Ex Parte McClellan

Patent Trial and Appeal Board

Mar 30, 2016

11800499 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111800,499 0510412007
24131 7590 04/01/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
W. Thomas McClellan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TMF-9010 9042
EXAMINER
NGUYEN, XUAN LANT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. THOMAS MCCLELLAN
Appeal2014-000498
Application 11/800,499
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Non-Final rejection of claims 1-8 and 10-26. Br. 1. Claim 9
has been canceled. See Amendment filed December 27, 2010. Claims 14
and 25 would be allowable if rewritten or amended to overcome their
rejection of being indefinite. Non-Final Act. 10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-000498
Application 11/800,499
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a non-helical, multiple
compound element, true torsion system, for connection between a drive and
a load." Spec. 1: 7-9. Claims 1, 10, and 13-15 are independent.
Independent system claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A non-helical true torsion system, comprising:
a working element to be connected to a load;
a control element in the form of a gearwheel;
said working and control elements defining a central axis
extending therebetween;
a drive in the form of a motor having a shaft with teeth
meshing with said gearwheel for driving said control element;
and
at least one S-shaped non-helical, compound torsion
element having ends each being connected to a respective one of
said working and control elements and being configured to rotate
about an axis different from said central axis, at least one end of
said at least one S-shaped non-helical, compound torsion element
being selectively releasable between a fixed position and a
rotatable position permitting rotation of said at least one end
relative to the respective working element and/or control element
to adjust the total torsion of the system.
REFERENCES RELIED ON BY THE EXAMINER
Chatman US 16,512 Jan. 27, 1857
Hubbard US 300,978 June 24, 1884
Moore US 336,131 Feb. 16, 1886
Cromley, Jr. US 5,163,701 Nov. 17, 1992
Dorma US 2002/0162634 Al Nov. 7, 2002
Brookbank US 2003/0192254 Al Oct. 16, 2003
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Application 11/800,499
THE REJECTIONS ON APPEAL
Claims 1-8 and 10-26 are rejected under 35 U.S.C. § 112 (pre AIA),
second paragraph, as being indefinite.
Claims 1, 3-5, 10, 11, 18, 20, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Donna and Chatman.
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dorma, Chatman, and Hubbard.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dorma, Chatman, and Cromley, Jr.
Claims 7, 8, 12, 13, 15, 17, 19, 21, 24, and 26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Donna, Chatman, and Moore.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dorma, Chatman, Moore, and Brookbank.
ANALYSIS
The rejection of claims 1--8 and 10--26 as being indefinite
The Examiner rejects claims 1-8 and 10-26 on grounds that:
"[c]laims 1, 8, 10, 13, 14, and 15 recite the terms 'selectively, and/or[.']
These terms are considered to be indefinite; since they are suggestive and
optional." Non-Final Act. 2. The Examiner also states that due to the
recitation of "at least one S-shaped" element in each independent claim (i.e.,
1, 10, and 13-15), that if there is only one such element and that element is
released from applying a torsion, then "the claimed structure as recited
would provide a non-working system." Ans. 4.
Regarding this last basis, we understand the Examiner to be stating
that if the single S-shaped element is released from applying a torsion, then
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Application 11/800,499
this S-shaped element effectively has zero torsion and thus it is unable "to
adjust the total torsion of the system" as recited in each of independent
claims 1, 10, 13-15. Appellant does not address this matter or otherwise
indicate how the Examiner is mistaken. We agree with the Examiner that it
is not clear how a released S-shaped element having zero torsion can be used
"to adjust the total torsion of the system" as claimed. Accordingly, we are
not persuaded by Appellant that the Examiner's rejection warrants reversal.
We sustain the Examiner's rejection of independent claims 1, 10, and 13-15,
as well as dependent claims 2-8, 11, 12, and 16-26, as being indefinite. 1
The rejection of claims 1, 3-5, 10, 11, 18, 20, 22, and 23
as unpatentable over Dorma and Chatman
Appellant presents similar arguments for independent claims 1 and 10.
Br. 10-15. Appellant does not present separate arguments for dependent
claims 3-5, 11, 18, 20, 22, and 23. We select independent claim 1 for
review with claims 3-5, 10, 11, 18, 20, 22, and 23 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellant argues that Dorma and Chatman fail to disclose three
features of the claimed invention as recited in claim 1; namely, (1) a torsion
element that is "selectively releasable between a fixed position and a
rotatable position" (Br. 10-14) (emphasis omitted); (2) a "non-helical"
torsion element (Br. 15) (emphasis omitted); and (3) the non-helical element
"being configured to rotate about an axis different from said central axis"
(Br. 16-18). Each of these arguments are addressed in tum below.
1 In view of this analysis, we need not address the Examiner's other
rationale that "the terms 'selectively, and/or"' "are suggestive and optional"
as also stated by the Examiner, even should "the terms 'selectively, and/or"'
be positively recited. Non-Final 2; see also Br. 33-34.
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Application 11/800,499
Regarding Appellant's first contention that the prior art fails to
disclose a "selectively releasable" torsion element that permits rotation
thereof (see Br. 13 (emphasis omitted)), the Examiner points out that the
ends of each of the springs of Donna and Chatman may be selectively
released. In particular, the Examiner states, with regard to Donna: "[ n ]ote
that the end of the spring 42 of Donna is releasable from spring seat 43."
Non-Final Act. 3--4; see also Ans. 5. As for Chapman, the Examiner states:
"[t]he end of the spring B, B', 0 of Chatman is also releasable from the
staples." Non-Final Act. 4; see also Ans. 5.
Addressing Dorma, Appellant contends that there is no rotation of the
spring end in Donna because: "the end cone 43 of DORMA does not
selectively release the end of the helical spring of DORMA retained in
the end cone 43 of DORMA, to permit rotation of that end of the spring
relative to the working and/or control elements." Br. 14. Regarding
Chatman, Appellant alleges that "removing the staples, as suggested in the
Office Action, cannot be analogized to the spring being selectively
releasable between two positions, as required in Appellant's claims. Rather,
CHATMAN is operable in one position only, with staples attached." Br.
14. Appellant further asserts that removal of the staples of Chatman does
not permit the ends 0, 0, 0, 0 of the Chatman spring "to rotate relative to
the working and/or control elements of CHATMAN." Br. 14.2
Dorma states, in relevant part: "[a] first end cone or plug 43 secured
to shaft 27 with set screws 44 is threaded into an end 46 of torsion spring 42,
2 Appellant also addresses Moore in responding to this rejection (Br. 14--
15), but Moore is not relied on by the Examiner for this rejection (Non-Final
Act. 3) and hence, Appellant's comments regarding Moore are moot.
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Application 11/800,499
as shown in FIG. 2." Dorma if 29. Hence, Dorma discloses first, an end 46
of spring 42 being threaded onto cone or plug 43; and second, the cone or
plug 43 being itself secured to shaft 27 via set screw 44. There is no
disclosure that Dorma's spring is permanently secured; on the other hand,
Dorma discloses two mechanisms by which the spring can become
selectively released, i.e., via only threading the spring to a certain force and
via loosening the set screw to allow slippage at a certain force. Appellant
does not explain how the Examiner erred in relying on Dorma for this
teaching, or how such a teaching is not self-evident to one skilled in the art
upon a reading of Donna.
Chatman states, in relevant part: "[t]he wire BB is passed through the
hinges of the door, shutter or lid and forms the hinge of a pair of hinges; and
the bent ends of the wire 0, 0, 0, 0 are fastened to the door, shutter or lid
by staples or otherwise." Chatman 1: 26-31. Consistent with Chatman's
teaching regarding the bent ends being stapled, the Examiner states that
"Chatman shows the end of the spring B, B ', 0 to be releasable from the
staples if one selects this option." Ans. 5; see also Non-Final Act. 4.
Appellant does not explain how the Examiner erred in relying on Chatman
for this teaching, or how loosening the staples so as to release the spring is
not self-evident to one skilled in the art upon a reading of Chatman.
From the foregoing, it is apparent that neither Dorma nor Chatman
require permanent affixation of the ends of their respective springs. The
springs of Dorma and Chatman are not only releasable but, once released,
the ends would be selectively rotatable relative to their respective working
and/or control elements. Thus, Appellant's arguments are not persuasive of
Examiner error.
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Regarding Appellant's second contention that Donna fails to disclose
a "non-helical" torsion element (Br. 15), the Examiner relies on Chatman for
this teaching, not Donna. Non-Final Act. 3; see also Ans. 6. More
specifically, the Examiner states that "Chatman is cited to teach an S-shaped
spring B, B', 0 for a door hinge in place of a helical spring." Non-Final
Act. 3; see also Ans. 6. Appellant's discussion of Donna's helical spring
when such spring was not relied on by the Examiner is not persuasive of
Examiner error.
Regarding Appellant's third contention, Appellant asserts that Donna
and Chatman do not teach or suggest an S-shaped torsion element
"configured to rotate about an axis different from the central axis." Br. 16-
18 (emphasis omitted). Appellant contends that "a person of ordinary skill
in this art would not receive any teaching, suggestion or motivation to
replace the helical spring 42 ofDORMA, wound around the shaft 27 of
DORMA, with the non-helical spring of CHATMAN." Br. 17. Appellant
reiterates that "[t]he spring of CHATMAN cannot be wound in a helical
manner around the shaft of DORMA."3 Br. 17. "Any allegation to the
contrary could only be the result of impermissible hindsight reconstruction
of Appellant's particularly claimed invention." Br. 17-18.
The Examiner explains how one of ordinary skill would combine
Chatman's S-shaped spring with the Dorma system. Ans. 6. The Examiner
states: "[i]t is believed that one of ordinary skill in the art would have
strived to place the S-shaped spring of Chatman to be parallel to the central
3 Appellant further contends that there is no teaching or suggestion to mount
Chatman's S-shaped spring "any place other than concentrically around the
shaft 27 ofDORMA." Br. 17.
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axis of Donna's system in order for the S-shaped spring to be operational."
Ans. 6. The Examiner continues stating that if one were to try to wind
Chatman' s spring "around the central axis of the system of Dorma [as
Appellant contends], one would quickly realize this this is not possible due
to the shape of [Chatman's] S-shaped spring." Ans. 6. In other words, and
according to the Examiner, one skilled in the art would instead place
Chatman' s spring "in parallel in order to be connected at one end with the
working element and at the other end with the control element of Dorma's
system in order for [Chatman's] spring to work properly." Ans. 6.
We are instructed that "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). We are also instructed that "in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle." KSR, 550 U.S. at 420. Accordingly, when
modifying Donna's system with Chatman's spring ("as an effective yet
simple and light weight spring in the torsion system of Dorma" (Non-Final
Act. 3)), Appellant does not persuade us that a skilled person would attempt
to wind or coil Chatman's spring around the central axis of Donna's shaft as
asserted (thereby defeating the function of Chatman' s spring). Br. 1 7.
Instead, we agree with the Examiner's finding that one skilled in the art
would reasonably place Chatman's spring "in parallel" (Ans. 6), and
Appellant is not persuasive otherwise. Consequently, in such a parallel
arrangement, Chatman' s corresponding S-shaped torsion element, when
torqued, would rotate about an axis different from the central axis.
In addition to the above arguments, Appellant also contends that
modifying Donna to include the torsion element of Chatman would change
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the principle of operation of Donna. Br. at 18-19. In particular, Appellant
states: "the teachings of DORMA would need to be changed to change the
axis about which the spring of DO RMA tenses/ compresses, from the central
axis ofDORMA to a different axis." Br. 18.
Appellant does not explain how placing Chatman's springs in parallel
about Dorma's central axis changes the principle operation of Dorma. Both
Dorma and Chatman require torsion in their respective systems in order for
them to function. Furthermore, Chatman' s production of torsion through the
use of an S-shaped torsion element, when applied to the Dorma device,
supplies the torsion necessary for Dorma's system to operate.
Appellant has not provided any evidence in support of the above
allegation, and it is not otherwise self-evident from the record. It is our
understanding that although different types of torsion elements are
employed, the principle operation of the Donna device remains unchanged.
In short, Appellant's contention amounts to speculative attorney argument
and we are instructed that "attorney argument [is] not the kind of factual
evidence that is required to rebut a prima facie case of obviousness." In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (citation omitted); see also In
re De Blauwe, 736, F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments
and conclusions unsupported by factual evidence carry no evidentiary
weight).
Based on the record presented, we sustain the Examiner's rejection of
claims 1, 3-5, 10, 11, 18, 20, 22, and 23.
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The rejection of claim 2 as unpatentable
over Dorma, Chatman, and Hubbard
Claim 2 recites "wherein said at least one S-shaped compound torsion
element includes a multiplicity of S-shaped compound torsion elements
connected in parallel about the central axis." The Examiner relies on
Hubbard for teaching "the use of multiple S-shaped elements B to further
enhance[e] the comfort of the riders." Non-Final Act. 5. In response,
Appellant contends that springs B-B and B'-B' of Hubbard are connected in
series between the sides of a wagon and "are not connected in parallel
about a central axis between the working and control elements." Br. 21.
Elaborating on Hubbard, the Examiner responds:
Hubbard shows clearly that multiple S-shaped springs are
connected in parallel to one another. Donna shows a system
with a central axis and circular shaped end connectors 43, 47. It
is believed that one of ordinary skill in the art [who] desires to
have multiple S-shaped springs to be installed in the system of
Dorma would have connected them in a circular pattern
between the two circular end connectors; hence providing
parallelly connected springs which rotate around the central
axis of Donna's system.
Ans. 6.
Inspection of the figures of Hubbard reveals that the multiple S-
shaped springs of Hubbard are arranged in parallel rather than in series. See
Hubbard Figs. 1-3. Further, we are not persuaded the Examiner erred in
finding that the result of combining Hubbard's multiple springs with
Dorma's circular components would have been a circular parallel pattern of
these springs about the central axis of Donna's device in the manner
claimed. Again, a person of ordinary skill is also a person of ordinary
creativity, not an automaton. KSR, 550 U.S. at 421. Accordingly, because
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the Examiner has articulated reasons based on rational underpinnings for
combining Hubbard, Donna, and Chatman, and as Appellant's have not
persuaded us of Examiner error in such combination, we sustain the
Examiner's rejection of claim 2.
The rejection of claim 6
as unpatentable over Dorma, Chatman, and Cromley, Jr.
Claim 6 indirectly depends from claim 1. Appellant does not dispute
the Examiner's reliance on the additional reference to Cromley, Jr., other
than to state that Cromley, Jr. "does not cure the above-discussed
deficiencies of the DORMA and CHATMAN references with regard to
claim 1." Br. 22. As we are not persuaded of any deficiencies in the
Dorma/Chatman combination (see supra), Appellant's contentions regarding
Cromley, Jr. are also not persuasive of Examiner error. We sustain the
Examiner's rejection of claim 6.
The rejection of claims 7, 8, 12, 13, 15, 17, 19, 21, 24, and 26 as
unpatentable over Dorma, Chatman, and Moore
Appellant argues independent claims 13 and 15 together and does not
present separate arguments for independent claim 15 or dependent claims 7,
8, 12, 17, 19, 21, 24, and 26. Br. 22-33. We select claim 13 for review with
claims 7, 8, 12, 15, 17, 19, 21, 24, and 26 standing or falling therewith.
Independent claim 13 recites, inter alia, "at least one manual or servo
device for selectively engaging and releasing at least one of said collars
between a fixed position and a rotatable position." Claim 13 also recites "an
electronic control device for actuating said at least one servo device" and
also "at least one sensor connected to said electronic control device for
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sensing load variations to be used for actuating said at least one servo
device."
The Examiner notes the alternate claimed features of "at least one
manual or servo device" and proceeds to address claim 13 as being directed
to a manual device. Non-Final Act. 8. The Examiner finds: "[t]he
combination of Dorma, Chatman and Moore would employ a manual device
such as a screw driver, wrench, pliers, etc. to engage or release the collars.
Since a manual device is employed, there is no need for a servo device,
electronic control device, sensor and their interconnecting operation." Non-
Final Act. 8.
In responding to this rejection, Appellant repeats arguments
previously made with respect to claim 1, which are not found persuasive for
similar reasons. See Br. 22-31. Appellant also addresses the limitation
directed to "at least one manual or servo device" and contends that the
Examiner "negated the electronic control device and sensor limitations of
the claim." Br. 31.
The Examiner responds stating that "[ c ]laim 13 states 'at least one
manual Q!. servo device for selectively engaging and releasing."' Ans. 7.
The Examiner states that since this claim provides alternative structures of
the claimed system, "[i]t has been interpreted that the combination of
Dorma, Chatman and Moore meets the claimed system with a manual
device." Ans. 7. For clarification, the Examiner understands that "[t]he
electronic control device and the one sensor, as recited in claim 13, are for
working with the servo device. There is no recitation of the electronic
control device and the one sensor working with the manual device in claim
13." Ans. 7.
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We agree with the Examiner's interpretation of claim 13 that a manual
device is sufficient for selectively engaging and releasing; and that a manual
device would not require an electronic control device or a sensor as recited.
We are thus not persuaded that the Examiner improperly ignored such
"electronics" limitations. Indeed, the Examiner indicates that when the
servo device and the electronic control device are claimed, without an
alternative system of a manual device, as recited in claim 14, the claimed
system of claim 14 has been found to contain allowable subject matter. See
Ans. 7. Accordingly, we are not persuaded the Examiner erred in finding
that the electrical components of claim 13 can be ignored when the
alternative manual device is chosen to perform the claimed "selectively
engaging and releasing" of at least one of said collars between a fixed
position and a rotatable position.
Claim 13 also includes a limitation directed to "collars each
connecting a respective one of said terminal sections [of the S-shaped
torsion element] to a respective one of said working and control elements."
The Examiner relies on Moore for this teaching and the Examiner provides a
reason for combining Moore with Donna and Chatman. Non-Final Act. 7-
8. The Examiner further states that "Moore is cited to teach the different
connections for an S-shaped spring wherein rivets are used at end a while a
collar is used at end c." Non-Final Act. 7. In addition, we note the
Examiner's observance (with respect to the rejection of claim 8) "that Moore
shows the connection at a to be a fixed connection and the connection at c
appears to be rotatable." Non-Final Act. 6.
Appellant asserts that: "neither end of [the spring of] MOORE can
ever be released such that the released end rotates relative to the working
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and/or control elements, or at all." Br. 27. Appellant concludes: "[t]hus,
MOORE does not cure the above-discussed deficiencies of the CHATMAN
and DORMA references." Br. 27.
The Examiner cites Moore for its teaching of collars (Non-Final Act.
7-8; Ans. 7) whereas Appellant argues that the ends of the Moore spring
cannot be released (Br. 27). Appellant's argument does not address the
Examiner's findings with respect to Moore in combination with Donna and
Chatman which, as explained above, teach an assembly wherein the S-
shaped torsion spring of Chatman would be selectively releasable from the
working and control elements of Donna. See supra. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
We do not find Appellant's contentions persuasive of Examiner error.
Accordingly, we sustain the Examiner's rejection of claims 7, 8, 12, 13, 15,
17, 19, 21, 24, and26.
The rejection of claim 16 as unpatentable
over Dorma, Chatman, Moore, and Brookbank
Claim 16 depends directly from claim 13. Appellant does not dispute
the Examiner's reliance on the additional reference to Brookbank other than
to state that the Brookbank reference "does not cure the above-discussed
deficiencies of the DORMA, CHATMAN and MOORE references with
regard to claim 13." Br. 33. As we are not persuaded of any deficiencies in
the Dorma/Chatman/Moore combination (see supra), Appellant's
contentions regarding Brookbank are also not persuasive. We sustain the
Examiner's rejection of claim 16.
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DECISION
The Examiner's rejections of claims 1-8 and 10-26 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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