Ex Parte HA

Patent Trial and Appeal Board

Jul 28, 2017

13227705 (P.T.A.B. Jul. 28, 2017)

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.
13/227,705 09/08/2011 Jiuhu HA 071225.00000 6044
26712 7590
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
RILEY, JONATHAN G
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing @ hodgsonrus s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIUHU HA
Appeal 2015-004867
Application 13/227,705
Technology Center 3700
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-004867
Application 13/227,705
STATEMENT OF THE CASE
Appellant Jiuhu Ha1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision, as set forth in the Final Office Action dated May 27,
2014 (“Final Act.”), rejecting claims 1, 3—5, and 7—11.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a microtome having means for reversing a
direction of rotation. Claim 1, the only independent claims, is reproduced
below:
1. A microtome comprising:
a cutting element;
a first shaft (12) which is arranged in a fixed position and
capable of being driven by a handwheel, wherein the first shaft
(12) is configured to rotate in either rotational direction;
a first gear wheel (14) non-rotatably mounted on the first
shaft;
a second shaft (16) arranged in another fixed position,
wherein the second shaft (16) is configured to rotate in a
preselected rotational direction and is configured to produce a
cutting motion along the cutting element;
a second gear wheel (18) non-rotatably mounted on the
second shaft; and
a transmission unit (20) via which the first gear wheel (14)
and the second gear wheel (18) are coupled to each other so that
the second shaft (16) is driven by the handwheel connected to the
first shaft (12);
1 Appellant identifies Leica Microsystems Ltd. Shanghai as the real
party in interest. Appeal Brief, dated October 27, 2014, at 2 (“Appeal Br.”).
2 Claims 2 and 6 are cancelled. Appeal Br. 2.
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Application 13/227,705
wherein the first shaft (12) and the second shaft (16) are
rotatable in the same direction when the transmission unit (20) is
in a first position in which the first gear wheel (14) and the
second gear wheel (18) are coupled to each other by an odd
number of idler gears (22);
wherein the first shaft (12) and the second shaft (16) are
rotatable in opposite directions when the transmission unit (20)
is in a second position in which the first gear wheel (14) and the
second gear wheel (18) are coupled by an even number of idler
gears (24 through 26);
wherein the idler gears (22 through 26) rotate on axes that
are in a fixed position relative to each other on a bearing unit
(28); and
wherein the bearing unit (28) is movable relative to the
first gear wheel (14) and the second gear wheel (18).
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Chapman US 230,613 Aug. 3, 1880
On- US 902,677 Nov. 3, 1908
Sparks US 1,050,704 Jan. 14, 1913
Shatzel US 3,926,085 Dec. 16, 1975
Kiene US 5,881,626 Mar. 16, 1999
Schneider US 2008/0000339 A1 Jan. 3, 2008
Robert O. Parmley, The Illustrated Sourcebook of Mechanical
Components, McGraw-Hill, 2000, pages 1—36, 1—37, 1—52, 1—53
(hereinafter “Parmley”).
Peter R.N. Childs, Mechanical Design, Butterworth-Heinemann,
12/2003, pages 107—136 (hereinafter “Mechanical Design”).
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REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 3—5, 7, 8, and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schneider, Chapman, Parmley, and Mechanical
Design.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and
Sparks.
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and
Shatzel.
4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and
Orr.
Appellant seeks our review of these rejections.
DISCUSSION
The Rejection of Claims 1, 3—5, 7, 8, and 11 As Unpatentable
Over Schneider, Chapman, Parmley, and Mechanical Design
Appellant argues claims 1, 3—5, 7, 8, and 11 as a group. Appeal Br. 5,
11. We select claim 1 as the representative claim, and claims 3—5, 7, 8, and
11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds, in part, that Schneider discloses a microtome
wherein first shaft 12 is configured to rotate in either rotational direction.
Final Act. 2 (citing Schneider 14). The Examiner also finds that Chapman
discloses (1) a first shaft (shaft on which gear B rotates in Figs. 3^4 of
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Application 13/227,705
Chapman) and a second shaft (shaft on which gear H rotates in Figs. 3^4 of
Chapman); (2) as shown in Figure 3, the first and second shafts are rotatable
in the same direction when the transmission unit is in a first position in
which the first gear wheel and the second gear wheel are coupled to each
other by an odd number of idler gears (D); and (3) as shown in Figure 4, the
first and second shafts are rotatable in opposite directions when the
transmission unit is in a second position in which the first gear wheel and the
second gear wheel are coupled by an even number of idler gears (E, F).
Final Act. 3.
Appellant contends that the Examiner’s rejection is erroneous for
several reasons. First, Appellant argues that the Examiner’s rationale for
combining Schneider and Chapman is “circular” and “conclusory.” Appeal
Br. 6—7. According to Appellant, “the Examiner argues that it would have
been obvious to modify Schneider to have a mechanism for revolving shafts
in either rotational direction ‘to provide an improved mechanism for
revolving shafts in either rotational direction’” and this “rationale merely
states the consequence of the Examiner's own modification: that shafts can
be rotated in either rotational direction with a mechanism.” Id. at 6.
Appellant also argues that the Examiner’s finding that replacing Schneider’s
and Chapman’s gear trains for each other is simply substituting one gear
train for another is “circular” (Reply Brief, dated March 26, 2015, at 2
(“Reply Br.”)) and “lacks the required rational support” {id. at 3).
Appellant, however, does not address the Examiner’s findings and
reasoning for combining Schneider and Chapman, as well as Parmley and
Mechanical Design. Contrary to Appellant’s argument that the Examiner’s
rationale merely “states the consequence of the Examiner’s own
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modification,” the Examiner finds that Schneider discloses first shaft 12 that
“is configured to rotate in either rotational direction” (Final Act. 2 (citing
Schneider 14)), and “Schneider teaches a gear box or gear train for changing
the rotational direction of shafts in a microtome.” Ans. 6; see also id. at 5—6.
Similarly, with respect to Chapman, the Examiner finds that “Chapman
teaches a similar gear train for reversing the direction of a shaft, wherein the
rotation of the input shaft is one direction and the gear train shifts the
rotational direction of the output shaft.” Id. at 6. The Examiner also finds
that Chapman’s first and second shafts “are rotatable in the same direction
when the transmission unit is in a first position (see Fig. 3) in which the first
gear wheel and the second gear wheel are coupled to each other by an odd
number of idler gears (D),” and the first and second shafts “are rotatable in
opposite directions (see Fig. 4) when the transmission unit is in a second
position (Fig. 4) in which the first gear wheel and the second gear wheel are
coupled by an even number of idler gears (E,F)”. Final Act. 3; see also Ans.
at 6—7.
The Examiner explains that:
[MJechanical Engineers, or one of ordinary skill in the art,
[would] understand that transmissions can be used to alternate
rotation of shafts, by way of gearing or drive pulleys. This is
illustrated by Parmley. Chapman teaches a reversible power
transmission mechanism for rotating shafts. In Chapman[,] the
input is fixed in one rotational direction so that the rotational
output can be alternated. However, a person of ordinary skill in
the art recognizes that the opposite is also true. For the output to
remain constant and for the rotational direction of the input to
alternate, the reverse can be implemented. This is because
gearing and drive pulleys can be adapted to the design of an
engineer, as shown by Mechanical Design (see Mechanical
Design Pgs. 116—118, 6.3 Gear trains, providing different
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Application 13/227,705
illustrations of various gear trains). In other words, one of
ordinary skill in the art modifies gearing to what he/she wants to
have done. As such, in a Microtome, it is the cutting motion of
the sample that needs to be fixed, and it is the input, or crank
rotation, that needs to be alternated.
Although [Schneider] and Chapman are in different fields,
both utilize rotating shafts to transmit power and movement, and
a teaching of a power transmission mechanism with a simple and
efficient device to drive shafts in alternative directions will be
equally applicable in both areas. See KSR International Co. v.
Teleflex Inc. etal. No. 04-1350, 550 U.S. 398, 418 (2007) slip op
at 13, which states, “When a work is available in one field of
endeavor, design incentives ... can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill
can implement a predictable variation, §103 likely bars its
patentability” (emphasis added). Here, because the need for a
left hand and right hand microtome was recognized in the art by
gearing mechanism of [Schneider], and Chapman teaches a gear
mechanism for alternating the rotation of the gearing assembly,
it would have been obvious to one of ordinary skill in the art to
modify the gear mechanism of [Schneider] with the gearing
design of Chapman as one of ordinary skill in the art recognizes
that alternative gearing mechanisms do the same thing, as taught
by Parmley and Mechanical Design. The motivation to combine
is to provide an improved mechanism for revolving shafts in
either rotational direction.
Final Act. 4—5; see also Ans. 6—8. Finally, the Examiner determines that
“replacing the gear train of Schneider with the gear train of Chapman is
simply substituting one gear train for another.” Ans. 8.
The key to supporting any rejection under 35 U.S.C. § 103 is a clear
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)). Here, the
Examiner’s articulated reasoning is supported by rational underpinning.
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Appellant does not address the rejection as articulated by the Examiner, and,
thus, does not identify error by the Examiner.
Second, Appellant argues that the “Examiner’s modification to
Chapman in the rejection of independent claim 1 renders Chapman[’s
hoisting machine] unsatisfactory for its intended purpose.” Appeal Br. 7—8;
see Reply Br. 3^4. Appellant’s argument mischaracterizes the Examiner’s
rejection. Contrary to Appellant’s argument, the Examiner proposes
modifying Schneider’s microtome, not Chapman’s hoisting machine, to use
Chapman’s gear mechanism so that Schneider first and second shafts “are
rotatable in the same direction when the transmission unit is in a first
position in which the first gear wheel and the second gear wheel are coupled
to each other by an odd number of idler gears,” and the first and second
shafts “are rotatable in opposite directions when the transmission unit is in a
second position in which the first gear wheel and the second gear wheel are
coupled by an even number of idler gears,” as recited in claim 1. Final Act.
3^4; see also Ans. 9 (“Schneider is the base reference.”). Appellant does not
address the rejection as articulated by the Examiner, and, thus, does not
identify error by the Examiner.
Third, Appellant argues that “Chapman is nonanalogous art and
cannot be properly used in an obviousness rejection of independent claim 1.”
Appeal Br. 8—10.
[T]o qualify as prior art for an obviousness analysis, a reference
must qualify as “analogous art,” i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same
field of [the inventor’s] endeavor; or (2) the reference must be
reasonably pertinent to the particular problem with which the
inventor is involved.
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K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012)
(quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011)).
Appellant argues that the “problem faced by the inventor is enabling
the microtome handwheel to be rotated in either of two rotational directions,
according to the user’s personal preference or comfort, as input for
providing a single output rotational direction.” Appeal Br. 10. According to
Appellant, “Chapman solves a problem with two different output rotational
directions whereas Appellant solves a problem with a preselected output
rotational direction. Furthermore, Chapman solves a problem with a single,
constant input rotational direction whereas Appellant solves a problem with
two different input rotational directions.” Id.
In response to Appellant’s argument, the Examiner asserts that the
references are analogous prior art. Ans. 11—12. Addressing the particular
problems with which Chapman and the inventor are involved, the Examiner
explains that, like Appellant’s microtome, “the gear train system of
Chapman is directed to changing the direction of a rotating shaft.” Ans. 12.
The Examiner concludes that “Chapman is pertinent to the particular
problem (changing the direction of a rotating shaft) which the Appellant was
concerned with.” Ans. 12.
We find that the Examiner’s position is more persuasive than
Appellant’s position. Appellant narrowly focuses on the differences
between the Specification and the Chapman reference, but concedes that one
of the problems addressed by the Specification is that a shaft must “be
rotated in either of two rotational directions.” Appeal Br. 23. Appellant
does not show error in the Examiner’s determination that Chapman
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overcomes similar problems, and is prior art under the second prong of the
analogous art test.
Fourth, Appellant argues that “the Examiner admitted that Chapman is
nonanalogous art to microtomes, like that in Kiene, Schneider, or
Appellant's invention, and conceded that Chapman is nonanalogous art.”
Appeal Br. 10; see also id. at 9; Reply Br. 6. Appellant, however, focuses
on the first prong of the analogous art test. As discussed above, Chapman is
analogous art under the second prong of the test because it is reasonably
pertinent to the particular problem with which the inventor is involved.
Appellant’s argument is not persuasive.
Fifth, Appellant argues that “as Chapman is nonanalogous art,
Chapman cannot be properly used in an obviousness rejection and the
Examiner's rationale for combination with Schneider is immaterial.” Appeal
Br. 11; Reply Br. 4—5. Because Chapman is analogous art, as discussed
above, Appellant’s argument is not persuasive.
Sixth, Appellant argues that “Parmley and Childs fail to remedy the
deficiencies of Chapman.” Id. For the reasons discussed above, there is no
deficiency in the Examiner’s findings and reasoning relating to Chapman,
and Appellant’s argument is not persuasive.
For the reasons above, the rejection of independent claim 1 is
sustained. Claims 3—5 and 7—11 fall with claim 1.
The Rejection of Claim 5 As Unpatentable Over
Schneider, Chapman, Parmley, Mechanical Design, and Sparks
Appellant argues that the rejection of claim 5, which depends from
independent claim 1, is erroneous because Sparks does not remedy the
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deficiencies in the rejection of claim 1. Appeal Br. 11—12. For the reasons
discussed above, there is no deficiency in the Examiner’s rejection of claim
1, and Appellant’s argument is not persuasive.
For the reasons above, the rejection of claim 5 is sustained.
The Rejection of Claim 9 As Unpatentable Over
Schneider, Chapman, Parmley, Childs, and Shatzel
Appellant argues that the rejection of claim 9, which depends from
independent claim 1, is erroneous because Shatzel does not remedy the
deficiencies in the rejection of claim 1. Appeal Br. 12. For the reasons
discussed above, there is no deficiency in the Examiner’s rejection of claim
1, and Appellant’s argument is not persuasive.
For the reasons above, the rejection of claim 9 is sustained.
The Rejection of Claim 10 As Unpatentable Over
Schneider, Chapman, Parmley, Childs, and Orr
Appellant argues that the rejection of claim 10, which depends from
independent claim 1, is erroneous because Orr does not remedy the
deficiencies in the rejection of claim 1. Appeal Br. 12. For the reasons
discussed above, there is no deficiency in the Examiner’s rejection of claim
1, and Appellant’s argument is not persuasive.
For the reasons above, the rejection of claim 10 is sustained.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3—5, and
7-11 is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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