Ex Parte Norton et al

Patent Trial and Appeal Board

Dec 13, 2016

12205216 (P.T.A.B. Dec. 13, 2016)

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.
12/205,216 09/05/2008 Daniel Allen Norton 4726-052 6408
24112 7590 12/13/2016
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
SALONE, BAYAN
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
12/13/2016 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 DANIEL ALLEN NORTON and KENNETH L. POTTS
____________

Appeal 2014-008300
Application 12/205,2161
Technology Center 3700
____________

Before STEFAN STAICOVICI, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Daniel Allen Norton and Kenneth L. Potts (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–8
and 12–18.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is ATI Industrial
Automation, Inc. Appeal Br. 2 (filed Jan. 20, 2014).
2 Claims 9–11 and 19 are withdrawn. Id.
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INVENTION
Appellants’ invention relates to a “manually actuated robotic tool
changer utilizing displaced rolling members as a coupling mechanism.”
Spec. 1 ¶ 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A manually actuated robotic tool changer, comprising:
a first unit adapted to be connected to one of a robotic
arm or a robotic tool;
a second unit adapted to be connected to the other of the
robotic arm or the robotic tool;
a plurality of rolling members retained in one of the
units;
a piston mounted in one of the units, the piston moveable
along its axis between unlocked and locked positions under
manual actuation, the piston having a multi-faceted cam surface
including an initial contact surface, a locking surface, and a
failsafe surface interposed between the initial contact surface
and the locking surface;
wherein, when the piston is in the locked position, the
cam surface is operative to contact the rolling members in one
of the units and to urge each rolling member against a surface
of the other unit to couple the two units together.

REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 102(b)
as being anticipated by Erickson '631 (US 5,452,631, iss. Sept.
26, 1995.
II. The Examiner rejected claims 1–6 and 12–16 under 35 U.S.C.
§ 103(a) as being unpatentable over Erickson '735 (US
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4,747,735, iss. May 31, 1988) and Little (US 7,252,453 B1, iss.
Aug. 7, 2007).3
III. The Examiner rejected claims 7 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Erickson '735, Little,
and Tsutsumi (WO 2004/113031A1, pub. Dec. 29,
2004).4
IV. The Examiner rejected claims 8 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Erickson '735, Little,
and Weskamp (US 4,906,123, iss. Mar. 6, 1990).

ANALYSIS
Rejection I
The Examiner finds that Erickson '631 discloses “a failsafe surface
(not labeled, see figure 16) interposed between the initial contact surface
(100) and the locking surface (116).” Final Act. 4 (mailed May 20, 2013).
Appellants argue that Erickson '631 fails to disclose a failsafe surface,
as called for by claim 1. Appeal Br. 8. According to Appellants, “the term
‘failsafe surface’ must be construed according to its plain meaning,” which
is “designed to return to a safe condition in the event of failure or
malfunction.” Id. at 9 (citing to the online version of Collins English

3 Although claims 7 and 17 are mentioned in the heading of this
rejection, as the Examiner does not include an analysis of these claims in the
body of the rejection, and these claims are separately rejected in Rejection
III, the inclusion of these claims is considered an inadvertent typographical
error. See Final Act. 5–8 (mailed May 20, 2013).
4 US 2007/0231063 A1, pub. Oct. 4, 2007, is an English language
counterpart of Tsutsumi. See Final Act. 8.
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Dictionary – Complete & Unabridged 10th Edition, accessed on January 19,
2014 at http://dictionary.reference.com/browse/failsafe).
In response, the Examiner takes the position that because the
limitation of “a failsafe surface interposed between the initial contact surface
and the locking surface” lacks structural limitations, “[t]he limitation is
merely descriptive and is open to interpretation deemed acceptable by the
Examiner.” Ans. 10 (mailed May 29, 2014). Thus, according to the
Examiner, “the claimed ‘failsafe’ surface is any intermediate surface
interposed between the initial contact surface and the locking surface.” Id.
(emphasis added).
It is well settled that claims are construed with an eye toward giving
effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006). The Examiner’s interpretation of the phrase “a failsafe
surface interposed between the initial contact surface and the locking
surface” as “any intermediate surface interposed between the initial contact
surface and the locking surface,” renders meaningless, or superfluous, the
term “failsafe.” Compare Appeal Br. 15, with Ans. 10 (emphasis added).
Like Appellants, we find that an ordinary and customary meaning of the
term “failsafe” is “incorporating some feature for automatically
counteracting the effect of an anticipated possible source of failure.”
Merriam Webster’s Collegiate Dictionary (10th ed. 1997). Hence, as the
surface disposed between initial contact surface 100 and locking surface 116
of Erickson '631 is not disclosed as incorporating a feature that can counter
the effect of an anticipated source of failure, we agree with Appellants that
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Erickson '631 fails to disclose a failsafe surface, as called for by claim 1.
See Reply Br. 4–5 (mailed July 29, 2014).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(b) of claims 1 and 3 as being anticipated by Erickson
'631.

Rejection II
The Examiner finds that Erickson '735 discloses most of the
limitations of independent claims 1 and 12, but fails to disclose a “failsafe
surface interposed between the initial contact surface and the locking
surface.” Final Act. 5–6 (citing Erickson '735, col. 3, l. 55–col. 4, l. 29, col.
5, ll. 8–16, col. 7, l. 16–col. 8, l. 28, Figs. 1–4). Nonetheless, the Examiner
finds that Little discloses a piston 32 of a robotic tool changer
having a multi-faceted cam surface (38) including an initial
contact surface (38c), a locking surface (38e) and a failsafe
surface (38d) interposed between the initial contact surface
(38c) and the locking surface (38e), the failsafe surface (38d)
operative to retard movement of the piston (32) in a second
axial direction opposite the first direction.

Id. at 6 (citing Little, col. 3, ll. 29–67, col. 4, ll. 14–51, col. 5, ll. 27–48,
Figs. 1–3D). The Examiner concludes that “[i]t would have been obvious to
one of ordinary skill in the art at the time of invention to alternatively utilize
the multi-faceted cam surface of Little with the tool changer of Erickson as
an alternative component capable of effectively coupling or de-coupling the
tool units.” Id. at 6–7.
Appellants argue that neither Erickson '735 nor Little discloses
manual actuation of a tool changer or a piston. Appeal Br. 11. According to
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Appellants, the piston of Erickson '735 “is actuated by conventional power-
driven means” and “the piston in Little is pneumatically actuated.” Id.
(citing Erickson '735, col. 5, ll. 16–20, and Little, col. 3, ll. 23–27, Fig. 1).
Appellants further argue that because Erickson '735 discloses ramp 95
and groove 97 oriented asymmetrically with respect to the axis of rod 38,
whereas Little discloses ramps/surfaces 38a–e oriented symmetrically with
respect to the axis of piston 32, a person of ordinary skill in the art “would
not find it obvious to substitute Little’s piston into” the device of Erickson
'735. See Appeal Br. 12–13 (citing Erickson '735, col. 8, ll. 19–28); see also
Reply Br. 12–13. Rather, according to Appellants, “one of skill in the art
would be discouraged from such an approach, as Erickson ['735] explicitly
teaches that the combined ramp/groove design presents significant
advantages over an equal-angle design, such as Little’s.” Id. at 13.
In response, the Examiner takes the position that the limitation “[a]
manually actuated robotic tool changer” is an intended use limitation in the
preamble of independent claims 1 and 12, and thus, the toolholder of
Erickson '735 is capable of performing the recited manual actuation. See
Final Act. 5, 9–10 (citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997)); see also Ans. 9.

Claims 1–6
Independent claim 1 is drawn to “[a] manually actuated robotic tool
changer” including, inter alia, a “piston movable along its axis . . . under
manual actuation.” Appeal Br. 15 (Claims App.).
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When we look at the preamble of Appellants’ claimed invention, we
note that a preamble usually will not limit the scope of the claim unless the
preamble provides antecedence for ensuing claim terms and limits the claim
accordingly. This is what the jurisprudence means by giving life, meaning
and vitality to the claims. See Kropa v. Robie, 187 F.2d 150, 152 (CCPA
1951). In this instance, there is nexus between the preamble, i.e., “[a]
manually actuated robotic tool changer” and the claim limitation of a “piston
movable along its axis . . . under manual actuation.” The preamble recitation
of a “manually actuated” robotic changer limits the claimed piston to a
manually actuated piston, and thus, serves to structurally distinguish the
claimed piston over other pistons such as the power driven or spring
actuated piston 38 of Erickson '735 and the pneumatically driven piston 32
of Little. We thus agree with Appellants that neither Erickson '735 nor Little
discloses a manually actuated piston. See Reply Br. 6.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1–6 as unpatentable over
Erickson '735 and Little.

Claims 12–16
In contrast to claim 1, in independent claim 12, the language at issue
of “[a] piston for a manually actuated robotic tool changer” is directed
towards the intended use of the piston because it appears only in the
preamble of claim 12. If the body of a claim fully and intrinsically sets forth
all of the limitations of the claimed invention, and the preamble merely
states, for example, the purpose or intended use of the invention, rather than
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any distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999). In this case, we find that the claimed use of
Appellants’ piston, namely, “for a manually actuated robotic tool changer,”
does not result in any structural difference to the claimed piston. In other
words, there is no claimed structure that would limit the use of the claimed
piston to a manually actuated robotic tool changer. In contrast to
independent claim 1, which requires a robotic tool changer including a
“piston movable along its axis . . . under manual actuation,” claim 12 does
not have such a requirement. Here, it is clear that the body of the claim is a
self-contained description of the subject matter claimed, and the recitation
that the piston is “for a manually actuated robotic tool changer” is merely the
recitation of an intended use. Moreover, it is well settled that the recitation
of an intended use for an old product does not make a claim to that old
product patentable. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
We thus agree with the Examiner that the piston of Erickson '735 is
reasonably capable of use in a manually actuated robotic tool changer, and
Appellants have not shown persuasively that this is not the case. See Ans. 9.
We are also not persuaded by Appellants’ argument that Erickson '735
teaches away from the claimed invention because the Examiner is not
proposing to substitute Little’s piston into the device of Erickson '735. See
Appeal Br. 13; Reply Br. 6–8. Rather, the Examiner is providing the failsafe
surface of Little to the piston of Erickson '735. See Ans. 12 (“The Examiner
is merely providing a teaching of a failsafe surface disclosed by Little
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capable of being incorporated with the invention of Erickson.”). Appellants
do not point to any passage in Erickson '735 that “criticize[s], discredit[s] or
otherwise discourage[s]” providing a failsafe surface to its piston 38. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As such, the resulting
piston of Erickson '735 would include the failsafe surface of Little in
addition to ramp 95 and groove 97. Therefore, in contrast to Appellants’
position, the Examiner’s modification of the piston rod 38 of Erickson '735,
to include the failsafe surface of Little, would retain the asymmetrical
orientation of ramp 95 and groove 97, and hence, provide the purported
advantages of such an asymmetrical orientation. See Reply Br. 7.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 12 as unpatentable over Erickson '735 and
Little.
Appellants do not present any other substantive arguments with
respect to the rejection of dependent claims 13–16. See Appeal Br. 13.
Therefore, we also sustain the rejection of claims 13–16 over the combined
teachings of Erickson '735 and Little.

Rejection III
In regards to the rejection of claim 7, which depends indirectly from
claim 1, the Examiner’s use of the disclosure of Tsutsumi does not remedy
the deficiencies of the teachings of Erickson '735 and Little, as discussed
supra. See Final Act. 8. Accordingly, for the same reasons as discussed
above, we do not sustain the rejection of claim 7 as unpatentable over
Erickson '735, Little, and Tsutsumi.
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As to the rejection of claim 17, which depends indirectly from
independent claim 12, Appellants do not present any other substantive
arguments. See Appeal Br. 13. Therefore, for the same reasons as discussed
supra, we also sustain the rejection under 35 U.S.C. § 103(a) of claim 17 as
unpatentable over Erickson '735, Little, and Tsutsumi.

Rejection IV
In regards to the rejection of claim 8, which depends indirectly from
claim 1, the Examiner’s use of the disclosure of Weskamp does not remedy
the deficiencies of the teachings of Erickson '735 and Little, as discussed
supra. See Final Act. 8–9. Accordingly, for the same reasons as discussed
above, we do not sustain the rejection of claim 8 as unpatentable over
Erickson '735, Little, and Weskamp.
As to the rejection of claim 18, which depends indirectly from
independent claim 12, Appellants do not present any other substantive
arguments. See Appeal Br. 13. Therefore, for the same reasons as discussed
supra, we also sustain the rejection under 35 U.S.C. § 103(a) of claim 18 as
unpatentable over Erickson '735, Little, and Weskamp.

SUMMARY
The Examiner’s decision to reject claims 1 and 3 under 35 U.S.C.
§ 102(b) as anticipated by Erickson '631 is reversed.
The Examiner’s decision to reject claims 1–6 and 12–16 under 35
U.S.C. § 103(a) as unpatentable over Erickson '735 and Little is affirmed as
to claims 12–16 and reversed as to claims 1–6.
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The Examiner’s decision to reject claims 7 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Erickson '735, Little, and Tsutsumi is affirmed
as to claim 17 and reversed as to claim 7.
The Examiner’s decision to reject claims 8 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Erickson '735, Little, and Weskamp is
affirmed as to claim 18 and reversed as to claim 8.

AFFIRMED-IN-PART