Ex Parte Hughes

Board of Patent Appeals and Interferences

Sep 26, 2011

11595026 (B.P.A.I. Sep. 26, 2011)

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.
11/595,026 11/10/2006 Mark Jeffrey Hughes 29572-2//P21 6550
39607 7590 09/26/2011
PETER K HAHN
LUCE, FORWARD, HAMILTON, SCRIPPS, LLP.
600 WEST BROADWAY
SUITE 2600
SAN DIEGO, CA 92101
EXAMINER
AVILA, STEPHEN P
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
09/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK JEFFREY HUGHES
____________________

Appeal 2009-014084
Application 11/595,026
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014084
Application 11/595,026
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
6, 8-17, 19 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to an actuator box assembly. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An actuator box comprising:
a housing;
a pivot arm connected to said housing;
an electromechanical linear actuator connected to said
housing and said pivot arm;
a pull cable connected to said pivot arm;
an actuator cable connected to said pivot arm, wherein
actuation of said pull cable or said electromechanical linear
actuator causes rotation of said pivot arm which causes
actuation of said actuator cable.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Edelman
Patrick
Parrott
US 2,370,025
US 3,041,037
US 7,207,522 B2
Feb. 20, 1945
Jun. 26, 1962
Apr. 24, 2007

REJECTIONS
Claims 5, 9, 11, and 17 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. Ans. 3.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parrott and Edelman. Ans. 3.
Claims 1, 3, 4, 6, 8, 10, 12, 13, 15, 16, 19 and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Parrott and Patrick. Ans. 4.
Appeal 2009-014084
Application 11/595,026
3
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parrott, Patrick and Edelman. Ans. 5.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the applied prior art does not establish the obviousness
of claims 1-4, 6, 8, 10, 12-16, 19 and 20. Therefore the obviousness
rejections of these claims will be reversed. We further have determined that
the Appellant’s Specification does not lack an enabling disclosure under the
purview of 35 U.S.C. § 112, first paragraph. Therefore the rejection of
claims 5, 9, 11 and 17 under 35 U.S.C. § 112 is reversed. Our reasons
follow.
We acknowledge that Parrott discloses an actuator box 20 containing
a pivot arm 80 and pull cables 30, 40, 50 wherein the pull cables when
pulled will actuate an emergency floatation system on a helicopter. See col.
3, ll. 51-60; Fig. 1. Parrott does not disclose an electro-mechanical linear
actuator in the actuator box.
Patrick discloses a gate valve assembly for control of fluids in an
aircraft, i.e., fuels, oils, and hydraulic fluids. The gate valve is operated by
the rotary motion of motor M through the agency of a crank 7. See Patrick,
col. 1, l. 62 – col. 2, l. 7. While the gate valve 3 is moved linearly it is not
clear that the crank arrangement can be called an electro-mechanical linear
actuator. Be that as it may, it is our conclusion that the Examiner has not
provided reasoning with rational underpinnings as to why one of ordinary
skill would place a drive such as Patrick’s drive, divorced from the
environment of a hydraulic or fuel valve, in the actuator box disclosed by
Appeal 2009-014084
Application 11/595,026
4
Parrott. We find convincing Appellant’s argument that Patrick’s actuator is
not intended to be used to cause rotational movement; it is only intended to
cause linear movement of the gate valve. In fact, if the short throw rotary
motor of Patrick were to be used in the box 20 of Parrott, one of ordinary
skill would most likely have placed the rotary output of Patrick directly on
the pivot of cam 80, obviating the crank and linear slide of Patrick entirely.
Therefore we do not agree with the Examiner that it would have been
obvious to use Patrick in the device of Parrott to provide power means to
rotate the lever 80 along with the manual means. Contra Ans. 4.
The rejections of claim 2 and claim 14, bottomed as they are on the
combination of Patrick and Parrott, also cannot be sustained.
With respect to the 35 U.S.C. § 112, first paragraph rejection of
claims 5, 9, 11 and 17, we note that undue experimentation is the touchstone
of enablement. Inasmuch as the Examiner has not found that one of
ordinary skill would not have been enabled to make the claimed subject
matter without undue experimentation, the rejection of claims 5, 9, 11 and
17 cannot be sustained. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir.
1993); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)

DECISION
The obviousness rejections of claims 1-4, 6, 8, 10, 12-16, 19 and 20
are reversed.
The rejection of claims 5, 9, 11 and 17 under 35 U.S.C. § 112, first
paragraph, is reversed.

REVERSED
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