10415418 (B.P.A.I. Feb. 11, 2011)

Ex Parte Biester

Board of Patent Appeals and InterferencesFeb 11, 2011

10415418 (B.P.A.I. Feb. 11, 2011)

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. 10/415,418 09/04/2003 Klaus Biester 1600-08800 7002 45933 7590 02/11/2011 CONLEY ROSE, P.C. David A. Rose 600 TRAVIS SUITE 7100 HOUSTON, TX 77002 EXAMINER PILKINGTON, JAMES ART UNIT PAPER NUMBER 3656 MAIL DATE DELIVERY MODE 02/11/2011 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 KLAUS BIESTER ____________ Appeal 2009-010303 Application 10/415,418 Technology Center 3600 ____________ Before: LINDA E. HORNER, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. HORNER, 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 2009-010303 Application 10/415,418 2 STATEMENT OF THE CASE Klaus Biester (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-4, 7-15, and 17-44, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is an actuating device usable in a throttle device, for instance, in the fields of maritime or terrestrial oil or gas production. Spec. 1:1-6. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An actuating device for actuating a throttle device, comprising: a turning spindle rotatably mounted in a device housing and connected to an actuating element, the actuating element being actuated in the direction of the longitudinal axis of the turning spindle; a drive device comprising at least two independently operable electric motors located in separate motor openings in the device housing, the motor openings allowing access to the motors from outside the housing; and a transmission device comprising at least one self-locking transmission unit connecting the turning spindle with the electric motors, wherein the transmission unit comprises a worm on a worm shaft driven by the electric motors and also comprises a worm gear, wherein the transmission device also comprises a rotating nut that is disposed on the turning spindle and rotated by the worm gear, and wherein the turning spindle extends through both the worm gear and the rotating nut. Appeal 2009-010303 Application 10/415,418 3 THE REJECTIONS Appellant seeks review of the following rejections: 1. Rejection of claims 1, 3, 4, 14, 15, 17-20, 24-33, 36-39, and 41-44 under 35 U.S.C. § 103(a) as being unpatentable over Nogami (US 5,224,512, issued July 6, 1993) and Schrader (US 2,860,266, issued November 11, 1958). 2. Rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Nogami, Schrader, and Haubner (US 5,113,824, issued May 19, 1992). 3. Rejection of claims 7-10, 21-23, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Nogami, Schrader, and Van Der Woude (US 1,979,425, issued November 6, 1934). 4. Rejection of claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Nogami, Schrader, and Wysong (US 3,667,311, issued June 6, 1972). 5. Rejection of claim 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Nogami, Schrader, and Dock (US 3,884,090, issued May 20, 1975). 6. Rejection of claim 34 and 35 under 35 U.S.C. § 103(a) as being unpatentable over Nogami, Schrader, and Cyvas (US 4,971,099, issued November 20, 1990). Appeal 2009-010303 Application 10/415,418 4 CONTENTIONS AND ISSUE The Examiner’s conclusion of obviousness for each of the six rejections relies in part on the finding that Nogami discloses at least one self- locking transmission unit/device as called for in independent claims 1, 43, and 44. Ans. 3-4, 14-16. Appellant argues that Nogami’s transmission unit is not self-locking. App. Br. 5-7. The issue before us is whether Nogami discloses at least one self-locking transmission unit/device as called for in each of the independent claims on appeal. ANALYSIS The Examiner interpreted “self-locking,” as called for in independent claims 1, 43, and 44, to require only that the device “does not rotate when the motor is turned off.” Ans. 15. By the Examiner’s interpretation, any transmission device that can discontinue rotation when “turned off” is self-locking. We find that this interpretation effectively reads the phrase “self-locking” out of the claims and is overly broad in light of Appellant’s Specification. Appellant’s Specification describes that worm 16 and worm gear 17 form “a self-locking transmission unit” 10 as part of transmission device 7. Spec. 13:25-28.2 Appellant’s Specification describes that “[t]he worm and the worm gear form a self-locking worm gear pair” that prevents rotation in at least one direction, and that in this locked condition can “only be released 2 We make reference to the 22 page version of the Specification, dated April 29, 2003. Appeal 2009-010303 Application 10/415,418 5 by applying a release torque from the servomotors 8, 9.” Spec. 16:11-15; figs. 2, 3. We interpret claim terms with the broadest reasonable interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). In light of Appellant’s description of the self-locking transmission unit in the Specification, we interpret “self-locking” to mean that the claimed transmission unit/device is configured to prevent rotation, until released, in at least one direction. Consequently, the Examiner’s interpretation that independent claims 1, 43, and 44 call for only the absence of rotation when the motor is turned off is an unreasonably broad claim interpretation. The Examiner found that Nogami discloses at least one transmission unit that does not rotate when the motor is turned off; however, this finding does not support a conclusion of obviousness because independent claims 1, 43, and 44 call for a transmission unit/device that is “self-locking” as interpreted supra. As such, we cannot sustain the rejections of independent claims 1, 43, and 44, or their dependent claims 2-4, 7-15, and 17-42. CONCLUSION Nogami does not disclose at least one self-locking transmission unit/device as called for in independent claims 1, 43, and 44. DECISION The decision of the Examiner to reject claims 1-4, 7-15, and 17-44 is REVERSED. REVERSED Appeal 2009-010303 Application 10/415,418 6 nlk CONLEY ROSE, P.C. David A. Rose 600 TRAVIS SUITE 7100 HOUSTON TX 77002