Ex Parte GaechterDownload PDFPatent Trial and Appeal BoardApr 11, 201310524298 (P.T.A.B. Apr. 11, 2013) Copy Citation 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 2 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 3 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 Appeal 2011-000125 Application 10/524,298 4 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. Appeal 2011-000125 Application 10/524,298 5 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 Appeal 2011-000125 Application 10/524,298 6 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). Appeal 2011-000125 Application 10/524,298 7 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. Appeal 2011-000125 Application 10/524,298 8 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. Appeal 2011-000125 Application 10/524,298 9 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 Klh Copy with citationCopy as parenthetical citation