Ex Parte Anastas

Board of Patent Appeals and Interferences

Oct 12, 2010

10924674 (B.P.A.I. Oct. 12, 2010)

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.
10/924,674 08/24/2004 George V. Anastas IMM211 / 299334 6347
34300 7590 10/12/2010
PATENT DEPARTMENT (51851)
KILPATRICK STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
WALTHALL, ALLISON N
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
10/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEORGE V. ANASTAS
____________________

Appeal 2009-010074
Application 10/924,674
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010074
Application 10/924,674

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. An apparatus comprising:
a braking surface;
an electromagnet core disposed in the braking surface;
a disk operable to contact the braking surface such that a gap is
defined between the disk and the electromagnet core; and
a damping material disposed within the gap.

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims
1-13 and 15-25 under 35 U.S.C. § 102(b) as being anticipated by Carlson,
U.S. Patent 6,283,859, because:
(A) “Carlson does not disclose ‘an electromagnet core disposed in the
braking surface’ as alleged by the Examiner.” (App. Br. 9).
[A]s described in Carlson, elements 38, 76, and 66’ are used to
transfer rotational energy from the motor to the disks 36, 36,’
not to provide a braking force. Instead, the braking force is
applied by the magnetically-controllable media 44, 44’ based
on the electromagnetic field applied to the media 44, 44’. Thus,
the Examiner’s rejection based on the Carlson Braking Surface
is in error.
(App. Br. 11).
Appeal 2009-010074
Application 10/924,674

3
(B) “Further, Carlson does not disclose ‘a damping material’ as
alleged by the Examiner.” (App. Br. 9).
The magnetically-controllable media 44, 44’ and absorbent
material 46, 46’ are not disclosed in Carlson to have any noise
dissipation characteristics, and Carlson does not discuss sound
or noise dissipation. Instead, the magnetically-controllable
media 44, 44’ and absorbent material 46, 46’ are included in
Carlson to provide the haptic effects without regard to the
dissipation of transient noises. As such, the Examiner’s
rejection is in error.
(App. Br. 12).
2. Appellant contends that the Examiner erred in rejecting claim
14 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Carlson and Roderick, U.S. Patent 7,089,292, because:
Claim 14 is patentable over Carlson in view of Roderick
because the combination of Carlson and Roderick does not
include either “an electromagnet core disposed in the braking
surface” or “a damping material,” and the examiner has
provided no other rationale as to the obviousness of including
such components.
(App. Br. 12).

Issues on Appeal
The following issues are on appeal:
Whether the Examiner has erred in rejecting claims 1-13 and 15-25 as
being anticipated because Carlson fails to disclose claim limitation(s) at
issue?
Whether the Examiner has erred in rejecting claim 14 as being
obvious?

Appeal 2009-010074
Application 10/924,674

4
PRINCIPLES OF LAW
Burden on Appeal
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant presents several arguments as to why the Examiner has
erred. (App. Br. 9-13).
We agree with Appellant’s contention 1(A) above. The Examiner has
erred in finding that items (38, 76, 66’) of Carlson comprise a “braking
surface” as required by the claims.
Therefore, Appellant has established that the Examiner erred with
respect to the rejections of claims 1-25.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-13 and 15-25 as being anticipated under 35 U.S.C. § 102(b).
(2) Appellant has established that the Examiner erred in rejecting
claim 14 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 1-25 have not been shown to be
unpatentable.

Appeal 2009-010074
Application 10/924,674

5
DECISION
The Examiner’s rejections of claims 1-25 are reversed.

REVERSED

babc

PATENT DEPARTMENT (51851)
KILPATRICK STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101