/2006
`
`MTF
`
`EAST
`
`10/2/2006
`
`MTF
`
`280-286
`
`460-470
`
`565
`
`626
`
`434
`
`139
`
`474-477
`
`815
`
`833
`
`903
`
`36
`
`49
`
`701
`
`10/2/2006
`
`MTF
`
`INTERFERENCE SEARCHED
`
`Class
`
`Subclass
`
`Date
`
`Examiner
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20061010
`
`BNA/Brose Exhibit 1039
`IPR2014-00416
`Page 13
`
`