Ex Parte Hightower et al

Board of Patent Appeals and Interferences

Jan 28, 2003

09438909 (B.P.A.I. Jan. 28, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER C. HIGHTOWER, HUNG-SUN OH and GARY B. BURWELL
____________
Appeal No. 2002-1984
Application No. 09/438,909
____________
ON BRIEF
____________
Before MCQUADE, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-40,
which are all of the claims pending in this application.
We AFFIRM-IN-PART.
BACKGROUND
The appellants’ invention relates to a two-position actuator having a DC solenoid
element for locking a damper in an open position (specification, page 1). A copy of the
claims under appeal is set forth in the appendix to the appellants’ brief.
Appeal No. 2002-1984
Application No. 09/438,909
Page 2
1 U.S. Patent No. 5,986,369, issued November 16, 1999 to Mark G. Hanley et al.
2 We note that “said output coupling” and “said solenoid activation element” in claim 21 and “said
solenoid activation element” in claim 31 lack clear antecedent basis. Upon return of this application to the
Technology Center, the examiner and appellant should take appropriate steps to remedy this informality.
The following rejection is before us for review.
Claims 1-40 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Hanley1.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the answer
(Paper No. 14) for the examiner's complete reasoning in support of the rejection and to
the brief and reply brief (Paper Nos. 13 and 15) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims2, to the applied Hanley patent, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claims 1, 2, 7, 11, 12, 19 and 20
Hanley discloses an actuator for actuating a damper or valve in an HVAC
installation, the actuator comprising a drive motor 28, an output coupler 14 operatively
coupled to a damper (not shown) and driven, through a motor drive pinion 26 and gear
train 24, by the motor 28, a brake device including a flywheel 68 coupled to and driven
Appeal No. 2002-1984
Application No. 09/438,909
Page 3
3 Appellants’ reference to an “output coupling 24" on page 5 is apparently an inadvertent error.
by the motor 28 and a solenoid (column 5, line 36) for stopping the rotation of the
flywheel to thereby stop the rotation of the motor 28 and, consequently, the motor drive
pinion 26 and drive train 24 coupled thereto to thereby prevent rotation of the output
coupler 14. We note, however, that the majority of Hanley’s disclosure is directed to a
preferred embodiment wherein a piezoelectric beam 60, instead of a solenoid, is used
to engage and stop the rotation of the flywheel 68. According to Hanley, the advantage
of the piezoelectric brake device over a solenoid is that it achieves substantial savings
in power.
Appellants argue that the subject matter of claim 1 is not anticipated by Hanley
because (1) Hanley does not disclose and, in fact, teaches away from the use of a
solenoid to brake the flywheel 68 (brief, pages 10-12) and (2) Hanley discloses no
association, physically or functionally, of the braking element 58 with the output coupler
143 (brief, page 5). For the reasons explained below, we do not agree with either of
these arguments.
As for appellants’ argument that Hanley does not disclose the use of a solenoid
to brake the flywheel 68, we note that Hanley teaches, in column 5, lines 33-38, that
it is important to note that by utilizing the above-described
novel piezoelectric brake device 58 instead of the drive
motor 28 or a solenoid (not shown) to stop the rotation of the
flywheel 68, and thus maintain the damper in the desired
position, a substantial savings in power is realized.
Appeal No. 2002-1984
Application No. 09/438,909
Page 4
While Hanley clearly prefers the piezoelectric brake device 58 disclosed therein to the
use of a solenoid to stop the rotation of the flywheel 68 in order to realize a substantial
power savings, the above-mentioned teaching is a disclosure of an embodiment
wherein a solenoid is used to stop the rotation of the flywheel 68 in addition to an
embodiment wherein a piezoelectric element (beam 60) is used to stop the rotation of
the flywheel 68. A reference is not limited to its preferred embodiment, but must be
evaluated for all of its teachings, including its teachings of non-preferred embodiments.
In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979). As emphasized
by the examiner on page 5 of the answer, the examiner’s rejection is an anticipation
rejection under 35 U.S.C. § 102 and does not propose any modification of Hanley.
Rather, the examiner’s position, which we find reasonable as explained above, is that
Hanley teaches, albeit in a non-preferred embodiment, the use of a solenoid to stop the
rotation of the flywheel 68.
As for appellants’ argument that Hanley’s brake device 58 locks the motor 28
and not the output coupler 14, we note that, by locking the motor 28, which drives the
output coupler 14 via the motor drive pinion 26 and drive train 24, Hanley’s flywheel 68,
whether engaged by a solenoid or a piezoelectric beam, also effects a braking force on
the output coupler 14 to prevent rotation thereof. We find nothing in claim 1 which
requires that the brake be directly connected to or engaged with the output coupling or
precludes the recited brake from effecting a braking force on the motor as well as the
output coupling. In fact, in that appellants’ brake (e.g., motor fan 18) forms part of the
Appeal No. 2002-1984
Application No. 09/438,909
Page 5
gear train 28 and appears to be mounted on the output shaft of the motor 16, it, like the
brake device of Hanley, is interconnected with the output coupling 36 only indirectly
through the gear train 28 and also locks the motor 16 in addition to the output coupling
36 when engaged by the plunger pin 22 of the solenoid 20. Moreover, Hanley’s
flywheel 68 is interconnected, via the motor drive pinion 26 and drive train 24, to the
output coupler 14, as called for in claim 1.
For the foregoing reasons, appellants’ arguments fail to persuade us of any error
on the part of the examiner in rejecting claim 1 as being anticipated by Hanley. Thus,
we shall sustain the examiner’s rejection of claim 1, as well as claims 2, 7, 11, 12, 19
and 20 which appellants have grouped therewith (brief, page 3).
Claims 21-30
Appellants (brief, page 8) assert that method claim 21 is not anticipated by
Hanley because Hanley does not disclose a step of activating said solenoid activation
element to act on a brake “to lock said output coupling into a desired position” as called
for in claim 21. The basis for appellants’ assertion is that Hanley’s brake element acts
on the drive motor to provide the necessary braking. As discussed above, while
Hanley’s brake device, by stopping the rotation of the flywheel 68 which is driven by the
motor 28, locks the motor 28, it also locks the output coupler 14, via the motor drive
pinion 26 and drive train 24, into a desired position as called for in claim 21. We thus
shall sustain the examiner’s rejection of claim 21, as well as claims 22-30 which
appellants have grouped therewith (brief, page 3).
Appeal No. 2002-1984
Application No. 09/438,909
Page 6
Claims 31-40
Appellants (brief, page 9) argue that Hanley fails to disclose a structural
arrangement wherein the brake is “in communication with said damper” as called for in
claim 31. The basis for this argument appears to be that Hanley’s brake applies the
braking force to the motor 28. Be that as it may, Hanley’s flywheel 68, when engaged
by a solenoid, as in the non-preferred embodiment, transmits braking force, via the
motor drive pinion 26 and gear train 24, to the output coupler 14, which in turn is
operatively coupled to a damper, and, thus, is “in communication with said damper” as
called for in claim 31. This is akin to the arrangement disclosed by appellants, wherein
the communication between the motor fan 18 and the damper is via a gear train.
For the foregoing reason, we are unpersuaded by appellants’ argument of any
error on the part of the examiner in rejecting claim 31 as being anticipated by Hanley.
We thus shall sustain the rejection of claim 31 as well as claims 32-40 which appellants
have grouped therewith (brief, page 3).
Claims 3-6, 8-10 and 13-18
Claims 3 and 13, from which each of claims 4-6, 8-10 and 14-18 depends, either
directly or indirectly, recite that the brake “is a component of said gear train.” The brake
disclosed by Hanley comprises a flywheel 68 which is driven by the motor 28 and
appears to be mounted on the motor output shaft along with the motor drive pinion 26.
While the motor drive pinion 26 does appear to mesh with the gear 30 of the gear train
24 of Hanley, the flywheel 68 itself does not mesh with any of the gears of the gear train
Appeal No. 2002-1984
Application No. 09/438,909
Page 7
24 and thus, in our opinion, cannot reasonably be considered to be a component of
said gear train. Accordingly, we shall not sustain the rejection of these claims as being
anticipated by Hanley.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-40 under 35
U.S.C. § 102(e) is affirmed as to claims 1, 2, 7, 11, 12 and 19-40 and reversed as to
claims 3-6, 8-10 and 13-18.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-1984
Application No. 09/438,909
Page 8
DAVID BARRON
INVENSYS INTELLECTUAL PROPERTY DEPT.
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