Ex Parte Kramer

Board of Patent Appeals and Interferences

Aug 27, 2008

10641577 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS A. KRAMER
____________

Appeal 2008-2035
Application 10/641,577
Technology Center 3600
____________

Decided: August 27, 2008
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dennis A. Kramer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-5 and 7-9. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.1
THE INVENTION
The claimed invention relates to a parking brake for a vehicle.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A parking brake for a vehicle comprising:
an electric motor driven to rotate an internally threaded nut;
a shaft having an external thread and received within said
internally threaded nut, said shaft being constrained from rotating
by being connected to an actuator member;
said actuator member being connected to a brake mechanism
such that said actuator member is movable between two extreme
positions to in turn move said brake mechanism between a park
position and a release position; and
a control for driving said electric motor to rotate and cause
said shaft to move, and in turn cause said actuator member to move
said brake mechanism between said park and said release
positions, said shaft driving a lever to pivot, said lever carrying a
cam surface which cams a brake disc into engagement with a
driveline structure to be locked to provide said park position.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Eikelberger US 4,175,646 Nov. 27, 1979
Taig US 4,865,165 Sep. 12, 1989

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed Oct.
10, 2006), Reply Brief (“Reply Br.,” filed Oct. 23, 2006), and the
Examiner’s Answer (“Answer,” mailed Aug. 22, 2006).
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Harrison ‘577 US 4,909,577 Mar. 20, 1990
Harrison ‘553 US 4,941,553 Jul. 17, 1990
Finley US 6,068,091 May 30, 2000
Zipp US 6,249,737 B1 Jun. 19, 2001
Oppitz US 2002/0092710 A1 Jul. 18, 2002
Ward US 6,505,714 B1 Jan. 14, 2003

THE REJECTIONS2
The following rejections are before us for review:
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taig, Ward, and Finley or Oppitz.
Claims 3, 7, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taig, Ward, Finley or Oppitz, and Harrison ‘553.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taig, Harrison ‘553, and Eikelberger.
Rejection of claims 1 and 2
The Appellant contends that “there is nothing within the Taig
reference that would suggest utilizing its threaded nut and shaft arrangement
to drive a lever. Instead, Taig appears to have a drive structure solely
intended for use in pulling a cable.” (App. Br. 5 and see also Reply Br. 1.)
As a result, the Appellant contends that “this combination is based solely on
hindsight.” (App. Br. 5.) The Appellant argues claims 1 and 2 together, we
select claim 1 as representative and claim 2 stands or falls with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).

2 The Examiner referred to Zipp and Harrison ‘577 in the Answer “to
provide additional background on the control of stepper motors” (Answer 7).
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Rejection of claims 3 and 8
The Appellant contends that “in the claim, the movement between the
park and release position is tied directly to the length of the pulse.” (App.
Br. 5.) The Appellant contends that “[t]he prior art does not disclose the
feature.” (Id.) The Appellant argues claims 3 and 8 together, we select
claim 8 as representative and claim 3 stands or falls with claim 8.
Rejection of claim 9
The Appellant relies on the contentions raised against the rejection of
claims 8 and 3. (App. Br. 6.)
Rejection of claim 4
The Appellant contends that claim 4 requires a timer that is a mono-
stable, multi-vibrator switch and the Examiner fails to point to any timer in
the prior art at all and further does not point to a mono-stable, multi-vibrator
switch. (Id.) The Appellant contends that Eikelberger fails to add the
particular timer. (Id.)

ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 1 and 2 as being unpatentable over Taig, Ward, and
Finley or Oppitz. This issue turns on whether the Appellant has identified
an error in the Examiner’s prima facie case of obviousness by contending
that Taig needs to provide a suggestion to use its threaded nut and shaft
arrangement to drive a lever.
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The second issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 3, 7, 8, and 9 as being unpatentable over
Taig, Ward, Finley or Oppitz, and Harrison ‘553. For claims 3, 8, and 9, this
issue turns on whether the Appellant has identified an error in the
Examiner’s prima facie case of obviousness by contending Harrison does
not describe the number of pulses sent by the control circuit is not longer
than necessary to move the brake mechanism between the full park and full
release positions. For claim 7, this issue turns on whether the Appellant has
shown that the Examiner erred in rejecting claim 1 as being unpatentable
over Taig, Ward, and Finley or Oppitz.
The third issue is whether the Appellant has shown that the Examiner
erred in rejecting claim 4 as being unpatentable over Taig, Harrison ‘553,
and Eikelberger. This issue turns on whether the Appellant has identified an
error in the Examiner’s prima facie case of obviousness by contending
Eikelberger does not describe a mono-stable, multi-vibrator switch.

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Appellant’s Specification discloses that “[a] timed current pulse drives
the [electric stepper] motor . . . [and] a timer . . . controls the amount
of drive time.” In addition, the Appellant’s Specification discloses
that “[t]he length of the pulse is preferably longer than the time
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required to drive the mechanism to either the full park or full release
position.” (Specification ¶ 0013.)
Scope and content of the prior art
2. The Examiner finds and Appellant chose not to rebut that Taig and
Ward describe:
• an electric motor driven to rotate an internally threaded nut;
• a shaft having an external thread and received within the internally
threaded nut where the shaft is constrained from rotating by being
connected to an actuator member;
• the actuator member being connected to a brake mechanism such that
the actuator member is movable between two extreme positions to in
turn move the brake mechanism between a park position and a release
position; and
• a control for driving the electric motor to rotate and cause the shaft to
move, and in turn cause the actuator member to move the brake
mechanism between the park and the release positions, where the
shaft drives a lever to pivot, and where the lever carrying a cam
surface which cams a brake disc into engagement with a driveline
structure to be locked to provide a park position.
Accordingly, we find Taig and Ward describe the claimed subject matter
within claims 1, 4, 8, and 9 that has been identified above.
3. Harrison describes, in a braking system, an electric motor for
controlling the application of a friction element to a rotating part.
(Harrison ‘553, col. 1, ll. 19-21.) In particular, Harrison describes a
stepper motor 10. The rotor of the stepper motor 10 is moved through
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one step for each pulse produced at one output 18a in a direction
determined by the signal at another output 18b. (Harrison ‘553, col. 3,
ll. 20-23 and Figure 1.) The stepper motor 10 is under the control of
control circuit 18. (Harrison ‘553, col. 3, ll. 19-20.) Control circuit
18 positions the rotor of the stepper motor 10 by supplying pulses to
the switching circuit 17. (Harrison ‘553, col. 3, ll. 41-46.) The
control circuit 18 ensures no slip or stall occurs in motor 10 and thus
ensures the value of the position count reflects the actual position of
the rotor. (Harrison ‘553, col. 3, ll. 46-50.) Control circuit 18 follows
main brake control algorithm 30. Algorithm 30 causes a fixed number
of pulses to be supplied to back the brakes off by a fixed clearance
distance. (Harrison ‘553, col. 3, ll. 63-65.)
4. Eikelberger describes a parking brake system that is operated with the
flick of a manual switch 36. An electric motor 26 turns worm shaft 28
that carries traveler block 30 and drives block 30 along its length.
(Eikelberger, col. 5, l. 64 to col. 6, l. 4.) A catch pin extends from
traveler block 30. (Eikelberger, col. 6, l. 4-5.) As shown in figure 6,
knife type limit switches 32 and 34 define the range of cyclical
operation of the motor 26. (Eikelberger, col. 6, ll. 6-8.) The actuation
of either switch breaks the electrical power supplied to the motor to
stop its rotation. (Eikelberger, col. 6, ll. 8-10.)
Differences between the claimed subject matter and the prior art
5. For claim 1, the claimed invention combines elements separately
disclosed in the prior art.
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6. For claim 4, the claimed invention claims a timer being a mono-
stable, multi-vibrator switch whereas Eikelberger describes the
switches being knife type limiting switches.
7. For claim 8, the claimed invention claims the number of drive pulses
supplied to drive the electric motor is more than necessary to move
the lever between the park position and the release position via the
threaded shaft whereas Harrison describes the number of drive pulses
supplied to drive the electric motor is not more than necessary to
move the lever between the park position and the release position.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
in Graham further noted that evidence of secondary considerations “might
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be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.
The Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
Id. (citing Graham, 383 U.S. at 12 (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR at 1739. The operative
question in this “functional approach” is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” KSR at 1740.

ANALYSIS
The Appellant and Examiner agree Taig and Ward describe all
claimed elements associated with claim 1. (FF 2.) The difference between
the claimed invention and the prior art is that the claimed invention
combines the elements of the prior art. (FF 5.) The Appellant contends, not
only do all the claimed elements need to be described by Taig and Ward, but
there needs to be a suggestion in Taig to utilize its threaded nut and shaft
arrangement to drive a lever. (App. Br. 5.) However, the prior art need not
contain an express suggestion. “The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.” Dystar Textlifarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). In this case,
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the Examiner finds “[o]ne having ordinary skill in the art at the time of the
invention would have found it obvious to have used a parking brake system
as taught by Ward for the generic lever arrangement shown in Taig simply
as a choice of one of many pivotally actuated brakes available in the art and
to have used this combination to actuate a parking brake attached to a
vehicle driveline.” (Answer 4.) As we understand the Examiner’s rejection,
the Examiner has used the particularly described parking brake mechanism
in Ward in place of the generically described parking brake mechanism in
Taig. Absent some evidence of unexpected results from using one particular
parking brake mechanism over another particular parking brake mechanism,
we find the Examiner’s substitution of the particular parking brake
mechanism described in Ward for the generic parking brake mechanism
described in Taig reasonable and yields no more than one would expect from
such an arrangement. “[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282, 96 S. Ct. 1532 (1976)). Such is the case with claim 1. Claim 1 simply
arranges old elements found in Taig and Ward and yields no more than what
one would expect from such an arrangement, the actuation of a parking
brake on a vehicle. With respect to the Appellant’s contention that the
Examiner has used hindsight, we are not persuaded by this contention
because the Examiner has articulated a rational reason with a logical
underpinning: use a specific parking brake described in Ward for the generic
parking brake described in Taig. (See Answer 4.) Accordingly, we are not
persuaded by the Appellant’s contentions that the Examiner erred in the
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rejection by not finding the prior art had a suggestion to combine and the
combination is solely based on hindsight. We will sustain the Examiner’s
rejection of claims 1 and 2.
The Appellant contends, for claim 8, “the movement between the park
and release position is tied directly to the length of the pulse” and this
feature is not disclosed in the prior art. (App. Br. 5.) The Examiner admits
while the prior art “does not specifically mention a ‘pulse length’ for which
the motor is actuated by the controller such a ‘pulse length’ could be
interpreted broadly when the motor is activated to make adjustments, such as
for wear of the pads or slack in the cable.” (Answer 5.) The claim
limitation at issue is “said drive pulses being supplied over a length longer
than that necessary to move said shaft to drive said lever and move said
brake mechanism between said park and said release positions.” We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The Specification does not disclose a specific definition for “pulse
length.” Instead, the Specification discloses the length of the pulse is longer
in time than the required time to drive the mechanism to either full park or
full release position. (FF 1.) As such, we construe this claim limitation as
the number of pulses provided by the “control[ler]” is greater than the
number of pulses needed to move the brake mechanism between the full
park and full release positions. Harrison describes the rotor of the stepper
motor is moved through one step for each pulse produced at one output 18a
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in a direction determined by the signal at another output 18b. (FF 3.)
Harrison describes the stepper motor is under the control of control circuit
18. (Id.) Harrison describes the algorithm 30 causes a fixed number of
pulses to be supplied to back the brakes off by a fixed clearance distance.
(Id.) Our review of Harrison concludes that the number of pulses is not
longer than necessary to move the brake mechanism between the full park
and full release positions. Thus, we find a difference between the claimed
invention and the combined description of Taig, Ward, Finley or Oppitz, and
Harrison ‘553.3 (FF 7.) Accordingly, the Appellant has persuaded us of an
error in the Examiner’s rejection of claims 3, 8, and 9 by identifying an error
in the Examiner’s underlying factual determination of the scope and content
of Harrison. We will not sustain the Examiner’s rejection of claims 3, 8, and
9.
The Appellant has not presented arguments for the rejection of claim
7. Accordingly, we are not persuaded that the Examiner erred in rejecting
claim 7 for the same reasons given above with respect to claim 1. We will
sustain the Examiner’s rejection of claim 7.
The Appellant contends claim 4 requires a mono-stable, multi-vibrator
switch. (App. Br. 6.) The Examiner finds Eikelberger shows providing
electric motors with limit switches and concludes it is well known in the art
to control the amount of time that an electric motor is actuated. (Answer 6.)
While the Examiner is correct that Eikelberger describes limit switches (FF
4), the Examiner is incorrect to conclude because Eikelberger describes limit
switches it is notoriously well known to control the amount of time that an

3 The Examiner has not used Taig, Ward, Finley or Oppitz to cure the
deficiency of Harrison ‘553.
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electric motor is actuated. Eikelberger’s limit switches do not operate on a
basis of time. The switches operate based on the length of travel of the
travel block 30 and when the pin contacts one of the knife type limit
switches the electrical power is removed from the motor. (FF 4.) Claim 4
requires a switch that operates on the principle of time, not a distance
between two electrical contacts as Eikelberger describes, and that switch is a
mono-stable, multi-vibrator switch. We find a difference between the
claimed invention’s timer being a mono-stable, multi-vibrator switch and
Eikelberger’s knife type limit switches. (FF 6.) Accordingly, the Appellant
has identified an error in the Examiner’s findings of the scope and content of
Eikelberger. We will not sustain the Examiner’s rejection of claim 4. For
the same reasons, we will not sustain the rejection of claim 5 over the cited
prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.”).

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1 and 2 as being unpatentable over Taig, Ward and
Finley or Oppitz.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claim 7 as being unpatentable over Taig, Ward, Finley or
Oppitz, and Harrison ‘553.
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We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 3, 8, and 9 as being unpatentable over Taig, Ward, Finley or
Oppitz, and Harrison ‘553.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 4 and 5 as being unpatentable over Taig, Harrison ‘553, and
Eikelberger.

DECISION
The Examiner’s decision to reject claims 1, 2, and 7 is affirmed.
The Examiner’s decision to reject claims 3, 4, 5, 8, and 9 is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

hh

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