Ex Parte Zumbusch

Patent Trial and Appeal BoardNov 8, 2012

10980089 (P.T.A.B. Nov. 8, 2012)

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. 10/980,089 11/03/2004 Steven J. Zumbusch 01-HSP-140 6424 200 7590 11/09/2012 EATON CORPORATION EATON CENTER 1111 SUPERIOR AVENUE CLEVELAND, OH 44114 EXAMINER KRAUSE, JUSTIN MITCHELL ART UNIT PAPER NUMBER 3658 MAIL DATE DELIVERY MODE 11/09/2012 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 STEVEN J. ZUMBUSCH ____________ Appeal 2010-010146 Application 10/980,089 Technology Center 3600 ____________ Before LINDA E. HORNER, LYNNE H. BROWNE, and SCOTT E. KAMHOLZ, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steven J. Zumbusch (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 11 and 12. Claims 1-10 and 13-15 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-010146 Application 10/980,089 2 THE INVENTION Appellant’s claimed invention relates to “control assemblies of the type including some sort of handle adapted for manual manipulation by the vehicle operator.” Spec., para. [0002]. Claims 11 and 12, reproduced below, are on appeal. 11. A control assembly adapted for use on a vehicle to be controlled in response to variations in first and second control signals, said control assembly comprising a handle member adapted to be held in a hand that is connected to an arm of a vehicle operator, said handle member being moveable in forward and reverse directions to generate said first control signal, and being moveable in left and right directions to generate said second control signal; characterized by: (a) said handle member being mounted on a connector member and moveable in forward and reverse directions about a first pivot axis, and being moveable in left and right directions about a second pivot axis; (b) said handle member and said connector member being configured such that said first pivot axis substantially intersects an axis defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator, said axis extending radially outward from said handle member, wherein the substantial intersection of said first pivot axis and said axis is adapted to minimize unintended inputs to said handle member in said forward and reverse directions; and (c) said handle member and said connector member being configured such that said second pivot axis is oriented substantially parallel to said axis of the arm of the vehicle operator, to minimize unintended inputs to said handle. Appeal 2010-010146 Application 10/980,089 3 12. A control assembly as claimed in claim 11, characterized by said handle member and said connector member being configured such that said second pivot axis is oriented coincidental with said axis of the arm of the vehicle operator. THE REJECTIONS Appellant seeks review of the following rejections: 1. Claims 11 and 12 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 11 and 12 are rejected under 35 U.S.C. § 102(b) as being anticipated by Schottler (US 5,969,520; iss. Oct. 19, 1999). ISSUES The issues presented by this appeal are: Would one skilled in the art understand what is encompassed by claims 11 and 12 when those claims are read in light of the Specification? Does Schottler disclose a handle member and a connector member “configured such that said first pivot axis [about which said handle member is moveable in forward and reverse directions] substantially intersects an axis defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator, said axis extending radially outward from said handle member, wherein the substantial intersection of said first pivot axis and said axis is adapted to minimize unintended inputs to said handle member in said forward and reverse directions” as called for in claim 11? Appeal 2010-010146 Application 10/980,089 4 ANALYSIS Indefiniteness The Examiner determined that claim 11 is indefinite because it defines the device with respect to an axis which is defined by the arm of a vehicle operator. Ans. 4. The Examiner explained that because the vehicle operator is free to move in any manner, the scope of the claim cannot be determined. Id. The Examiner further explained that “Appellant has no control over how the end user will actually interact with the device. The claim is therefore unclear because numerous situations exist where appellant’s exact device could be used for its intended purpose and not satisfy the claim that purports to cover it.” Ans. 6. Appellant argues that claim 11 is definite because “both the angle of the arm of the operator and the manner in which the handle member is gripped is specifically described in Applicant’s application.” App. Br. 3. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Independent claim 11 recites “a handle member adapted to be held in a hand that is connected to an arm of a vehicle operator” where the handle member is “mounted on a connector member and moveable in forward and reverse directions about a first pivot axis” and is “moveable in left and right directions about a second pivot axis.” Independent claim 11 then recites that the handle member and connector member are “configured such that said Appeal 2010-010146 Application 10/980,089 5 first pivot axis substantially intersects an axis defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator” and “said second pivot axis is oriented substantially parallel to said axis of the arm of the vehicle operator.” The description of the embodiments provided in Appellant’s Specification showing particular orientations of the arm of the operator and the manners in which the handle member is gripped do not limit the manner in which the handle member of claim 11 is gripped. While the Specification should be used to interpret the meaning of a claim, it is improper to confine the claims to the embodiments found in the Specification. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citations omitted). The language of claim 11, however, limits the manner in which the operator grips the handle member by calling for “said axis [defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator] extending radially outward from said handle member.” We interpret this claim language, when read in light of Appellant’s Specification, to call for the axis defined by the operator’s arm to extend radially outward from a longitudinal axis of the handle member. See, e.g., Figures 1 and 3 in which the axis defined by the operator’s arm extends radially outward from a longitudinal axis of handle member 33, 57. The fact that the claim calls for the axis defined by the arm of the vehicle operator to extend radially outward from the handle member, rather than limiting the claim more narrowly to, for example, a particular manner of gripping the handle member in which the palm of the operator’s hand Appeal 2010-010146 Application 10/980,089 6 engages the outside of the handle member and the fingers of the operator’s hand curl about the forward portion of the handle member, is a matter of breadth, not indefiniteness. Merely that a claim is broad does not mean that it is indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970). As such, we reverse the rejection of claim 11 under 35 U.S.C. § 112, second paragraph. The Examiner determined that claim 12 is also indefinite because the claim establishes no reference frame to determine whether the second pivot axis is coincidental with the axis of the arm of the vehicle operator. Ans. 4. It appears that the Examiner’s rejection is again based on the fact that the claim language does not limit the manner in which the vehicle operator must grasp the handle member, and as such, the claim is so broad as to render it indefinite. We reverse the rejection of claim 12 under 35 U.S.C. § 112, second paragraph, for the same reason as claim 11 in that claim breadth is not indefiniteness. Anticipation The Examiner determined that Schottler discloses a handle member (joystick 18) mounted on a connector member (ball 16) and moveable about first and second pivot axes (X and Y axes). Ans. 4-5. Appellant argues that “the joystick mechanism 10 of Schottler does not minimize unintended inputs to the handle member.” App. Br. 5. Appellant explains that “[a]n axis that extends radially outward from the joystick shaft 18 would not intersect the x or y axes of the ball 16 of Schottler.” Id. The Examiner responds that because Appellant’s Specification describes that “within the Appeal 2010-010146 Application 10/980,089 7 scope of the invention, there can be some separation between the axis A of the operator’s arm and the particular pivot axis” the device of Schottler, in which there would be some separation between the axis of the operator’s arm and the x and y axes, would still fall within Appellant’s invention. Ans. 8. The Examiner also determined that “the operator is free to grip the device of Schottler in any manner, and thus the pivot axis substantially intersecting an axis which extends radially outward from the handle member is satisfied. For example, see axis Z of Schottler, which intersects both axis X and axis Y.” Id. Claim 11 calls for: said handle member and said connector member being configured such that said first pivot axis substantially intersects an axis defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator, said axis extending radially outward from said handle member, wherein the substantial intersection of said first pivot axis and said axis is adapted to minimize unintended inputs to said handle member in said forward and reverse directions. Despite the fact that Appellant’s Specification may allow for some separation between the axis A of the operator’s arm and the first pivot axis, the language of claim 11 does not allow for the substantial separation between the axes as disclosed in Schottler. See App. Br. 5 (“As a result of the joystick shaft being disposed above the center of rotation 22, the joystick mechanism 10 of Schottler does not minimize unintended inputs to the handle member.”) Instead, claim 11 recites that the first pivot axis “substantially intersects” the axis A so as “to minimize unintended inputs to Appeal 2010-010146 Application 10/980,089 8 said handle member in said forward and reverse directions.” We decline to construe “substantially intersects” so broadly as to encompass the conventional “two-axis” joystick distinguished in Appellant’s Specification. Spec., paras. [0005]-[0006]. For these reasons, Schottler does not disclose each and every element of independent claim 11. As such, Schottler does not anticipate independent claim 11 or its dependent claim 12. CONCLUSIONS One skilled in the art would understand what is claimed by claims 11 and 12 when those claims are read in light of the Specification. Schottler does not disclose a handle member and a connector member “configured such that said first pivot axis [about which said handle member is moveable in forward and reverse directions] substantially intersects an axis defined by the arm of the vehicle operator when said handle member is held in the hand of the vehicle operator, said axis extending radially outward from said handle member, wherein the substantial intersection of said first pivot axis and said axis is adapted to minimize unintended inputs to said handle member in said forward and reverse directions” as called for in claim 11. DECISION We REVERSE the decision of the Examiner to reject claims 11 and 12. REVERSED Appeal 2010-010146 Application 10/980,089 9 mls