Ex Parte Rastegar et al

Patent Trial and Appeal Board

Aug 27, 2013

10932580 (P.T.A.B. Aug. 27, 2013)

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.
10/932,580 09/02/2004 Janhangir S. Rastegar 10029 2012
79998 7590 08/28/2013
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
EXAMINER
KRAUSE, JUSTIN MITCHELL
ART UNIT PAPER NUMBER
3658
MAIL DATE DELIVERY MODE
08/28/2013 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 JAHANGIR S. RASTEGAR and THOMAS SPINELLI
____________________

Appeal 2011-008775
Application 10/932,580
Technology Center 3600
____________________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/932,580

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5, 8-10, and 162 under 35 U.S.C. § 103(a): as unpatentable over
Eugene A. Avallone et al., 8.1 Mechanism, Marks’ Standard Handbook for
Mechanical Engineers, 8-3 (10th ed., McGraw Hill, © 1996, 1987, 1978)
(hereinafter “Marks”) (Ans. 4-5); and as unpatentable over Appellants’
Admitted Prior Art3 (hereinafter “AAPA”) (Ans. 6-7). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The independent claims on appeal are claims 1 and 16. Claim 1,
reproduced below, is illustrative of the appealed subject matter:
1. A mechanism comprising:
a first link;
a second link rotatably connected to the first
link;
a first output which undergoes a motion
resulting from a motion of the first link, the first
output being operatively connected to the first link
through at least the second link; and
an input actuator for oscillating the first link
between a first position and a second position,
wherein a singular position of the first and second
links occurs between the first and second positions.

1 Appellants identify the real party in interest as Omnitek Partners LLC. Br.
3.
2 Claims 3, 4, 6, 7, 13-15, 17, and 19 have been withdrawn. Br. 3-4; Ans. 2.
3 The Examiner lists “Prior Art Figure 1” of Appellants’ instant application
as Appellants’ Admitted Prior Art. Ans. 3.
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ANALYSIS
Obviousness over Marks
Appellants argue claims 1 and 16 as a group. Br. 7-9. We select
claim 1 as the representative claim, and claim 16 falls with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Marks discloses substantially all of the
limitations of independent claim 1, including “an input actuator [that] drives
the first link from a first position to a second position . . . , wherein a
singular point . . . occurs between the first and second positions.” Ans. 4
(emphasis added). The Examiner determined that “the desired oscillating
(rocking) input . . . could be achieved through the use of link lengths which
would define a double rocker” (Id. (emphasis added)) and concluded that:
[i]t would have been obvious to one having ordinary skill
in the art . . . , through the use of routine experimentation, to
define the length of the links of the four bar linkage such that
the input is a rocking motion . . . as the calculation of link
lengths to achieve the desired motion is a matter of design
optimization to use the device for a particular purpose.
Id. at 5.
Appellants contend that Marks “does not disclose or suggest an input
actuator for oscillating the input link in the manner set forth in [the] claims.”
Br. 7. To the extent Appellants are contending that Marks fails to disclose
an input actuator at all, the Examiner responded that “[a]s Marks’ discloses
the linkages disclosed undergo certain motions, it is inherent in Marks’ that
an actuator is included to impart the disclosed motions.” Ans. 7. Since
“[t]he input . . . can be any input known in the art, generally referred to as an
actuator 101” (Spec. 8, l. 30), Marks’ disclosure that “[d]iscrete points on
the coupler, crank, or lever can be pressed into service to provide a desired
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motion” supports the Examiner’s finding that Marks necessarily discloses an
actuator that provides an input. See In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (citation omitted)) (“To establish inherency, the extrinsic
evidence ‘must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference.”). Appellants have not
provided evidence or persuasive argument in response to this finding.
To the extent Appellants are contending that Marks fails to disclose an
input actuator specifically for oscillating the first link, Marks discloses a
rocker mechanism in which “[f]ixing link C (Fig. 8.1.3), D and B can only
oscillate, and a rocker mechanism sometimes used in straight-line motions is
produced.” Marks, p. 8-3 (emphasis added). Appellants do not persuasively
explain how Marks fails to disclose or suggest an input actuator for
oscillating the input link. Appellants also contend that the Examiner’s use
of routine experimentation and design optimization to render obvious
features “not shown in . . . Mark[]s” is improper because the Examiner relies
on mere conclusory statements, because of the age of the mechanical linkage
art, and because of the unexpected advantage of doubling output of the
mechanism. Br. 8-9. Since we have found Marks discloses an input
actuator for oscillating the first link, reliance on routine experimentation
and/or design optimization to arrive at this claim limitation is unnecessary.
As such, Appellants’ contentions relating to routine experimentation and/or
design optimization (Br. 8-9) are unpersuasive.
To the extent Appellants are contending that Marks fails to disclose an
input actuator for oscillating the first link wherein a singular position of the
first and second links occurs between the first and second positions, the
Examiner found that a singular position occurs between the first and second
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positions when “the angle between A and B becomes zero” in Marks. See
Ans. 4. Appellants have not provided evidence or persuasive argument in
response to the Examiner’s finding of a singular position occurring in Marks
when the angle between A and B becomes zero.
For the foregoing reasons, Appellants do not show error by the
Examiner in concluding that the subject matter of claim 1 is unpatentable
over Marks, and we sustain the rejection of claim 1, and claim 16 which falls
therewith, under 35 U.S.C. § 103(a) as unpatentable over Marks. However,
we designate the affirmance of the rejection of these claims as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b) because our
analysis relies upon facts and reasoning that the Examiner did not use.
Appellants do not provide separate arguments for dependent claims 2,
5, and 8-10. Br. 9. Therefore, we also sustain the rejection of dependent
claims 2, 5, and 8-10 under 35 U.S.C. § 103(a) as unpatentable over Marks.

Obviousness over AAPA
Appellants argue claims 1 and 16 as a group. Br. 7-9. We select
claim 1 as the representative claim, and claim 16 falls with claim 1.
The Examiner found that AAPA discloses substantially all of the
limitations of independent claim 1, including “an input actuator [that]
oscillates (input undergoes periodic motion with a fundamental
frequency[)].” Ans. 6 (citing Spec. 9, ll. 1-2). However, the Examiner
found that AAPA did not “explicitly disclose [that] a singular point occurs
between the first and second position,” but concluded that “[i]t would have
been obvious to one having ordinary skill in the art . . . to modify Figure 1,
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to set the first and second end positions of the oscillation cycle to include a
singular point of the links, as a matter of routine experimentation.” Id.
Appellants contend that “the input link (102) of Figure 1 is not driven
in the manner set forth in claims 1 and 16.” Br. 8 (citing Spec. 9-10 (“ . . . a
cycle of the harmonic motion (1) of the input link 102 start from the position
OAA (solid lines), continue to the position OAA´ (dashed lines) during the
first half of the cycle of motion, and bring the input link back to its starting
position OAA during the second half of the cycle of motion . . . .”)).
Appellants also argue that the Examiner’s conclusion of obviousness based
on routine experimentation relies on mere conclusory statements and is
inapplicable because of the unexpected advantage of doubling output of the
mechanism. Id. at 8-9.
In addition to finding that “set[ting] the first and second end positions
of the oscillation cycle to include a singular point of the links . . . [is] a
matter of routine experimentation” (Ans. 6), the Examiner further responded
that “[a] singular position may be broadly interpreted to be any point in
between the first and second positions, as no specific definition has been
provided” (Ans. 9). Therefore, the Examiner read “singular position” as
“‘one position’, of which an infinite number of singular positions exist
between the first and second positions” (Id.). Appellants did not present any
arguments against this construction by the Examiner. Under this
construction of “singular position,” the harmonic motion between point OAA
and OAA' of input link 102 of AAPA appears to meet the claim limitation at
issue and Appellants have not adequately shown how the claimed
mechanism presents an unexpected result different from the prior art.
Without Appellants adequately showing how the claimed mechanism
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produces an unexpected result, we agree with the Examiner that an input
actuator for oscillating the first link between a first and second position,
wherein a singular (i.e., one) position of the first and second links occurs
between the first and second positions would have been an obvious matter of
design choice determined through routine experimentation. See Ans. 6
(Marks evidences “that the orientation and lengths of the links may be
arranged differently to achieve different input and output motions”). We
have also considered Appellants’ argument regarding the age of the
mechanical linkage art (Br. 8-9), but found it unpersuasive. See, e.g., Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)
(“Absent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness.”)
For the foregoing reasons, Appellants do not show error by the
Examiner in concluding that the subject matter of claim 1 is unpatentable
over AAPA, and we sustain the rejection of claim 1, and claim 16 which
falls therewith, under 35 U.S.C. § 103(a) as unpatentable over AAPA.
Appellants do not provide separate arguments for dependent claims 2,
5, and 8-10. Br. 9. Therefore, we also sustain the rejection of dependent
claims 2, 5, and 8-10 under 35 U.S.C. § 103(a) as unpatentable over AAPA.

DECISION
The Examiner’s rejection of claims 1, 2, 5, 8-10, and 16 under 35
U.S.C. § 103(a) as unpatentable over Marks is AFFIRMED and we
designate our affirmance a NEW GROUND OF REJECTION.
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The Examiner’s rejection of claims 1, 2, 5, 8-10, and 16 under 35
U.S.C. § 103(a) as unpatentable over AAPA is AFFIRMED.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the proceeding
will be remanded to the [E]xaminer. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the applicant, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)

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