2019006377 (P.T.A.B. May. 28, 2020)

ALSTOM Technology Ltd

Patent Trials and Appeals BoardMay 28, 2020

2019006377 (P.T.A.B. May. 28, 2020)

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. 15/062,301 03/07/2016 Walter BAUR 307035-5 US 9446 7788 7590 05/28/2020 General Electric Company Attn: Jim Pemrick 1 Research Circle K1-3A64 Niskayuna, NY 12309 EXAMINER VAUGHAN, JASON L ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): charlotte.wilson@ge.com gepower.mail@ge.com james.pemrick@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WALTER BAUR and MARKUS WIESENDANGER Appeal 2019-006377 Application 15/062,301 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and SUSAN L. C. MITCHELL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as General Electric Technology GmbH. Appeal Br. 2. Appeal 2019-006377 Application 15/062,301 2 CLAIMED SUBJECT MATTER The claims are directed to a magnetic roller. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A magnetic roller for being rotatable on a ferromagnetic surface-comprising: a roller wheel having an inner space; a magnetic array arrangement swivelably disposed within the inner space of the roller wheel, the magnetic array arrangement having a strong adhesion force side and a weak adhesion force side; and at least one first drive mechanism configured to swivelably drive the magnetic array arrangement to direct: the strong adhesion force side towards the oncoming ferromagnetic surface, and, the weak adhesion force side towards the foregoing ferromagnetic surface to enable the roller wheel to move forward on the ferromagnetic surface. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Pelrine US 5,284,096 Feb. 8, 1994 Ross US 6,792,335 B2 Sept. 14, 2004 REJECTIONS Claims 1, 2, and 4 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Pelrine. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Pelrine and Ross. Appeal 2019-006377 Application 15/062,301 3 OPINION Claim 1 Appellant contends that Pelrine fails to disclose (1) “a magnetic roller that includes a roller wheel,” (2) “a magnetic array arrangement,” and (3) “that a magnetic array arrangement is swivelably disposed within the inner space of the roller wheel” with “a first drive mechanism configured to swivelably drive the magnetic array arrangement . . . .” Appeal Br. 6–10 (internal quotations and emphasis omitted). (1) a magnetic roller that includes a roller wheel Appellant provides a summary of the rejection and portions of Pelrine, and explains that “Pelrine discloses that wheel 70 comprises an outer wheel member 71,” which “includes an annular peripheral wall 72 and side walls 73.” Appellant then concludes that “the peripheral wall 72 is part of the wheel 70 and (sic).” Appeal Br. 8. Appellant’s conclusion stops mid- sentence and, therefore, it is unclear what Appellant is attempting to convey. Appellant additionally notes that “Pelrine describes that the ‘peripheral wall 72’ is made of a non-magnetic material.” Appeal Br. 8. As the Examiner explains, however, “while Pelrine . . . does disclose that the roller outer surface is made of nonmagnetic material, the roller assembly as depicted in Figure 8 of Pelrine . . . is a magnetic roller as it includes within it the magnet 77 and the magnetically permeable rods 75.” Ans. 6. The Examiner additionally notes that “this is the same arrangement disclosed by appellant,” which has “roller wheel 110 . . . made of material, for example plastic, which has no magnetic screening effect.” Id. at 6–7 (citing Spec. ¶ 24). Accordingly, these contentions do not apprise us of Examiner error. Appeal 2019-006377 Application 15/062,301 4 (2) a magnetic array arrangement The Examiner finds that Pelrine’s arm 75 and magnet 77 form a “magnetic array.” Final Act. 2. Appellant contends that “Pelrine describes ‘arm 75’ and that ‘magnet 77’ is ‘mounted on the arm,’” and “one skilled in the art would not consider one magnet a ‘magnetic array arrangement.’” Appeal Br. 9. Without citing any evidence or referencing Appellant’s Specification, the Examiner responds that a “magnetic array” does not require multiple magnets. See Ans. 8 (explaining that “Appellant’s arguments appear to require that the term magnetic array arrangement be limited to an array including multiple separate permanent magnets,” which “limits the feature beyond the broadest reasonable interpretation or the term magnetic array arrangement.”). The plain language of claim 1 (i.e., a “magnetic array”) requires an array of magnets. The Examiner’s interpretation of the claim would effectively read the term “array” out of the claim. The plain meaning of the term “array” is “[a]n arrangement of usually identical devices, often sensors, that function as a unit: an array of solar panels.” The American Heritage Dictionary of the English language, “array” (6th Ed. 2016), https://search.credoreference.com/content/entry/hmdictenglang/array/0?instit utionId=743 (last visited May 7, 2020). This plain meaning is consistent with the Specification, which only describes the “magnetic array” as being composed of multiple magnets. See, e.g., Spec. ¶¶ 10, 25. Because the Examiner acknowledges that Pelrine does not include multiple magnets, which is required by the claims, the Examiner has not established that Pelrine anticipates claim 1. Appeal 2019-006377 Application 15/062,301 5 Nevertheless, the Examiner’s rejection of claim 3 cures this deficiency. Claim 3 further defines “the magnetic array arrangement [as] permanent magnets arranged in Halbach array arrangement.” The Examiner finds that Ross teaches such a magnetic array arrangement. Final Act. 3. The Examiner also explains that such a Halbach array teaches the strong side and weak side requirements from claim 1. Appellant does not dispute these findings. The Examiner explains that using such an arrangement in Pelrine would be simple substitution of one known element for another with predictable results. Final Act. 3; Ans. 10. Appellant disputes the Examiner’s combination, but does not identify reversible error. See Appeal Br. 12–14. Appellant alleges that “[t]he USPTO does not provide an explanation as to how one skilled in the art would consider incorporating Ross into Pelrine as a ‘substitution.’” Appeal Br. 13. This is unpersuasive of error because it ignores the detailed explanation provided by the Examiner in the Answer.2 See Ans. 10–12 (explaining how the Halbach array of magnetics would be included in Pelrine’s system and why such a substitution would lead to predictable results). Appellant additionally contends that “there is no reason to alter or modify what is already provided” in Pelrine “[i]f one ‘magnet’ is the same as the other, and “Pelrine fails to suggest the desirability of the modification.” Appeal Br. 13. This, too, is unpersuasive of Examiner error because a “simple substitution” rationale does not require a prior art reference to 2 Appellant did not file a Reply Brief. Appeal 2019-006377 Application 15/062,301 6 expressly suggest the combination, and it does not require the Examiner to point to advantages gained by the combination. See MPEP § 2143(I)(B). For these reasons, the Examiner’s rejection of claim 3 cures the deficiency noted above in the rejection of claim 1, and Appellant does not apprise us of error with respect to the Examiner’s findings and rationale in connection with claim 3. (3) a magnetic array arrangement . . . swivelably disposed within the inner space of the roller wheel” with “a first drive mechanism configured to swivelably drive the magnetic array arrangement Appellant alleges that Pelrine does not teach a swivelably disposed magnetic array arrangement and a first drive mechanism configured to swivelably drive that arrangement. Appeal Br. 10. As the Examiner explains, Pelrine teaches such a swiveling arrangement. See Ans. 7 (citing Pelrine 10:3–13). Appellant’s naked assertion concerning Pelrine’s alleged lack of teaching of the swiveling arrangement, without more, is insufficient to identify reversible error. See In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011). Conclusion Although we agree that the Examiner has failed to establish that Pelrine anticipates claim 1, as explained above, the Examiner’s rejection of claim 3 as obvious over the combined teachings of Pelrine and Ross cures the deficiency in the anticipation rejection. Accordingly, we enter a new ground of rejection for claim 1 as obvious over the combined teachings of Pelrine and Ross. The new ground of rejection is based on the Examiner’s original findings regarding Pelrine presented for claim 1, except for the finding related to a magnetic array, for which the new ground relies on the Examiner’s original findings and rationale presented in connection with claim 3. Appeal 2019-006377 Application 15/062,301 7 Claim 2 Claim 2 depends from claim 1, and additionally requires “at least one second drive mechanism configured to drive the roller wheel.” The Examiner finds that “Pelrine . . . discloses that the magnetic roller further includes at least one second drive mechanism configured to drive the roller wheel (110 of Figure 8; Col. 9, Line 48 to Col. 10, Line 44).” Final Act. 2. Appellant contends that “the ‘drive shaft 110’ of Pelrine does not rotate, and likewise, it cannot ‘drive’ any wheel, much less the ‘peripheral wall 72.’” Appeal Br. 11. Appellant reproduces a portion of Pelrine cited by the Examiner (id.), which explains that “[t]he drive shaft 110 is in the form of a tube having an arm rotating shaft 76 extending therethrough for rotating the arm 75 through a desired angle” (Pelrine 10:3–5). The Examiner responds that, in Pelrine, “[t]he traversing of the device along the surface depicted in Figure 7a is accomplished by another drive shaft (110 of Figure 8) rotating the roller wheel (Col. 10, Lines 1–7),” and “[t]his drive shaft 110 is considered the second drive mechanism.” Ans. 9. The Examiner has the better position. As noted above, Appellant alleges, without support, that Pelrine’s drive shaft 110 does not rotate. That is not consistent with Pelrine’s disclosure. In an initial embodiment, Pelrine expressly states that “the rotation of the drive shaft 110 is transmitted . . . to rotate the magnet 27 and the inner wheel member 25.” Pelrine 4:64–66 (emphasis added). In the embodiment of Figures 7a–7c in Pelrine relied on by the Examiner, “drive shaft 110 [is] connected to the inner side wall 73 of the outer wheel member 71.” Pelrine 10:1–3. That is, in the Figure 7a–7c embodiment, drive shaft 110 drives rotation of outer wheel member 71. The Figure 7a–7c Appeal 2019-006377 Application 15/062,301 8 embodiment additionally includes arm rotating shaft 76 to control arm 75 and provide a desired magnetic attraction to traverse obstacles. See, e.g., id. at 10:27–35. Accordingly, we are not apprised of error in the Examiner’s findings regarding the features recited in claim 2. Because claim 2 depends from claim 1, and was originally rejected as being anticipated by Pelrine, we reverse the Examiner’s rejection of claim 2 as anticipated by Pelrine, but reject claim 2 as obvious over the combined teachings of Pelrine and Ross for the additional reasons provided in our discussion of claim 3 above. Claim 3 We are not apprised of error in the rejection of claim 3 for the reasons explained above in our discussion of claim 1. Claim 4 Appellant does not argue claim 4 separately, which depends from claim 1. Accordingly, we are not apprised of error in the Examiner’s findings regarding the features recited in claim 4. Because claim 4 depends from claim 1, and was originally rejected as being anticipated by Pelrine, we reverse the Examiner’s rejection of claim 4 as anticipated by Pelrine, but reject claim 4 as obvious over the combined teachings of Pelrine and Ross for the additional reasons provided in our discussion of claim 3 above. CONCLUSION The Examiner’s rejection of claims 1, 2, and 4 are reversed, and the rejection of claim 3 is affirmed. We enter a new ground of rejection for claims 1, 2, and 4 as obvious over the combination of Pelrine and Ross. Appeal 2019-006377 Application 15/062,301 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 4 102(a)(1) Pelrine 1, 2, 4 1–4 103 Pelrine, Ross 3 1, 2, 4 Overall Outcome 3 1, 2, 4 1, 2, 4 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2019-006377 Application 15/062,301 10 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)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)