Ex Parte Adams et al

Patent Trial and Appeal Board

Sep 24, 2012

11096783 (P.T.A.B. Sep. 24, 2012)

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.
11/096,783 04/01/2005 Jason O. Adams 6232-276 (204998) 3354
7590 09/24/2012
Gregory J. Lavorgna
Drinker Biddle & Reath LLP
One Logan Square
18th and Cherry Streets
Philadelphia, PA 19103-6996
EXAMINER
PUROL, DAVID M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
09/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JASON O. ADAMS, THOMAS W. BRENNER, BRANDON J.
DETMER, ROBERT C. NEWMAN, JR., and JOEL S. SPIRA
____________________

Appeal 2010-009411
Application 11/096,783
Technology Center 3600
____________________

Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/096,783

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-15, 17-20, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

The application pertains to motorized roller tube systems used for
winding flexible members such as shades and screens. See Spec. para.
[0002]. Claims 1, 11, 15, and 20 are the independent claims on appeal.
Claim 1, reproduced below with one of the disputed limitations emphasized,
is illustrative of the claimed subject matter:
1. A motorized roller tube system comprising:
a rotatably supported roller tube;
a flexible member engaging the roller tube for winding
receipt of the flexible member by the roller tube;
a DC motor wound with less than four electrical poles,
the motor having an output shaft rotated at a motor speed;
a gear assembly connected to the output shaft of the
motor such that the gear assembly is driven by the motor, the
gear assembly including a plurality of gear stages adapted to
produce an output rotational speed that is reduced with respect
to the motor speed;
a tube-engagement member connected to the gear
assembly for rotation at the reduced rotational speed of the gear
assembly output, the tube-engagement member adapted for
engagement with the roller tube for rotation of the roller tube at
the gear assembly output speed; and
a controller connected to the motor for controlling the
motor to wind or unwind the flexible member with respect to
the roller tube during movement of the flexible member to a

1 Appellants identify the real party in interest as Lutron Electronics Co., Inc.
App. Br. 4.
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position located between a fully-closed position and a fully
opened position for the flexible member,
wherein the motor operates at an operating motor speed
at a motor efficiency that is less than 25 percent of the peak
efficiency during any movement of the flexible member by the
controller that is less than 50 percent of a maximum motor
speed of which the motor is capable.

REJECTIONS
Appellants seek review of the following rejections:
(1) Claims 1, 2, 4-15, 17-20, and 22 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 3.
(2) Claims 1, 2, 4-15, 17-20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Astengo (EP 1 143 101 A2, pub. Oct. 10, 2001) and Will
(US 5,848,634, iss. Dec. 15, 1998). Ans. 3.

ANALYSIS
Claims 1, 2, 4-15, 17-20, and 22 under § 112, first paragraph

Although the rejection under § 112, first paragraph, is repeated in the
“Grounds of Rejection to be Reviewed on Appeal” section of the Appeal
Brief, Appellants stated that they do not disagree with the Examiner that the
disputed limitation “a DC motor wound with less than four electrical poles”
(emphasis added) constitutes new matter. App. Br. 14. Because Appellants
have not provided substantive arguments traversing the rejection, Appellants
have waived their right for further appellate review of the rejection. See 37
C.F.R. § 41.37(c)(1)(vii); see also Hyatt v. Dudas, 551 F.3d 1307, 1313-14
(Fed. Cir. 2008) (the Board may treat arguments the appellant failed to make
for a given ground of rejection as waived). Accordingly, we summarily
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sustain the rejection of claims 1, 2, 4-15, 17-20, and 22 under § 112, first
paragraph.

Claims 1, 2, 4-15, 17-20, and 22 under § 103(a)

Only issues and findings of fact contested by Appellants in their
Briefs will be addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76
(BPAI 2010). Appellants argue the patentability of claims 1, 2, 4, 5, 7-10,
12-15, 17, 18, 20, and 22 as a group. App. Br. 14-22. We select
independent claim 1 as representative. See 37 C.F.R. 41.37(c)(1)(vii).
The Examiner found that Astengo discloses all of the limitations of
claim 1, except Astengo “does not set forth the use of a DC motor” and
[r]egarding the values of the motor speed and torque, both
[cited references] provide a detailed analysis of the relationship
between motor speed and torque and to have selected a desired
value by known methods with no change in their respective
functions would have yielded predictable results to one of
ordinary skill in the art.
Ans. 3-4. The Examiner relies on Will for the disclosure of a DC motor.
Ans. 3. Appellants assert that Astengo and Will teach away from their
combination “since [Astengo] teaches modifying AC motors to decrease the
operating speed, and since Will teaches using DC motors at the
manufacturer’s recommended efficiency.” App. Br. 17. However, we are
not persuaded by Appellants’ arguments that the Examiner erred in
combining Astengo and Will. The fact that one reference is silent as to what
another reference teaches is not a “teaching away” within the meaning of 35
U.S.C. § 103(a). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any … alternatives because such disclosure
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does not criticize, discredit, or otherwise discourage the solution
claimed.…”). In the instant case, Appellants have not identified any
particular disclosure in Astengo that discredits or discourages the use of DC
motors. Appellants have also not identified any particular disclosure in Will
that discredits or discourages the use of AC motors or the operation of
motors under various operating parameters.
Appellants also contend that “[o]ne skilled in the art would not expect
it to be straightforward to replace an AC motor with a DC motor” because
“AC and DC motors have very different operating characteristics.” App. Br.
17. “[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Examiner found
that the prior art contained a device (Astengo) which differed from the
claimed subject matter in that it did not specifically describe its motor as a
DC motor. Ans. 3. The Examiner found that one of ordinary skill in the art
could have substituted the DC motor of Will into the roller tube system of
Astengo, and this substitution would have yielded predictable results. Ans.
3. In particular, the Examiner found that “Will sets forth a detailed
disclosure of the manner and installation in which a DC motor is utilized
with a motorized roller tube system.” Ans. 6
While Appellants assert that a “one-for-one substitution would be
unthinkable to a person of ordinary skill in the art” (App. Br. 17), the
relevant inquiry is whether the results of the substitution would be
predictable, not whether the substitution would be “one-for-one.”
Appellants’ Specification recognizes that there may be applications of
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Appellants’ motorized roller tube assembly in which DC motors may be
preferred and others in which AC motors may be preferred (Spec. para.
[0043]), and also describes how AC motors may differ from DC motors in
the use of a frequency controlled inverter circuit, for example (Spec. para.
[0044]). As noted above, Will sets forth a detailed description of the use of
DC motors. Ans. 6. The Examiner found that the results of substituting a
DC motor for an AC motor would be predictable to one of skill in the art,
and Appellants have not set forth convincing arguments or evidence that this
finding was in error.
Appellants also contend that the cited references teach away from
using a motor operating at less than 25 percent of the motor’s peak
efficiency, that a person of ordinary skill would design a system to operate at
or near peak efficiency, and that secondary considerations support that one
of skill in the art would not operate a DC motor at less than 25 percent of the
motor’s peak efficiency. App. Br. 14. The recitation in claim 1 that the
motor operates at an efficiency that is less than 25 percent of the peak
efficiency is merely an intended use. Appellants’ contentions regarding
motor efficiency are not convincing because the limitation that the claimed
motor of the motorized roller tube system “operate[] at an operating motor
speed at a motor efficiency that is less than 25 percent of the peak efficiency
during any movement of the flexible member by the controller that is less
than 50 percent of a maximum motor speed . . .” does not have patentable
weight if the claimed structure of the motorized roller tube system is already
known, regardless of whether the structure has actually been used in that
way. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.1997).
“[A]pparatus claims cover what a device is, not what a device does.”
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Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Similarly, while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
Schreiber, 128 F.3d at 1477-78. Therefore, the claim is construed as
requiring the apparatus of the prior art to be merely capable of performing
the recited intended use or functionally defined limitation (i.e., operating at a
motor efficiency that is less than 25 percent of the peak efficiency).
Appellants have not provided persuasive argument or evidence that the prior
art structure (i.e., Astengo’s device with an electric motor for actuating a
roller tube for winding and unwinding roll-up members (Astengo, col. 1, ll.
3-6) as modified with the DC motor of Will (Will, col. 14, ll. 42-44)) is
incapable of performing the intended use or functionally defined limitation
of the claimed apparatus. Ans. 3
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claim 1 would have been obvious from
the combination of Astengo and Will; and we sustain the rejection of claims
1, 2, 4, 5, 7-10, 12-15, 17, 18, 20, and 22 under § 103(a).

Claims 6, 11, 19 under § 103(a)

Appellants separately argue the patentability of independent claim 11
and dependent claims 6 and 19. App. Br. 22-23. Appellants contend that
Astengo and Will do not disclose the invention as claimed in independent
claim 11 and dependent claims 6 and 19 that recite “the gear assembly has a
total gear ratio of approximately 20:1” because Astengo discloses a gear
ratio of about 60:1 – 80:1 and Will discloses a gear ratio of about 119:1.
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App. Br. 22; Reply Br. 8. Appellants’ argument does not address the
Examiner’s stated basis for the rejection, which does not rely upon Astengo
or Will for the specific ratio. Instead, the Examiner found that Astengo
establishes the gear ratio to be a results-effective variable that achieves the
recognized result of reducing rotation speed from motor speed to a lower
speed required to drive the roller tube. Ans. 8; see also Astengo, col. 2, ll.
22-28 (“[T]he presence of a mechanical speed reduction gear . . . is
unavoidable for reducing the rotation speed of single-phase electric motors
used for these applications . . . ”). The Examiner concluded that since the
gear ratio is a results-effective variable, it would have been obvious to one
of ordinary skill in the art to have selected the gear ratio in the claimed gear
ratio range. Ans. 8; see In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellants have failed to set forth persuasive arguments or evidence
to establish nonobviousness of the gear ratio, such as providing evidence
that a person of ordinary skill in the art would fail to recognize that gear
ratio is a results-effective variable, or that the claimed gear ratio provides
unexpectedly good results as compared to values outside of the claimed
range. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claims 6, 11, and 19 would have been
obvious from the combination of Astengo and Will; and we sustain the
rejection of claims 6, 11, and 19 under § 103(a).

DECISION
The Examiner’s rejection of claims 1, 2, 4-15, 17-20, and 22 is
AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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