Ex Parte Marzano et al

Patent Trials and Appeals Board

Jan 29, 2013

11058880 - (D) (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOMENIC P. MARZANO and MICHAEL GUSTASON
____________

Appeal 2011-000619
Application 11/058,880
Technology Center 3600
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Before MICHAEL C. ASTORINO, LYNNE H. BROWNE and SCOTT A.
DANIELS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000619
Application 11/058,880

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STATEMENT OF THE CASE
Domenic P. Marzano and Michael Gustason, (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims
1, 3-7, 12-18 and 21-25. Claims 2, 8-11, 19 and 20 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

THE INVENTION
Claim 1, reproduced below with added emphasis, is illustrative of the
subject matter on appeal.
1. A selectively actuated eddy current braking
system to apply a selected braking force to a
magnetically reactive member comprising:
a) first and second modules located along
substantially parallel first and second longitudinal
axes and separated by a space sufficient to permit
passage of the magnetically reactive member
therethrough, at least the first module being
linearly displaceable relative to the second module
along the longitudinal axes and each module
comprising an array of permanent magnets
arranged in alternating polarity, the array of
permanent magnets of the first module
substantially in opposite polarity juxtaposition
with the array of permanent magnets of the second
module;
b) a drive operably connected to at least the
first module to effect a displacement of the first
module along the longitudinal axes and relative to
the second module thereby providing a selectable
braking force on the magnetically reactive member
having a minimum when the modules are moved
substantially out of opposite polarity juxtaposition
and the minimum braking force being substantially
zero; and
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c) a first stop capable of fixing the first
module in substantially opposite polarity
juxtaposition with the second module should the
drive fail.

THE REJECTIONS
1. Claims 1, 3-7, 12-18 and 21-25 stand rejected under 35 U.S.C. § 112,
1st paragraph, as failing to comply with the written description
requirement.
2. Claims 1, 21, 23 and 25 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Pribonic (US 6,659,237 B1, iss. Dec. 9, 2003)
and Rosner (US 2004/0262103 A1, pub. Dec. 30, 2004).
3. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pribonic, Rosner and Smith (US 3,794,425, iss.
Feb. 26, 1974).
4. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pribonic, Rosner and Tsuboi (US 6,326,708 B1, iss.
Dec. 4, 2001).
5. Claims 7, 12, 13, 18, 22 and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pribonic, Rosner and Frank (US
6,253,887 B1, iss. Jul. 3, 2001).
6. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pribonic, Rosner, Frank and Smith.
7. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pribonic, Rosner, Frank and Tsuboi.

Appeal 2011-000619
Application 11/058,880

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OPINION
Written Description
Claims 1 and 12 each recite in relevant part “a first stop capable of
fixing the first module in substantially opposite polarity juxtaposition with
the second module should the drive fail.” Claim 21 similarly recites
“providing a stop capable of fixing the first module in substantially opposite
polarity juxtaposition with the second module should the drive fail.”
The Examiner contends that “[t]he originally filed disclosure fails to
provide support for the limitation of the stop being capable of fixing the first
module in substantially opposite polarity juxtaposition with the second
module should the drive fail . . . .” Ans. 4.
Appellants argue “the Examiner seemingly fails to consider both the
drawings and the inherent action of the magnetic braking system.” (App. Br.
9) stating, in support of this argument “[a]s shown in Figure 1, a first stop
(32) fixes the modules in substantially opposite polarity juxtaposition” and
“[o]ne skilled in the art would then appreciate that, absent the force, the
modules would inherently align in substantially opposite polarity
juxtaposition.” App. Br. 10; Reply Br. 4.
We agree that one of ordinary skill in the art would understand that if
the drive fails, the modules would inherently align in substantially opposite
polarity juxtaposition because of the tendency of magnets to align in this
manner; however, Appellants’ argument that the stop 32 is capable of fixing
the modules in this position is unconvincing. Figure 1 does not support
Appellants’ contention. Figure 1 shows the first and second modules in
substantially opposite polarity juxtaposition. In this configuration stop 32
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does not engage the first module and thus, cannot be fairly understood to be
capable of fixing the first module in substantially opposite polarity
juxtaposition.
Appellants further argue “‘[t]he end points of the pathway are only
limited by the length of the push rod 22, the length of the linear sliding
bearing 14, or the placement of the cushion bump stops 30, 32.’ Paragraph
0020. The stops are affixed ‘so as to limit the motion of the system.’ Id.”
App. Br. 12; Reply Br. 5. Concluding, “[t]he specification and drawings
clearly show and describe the stops limiting module displacement. The
modules can move only between the stops, and the first stop fixes the
modules in substantially opposite juxtaposition.” App. Br. 12.
Appellants’ argument is unconvincing because it mischaracterizes the
capabilities of stop 32 as they would be understood by one of ordinary skill
in the art. As argued by Appellants supra, the Specification clearly states
that “[t]he end points of the pathway are only limited by the length of the
push rod 22, the length of the linear slide bearing 14, or the placement of the
cushion bump stops 30, 32.” Spec., para. 0020 (emphasis added). One of
ordinary skill in the art would understand from this disclosure that the stops
are capable of preventing the module from moving past them; however, this
description would not convey to one of ordinary skill in the art that the stops
are capable of fixing the module in any particular position. Rather, one of
ordinary skill in the art would understand that while the stops prevent
movement in one direction they do not prevent movement in the opposite
direction and therefore cannot fairly be understood to be capable of fixing
the module. Specifically, one of ordinary skill in the art would understand
that the stop 32 prevents movement of the module in a direction opposite to
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the arrows shown in Figure 5A, once the module is engaged with stop 32,
while allowing movement in the direction of the arrows. Thus, stop 32
limits one end point of the pathway, but does not fix the module in any
position. Further, as discussed supra, the drawings do not show a
configuration wherein the stop 32 is engaged and the modules are fixed in
substantially opposite polarity juxtaposition.
Appellants then argue that the Examiner “fails to meet the burden of
proof” by failing to present evidence or reasons why one of ordinary skill in
the art would not recognize in the disclosure a description of the invention
defined by the claims. App. Br. 11. Appellants’ argument is unconvincing
because the Examiner met the initial burden by specifically identifying the
information missing from the Specification and not shown in the drawings
and clearly articulating why one of ordinary skill in the art would not have
recognized in the disclosure a description of the invention. Ans. 11-12.
For these reasons, we sustain the Examiner’s rejection of claims 1, 3-
7, 12-18 and 21-25 under 35 U.S.C. § 112, 1st paragraph.
Obviousness
Claims 1, 3-7, 21-23 and 25
In the rejection, the Examiner finds “Pribonic is silent with regards to
the direction of movement of the first module parallel to the member being
linearly along the longitudinal axes.” Ans. 5. The Examiner “notes that the
language . . . which teaches that the module can be moved in a direction
parallel to the member would encompass parallel motion of the module with
respect to the member linearly in a longitudinal direction . . . .” Id., (citing
Pribonic col. 1, ll. 49-51). Then, the Examiner concludes that “[i]t would
have been obvious . . . to have modified the motion of the module to have
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been linearly displaced along the longitudinal axes . . . in order to achieve
relative positioning of the modules to create an adjusted braking force
condition.” Ans. 5-6.
Appellants respond that “[t]he Examiner argues the silence of
Pribonic permits motion in any direction, but an inference drawn from
silence is not sufficient to maintain an obviousness rejection.” Reply Br. 6.
Appellants’ argument is persuasive. The portion of the Specification
cited by the Examiner is insufficient to support the Examiner’s reasoning
that module motion in a direction parallel to the member necessarily
encompasses module motion in a longitudinal direction with respect to a
second module. The embodiment referred to in the citation provided by the
Examiner is shown in Figures 9 and 10; and, further described in column 5,
line 57 through column 6, line 8. Figures 9 and 10 only show one module
(104). Accordingly, the position of the second module (106) with respect to
the first module (104) cannot be determined from the figures. Similarly, in
the portion of the Specification that describes Figures 9 and 10, only one of
the modules (104) is described. Accordingly, the position of the first
module with respect to the second module cannot be determined from the
Specification either. Therefore, Pribonic cannot fairly be considered to
teach “the first module being linearly displaceable relative to the second
module along the longitudinal axes” as required by claim 1.
For this reason, we do not sustain the Examiner’s rejection of claim 1
and claim 23 which depend therefrom under 35 U.S.C. § 103(a). The
Examiner’s rejection of claims 3 and 4 contains the same factual deficiency
which is not cured by Smith and likewise is not sustained. The Examiner’s
rejection of claims 5 and 6 contains the same factual deficiency which is not
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cured by Tsuboi and likewise is not sustained. The Examiner’s rejection of
claim 7 contains the same factual deficiency which is not cured by Frank and
likewise is not sustained.
Claim 21 requires “displacing at least the first module along the
longitudinal axis in a displacement to alter the polarity juxtaposition relative
to the second module . . . .” The Examiner’s reasons for modifying Pribonic
to meet this limitation of claim 21 similarly lack rational underpinning for
the reasons discussed supra.
Accordingly, we do not sustain the Examiner’s rejection of claim 21
and claim 25 which depends therefrom under 35 U.S.C. § 103(a). The
Examiner’s rejection of claim 22 contains the same factual deficiency which
is not cured by Frank and likewise is not sustained.
Claims 12-18 and 24
Appellants contend “[l]ike claims 1 and 21, claim 12 describes a
braking system comprising linearly displaceable modules . . . ” (App. Br. 16)
concluding “[f]or the reasons stated in the arguments supra, Applicant does
not believe Pribonic and Rosner render obvious claim 12.” (App. Br. 17).
We agree as discussed supra. Frank does not cure this deficiency.
For these reasons, we do not sustain the Examiner’s rejection of claim
12 and claims 13, 18 and 24 which depend therefrom under 35 U.S.C. §
103(a). The Examiner’s rejection of claims 14 and 15 contain the same
factual deficiency which is not cured by Smith and likewise is not sustained.
The Examiner’s rejection of claims 16 and 17 contain the same factual
deficiency which is not cured by Tsuboi and likewise is not sustained.

Appeal 2011-000619
Application 11/058,880

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DECISION
We affirm the Examiner’s rejection of claims 1, 3-7, 12-18 and 21-25
under 35 U.S.C. § 112, 1st paragraph, as failing to comply with the written
description requirement.
We reverse the Examiner’s rejections of claims 1, 3-7, 12-18 and 21-
25 under 35 U.S.C. § 103(a).
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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