Ex Parte Gaechter

Patent Trial and Appeal Board

Apr 11, 2013

10524298 (P.T.A.B. Apr. 11, 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.
10/524,298 07/28/2005 Jean-Pierre Gaechter 1429-152 6350
24106 7590 04/11/2013
EGBERT LAW OFFICES
1314 Texas Avenue, 21st Floor
HOUSTON, TX 77002
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
04/11/2013 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 JEAN-PIERRE GAECHTER
____________________

Appeal 2011-000125
Application 10/524,298
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
NEIL A. SMITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000125
Application 10/524,298

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
53-66. App. Br. 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a mechanical actuator including a helical-
cam nut. Claim 53, reproduced below, is illustrative of the claimed subject
matter:
53. An actuator comprising:
an outer tubular body;
an inner tubular body having a portion positioned inside
said outer tubular body;
a nut assembly interconnected to said inner tubular body,
said nut assembly having at least one helical ball race, the
helical ball race having a helical portion extending
circumferentially for less than 360o around said nut assembly,
said helical ball race having a widened portion connecting to a
first end and to a second end of said helical portion, said nut
assembly comprising a plurality of aligned elements, each of
said plurality of aligned elements having a generally cylindrical
shape with at least one bevel forming a helical cam surface, the
helical cam surfaces of adjacent aligned elements of said
plurality of aligned elements defining the helical ball race;
a plurality of balls received between the helical ball race
and an inner surface of said outer tubular body, said widened
portion defining a re-circulation zone for said plurality of balls;
and
a driving means cooperative with said nut assembly for
rotating said nut assembly so as to translate said outer tubular
body relative to said inner tubular body, said inner surface of
said outer tubular body having a grooved helical ball race
formed on an inner surface thereof so as to be suitable for
guiding said plurality of balls, said driving means comprising a
motor mounted in a fixed position inside said inner tubular
body.
Appeal 2011-000125
Application 10/524,298

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barrett
Hogan
Brusasco
Yaple
Laskey
US 2,299,785
US 2,756,609
US 4,138,902
US 5,358,265
US 6,101,889
Oct. 27, 1942
Jul. 31, 1956
Feb. 13, 1979
Oct. 25, 1994
Aug. 15, 2000
Halasy-Wimmer US 2004/0093973 A1 May 20, 2004

REJECTIONS
Claims 53-59 and 61-63 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hogan, Brusasco, and Barrett. Ans. 3.
Claim 60 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hogan, Brusasco and Barrett. Ans. 8.
Claim 64 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hogan, Brusasco, Barrett and Halasy-Wimmer. Ans. 8.
Claim 65 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hogan, Brusasco, Barrett and Yaple. Ans. 9.
Claim 66 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hogan, Brusasco, Barrett and Laskey. Ans. 10.

OPINION
Regarding claim 53, the sole independent claim involved in this
appeal, the Examiner correctly found that Hogan discloses the basic device
claimed, but without a grooved helical ball race on the tubular body 34 and
without a motor mounted inside that tubular body. Ans. 4-6. The Examiner
correctly found that Brusasco demonstrates that it was known in the art to
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use grooved helical races for both the inner and outer ball races of a
recirculating ball screw-nut combination. Ans. 6-7. The Examiner correctly
found that Barrett demonstrates that it was known in the art to encase motors
in an outer tube of a telescoping tube arrangement. Ans. 7. Based on these
findings the Examiner correctly concluded that the claimed subject matter
involved no more than the predictable use of prior art elements according to
their established functions and would have been obvious to one having
ordinary skill in the art. Ans. 3-7.
Initially, Appellant contends that for each of the rejections set forth
for claims 53-59 and 61-66 the Examiner failed to establish a prima facie
case of obviousness because the Examiner has failed to provide an
explanation as to why the claimed subject matter would have been obvious
to one having ordinary skill in the art. App. Br. 16-26. However, in each
case Appellant reiterates the reasoning articulated by the Examiner (App. Br.
18, 21, 23, 25) with no further explanation as to why that reasoning is
insufficient to demonstrate obviousness. Thus, Appellant’s argument that
the Examiner’s rejections are flawed for failing to provide an explanation is
self-defeating.
Appellant appears to argue that the Examiner’s rejections are flawed
because the Examiner failed to discuss a teaching, suggestion, or motivation
for the use of each of the recited claim elements. App. Br. 28. This
argument ignores the fact that the Examiner cited a base reference, Hogan,
having few differences with the claimed subject matter. The MPEP
provision cited by Appellant (§ 2143(G)) relates to the modification of a
prior art reference to account for those differences.
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Regarding claim 53, Appellant further argues that the Examiner’s
proposed modification to Hogan would render Hogan unfit for its intended
purpose and would change the principal of operation of Hogan. App. Br.
28-33. Our reviewing court has cautioned against the use of per se rules of
obviousness. See In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995). There
have been instances where a proposed modification that rendered a device
unfit for its intended purpose or changed its principal of operation was held
nonobvious. See e.g., In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); In re
Ratti, 270 F.2d 810 (CCPA 1959). However, we cannot regard such
instances as sanctioning reliance on such per se rules of nonobviousness.
Rather, each case must be decided on its own facts. In re Ochiai, 71 F.3d at
1572.
An intended purpose of Hogan is to provide pitch adjustability. Col.
1, ll. 20-40. Frictional engagement with a smooth inner surface of the outer
tube is the mechanism by which Hogan achieves this goal; it is not the goal
itself. Insofar as claim 53 is concerned the Examiner does not propose to
add permanently formed grooves that would defeat this purpose as Appellant
suggests. See App. Br. 30. Rather, the Examiner cites Brusasco, which
demonstrates that pitch adjustability can also be obtained by using axially
deformable inner and outer tracks or races 14, 15. Col. 3, ll. 17 et seq.
(compare solid line configuration of Figure 3 to dashed line configuration).
Thus, incorporating Brusasco’s outer groove arrangement would not defeat
Hogan’s goal of having an adjustable pitch.
The combined teachings of Hogan and Brusasco suggest a ball size
that contacts the inner and outer race, not a particular ball size independent
of race spacing which would render the balls incapable of traveling along the
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races, as Appellant suggests. See App. Br. 31. Appellant’s argument is
flawed because it presumes the absence of skill in the art. In re Sovish, 769
F.2d 738, 743 (Fed. Cir. 1985).
Appellant additionally contends that “Hogan would not operate by
frictional engagement, and would be unoperational because a different
principle of operation would be required.” App. Br. 32-33. The principal of
operation of Hogan is not frictional engagement with a smooth surface per
se. Rather, the principal of operation involves an efficient arrangement to
translate rotational motion into linear motion. Col. 1, ll. 15-19. The balls
aid in this by rolling between inner and outer elements to reduce the friction
therebetween. If conforming outer races were used, there would still be
frictional engagement between the balls and outer races. Frictional
engagement would simply cease to be the sole measure preventing axial
slippage of the balls. It is true that the Examiner’s proposed substitution
omits the smooth interior wall of driven member 34, which Hogan
apparently regarded as his contribution to the art. However, the proposed
modification is clearly obvious in view of the prior art and the modified
device would continue to efficiently translate rotational motion into linear
motion according to the same principles. See e.g., In re Umbarger, 407 F.2d
425, 430-31 (CCPA 1969).
It is well-settled that the mere disclosure of a preferred embodiment
does not, without more, teach away from all other conceivable arrangements.
Contra, App. Br. 33. Appellant’s argument concerning the presence of
multiple ball races (App. Br. 36-38) is misplaced as the Examiner never
proposes such an arrangement (as discussed hereinabove).
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Appellant additionally contends that the Examiner’s rejection of claim
60 is in error because the Examiner has not identified a finite number of
predictable solutions. App. Br 27. Both Hogan’s disks 28 and Appellant’s
cams 40, 50, 60 are held between an adjusting nut 4 (Appellant), 24 (Hogan)
and a stationary element 31 (Appellant), 25 (Hogan) under the bias of
Belleville1 washers 5 (Appellant), 33 (Hogan). Cf. Hogan Figure 1 and
Application Figure 1. The other predicable arrangement that would have
been immediately apparent from Hogan is simply reversing, along the
longitudinal axis of Hogan’s device, the nut 24 and shoulder 25 to produce
the same result, thereby arriving at the subject matter of claim 60. Appellant
has not apprised us as to why there is something other than a finite number
of possible arrangements of these four elements such that one skilled in the
art would not simply be choosing from those arrangements to achieve the
same result.
Though Appellant does not mention claim 63 by number, there are
instances when Appellant argues limitations appearing only in that claim.
App. Br. 29, 33. We will, like the Examiner (Ans. 16), treat this as an
attempt to separately argue claim 63. The Examiner advances two theories
regarding claim 63. The first appears to essentially be that a groove formed
by plastic distortion would be inherent in Hogan due to the force of the balls
against the inner wall of the outer tube. Ans. 6, 16. However, the Examiner
has already proposed to modify Hogan to include grooves on the inner wall
of the outer tube as taught by Brusasco in rejecting claim 53, from which
claim 63 depends. Thus, it is not particularly relevant whether Hogan’s balls
would plastically deform the inner surface of Hogan’s outer tube 34 to form

1 Spelled Bellville by Hogan. Col. 2, l. 29.
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grooves therein. Further, even if it were, for such deformation to have
permanent grooves would seemingly defeat the adjustability function of
Hogan. Thus, we cannot agree with the Examiner that such grooves are
necessarily present as is required when relying on a theory of inherency. In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
The Examiner also contends that this limitation is a product-by-
process-type limitation. Ans. 16. We agree. See e.g., In re Dike 394 F.2d
584, 589 (CCPA 1968). The Examiner correctly recognizes that the recited
process of forming the grooves does at least define some structure of the
final product2—a groove. The Examiner reasons that “the defined
thread/groove of Brusasco could be formed by any method, including plastic
distortion, milling or molding, and result in the same structure, a groove.”
Ans. 16.
The USPTO bears a lesser burden of proof in making out a prima
facie case of obviousness in a product-by-process situation because of its
peculiar nature. In re Fessmann, 489 F.2d 742 (CCPA 1974). Once the
examiner provides a rationale tending to show that the claimed product
appears to be the same or similar to that of the prior art, although produced
by a different process, the burden shifts to applicant to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
Here, the Examiner’s position stands uncontroverted in this regard.

2 Based on the Examiner’s analysis, it would have been more accurate to
state that this recitation “does not structurally distinguish the apparatus
claim” rather than suggesting that this limitation “does not structurally
define the apparatus claim.” See Ans. 16.
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DECISION
The Examiner’s rejections are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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