11094581 (B.P.A.I. Aug. 22, 2011)

Ex Parte Krisher

Board of Patent Appeals and InterferencesAug 22, 2011

11094581 (B.P.A.I. Aug. 22, 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. 11/094,581 03/31/2005 James A. Krisher 1-19387 2570 68459 7590 08/23/2011 MARSHALL & MELHORN, LLC FOUR SEAGATE 8TH FLOOR TOLEDO, OH 43604 EXAMINER WEINSTEIN, LEONARD J ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 08/23/2011 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 JAMES A. KRISHER ____________________ Appeal 2009-013720 Application 11/094,581 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, FRED A. SILVERBERG, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013720 Application 11/094,581 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter. 1. A fluid actuator assembly comprising: a first fluid chamber and a first piston disposed adjacent to said first fluid chamber; a second fluid chamber and a second piston slidably received in said second fluid chamber; an actuator motor for selectively reciprocating said first piston so that axial movement of said first piston generates a fluid pressure within said first fluid chamber, said first piston disposed within said actuator motor; and a fluid passage connecting said first fluid chamber with said second fluid chamber so that linear motion of said first piston causes corresponding linear motion of said second piston for applying the fluid pressure to a first device. References The Examiner relies upon the following prior art references: Schneider Reed Hageman US 5,944,159 US 5,984,068 US 6,578,933 B2 Aug. 31, 1999 Nov. 16, 1999 Jun. 17, 2003 Bansbach Kowalsky US 2003/0201145 A1 US 2005/0189190 A1 Oct. 30, 2003 Sep. 1, 2005 Rejections I. Claims 1-8, 16, 17, 19, and 20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Bansbach. Appeal 2009-013720 Application 11/094,581 3 II. Claims 9-11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bansbach and Hageman. III. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bansbach and Reed. IV. Claims 12-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bansbach, Hageman, and Schneider. V. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bansbach and Kowalsky. SUMMARY OF DECISION We REVERSE. OPINION Issue Sole independent claim 1 requires, in relevant part, a fluid actuator assembly having a first piston disposed within an actuator motor. The Examiner found that Bansbach describes a first piston 118 disposed within an actuator motor 92, shown in figure 3A. Ans. 4. The Examiner considers the power unit 80, in whole, to be the “actuator motor” required by claim 1, such that the piston 118 is “disposed within said actuator motor.” Ans. 10. Appellants argue that the first piston 118 is part of the ball-screw assembly 90, outside the motor 92, raising the dispositive issue of whether the first piston 118 of Bansbach is disposed within an actuator motor in the manner required by claim 1. App. Br. 6-7. The issue turns on whether the Examiner’s interpretation of “actuator motor,” to include both electric motor 92 and ball-screw assembly 90, is reasonable. Analysis Appellants’ Specification does not assign or suggest a particular definition to the term “motor” or otherwise indicate that this term is used in Appeal 2009-013720 Application 11/094,581 4 a manner other than its ordinary and customary meaning. The Examiner considers the word “motor” to include “any assembly, element, object, or machinery that converts one form of energy into another form of energy, and by doing so imparts motion.” Ans. 10. Appellants offer a dictionary definition, wherein a motor is “one that imparts motion … Prime Mover.” Reply Br. 4. Appellants’ proffered definition is consistent with Appellant’s disclosed actuator motor 36 “in the form of a reversible electric motor.” See Spec. 4:19-20; see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“The patent specification does not assign or suggest a particular definition to the term ‘case.’ Therefore, in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”). The prior art of record’s usage of the word “motor” is consistent with Appellants’ dictionary definition. We find that each of the prior art references of record delineates between a device that initially imparts motion and subsequent devices that transmit the initial motion. For example, Bansbach discusses the electric motor 92 as a separate piece from the ball- screw assembly 90. Kowalsky describes an electric motor as a “prime mover” that is coupled to and drives a transaxle (para. [0015]). See also claim 1 (listing the electric motor as a separate element from the gear train and piston). Reed and Hageman likewise describe the motor as a separate component from the objects driven by the motor. Reed, col. 2, ll. 60-64; Hageman, col. 2, ll. 57-60. We do not find any evidence suggesting that one of ordinary skill in the art would understand “motor” to include the driven structures in the manner proposed by the Examiner. Accordingly, we find Appeal 2009-013720 Application 11/094,581 5 the Examiner’s proposed definition unduly broad, and adopt Appellants’ proposed dictionary definition in our analysis. Bansbach describes the electric motor 92 and the ball-screw assembly 90 (housing the piston 118) as separate devices, the electric motor 92 being the device that produces or imparts motion, the ball-screw assembly merely transferring that motion to other components. See, e.g., Bansbach, para. [0024] (“ball-screw assembly 90 [is] operably coupled to an electric motor 92 via a reduction gearset 94”). The housing piston 118 is located within the ball-screw assembly 80 (id. at [0024]), which in turn is adjacent to the electric motor 92 (id. at [0030]). Thus, we find that the piston 118 is not inside the motor 92. Because the Examiner relies on an erroneous finding that piston 118 is inside the motor for each rejection of record (see Ans. 4- 10), we do not sustain the Examiner’s rejections of claims 1-20. DECISION For the above reasons, we reverse the Examiner’s decision regarding claims 1-20. REVERSED hh