Ex Parte Biester

Board of Patent Appeals and Interferences

Nov 24, 2010

10525926 (B.P.A.I. Nov. 24, 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.
10/525,926 02/25/2005 Klaus Biester 1600-11400 DAR 9546
45933 7590 11/24/2010
CONLEY ROSE, P.C.
David A. Rose
600 TRAVIS
SUITE 7100
HOUSTON, TX 77002
EXAMINER
ROST, ANDREW J
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
11/24/2010 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 KLAUS BIESTER
____________________

Appeal 2009-008608
Application 10/525,926
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, 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 2009-008608
Application 10/525,926
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-27. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. Regulating device for the linear regulation of an actuating
element for operation of a blowout preventer comprising:
a housing;
a ball spindle drive within the housing comprising:
a rotating spindle; and
a ball nut surrounding the spindle; and
a drive train comprising:
at least one motor;
a self-locking, double helical gear comprising at
least one first helically-toothed gearwheel and at least
one second helically-toothed gearwheel; and
whereby the at least one motor is connected for
movement with the at least one second helically-toothed
gearwheel.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Howell
Gilges
Allen
Coppola
Waber
McCormick
US 3,481,215
US 5,370,011
US 5,722,304
US 5,743,348
US 6,095,487
US 6,585,246
Dec. 2, 1969
Dec. 6, 1994
Mar. 3, 1998
Apr. 28, 1998
Aug. 1, 2000
Jul. 1, 2003

REJECTIONS
Claims 1-7, 11, 13-15, 17-23, and 25-27 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over McCormick and Howell. Ans.
3-5.
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Application 10/525,926
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Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormick, Howell, and Waber. Ans. 6.
Claims 9, 10, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormick, Howell, and Allen. Ans. 7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormick, Howell, and Coppola. Ans. 7.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormick, Howell, and Gilges. Ans. 8.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
Claim 1 is directed to a linear regulating device. The Examiner found
that McCormick is directed to a linear regulating device as recited in claim
1, but without self-locking double helical gears. Ans. 3-4, 9. The Examiner
then found that Howell teaches self-locking double helical gears, which can
be used to "prevent overshoot of the output and to provide almost perfect
damping characteristics" for a servomechanism. Ans. 3; Howell, col. 2, ll.
25-29. The Examiner concluded that it would have been obvious to
incorporate the self-locking double helical gears of Howell into the linear
regulating device of McCormick, in order to prevent overshoot and provide
almost perfect damping characteristics, as well as to replace the existing
brake in McCormick. Ans. 3, 9; McCormick, col. 3, ll. 1-6 (noting brake 37
is utilized when inertia or moment may cause a clamp to move, to prevent
such drift).
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Appellant argues that McCormick teaches away from the proposed
modification (Appeal Br. 4-5); that the proposed modification would negate
the benefits espoused in McCormick such as to be over-engineering (Appeal
Br. 5); and finally that McCormick and Howell are not properly combinable
references because they are non-analogous art (Appeal Br. 5-6). Appellant's
arguments address claims 1-7, 11, 13-15, 17-23, and 25-27 as a group. Ans.
6. We select claim 1 as representative, with claims 2-7, 11, 13-15, 17-23,
and 25-27 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). In
addition, Appellant argues the remaining rejections by incorporating the
arguments with respect to claim 1. Appeal Br. 6. Accordingly, the
following issues raised for claim 1 are dispositive of this appeal:
1. Are McCormick and Howell analogous art?
2. Has the Examiner properly considered the teachings of
McCormick in making the proposed combination? In particular,
does McCormick teach away from the proposed combination?

Issue 1 - Analogous Art
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). To determine what is "analogous prior
art" for the purpose of analyzing the obviousness of the subject matter at
issue, any need or problem known in the field of endeavor at the time of the
invention and addressed by the patent or application at issue can provide a
reason for combining the elements in the manner claimed. KSR Int’l Co. v.
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Teleflex Inc., 550. U.S. 398, 420 (2007). Thus a reference in a field different
from that of applicant's endeavor may be reasonably pertinent if it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his or her
invention as a whole. In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007).
Appellant alleges that the field of endeavor is "blowout preventer
actuation." Appeal Br. 5. However, both the claims and the Specification
make clear that the claimed invention is directed to regulators, and in
particular, linear regulators. Cl. 1, preamble ("[r]egulating device for the
linear regulation of an actuating element"); Spec. 1 ("[t]he invention relates
to a regulating device for the linear regulation of an actuating element").
One particular intended use for Appellant's regulating device is as a blowout
preventer, but the claimed regulating device is not limited to a blowout
preventer. Spec. 2 ("the regulating device according to the invention is, as
well as for use with BOPs [blowout preventers], also suitable for other
devices with, in particular, a linear regulating actuating element."); cl. 1,
preamble (phrase "for operation of a blowout preventer" merely states a
purpose or intended use for the regulating device).
The Examiner found that McCormick describes a linear regulator.
Ans. 9. Appellant does not challenge this finding. Appellant alleges that
McCormick's regulator is designed "to only clamp small items, such as an
electronic circuit board." Appeal Br. 4. We do not find any passage in
McCormick that could be fairly said to support this allegation. Instead, we
find that McCormick's linear regulator is intended for a wide range of uses
and is not limited to circuit boards. See generally McCormick, col. 2, l. 23
to col. 3, l. 6 (noting various motors, clamps, or brakes may be used
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depending on the size and mass of the object clamped). Thus, we find that
McCormick's linear regulator is in the same field of endeavor as Appellant's
claimed regulator. In addition, we find that McCormick's linear regulator is
reasonably pertinent to the problem of providing actuating power in a small
package. See McCormick, col. 1, ll. 31-33 ("[t]he present invention [is] an
innovative design to produce an electric clamp with high clamping power in
a small and relatively inexpensive package."). This problem is relevant to
the present invention, which also seeks a compact design. See Spec. 2 ("a
very compact design is obtained" by certain characteristics of claim 1), 4
(noting that "to make [the invention] more compact, drive shafts of the
motors on both ends can run parallel to one another").
Appellant alleges that Howell is not analogous to the art of blowout
preventer actuation, and thus is in a different field of endeavor and not
reasonably pertinent to the problem of blowout preventer actuation. Appeal
Br. 5-6. Howell teaches a self-locking double helical gear. Appellant's
Specification discusses how self-locking gears are known to be useful for
linear actuators intended to be used as blowout preventers. See Spec. 1. As
such, we find that Howell's gear is reasonably pertinent to the problems
relating to linear actuators, in particular to the problem of how to self-lock.
For the above reasons, we agree with the Examiner that both
McCormick and Howell are analogous art.

Issue 2 - Combinability of McCormick and Howell
Appellant urges that McCormick and Howell are not combinable
because the combination would be "unnecessary, redundant, and wasteful
over-engineering" that would "negate the benefits of scalability specifically
advocated by McCormick," thus teaching away from the proposed
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combination. See Appeal Br. 4-5. However, none of these arguments, even
if accurate, would demonstrate a teaching away. Teaching away requires a
reference to actually criticize, discredit, or other discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art
does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits, or otherwise discourages the solution claimed). McCormick is
silent as to the proposed solution of adding self-locking gears. In fact,
McCormick teaches that drift can be a problem in some applications of the
linear regulator such that a brake may be needed to alleviate the drift
problem. Col. 3, ll. 1-6. That the Examiner's proposed combination may, in
the Appellant's mind, be excessive in view of McCormick's described
primary purpose does not mean that McCormick teaches away. As noted
above, we find that McCormick's linear regulator is intended for a wide
range of uses and is not limited to circuit boards, or to any particular scale of
operation. "The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain." In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). In fact,
common sense teaches that familiar items may have obvious alternative
uses. KSR, 550 U.S. at 420 ("Common sense teaches . . . that familiar items
may have obvious uses beyond their primary purposes"). Further, if there
are tradeoffs involved regarding features, costs, manufacturability, or the
like, such do not necessarily prevent the proposed combination. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine."); Winner Int'l
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Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.").
Rejections on obviousness grounds must be supported by "some
articulated reasoning with some rational underpinning" to combine the
known elements in the manner required in the claim at issue. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. The Examiner's proposed combination is premised on an
understanding that Howell's self-locking gears will provide the self-locking
functionality to the regulator of McCormick, which would alleviate
McCormick's concerns of drift. See Ans. 3-4, 9; KSR, 550 U.S. at 417 ("if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). Appellant has not provided a compelling
explanation as to why the Examiner's reasoning lacks rational underpinning.

DECISION
For the above reasons, the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
Appeal 2009-008608
Application 10/525,926
9
hh

CONLEY ROSE, P.C.
David A. Rose
600 TRAVIS
SUITE 7100
HOUSTON, TX 77002