Ex Parte Meyer et al

Patent Trial and Appeal BoardNov 29, 2012

11367072 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/367,072 03/03/2006 Jeffry R. Meyer 129393.00401 5748 21269 7590 11/29/2012 PEPPER HAMILTON LLP ONE MELLON CENTER, 50TH FLOOR 500 GRANT STREET PITTSBURGH, PA 15219 EXAMINER KAYES, SEAN PHILLIP ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 11/29/2012 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 JEFFRY R. MEYER and JARED P. JOHNSTON ____________________ Appeal 2010-007473 Application 11/367,072 Technology Center 2800 ____________________ Before: ERIC B. CHEN, BRYAN F. MOORE, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007473 Application 11/367,072 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-20, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Introduction The claims are directed to a force containment arm for reducing reaction a linkage for reducing the forces on rotating mechanisms, and particularly to a linkage for connecting the operating mechanism of a high voltage circuit breaker to interrupters. Spec. ¶ [0001]. Claim 1, reproduced below with disputed limitations in italics, is illustrative of the claimed subject matter: 1. A force containment arm for reducing reaction forces acting on a linkage containing a rotatable shaft, said force containment arm comprising: a head with a cylindrical opening for encircling the rotatable shaft, said head having an internal bearing structure for contact with the rotatable shaft; a first connector for rigidly connecting the arm to a support frame; and a stud connecting the connector to the head. REJECTIONS The Examiner made the following rejections: Claims 1, 3-4, 6-9 and 11-18 stand rejected under 35 U.S.C §102(b) as being anticipated by Freeman (US 5,569,891, Oct. 29, 1996). Ans. 3-8. Claims 2, 5, and 20 stand rejected under 35 U.S.C §103(a) as being unpatentable over Freeman and Bachofen (US 6,313,424 B1, Nov. 6, 2001). Ans. 8. Appeal 2010-007473 Application 11/367,072 3 Claims 10-14 and 18-19 stand rejected under 35 U.S.C §103(a) as being unpatentable over Freeman. Ans. 9-10 CLAIM GROUPING Appellants make identical arguments for independent claims 1, 4 and 15 and the repeat those arguments for dependent claims 2-3, 5-14 and 16-20. We select claim 1 as representative of independent claims 1, 4, and 15. The dependent claims, claims 2-3, 5-14 and 16-20, stand or fall with their respective independent claims. OPINION ISSUE Did the Examiner err in finding that Freeman disclosed “[a] force containment arm” as recited in claim 1? ANALYSIS Appellants contend that Freeman fails to disclose or teach “[a] force containment arm for reducing reaction forces acting on a linkage containing a rotatable shaft” as recited in claim 1. Br. 10, 11. Instead, Appellants assert, Freeman merely “teaches a set of force producing elements, not elements designed to contain and reduce forces.” Br. 10. More specifically, Appellants argue that “[t]he elements of Freeman asserted by the Examiner as force containment arms are, in fact, force producing elements 32, 33 and 34 (akin to the connecting rod attached to operating mechanism 118 [in Fig. 9 of Appellants’ Spec.]), and thus do not teach all the limitations of independent claim 1.” Br. 14. Appellants contend that Freeman, col. 8, ll. 21-28, disclose that these elements function as connection rods, which is in Appeal 2010-007473 Application 11/367,072 4 direct contrast to “a first connector for rigidly connecting the arm to a support frame” as recited in claim 1. Br. 13. With respect to Bachofen, Appellant contends that it only teaches or suggests “a mechanically adjustable screw element for a connector in a multipolar switch” and does not cure the deficiencies of Freeman. Br. 15. The Examiner found that Freeman discloses elements 32 and 33 that act as force containment arms with a first connector for rigidly connecting the arm to a support frame. Ans. 3, 4, 12. The Examiner found that “for reducing reaction forces acting on a linkage containing a rotatable shaft” recited in claim 1 does not distinguish the claimed apparatus from the elements disclosed in Freeman. Ans. 11. The Examiner noted that although there may be different purposes for the arms disclosed in Freeman and Appellants’ invention, there is not “a claimed structural difference” between Freeman’s disclosed arms that serve multiple purposes. Ans. 14. Having reviewed Appellants’ arguments that the Examiner erred, we agree with the Examiner. Although the Appellants cite the intended use and functional differences between the claimed invention and the arms disclosed in Freeman, these distinctions are not commensurate in scope with Appellants’ claimed apparatus. As the Examiner found, elements 32 and 33 structurally meet the limitations of the claims despite their dual functions in the Freeman invention. Ans. 6-7 (discussing force containment arm with respect to claim 15), 14 (discussing difference in intended purpose of arms in Freeman and Appellants’ invention). Appellants also assert that paragraphs 5 and 6 of the Declaration of Jeffry R. Meyer (Exhibit to an Amendment under 37 C.F.R. §1.116, filed May 27, 2009), show “that the components referred to as force containment arms by the Examiner in Freeman are in fact force producing elements.” Appeal 2010-007473 Application 11/367,072 5 Br. 13, 17 and 22. We agree with the Examiner that the scope of the Meyer declaration is not commensurate in scope with the invention of claim 1. Ans. 14-15. The Meyer Declaration discussion of why the arms of the Freeman invention will fail in a particular application or intended purpose is beyond the structural limitations of the Appellants claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (finding that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function). Furthermore, the Meyer Declaration, paragraph 5, or Appellants’ citation to Freeman, col. 8, ll. 21-28, does not undermine the fact that the arms in Freeman are rigidly formed and connected at the top and bottom as recited in claim 1. Ans. 12-13 (discussing Freeman teaching regarding rigid connection at ends of arm 33 that connects with end portion 46), Accordingly, we are not persuaded by the Appellants’ arguments or the Meyer Declaration that the Examiner erred. CONCLUSIONS OF LAW For the foregoing reasons, the Examiner did not err in finding that Freeman disclosed the force containment arms limitation of claim 1. Accordingly, we also sustain Examiner’s rejection of independent claims 4 and 15 and dependent claims 2-3, 5-14 and 16-20. DECISION For the above reasons, the Examiner’s rejection of claims 1-20 is 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)(1)(iv). Appeal 2010-007473 Application 11/367,072 6 AFFIRMED tj