Ex Parte Lähteenmäki et al

Patent Trial and Appeal Board

May 31, 2017

13428820 (P.T.A.B. May. 31, 2017)

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.
13/428,820 03/23/2012 Jussi LAHTEENMAKI 1381-0470PUS1 1000
127226 7590 06/02/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
WILLIAMS, THOMAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSSI LAHTEENMAKI and TARVO VIITA-AHO1
Appeal 2015-003166
Application 13/428,820
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jussi Lahteenmaki and Tarvo Viita-Aho (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—3 and 5—12,
15, 16, and 18—20.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on May 16, 2017.
We AFFIRM-IN-PART.
1 According to Appellants, the Real Party in Interest is Kone Corporation.
Appeal Br. 1 (filed Aug. 21, 2014).
2 Claims 4, 13, 14, and 17 have been canceled. Appeal Br. 12—14 (Claims
App.) ; see also, Amendment 3 (filed Aug. 18, 2014); Advisory Act. 2 (dated
Aug. 25, 2014).
Appeal 2015-003166
Application 13/428,820
CLAIMED SUBJECT MATTER
The subject matter of Appellants’ claimed invention “relates to
solutions for damping the noise of a brake.” Spec. 1,11. 5—6. Independent
claim 1 is reproduced below and is representative of the claimed subject
matter.
1. A brake comprising:
a frame part;
an armature part supported by the frame part in a manner
that allows movement;
an electromagnet for opening the brake; and
a damping arrangement for damping the noise of the
brake, wherein the damping arrangement is made to be
conductive to magnetic flux, wherein the damping arrangement
is fitted on the pathway of the magnetic flux of the electromagnet
of the brake, and
wherein the damping arrangement is made of a
ferromagnetic composite material, which comprises a flexible
matrix, to which matrix ferromagnetic material has been added.
Appeal Br. 12 (Claims App.) (emphasis added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—3, 5—9, 12, 15, 16, and 18—20
under 35 U.S.C. § 103(a) as being unpatentable over Pfann (US
6,321,883 Bl, iss. Nov. 27, 2001) and Imazawa (JP 59-062178
A, iss. Apr. 9, 1984)3.
3 We derive our understanding of this reference from an English language
translation contained in the image file wrapper of this application. All
references to the text of this document are to portions of the translation.
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Application 13/428,820
II. The Examiner rejected claims 10 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Pfann, Imazawa, and
Maurice (US 2002/0100646 Al, pub. Aug. 1, 2002).
ANALYSIS
Rejection I
Claims 1—3, 5, 8, 9, 12, 15, 16, and 18—20
Appellants argue for patentability of claims 1—3, 5, 8, 9, 12, 15, 16,
and 18—20 together as a group. Appeal Br. 4—7. We select claim 1 as
representative of this group, and claims 2, 3, 5, 8, 9, 12, 15, 16, and 18—20
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
For claim 1, the Examiner’s rejection finds Pfann discloses each
element claimed, except “wherein the damping arrangement is made of a
ferromagnetic composite material, which comprises a flexible matrix, to
which matrix ferromagnetic material has been added.” Final Act. 3. Finding
Imazawa teaches the claimed ferromagnetic composite material, which
according to the Examiner “appears [as] providing] improved damping
capability,” the Examiner concludes,
it would have been obvious to one of ordinary skill in the art at
the time of the invention when having to choose a damping
material for the apparatus of Pfann et al. to have considered and
utilized the ferrite elastic material of Imazawa et al., as this
material has an improved damping capability and durability.
Id. Appellants contend two errors with the Examiner’s rejection: (1) it fails
to establish Imazawa is analogous art (see Final Act. 4—6), and (2) it fails to
provide a motivation for replacing the entire damping arrangement of Pfann
rather than just the middle plastic layer 58 between metal disks 9 and 9' (see
id. at 6). Neither contention is persuasive for the following reasons.
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Appellants allege Imazawa is non-analogous art because it “is not
attempting to solve the same problem as Pfann and the claimed invention.”
Id. at 4. However, “[a] reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The Federal
Circuit notes, “[t]he Supreme Court[] . . . directs us to construe the scope of
analogous art broadly” because “'familiar items may have obvious uses
beyond their primary purposes.” Wyers v. Master Lock Co., 616 F.3d 1231,
1238 (Fed. Cir. 2010) (quoting with emphasis, KSRInt’l Co. v. Teleflex Inc.,
550 U.S. 398, 402 (2007)). For example, when a problem is not unique to
the claimed subject matter, a skilled artisan addressing a problem with
portable computers may still naturally look to areas such as “a desktop
telephone directory, a piano lid, a kitchen cabinet, a washing machine
cabinet, a wooden furniture cabinet, or a two-part housing for storing audio
cassettes.” See In re Paulsen, 30 F.3d 1475, 1481—82 (Fed. Cir. 1994)
(affirming rejection of a laptop computer hinge as obvious over hinged
cabinets, piano lids, etc., because the “problem is not unique to portable
computers”).
The In re ICON Health & Fitness, Inc. decision is instructive. There,
Icon’s invention related to a treadmill and the challenged reference related to
a bed. In re ICON Health & Fitness, Inc., 496 F.3d at 1379. Icon’s
invention provided “a treadmill with a folding mechanism and a means for
retaining that mechanism in the folded position.” Id. at 1380. Because the
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problem associated with the folding mechanism did not require any
particular focus on treadmills, the Federal Circuit held “[ajnalogous art to
Icon’s application . . . may come from any area describing hinges, springs,
latches, counterweights, or other similar mechanisms — such as the folding
bed in [the challenged reference].” Id. (emphasis added).
Here, the Examiner finds both Pfann and Imazawa disclose
applications in which “a structural element [is] used for damping the
transmission of vibration from a source.” Final Act. 4. “It stands to reason,”
the Examiner finds further, that a skilled artisan considering the Pfann
application would have been attracted to the improved vibration absorbing
capabilities of the ferrite elastic material Imazawa discloses because it would
have “predictably improved the damping characteristics of the plastic layer
58” and, thereby, the overall damping characteristics of the disclosed
damping arrangement Pfann discloses. Id. at 4—5. In other words, “when
one is faced with solving the transmission of vibrations between two
structures ... a person in the art would have considered the damping
material of Imazawa.” Ans. 3.
Appellants do not dispute a skilled artisan would have recognized the
capabilities of the ferrite elastic material of Imazawa to improve the
damping characteristics of the plastic layer 58 in Pfann, but instead contend
the Examiner errs because a skilled artisan would not have looked to
Imazawa’s application that damps rotational vibrations. Appeal Br. 4—6.
Appellants notably do not offer any evidentiary support for this position.
Appellants characterize Pfann as limited to damping sound due to collisions,
but Pfann more broadly teaches,
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[w]hen the damping means are located between the armature
plate and the magnetic body not only do they attenuate the
transmission of oscillations and/or impacts from the armature
plate to the magnetic body and conversely, but also attenuate an
initiation of oscillations in the armature plate.
Pfann, col. 3,11. 14—18. Contrary to Appellants’ position, Pfann identifies
concerns with attenuating (i.e., damping) the transmission of oscillations
(i.e., vibrations), which supports the Examiner’s finding that Pfann and
Imazawa address a common problem. Appellants, moreover, fail to provide
any technical reason persuasively showing why damping the transmission of
oscillation presents a different problem than damping “rotational” vibrations.
Given Imazawa is directed to attenuating the transfer of oscillations (i.e.,
vibrations) between two structures (i.e., between the motor and the frame
(see Imazawa 3)), we are not persuaded of error. To the contrary, the
Examiner has made a prima facie case Imazawa is analogous art, which a
preponderance of the evidence supports and the Appellants have not
persuasively rebutted.
Appellants also contend, “the Examiner has failed to explain why one
of ordinary skill in the art would be motivated by Imazawa to replace the
entire combination of metal disk 9’, plastic layer 58 and metal disk 9 with a
[damping] arrangement made of a ferromagnetic composite material
comprising a flexible matrix and matrix of ferromagnetic material or made
from a ferrite polymer composite.” Appeal Br. 6; Reply. Br. 2. This
contention is neither commensurate with the scope of claim 1 nor the
Examiner’s rejection. First, the broadest reasonable interpretation of
“damping arrangement” does not exclude the addition of metal disks to the
claimed ferromagnetic damping material, and Appellants do not identify any
evidence from the Specification that would suggest otherwise. Second,
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rather than finding a skilled artisan would have replaced the entire damping
arrangement, the Examiner’s rejection finds a skilled artisan would have
been motivated to substitute Pfann’s viscoelastic layer 58 with the
elastic/ferrite material Imazawa discloses to improve the damping absorption
capabilities. Ans. 3. Appellants’ arguments fail to address this rationale
and, thus, do not apprise us of error.
Therefore, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 and, as a result, also of claims 2, 3, 5, 8, 9, 12, 15, 16,
and 18—20.
Claims 6 and 7
Claim 6 recites, “wherein the damping arrangement is made from a
ferrite polymer composite film, the thickness of which is approx. 0.2 to 0.4
millimeters,” and claim 7 is substantially the same except it recites a
“thickness of which is approx. 0.4 to 1 millimeter or even more.” Appeal
Br. 12—13 (Claims App.). Finding Pfann discloses a damping arrangement
in the range of 0.5 mm to 1.5 mm, the Examiner rejects claims 6 and 7
concluding the broadest reasonable interpretation of these claims are “such
that the entire thickness of the damping arrangement is considered [in
Pfann], and not just the elastic or polymer portion.” Final Act. 7—A.
Appellants assert persuasively that the Examiner’s finding is unfounded.
Appeal Br. 7—8.
In particular, Appellants argue Pfann fails to disclose a ferrite polymer
composite having the claimed thicknesses. Id. Appellants note that Pfann,
at column 7, lines 28—30, teaches the plastic layer 58, which the Examiner
determines a skilled artisan would substitute with the elastic/ferrite material
Imazawa discloses (see Final Act. 4—5), “has a thickness of 0.05 mm.” Id. at
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7. We note further Pfann teaches, “[t]he thickness of the damping means is
preferably made very small, in order not to enlarge the air gap between the
armature plate and the magnetic body unnecessarily.” Pfann col. 7,11. 51—
54. In view of these disclosures, a preponderance of the evidence does not
support that Pfann discloses the limitations of claims 6 and 7.
The Examiner’s reliance on the thicknesses Pfann discloses for the
entire damping arrangement, and not just the elastic or polymer portion,
relies on an unreasonably broad interpretation of claims 6 and 7. The plain
meaning of the claim language requires the ferrite polymer composite itself
to have the claimed thicknesses. The Examiner notably does not identity
any portion from the Specification supporting a different interpretation.
Therefore, we do not sustain the Examiner’s rejection of claims 6 and 7.
Rejection II
Appellants argue claims 10 and 11 are patentable because the
Examiner does not rely on Maurice to cure the deficiencies with the
rejection of claim 1. Appeal Br. 8. For the reasons discussed above (see
supra, Rejection I), we are not persuaded the Examiner’s rejection of claim
1 suffers from any of the alleged deficiencies. Therefore, we sustain the
Examiner’s rejection of claims 10 and 11.
DECISION
We affirm the Examiner’s decision rejecting claims 1—3, 5, 8—12, 15,
16, and 18-20.
We reverse the Examiner’s decision rejecting claims 6 and 7.
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Application 13/428,820
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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