Ex Parte WACH

Patent Trial and Appeal Board

Jul 3, 2018

15004507 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/004,507 01122/2016
63652 7590 07/06/2018
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
RYANX.WACH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
15-DIS-273-PR-US-UTL 8025
EXAMINER
NGUYEN, KIEN T
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/06/2018 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):
PTOMail@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteRYANX. WACH 1
Appeal2017-010292
Application 15/004,507
Technology Center 3700
Before: KEVIN F. TURNER, DANIELS. SONG, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1, 3, 5-16,
and 18-20 in the present application. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134.
We AFFIRM-IN-PART.
1 The Appellant is the Applicant, Disney Enterprises, Inc., which, according
to the Appeal Brief, is the real party in in interest (Appeal Brief (hereinafter
"App. Br.") 1 ).
Appeal2017-010292
Application 15/004,507
The claimed invention is directed to a six degree of freedom (also
referred to as "DOF") motion platform system (Abstract). The Specification
teaches that the disclosed invention utilizes four actuator assemblies instead
of three actuator assemblies used in conventional Stewart platform systems,
thereby providing redundant load paths that makes the system fail safe and
lowers fabrication and operation costs (Spec. i-fi-15, 8).
Independent claims 1 and 9 are illustrative of the invention and read
as follows (App. Br. 17-19, Claims App'x, emphasis added):
1. A motion platform apparatus for supporting an object and
for moving the supported object with six degree of freedom
(DOF) motion, the apparatus comprising:
a motion platform;
a base with an upper surface facing and spaced apart from
a lower surface of the motion platform; and
an actuation system coupled with the lower surface of the
motion platform and with the upper surface of the base,
wherein the actuation system operates to move the motion
platform with six DOF motion,
wherein the actuation system is free of non-redundant load
paths,
wherein the actuation system is pivotally coupled, via four
platform coupling components, with the lower surface of the
motion platform at four coupling locations that are arranged in
a rectangular pattern, and
wherein the actuation system comprises four actuator
assemblies that are independently and concurrently operable to
provide the six DOF motion.
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9. An apparatus for moving a supported object with six
degree of freedom (DOF) motion, the apparatus comprising:
a motion platform;
an actuation system coupled with the motion platform; and
a controller operating the actuation system to move the
motion platform with six DOF motion,
wherein the actuation system comprises four actuator
assemblies that are independently operable to provide the six
DOF motion to the motion plaiform.
Independent claim 15 is directed to an amusement park ride having an
actuation system with four actuator assemblies coupled to a motion platform
"at four coupling locations arranged in a rectangular pattern" and provides
six DOF motion.
REJECTIONS
1. The Examiner rejects claims 1, 5-13, 15, 16, and 18-20 under 35
U.S.C. § 103 as obvious over Hodgetts et al. (US 6,634,885 B2, issued Oct.
21, 2003 (hereinafter "Hodgetts")) in view ofFromyer et al. (US 7,094,157
B2, issued Aug. 22, 2006 (hereinafter "Fromyer")) (Final Act. 2).
2. The Examiner rejects claims 3 and 14 under 35 U.S.C. § 103 as
obvious over Hodgetts and Fromyer, in view of Francis et al. (US 5,857,917,
issued Jan. 12, 1999 (hereinafter "Francis")) (Final Act. 5).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
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66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
Rejection 1
We initially note that the Appellant asserts that the Examiner's
Answer changes the reasoning for combining the references and objects to
the change in the Examiner's position, arguing that such change amounts to
a new ground of rejection (Reply Br. 2). 2 However, rather than filing a
petition to the Director, the Appellant argues in its Reply Brief that the
Examiner's reasoning in the Answer for combining the references is still
deficient, and that "the following discussion [in the Reply Brief] along with
the remarks provided in the Appeal Brief fully address all of the Examiner's
assertions." (Reply Br. 2). Accordingly, we address the substantive
arguments infra, understanding the Examiner's position to be set forth in the
Office Action as modified by the Answer, and the Appellant's position to be
as set forth in its Appeal Brief, supplemented by its Reply Brief.
The Examiner rejects claims 1, 5-13, 15, 16, and 18-20 as obvious
over Hodgetts in view of Fromyer, finding that Hodgetts discloses a motion
platform apparatus as claimed except that Hodgetts utilizes only three
2 In the Final Action, the Examiner states that "it has been held that it would
have been obvious to one of ordinary skill in the art to omit certain
component(s) and its function if the function of the element is not desired."
(Final Act. 4; see also Final Act. 5). In response to the Appellant's
argument that "the apparatus of claim 1 is adding components and not
omitting components as asserted stated [sic] by the Examiner" (App. Br. 10,
formatting removed), the Examiner's Answer states that the statement in the
Final Action "was an error and should NOT have been made" but that the
Examiner "maintain[ s] the same ground of rejection but with different
reasoning" as set forth in the Answer (Ans. 5).
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actuator assemblies to provide six DOF motion rather than four actuator
assemblies as required by the claims, and also "fails to teach the actuation
system is free of non-redundant load paths" as recited in claim 1 (Final Act.
2-3). The Examiner finds that Fromyer discloses an actuation system
having "four actuator assemblies (20) that are independently and
concurrently operable to provide several DOF motion," and having coupling
components "arranged in a rectangular pattern." (Id. 4). The Examiner
concludes that "it would have been obvious to one of ordinary skill in the art
to modify the actuation system of Hodgetts et al with the four actuator
assemblies as taught by Fromyer et al for the purpose of enhancing the
stability of the motion platform." (Id.).
Claims 1 and 5---8
The Appellant argues that the rejection is improper because Hodgetts
fails to disclose limitations pertaining to provision of four actuator
assemblies (App. Br. 9). However, such deficiencies have been already
conceded by the Examiner (Final Act. 2--4). In addition, the Appellant
argues that "Fromyer fails to overcome the deficiencies of Hodgetts as it
fails to show[] four actuator assemblies pivotally coupled to a motion
platform that are operable to provide 6 DOF motion." (App. Br. 12; see also
id. at 11; Reply Br. 5). However, as noted by the Examiner, this argument is
not persuasive because "Hodgetts clearly shows the actuation assemblies []
pivotally coupled" to provide 6 DOF motion (Ans. 5-6). The Appellant
essentially argues these references individually, but non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. In re Merck, 800
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F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981 ).
The Appellant also argues that "[i]f the Hodgetts actuation system is
modified as suggested by the Examiner to include instead the four inflation
actuators 20 of Fromyer, the result would not provide the apparatus of
claim 1 and would destroy Hodgetts for its intended purpose" because it
would "no longer provide 6 DOF motion." (App. Br. 12-13; see also Reply
Br. 6-7). In that regard, the Appellant points out that "Fromyer discusses
providing roll, pitch, heave, and yaw motion but not providing 6 DOF
motion," a fact that the Examiner appears to recognize (App. Br. 12; Final
Act. 4).
However, this argument is unpersuasive. As further explained, "[i]n
this case, the Examiner does not suggest to physically replace the actuators
of Hodgetts et al with four inflatable actuators of Fromyer but rather relied
on the teaching of the four actuators arranged in a rectangular pattern in a
motion platform of Fromyer et al as clearly stated above to enhance the
stability of the motion platform of Hodgetts et al." (Ans. 7). Thus, the
rejection is based on providing the actuation system of Hodgetts with a
fourth actuator assembly arranged in a rectangular pattern as suggested by
Fromyer to enhance stability of the motion platform of Hodgetts.
Accordingly, the Examiner has set forth reasoning with rational
underpinnings sufficient to support the legal conclusion of obviousness of an
actuation system comprising four actuator assemblies that are operable to
provide six DOF motion. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In providing a fourth actuator assembly in the apparatus of Hodgetts
arranged in a rectangular pattern as suggested by Fromyer, it would have
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been obvious to, and within the skill of, a person of ordinary skill to
implement this change so as to maintain the six DOF motion provided by
Hodgetts.
The Appellant also argues that in using four actuator assemblies, the
claimed motion platform system is counterintuitive because it is over-
constrained and requires a more complex controller, thus, "going against the
standard design practice of avoiding over-constrained designs." (App. Br. 8,
citing Spec. i-fi-f 17, 18). The Examiner finds that "there is no test data and/or
evidence that such 'going against the standard design practice' is more
superior than the well-known Stewart platform." (Final Act. 5). While we
agree with the Appellant that there is no requirement that such evidence of
superiority be provided (App. Br. 13), our agreement does not resolve this
rejection in the Appellant's favor in view of the prima facie case of
obviousness set forth by the Examiner.
The Appellant further argues that as to the limitation requiring a
system that is free of non-redundant load paths, "Fromyer is silent as to this
limitation and is not cited for overcoming this Examiner-admitted deficiency
of Hodgetts such that this limitation is missing from both cited references."
(App. Br. 9, underlining removed). In that regard, the Appellant argues that:
the Examiner's Answer (and the final Office Action) does not
provide a specific citation to Fromyer showing that each of its
load paths is redundant. ... From a review of Figure 2 and col.
3, line 19-45 of Fromyer, it appears that the motion platform
would become unstable and/or non-functional if any of the
actuators 20 were to fail such that each of the actuators 20 is
non-redundant.
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(Reply Br. 4 ).
The Appellant is correct that the Examiner has conceded that Hodgetts
"fails to teach the actuation system is free of non-redundant load paths."
(Final Act. 2-3). In addition, the Examiner does not find that Fromyer
discloses a pneumatic motion platform with its pneumatic actuators that is
configured to be "free of non-redundant load paths," and we find it
speculative to do so in the context of what this term means as discussed
infra.
The Examiner responds that the limitation "wherein the actuation
system is free of non-redundant load paths" is "not a positive structural
limitation" but instead, is a functional limitation (Ans. 5---6). Accordingly,
the Examiner finds that "it appears that the use of eight linear actuators
arranged at four coupling locations that are arranged in a rectangular pattern
would allow non-redundant load paths of the typical Stewart platform to be
eliminated." (Id. 5). In other words, the Examiner finds that upon
modifying Hodgetts in view of Fromyer "for the purpose of enhancing the
stability of the motion platform," "such modification would meet the
functionality of the redundant load paths as set forth in claims 1 and 16"
because "all of the structural components are taught and the applied prior art
is fully capable of meeting the functional limitation of being free of non-
redundant load paths." (Ans. 5---6).
The Appellant disagrees, and argues that "this limitation defines the
structural components of the actuation system by stating that each actuator
assembly is configured so that it does not include a non-redundant load path
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(i.e., includes a redundant load path)." (Reply Br. 3). Moreover, the
Appellant argues that:
the combination of the two references is not "fully capable of
meeting the functional limitation" (even if the limitation "the
actuation system is free of non-redundant load paths" were
construed by the Board as merely functional) as the Hodgetts-
Fromyer actuation system is not capable of being free of non-
redundant load paths (unless unacceptably modified based
solely upon on Appellant's teaching).
(Reply Br. 5).
We generally agree with the Appellant as to this issue. The claim
language "wherein the actuation system is free of non-redundant load paths"
requires the actuation system with its four actuator assemblies to be actually
configured for such function, not merely be capable of being further
configured for such function. Moreover, even if this recitation was
considered to be functional, this language imparts a characteristic not
possessed by Hodgetts or Fromyer. Functional limitations directed to
intended uses in an apparatus claim do not serve to distinguish the claimed
apparatus from prior art apparatuses inherently capable of performing the
claimed function unless they impart a characteristic not possessed by the
prior art. In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997).
While the Examiner's suggested combination results in an actuation
system with four pivotally coupled actuator assemblies in a rectangular
pattern, we do not agree that such arrangement necessarily results in an
actuation system that is "free of non-redundant load paths" because such a
system requires operation of each of the four actuator assemblies to exert
forces in a particular way. In that regard, in view of the Specification, a
person of ordinary skill in the art would understand the limitation "the
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actuation system is free of non-redundant load paths" to mean that the
actuation system remains stable and safe upon failure of two of the eight
actuators in the four actuator assemblies (see Spec. i-f 18 ("any two of the
linear actuators can be lost or fail without loss of stability of the motion
platform."); Spec. i-f 20 ("This system allows for up to two of the eight truss
members to fail while the motion platform system still remains stable and
safe."); Spec. i-f 27 ("Significantly, redundant load paths are provided as any
two of the linear actuators of the pairs or assemblies 130, 140, 150, and 160
may fail without loss of stability of the motion platform 114. "); see also
i-fi-15, 8, 36 (describing limitations of Steward platform type systems)). 3 The
Examiner has not articulated a rational basis for further modifying the
combination of Hodgetts and Francis such that "the actuation system is free
of non-redundant load paths."
Therefore, in view of the above considerations, we reverse the
Examiner's rejection of independent claim 1 because the rejection is
inadequate to establish that it would have been obvious to provide an
actuation system that is "free of non-redundant load paths." The Appellant
relies on dependency and arguments discussed above for patentability of
3 Indeed, the Examiner acknowledges that "[a]s stated in the specification,
the prior art utilizes Stewart platforms for high factors of safety for strength
and fatigue and include additional mechanical or structural components in
order to maintain structural safety in the event of a truss component failure;
and the claimed invention provides redundant load paths which reduces
significant design constraints and also lowers fabrication and
maintenance/operation costs." (Final Act. 3--4; see also id. at 5; Spec. i-f 5).
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dependent claims 5-8 (App. Br. 14). Accordingly, the Examiner's rejection
of dependent claims 5-8 is also reversed.
Claims 9-13
The Appellant argues that "[i]ndependent claim 9 includes limitations
similar to those found in claim 1 with regard to the use of four actuator
assemblies to provide six DOF motion," and relies on the arguments
submitted with respect to claim 1 for patentability of independent claim 9
(App. Br. 14). Notably, independent claim 9 does not require an actuation
system that is "free of non-redundant load paths." As discussed above, the
Appellant's argument asserting patentability based on the actuation system
having "four actuator assemblies that are independently operable to provide
the six DOF motion to the motion platform" is unpersuasive. Accordingly,
the Examiner's rejection of independent claim 9 is affirmed. The Appellant
relies on dependency and arguments discussed above for patentability of
dependent claims 10-13 (App. Br. 14). Thus, these dependent claims fall
with claim 9.
Claims 15, 16, and 18-20
The Appellant argues that "[i]ndependent claim 15 is directed toward
a ride with limitations similar to those found in claim 1 such that the reasons
for allowing claim 1 over Hodgetts and Fromyer are applicable to claim 15."
(App. Br. 15). However, independent claim 15 does not require an actuation
system that is "free of non-redundant load paths." As discussed above, the
Appellant's arguments asserting patentability based on the actuation system
with four couplings "arranged in a rectangular pattern" and having "four
actuator assemblies that are independently operable to provide the six DOF
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motion to the motion platform" are unpersuasive. Therefore, we affirm the
Examiner's rejection of independent claim 15.
The Appellant relies on dependency and arguments discussed above
for patentability of dependent claims 16 and 18-20 (App. Br. 14--15). The
Appellant also points out that like claim 1, dependent claim 16 explicitly
requires the actuation system to be "free of non-redundant load paths."
(App. Br. 15). Accordingly, we reverse this rejection with respect to claim
16, but affirm the rejection with respect to claims 18-20.
Rejection 2
The Examiner rejects claims 3 and 14 as obvious over Hodgetts and
Fromyer, in view of Francis (Final Act. 5). The Examiner finds that
Hodgetts does not disclose use ofU-joints, but that use ofU-joints in a
motion platform apparatus is well-known in the art as evidenced by Francis
(Id. 5, citing Francis, col. 2, 11. 65---67). The Appellant relies on the
dependency of these claims for patentability, and argues that Francis does
not address the deficiencies of Hodgetts and Fromyer (App. Br. 16).
Therefore, we reverse this rejection with respect to claim 3, 4 and affirm this
rejection with respect to claim 14, which depends from claim 9.
4 We observe that claim 3 depends from claim 2, which has been previously
canceled and its limitations incorporated into independent claim 1. This
discrepancy should be corrected during any further prosecution of the
present invention.
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1. Rejection 1 is:
CONCLUSIONS
a. Reversed with respect to claims 1, 5-8, and 16; and
b. Affirmed with respect to claims 9-13, 15, and 18-2 0.
2. Rejection 2 is:
a. Reversed with respect to claim 3; and
b. Affirmed with respect to claim 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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