Ex Parte Schilling

Patent Trial and Appeal BoardMar 28, 2014

11559756 (P.T.A.B. Mar. 28, 2014)

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. 11/559,756 11/14/2006 Harry Schilling 5858-08100 SR 2006/09 US 4612 35617 7590 03/28/2014 DAFFER MCDANIEL, LLP P.O. BOX 164345 AUSTIN, TX 78716 EXAMINER ANDREWS, MICHAEL ART UNIT PAPER NUMBER 2834 MAIL DATE DELIVERY MODE 03/28/2014 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 HARRY SCHILLING ______________ Appeal 2011-012453 Application 11/559,756 Technology Center 2800 _______________ Before BRADLEY R. GARRIS, CHARLES F. WARREN and BEVERLY A. FRANKLIN, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 1-18 under 35 U.S.C. § 103(a): claims 1-6 and 9-18 over Wolcott (US 4,476,410), Zwarg (US 6,707,217 B1) and Schilling ’872 (WO 2005/078872 A1);1 claims 7 and 8 over Wolcott, Zwarg, Schilling ’872 and Muller (US 2005/0193696 A1); and claim 16 over Wolcott, Zwarg, Schilling ’872 and Burger (JP 2002-136036 A).2 We have jurisdiction. 35 U.S.C. § 6(b). We reverse the decision of the Primary Examiner. 1 We refer to Schilling ’099 (US 2007/0032099 A1) which the Examiner and Appellant rely on as a translation of Schilling ’872. Ans. 3; App. Br., e.g., 6-8. 2 We refer to the abstract of Burger prepared by the JPO of record. Appeal 2011-012453 Application 11/559,756 2 OPINION The threshold issue in the appeal entails representative claim 1 which, with reference to Specification Figure 1, specifies a sliding contact assembly comprising at least, among other things, “a cover (5) configured to surround only the brush holder (3) and the at least one brush contact member (1), such that only the brush holder (3) and the at least one brush contact member (1) are enclosed within walls of the cover (5).” App. Br. 18 (App’x) (numerals supplied). Spec. 4:3 to 6:26. The Examiner contends, among other things, that, as illustrated in Wolcott’s Figure 1, Wolcott’s “cover [13, 15, 17] . . . [is] configured to surround the brush holder [56] and the at least brush contact member [51, 53] . . . such that the brush holder [56] and the at least one brush contact member [51, 53] are enclosed within the walls of the cover [13, 15, 17],” and would have been replaced with “cover [14] . . . configured to surround only the brush holder [17] and the at least one brush contact member [13]” of Schilling ’099 such that “brush holder [17]” and “brush contact member [13] are enclosed within the walls of the cover [14],” by one of ordinary skill in the art to prevent dust accumulation on the brushes. Ans. 3-4, 5-6, 12-13 (citing Wolcott col.2 ll.46-50, Fig. 1; Schilling ’099 ¶ 0024, Fig. 1). On this record, we agree with Appellant, for the reasons set forth in the Appeal Brief, that the Examiner erred in determining that one of ordinary skill in the art would have replaced Wolcott’s cover (central housing) 13, (end member) 15, (end member) 17 over the whole eddy current coupling device with brush holder plate 14 of Schilling ’099, that can be a printed circuit board, on which brush holder devices 17a-17c are mounted, the brush holder devices 17a-17c holding contact brushes 13a-13c, thus arriving at a Appeal 2011-012453 Application 11/559,756 3 sliding contact assembly having a cover which surrounds and encloses only the brush holder and a brush contact member, that falls within claim 1. App. Br. 4-10 (citing Wolcott col.2 l.45 to col.3 l.26, Figs, 1, 2: Schilling ’099 ¶ 0024, Figs. 1, 2). Indeed, we find that, as Appellant points out, Wolcott’s cover 13, 15, 17 surrounds sealed chamber 80, formed from brush holder or support member 56 combined with slip ring support 55, and all of the other components of eddy-current coupling device 11, and Schilling ’099 does not describe brush holder plate 14 as a cover for brush holder devices 17a-17c and contact brushes 13a-13c. Wolcott col.2 ll.46-54, col.4 ll.26-45, Fig. 1; Schilling ’099 ¶ 0024, Fig. 1. See App. Br. 5-9. The combination of Wolcott and Shilling is basic to all grounds of rejection, and accordingly, in the absence of a prima facie case of obviousness, we reverse the grounds of rejection of claims 1-18 under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED bar