Ex Parte Sullivan

Patent Trial and Appeal Board

Aug 25, 2017

11924653 (P.T.A.B. Aug. 25, 2017)

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.
11/924,653 10/26/2007 Steven SULLIVAN 7013-114 1629
84649 7590 08/29/2017
Symbus Law Group, LLC
Cliff Hyra
11710 Plaza America Drive
Suite 2000
Reston, VA 20190
EXAMINER
KING, BRADLEY T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
docketing @ sy mbu s. com
chyra @ symbus .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN SULLIVAN
Appeal 2017-001789
Application 11/924,653
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001789
Application 11/924,653
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1—12 and 64—74, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE INVENTION
The application is directed to “an integrated wheel hub motor/
generator, regenerative braking and/or [a] motorized braking method for an
aircraft landing gear system.” (Spec. 12.) Claim 1, reproduced below,
exemplifies the subject matter on appeal:
1. A wheeled vehicle having electric devices functioning as
motors, generators, or motors and generators, comprising:
at least one rotor operably connected to a wheel of said
wheeled vehicle for rotation; at least one stator operably
connected to said wheeled vehicle for non-rotational support;
said at least one stator and said at least one rotor being configured
such that interaction of their respective magnetic flux fields
causes at least one of (a) and (b):
(a) conversion of electrical energy into rotational torque
energy of said wheel, and
(b) the conversion of rotational torque energy of said
wheel into electrical energy, thus applying magnetic counter
torque to said rotor;
at least one of said stator and said rotor being further
configured to receive electrical power in such a manner as to
apply a braking effect to the wheel by motoring the rotor;
wherein the wheeled vehicle lacks a friction braking system,
the electric devices sufficing to bring the wheeled vehicle to a
stop and to maintain the vehicle in a stopped or parked position
using one or more of the group consisting of regenerative
braking, dynamic braking, motorized braking and parking brake
function.
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Application 11/924,653
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Goldman et al.
Knechtges
DeVries
Arnold
US 4,223,255
US 5,632,534
US 5,721,473
US 6,663,195 B1
Sep. 16, 1980
May 27, 1997
Feb. 24, 1998
Dec. 16, 2003
THE REJECTIONS
1. Claims 1—12 and 64—74 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement. (See
Non-Final Act. 3—4.)
2. Claims 1—12 and 64—74 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. (See Non-Final Act. 4—5.)
3. Claims 1—12 and 64—74 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention. (See Non-Final Act. 5.)
4. Claims 1—4, 64, 68, and 70-72 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by DeVries. (Non-Final Act. 6—7.)
5. Claims 10 and 11 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over DeVries and Knechtges. (Non-Final Act. 7—8.)
6. Claims 1—12, 64, 65, 67, and 69—72 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Goldman and De Vries. (See
Non-Final Act. 8—10.)
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Application 11/924,653
7. Claims 66 and 73—74 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Goldman, DeVries, and Arnold. (See Non-Final Act.
10.)
ANALYSIS
Written Description
The Examiner finds that claims 1—12 and 64—74 fail to satisfy the
written description requirement because “the original disclosure does not
support a vehicle without a friction braking system with regenerative
braking or dynamic braking sufficing to bring the wheeled vehicle to a stop
and to maintain the vehicle in a stopped or parked position as claimed.”
(Non-Final Act. 4—5.) Because Appellant presents no arguments in the
Appeal Brief directed to this ground of rejection under a separate heading, it
is summarily affirmed. See 37 C.F.R. § 41.31 (c)(l)(iv) (“Each ground of
rejection contested by appellant must be argued under a separate heading,
and each heading shall reasonably identity the ground of rejection being
contested (e.g., by claim number, statutory basis, and applied reference, if
any).”); MPEP § 1205.02 (9th ed. March 2014) (“[T]he Board may
summarily sustain any grounds of rejections not argued.”); see also Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant
fails to present arguments on a particular issue — or, more broadly, on a
particular rejection — the Board will, as a general matter, unilaterally review
those uncontested aspects of the rejection.”).1
1 Although Appellant does briefly address written description in the Reply
Brief, that comes too late, as it deprived the Examiner a chance to respond
and the Board the Examiner’s views on the issue. See Ex parte Borden, 93
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Application 11/924,653
Indefiniteness
The Examiner concludes that claims 1—12 and 64—74 are indefinite
because the claimed “parking brake function” is “unclear.” (Non-Final Act.
5.) Because Appellant also presents no arguments directed to this rejection,
it is also summarily affirmed. See 37 C.F.R. § 41.31(c); MPEP § 1205.02;
Ex parte Frye, 94 USPQ2d at 1075.
Enablement
The Examiner concludes that claims 1—12 and 64—74 are not enabled
because claim 1 recites “maintain the vehicle in a stopped or parked position
using one or more of the group consisting of regenerative braking, dynamic
braking, motorized braking and parking brake function” and “[Appellant]
argues that it is impossible for regenerative braking to maintain vehicles in a
stopped state.” (Ans. 3.) Appellant asserts that “the presence of the
inoperative embodiment identified by the Examiner does not render claim 1
nonenabled” because “[a] person of skill in the art would know without any
experimentation at all that regenerative braking alone would be an
inoperative embodiment.” (App. Br. 6.)
We agree with the Examiner. “To be enabling under § 112, a patent
must contain a description that enables one skilled in the art to make and use
the claimed invention.” Atlas Powder Co. v. E.I. du Pont De Nemours &
Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Due to the use of the Markush
group, Appellant’s claim 1 covers a system in which the “electric devices”
that bring the vehicle to a stop and keep it stopped are only “regenerative
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
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Application 11/924,653
braking,” and Appellant admits that regenerative braking alone cannot stop a
vehicle or maintain it in place. The claim thus has a scope that a skilled
artisan would be unable to practice without undue experimentation.
We are not persuaded by Appellant’s citation to Atlas Powder. The
claims in that case recited salts, fuels, and emulsifiers, and the written
description included numerous examples of each. See 750 F.2d at 1576.
The Court found that “one skilled in the art would know how to select a salt
and fuel” and then apply a “basic principle of emulsion chemistry,” to
determine an effective emulsifier. Id. Essentially, the claims covered a
genus (a combination of a salt, a fuel, and an emulsifier) and the description
identified the components that one of skill in the art would be able to
combine to practice a species within that genus. Here, on the other hand,
due to the presence of the Markush group, the claims effectively have a
series of different scopes, one corresponding to each member of the group,
and one of those cannot be practiced. Application of Angstadt, 537 F.2d 498
(CCPA 1976), presented essentially the same situation as Atlas Powder. The
Angstadt claim was to genus and, after explaining that “appellants are not
required to disclose every species encompassed by their claims,” the Court
concluded that “persons skilled in this art, armed with the specification and
its 40 working examples,” would have been able to determine which
complexes within the scope of the claims worked and which did not. Id. at
503. Angstadt is not analogous to this case for the same reason that Atlas
Powder is not analogous: neither addressed a situation in which one
member of a Markush group was not enabled.
For these reasons, we sustain the rejection of claims 1—12 and 64—74
as failing to comply with the enablement requirement. We note Appellant
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Application 11/924,653
does not advance separate arguments for claims 2—12 and 64—74 for this
rejection. (App. Br. 5—7.) Arguments not made are waived.
Anticipation
With respect to claims 1—4, 64, and 68, we select claim 1 as
representative. Appellant argues claim 1 “is distinguished from DeVries at
least in that it recites at least one of said stator and said rotor being further
configured to receive electrical power in such a manner as to apply a braking
effect to the wheel by motoring the rotor, and that the electric devices suffice
to bring the wheeled vehicle to a stop and to maintain the vehicle in a
stopped or parked position.” (App. Br. 7—8, emphasis omitted.) In
particular, Appellant asserts that “De Vries teaches regeneration of kinetic
energy, which is the opposite of what is claimed” and that “[i]n motorized
braking, electricity is not regenerated, electricity is expended to drive the
rotor opposite the direction of rotation and achieve a braking effect on a
wheel.” (Id. at 9.) We are not persuaded of error because DeVries’
disclosure that “[w]hen a throttle stick is in neutral, and an accelerating/
braking knob is turned counterclockwise, the polarity of the electro-magnets
reverse and powerful electro-magnets begin braking” does describe
“receiving] electrical power in such a manner as to apply a braking effect to
the wheel by motoring the rotor,” as claimed. We do not agree that this
disclosure is “baffling and nonsensical” (App. Br. 8) and, in any event,
Appellant’s questions about how DeVries works (id.) are insufficient to
show that DeVries is not enabling which, as the Examiner points out, is
presumed. See In re Sasse, 629 F.2d 675, 681 (CCPA 1980). We also find
that DeVries discloses “to maintain the vehicle in a stopped or parked
position,” as neither the claim nor Appellant’s Specification places any
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Application 11/924,653
temporal limitation on the “maintaining” limitation in the “wheeled vehicle”
claim. When the vehicle is stopped, it is “maintain[ed]. . . in a stopped . . .
position” for at least some period of time.2
Because we are not persuaded by Appellant’s arguments, we sustain
the Section 102 rejection of representative claim 1, as well as the Section
102 rejection of claims 2-4, 64, and 68, which are not argued separately.
However, because Appellant is correct that “[t]he Examiner does not
address claims 70—72” in the anticipation rejection (App. Br. 10; see Final
Act. 7), we reverse the Section 102 rejection of those claims, as the
Examiner has failed to establish a prima facie case of anticipation.
Obviousness
The Examiner finds that Goldman teaches the subject matter of claim
1, except that “Goldman lacks the explicit disclosure of a lack of friction
brakes.” (Non-Final Act. 6—7.) The Examiner further finds, however, that
“DeVries discloses a similar structure and further teaches the use of
capacitorized elements to provide strong braking and eliminate the need for
friction brakes” and that “[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify the system of
2 Should the maintaining limitation be amended, the Examiner may wish to
consider whether the disclosure enables a “wheeled vehicle [that] lacks a
friction braking system” with any “electric device” that can “maintain the
vehicle in a stopped or parked position.” Our review of the Specification
suggests that all disclosed devices are either unsuitable for extended
stopping/parking (regenerative braking, dynamic braking, motorized
braking) or are friction braking (the “parking brake function” described by
Appellant as “a permanent magnet of the rotor [that] applies a static
nonrotational clamping force to a corresponding stator”). (App. Br. 7.)
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Goldman, according to the teachings of DeVries, to maximize energy
recovery and simplify vehicle structure.” {Id. at 9.)
Appellant argues that claim 1 “is distinguished from the cited
references at least in that it recites that the electric devices suffice to bring
the wheeled vehicle to a stop and to maintain the vehicle in a stopped or
parked position.” (App. Br. 11.) We disagree because, as explained above,
we find this subject matter disclosed in DeVries. Appellant further argues “a
person of ordinary skill in the art would not have thought that the capacitors
of DeVries could be located in places other than a hub cap or capacitorized
chassis.” (App. Br. 11—12.) This is not a persuasive argument because the
“test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference” but
“[rjather,. . . what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). In any event, Appellant does not explain why it would
not have been obvious to modify a vehicle such as that shown in Goldman,
to include capacitorized hubcaps or a capacitorized chassis.
Appellant asserts that “claims 73 and 74 teach using a parking brake
function to lock the at least one rotor in place and maintain the wheeled
vehicle in a parked position,” that “the parking brake function involves
clamping a permanent magnet of the rotor to a corresponding stator,” and
that “[t]he Examiner allows that Goldman and DeVries do not teach such
limitations and therefore introduces Arnold.” (App. Br. 15.) This argument
is unpersuasive because the claims require only “using a parking brake
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Application 11/924,653
function to lock the at least one rotor in place” and Arnold describes a
parking brake system.3 (See Non-Final Act. 10.)
Because we are not persuaded by Appellant’s arguments, we sustain
the Section 103 rejections of claims 1, 73, and 74, as well as the Section 103
rejections of claims 2—12, 64, 65, 67, and 69-72, for which no other separate
arguments for patentability are offered.4
DECISION
The rejections of claims 1—12 and 64—74 under 35 U.S.C. § 112 as
indefinite, lacking adequate written description, and non-enabled are
affirmed.
The rejection of claims 1—4, 64, and 68 under 35 U.S.C. § 102 is
affirmed.
The rejection of claims 70-72 under 35 U.S.C. § 102 is reversed.
The rejections of claims 1—12, 64—67, and 69-74 under 35 U.S.C.
§103 are affirmed.
3 We resolve this issue without addressing whether “the parking brake
function,” which the Examiner has concluded is indefinite, is properly
construed as argued by Appellant. In the event of further prosecution, the
Examiner may wish to explicitly consider whether the disclosure of “a
permanent magnet of the rotor applies a static nonrotational clamping force
to a corresponding stator so as to provide a parking brake function” (see
App. Br. 7) is sufficient to require that the claim language “parking brake
function” be limited to “clamping a permanent magnet of the rotor to a
corresponding stator.” (See Ans. 15.)
4 Although Appellant argues in the Brief that “[t]he Examiner does not
address claims 67 and 70—72, which recite limitations not contained in any
prior art references” (App. Br. 14), that defect is cured in the Answer (see
Ans. 14).
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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