Ex Parte Cardon et al

Patent Trial and Appeal Board

Mar 22, 2013

12120451 (P.T.A.B. Mar. 22, 2013)

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.
12/120,451 05/14/2008 Vincent Cardon 10901/178 5028
26646 7590 03/22/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
MAIL DATE DELIVERY MODE
03/22/2013 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 VINCENT CARDON and JEAN-PIERRE MOREL
____________

Appeal 2010-011291
Application 12/120,451
Technology Center 2800
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011291
Application 12/120,451

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3 and 6-16. Claims 4 and 5 were cancelled during prosecution.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants’ invention relates to “a planar motor. Such planar motors
are used, e.g., for positioning a load in a plane.” (Spec. 1). Independent
claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A planar motor, comprising:

a flat base element arranged in a plane;

substantially cuboidal first magnets arranged on the base
element, magnetization of the first magnets perpendicular to the
plane, the first magnets arranged at evenly spaced intervals and
with alternating polarity in a first direction and in a second
direction;

substantially cuboidal second magnets, magnetization of
the second magnets parallel to the plane, the second magnets
arranged with alternating polarity in the first direction and the
second direction between the first magnets, each first magnet
surrounded by four second magnets;

wherein the first magnets are arranged on protrusions of
the base element;

wherein the second magnets are arranged in grooves
formed by two adjacent protrusions; and

wherein a width of the groove corresponds to a width of
the second magnets over a full depth of the groove so that the
second magnets are supported laterally by the protrusions.

Appeal 2010-011291
Application 12/120,451

3
REJECTIONS
1. Claims 1-3, 10-12, and 16 stand rejected as being anticipated under
35 U.S.C. §102(b) by Hazelton (US 6,188,147 B1).
2. Claims 8, 9, and 15 stand rejected as being unpatentable under 35
U.S.C. § 103(a) over Hazelton.
3. Claim 6 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over the combination of Hazelton and Chitayat (US 5,723,917).
4. Claim 7 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over the combination of Hazelton and Cheung (US 7,170,203 B2).
5. Claims 13 and 14 stand rejected as being unpatentable under 35
U.S.C. § 103(a) over the combination of Hazelton and Carter (US Pat. App.
Publ. 2005/0200830 A1).
Contentions
Appellants contend that Hazelton’s magnetic arrangements 102, 104
(Fig. 1B) include wedge magnets that do not disclose the claimed
“substantially cuboidal” first and second magnets. (App. Br. 4-5, claim 1).
Appellants also contend that Hazelton does not disclose the limitation of
“wherein a width of the groove corresponds to a width of the second
magnets over a full depth of the groove, so that the second magnets are
supported laterally by the protrusions,” as recited in claim 1 (emphasis
added). (App. Br. 6-7).
Regarding the second disputed limitation, “[t]he Examiner interprets
‘over a full depth of the groove’ to refer to the distance within which the
groove is at its deepest level. Thus, this would refer to the flat space
between adjacent protrusions [214] (figure 1 E of Hazelton). The second
magnets [122] (figure 1D of Hazelton) clearly have the same width,
Appeal 2010-011291
Application 12/120,451

4
extending from the base of one protrusion [214] to the base of an adjacent
protrusion.” (Ans. 12). The Examiner explains:
Further, the argument states that the claim language
limits the grooves to a shape having vertical walls, where the
walls do not “expand in width from their deepest level”.
However, this is contrary to both the Examiner’s interpretation
and the structure stated in dependent claim 10. Claim 10 recites
the apparatus of claim 1 wherein “the grooves are at least one of
(a) trapezoidal and (b) dovetailed”. The shape of the grooves
defined between protrusions [214] (figure 1D of Hazelton) is
clearly trapezoidal and, since claim 10 depends on claim 1, that
claim clearly must encompass grooves whose sides “expand in
width from their deepest level”.
Thus the interpretation, of “over a full depth of the
groove” as being the space where the floor of the groove is at
its deepest level, is deemed to be valid. And, over that interval,
the widths of the grooves and second magnets do correspond to
one another.
(Ans. 12).
ISSUE
Under § 102, did the Examiner err in finding that Hazelton discloses:
substantially cuboidal first magnets and second magnets
arranged . . .
. . . .
wherein the first magnets are arranged on protrusions of
the base element;
wherein the second magnets are arranged in grooves
formed by two adjacent protrusions; and
wherein a width of the groove corresponds to a width of
the second magnets over a full depth of the groove so that the
second magnets are supported laterally by the protrusions,

within the meaning of claim 1, and the commensurate language of
independent claim 16? (Emphasis added).
Appeal 2010-011291
Application 12/120,451

5
ANALYSIS
Based upon our review of the record, we need not reach the first
argued limitation (substantially cuboidal first magnets and second magnets)
to decide this appeal. Regarding the second contested limitation: “wherein
a width of the groove corresponds to a width of the second magnets over a
full depth of the groove, so that the second magnets are supported laterally
by the protrusions” (claim 1 (emphasis added)), we agree with Appellants:
Regarding the feature that “a width of the grooves
corresponds to a width of the second magnets over a full depth
of the grooves so that the second magnets are supported
laterally by the protrusions,” the Examiner’s Answer states that
“[t]he Examiner interprets ‘over a full depth of the groove’ to
refer to the distance within which the groove is at its deepest
level” and that “this would refer to the flat space between
adjacent protrusions [214].” However, according to Figure 1D
of Hazelton et al., the magnet arrangement 122, i.e., the alleged
second magnet, appears to merely abut the projection 214, if at
all, at the base of the projection 214. Thus, even if one were to
consider the flat space between adjacent protrusions 214 to
constitute a full depth of a groove, which is not conceded to
constitute a proper reading of Hazelton et al., there is still no
disclosure by Hazelton et al. that the magnet arrangements 122
are supported laterally by the projections 214.
(Reply Br. 3 (emphasis added)).

We observe that the Examiner (Ans. 3) finds the claimed “flat base
element arranged in a plane” (claim 1) is disclosed by Hazelton’s backing
panel 210, and the claimed “protrusions” are disclosed by the convex
projections 214, as shown in Hazelton Figure 1E, depicted below:

App
App

proje
eal 2010-0
lication 12

Hazelto
(note: el
should h

Hazelton
ctions 212
The back
projectio
arrangem
212 and
The con
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/120,451
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ement 712
ave been l
describes
and the m
ing panel
ns. Each
ent place
214 corre
vex projec
Haze
g panel 2
appears to
abeled as
the coupl
agnets (F
210 has a
convex pr
d over it.
spond to m
tions 212
6
lton’s Fig
10 is depi
be a typo
element 21
ing betwee
ig. 1A, 1B
number o
ojection c
For exam
agnet arr
and 214 a
ure 1E
cted abov
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2)
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):
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error and
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s 102 and
and mate
E
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with

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Contrary
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Thus, w
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11291
/120,451
ave surfac
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convex pr
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ates with t
7, ll. 45-5
Hazelton
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ave surfac
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o 122, An
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that the E
agnet arr
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ve surfac
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agnets (e.g
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e observe
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elton’s we
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is not

ponds to

.
Appeal 2010-011291
Application 12/120,451

8
the claimed protrusions. (Ans. 4). We find the evidence supports
Appellants’ contention that, at best, Hazelton’s Figure 1D shows magnet
arrangement 122, i.e., the alleged second magnet, as merely abutting the
projection 214, if at all, at the base of the projection 214, instead of being
laterally supported by projection 214 (corresponding to the claimed
protrusions, Ans. 4) (See also Fig. 1E). (Reply Br. 3).
Our reviewing court guides that “[a]nticipation requires the presence
in a single prior art reference disclosure of each and every element of the
claimed invention, arranged as in the claim.” Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984) (citation omitted, emphasis added).
Here, because Hazelton does not disclose the claimed arrangement,
we reverse the Examiner’s §102 rejection of independent claim 1 and
independent claim 16 which recites the aforementioned second disputed
limitation in commensurate form. Because we have reversed the Examiner’s
rejection of each independent claim on appeal, we also reverse the
Examiner’s anticipation rejection over Hazelton of the corresponding
dependent claims.
Regarding the rejections under § 103 of the remaining dependent
claims, on this record, the Examiner has not established that the cited
secondary references overcome the aforementioned deficiency with
Hazelton. Therefore, we also reverse the Examiner’s rejections under § 103
of the remaining dependent claims.

Appeal 2010-011291
Application 12/120,451

9
DECISION
We reverse the Examiner’s decision rejecting claims 1-3, 10-12, and
16 under 35 U.S.C. §102.
We reverse the Examiner’s decision rejecting claims 6-9 and 13-15
under 35 U.S.C. §103.
REVERSED

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