Ex parte Gruden et al.

Board of Patent Appeals and Interferences

Apr 24, 1998

08349087 (B.P.A.I. Apr. 24, 1998)

Application for patent filed December 2, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES M. GRUDEN and ROBERT B. BROOKS JR.
__________
Appeal No. 97-1147
Application 08/349,0871
__________
ON BRIEF
__________
Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 4 and 7. Claims 13 through 15, the only
other claims remaining in the application, stand allowed.
Appeal No. 97-1147
Application 08/349,087
2
Claims 1 through 3, 5, 6, 8 through 12 and 16 through 18 have
been canceled.

Appellants' invention is directed to a centrifugal clutch
for use in a power door lock actuator. A copy of independent
claims 4 and 7 on appeal may be found in the Appendix to
appellants' brief.
The sole prior art reference of record relied upon by the
examiner as evidence of obviousness of the claimed subject
matter is:
Kagiyama et al. (Kagiyama) 4,520,914 Jun. 04,
1985
Claims 4 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kagiyama.
Reference is made to the final rejection (Paper No. 8,
mailed April 22, 1996) and to the examiner's answer (Paper No.
15, mailed October 16, 1996) for the examiner's full reasoning
in support of the above-noted rejection. A complete exposition
of appellants' arguments thereagainst are found in the appeal
Appeal No. 97-1147
Application 08/349,087
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brief filed August 26, 1996 (Paper No. 13).
OPINION
After careful consideration of appellants' specification
and claims, the teachings of the applied Kagiyama reference
and the arguments and comments advanced by appellants and the
examiner,
it is our determination that the examiner's conclusion of
obviousness regarding the claimed subject matter is
unsupported by the applied prior art and will therefore not be
sustained.
The Kagiyama patent discloses a centrifugal clutch
arrangement for use in a power door lock actuator. Using the
language of appellants' claim 4 on appeal, we note that the
clutch of Kagiyama (Figs. 2-6) includes a rotatable driven
member (4), a rotatable driver (5), a recess (53) in the
driver, and a permanent magnet slider element (6) slidably
retained in the recess and operable for selectively
establishing a positive driving connection between said driver
Appeal No. 97-1147
Application 08/349,087
4
and said driven member. A rotary drive shaft (21) of the motor
(2) is inserted into the driver (5) and attached thereto. The
drive shaft (21) is made of a magnetic material. As noted in
column 2, lines 20-30,
"[w]hen the clutch body is not driven the
permanent magnet is moved toward the rotary drive
shaft due to the magnetic attraction therebetween
and is accommodated within the retaining hole. When
the clutch body is being driven at a certain speed,
the permanent magnet is released from the rotary
drive shaft by the centrifugal force of the clutch
body, projects toward the inner wall of the clutch
drum and is engaged with an engaging protuberance
provided in the clutch drum with the result that the
rotation of the clutch body is transmitted to the
clutch drum."
As the examiner has recognized (final rejection, page 4),
Kagiyama does not disclose a magnetic decoupling means of the
type required in appellants' claims 4 and 7 on appeal for
selectively magnetically breaking the positive driving
connection
between the driver (5) and the driven member (4). More
specifically, the clutch of Kagiyama does not include a
permanent magnet "secured within said driver for magnetically
attracting said slider in a direction away from said driven
member, and wherein said slider is located between said
Appeal No. 97-1147
Application 08/349,087
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permanent magnet and said driven member," as indicated in
claim 4 on appeal, and in similar language in claim 7 on
appeal. To address this difference, the examiner has taken the
position that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to make
the permanent magnet slider (6) of Kagiyama "a separate member
from the magnet, since it has been held that constructing an
integral structure into various elements involves only routine
skill in the art" (final rejection, page 4). To account for
the plural sliders set forth in claim 7 on appeal, the
examiner urges that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have plural sliders in the clutch mechanism of Kagiyama,
"since it has been held that mere duplication of essential
working parts of a device involves only routine skill in the
art" (final rejection, page 4).

In contrast with the examiner's position, we find nothing
in the Kagiyama patent which provides any teaching, suggestion
or incentive which would have motivated one of ordinary skill
in the art to make the particular selective modifications in
Appeal No. 97-1147
Application 08/349,087
6
the
centrifugal clutch therein as proposed by the examiner. The
mere
fact that one of ordinary skill in the art, once informed of
the desirability of making a magnetic decoupling means of the
type defined in appellants' claims on appeal, could achieve
this result through the application of routine skill in the
art, provides no evidence that such a modification would have
been obvious to those of ordinary skill in the art at the time
of appellants' invention, absent reliance upon appellants' own
disclosure. Moreover, as appellants have pointed out on page
11 of their brief, the examiner's proposed modification of the
clutch in Kagiyama would appear to be contrary to the express
teachings of that patent regarding the desired simplicity of
construction, reduced numbers of parts, and inexpensive
manufacturing discussed therein (see Col. 1, lines 21-25 of
Kagiyama).
From our perspective, only hindsight based on appellants'
own teachings would have provided any reason for one of
ordinary skill in the art to consider a modification in the
Appeal No. 97-1147
Application 08/349,087
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centrifugal clutch of Kagiyama of the nature urged by the
examiner in the rejection before us on appeal so as to arrive
at the clutch assembly defined in appellants' independent
claims 4 and 7. This
being the case, we will not sustain the examiner's rejection
of claims 4 and 7 under 35 U.S.C. § 103 based on the teachings
of Kagiyama.

The examiner's reliance on and citation of Nerwin v.
Erlichman, 168 USPQ 177, 179 (Bd.Pat.Int. 1969), which according
to
the examiner held that "constructing a formerly integral
structure in various elements involves only routine skill in the
art," appears to us to be misplaced. We find no such "holding"
in Nerwin v. Erlichman. The only statement in that case which we
think may be referred to by the examiner is one which indicates
that
"[t]he mere fact that a given structure is integral does not
preclude its consisting of various elements."
This statement, in our view, is a construction of the term
"integral," and does not appear to stand for the proposition the
Appeal No. 97-1147
Application 08/349,087
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examiner now urges.
In light of the foregoing, we must agree with appellants'
position that the examiner has failed to make out a prima facie
case of obviousness under 35 U.S.C. § 103. A rejection based on
§103 must rest on a factual basis, with the facts being
interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, the examiner has
the initial duty
of supplying the factual basis for the rejection he advances.
The examiner may not, because he (or she) doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967). Since in this case there is an inadequate factual
basis to support the examiner's rejection of appellants' claims
4 and 7 under 35 U.S.C. § 103, we are compelled to reverse that
rejection.
Appeal No. 97-1147
Application 08/349,087
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REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1147
Application 08/349,087
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