Ex parte LAYER et al.

Board of Patent Appeals and Interferences

May 14, 1998

08173764 (B.P.A.I. May. 14, 1998)

Application for patent filed December 27, 1993. 1
Claim 16 was amended subsequent to the final rejection.2
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN C. LAYER, GREGORY J. GUZEWICH and LARRY D. HALL
____________
Appeal No. 96-3744
Application No. 08/173,7641
____________
ON BRIEF
____________
Before PATE, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 16, which are all of the claims
pending in this application.2
Appeal No. 96-3744
Application No. 08/173,764
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
Appeal No. 96-3744 Page 3
Application No. 08/173,764
BACKGROUND
The appellants' invention relates to a fail-safe ride
simulator. An understanding of the invention can be derived
from a reading of exemplary claim 1, which appears in the
appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Gwinnett 1,789,680 Jan. 20,
1931
Trumbull 4,066,256 Jan. 3,
1978
(Trumbull '256)
Trumbull et al. 4,874,162 Oct. 17,
1989
(Trumbull '162)
Claims 1, 3 through 11 and 16 stand rejected under 35
U.S.C. § 103 as being unpatentable over Trumbull '256.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Trumbull '256 in view of Trumbull '162.
Appeal No. 96-3744 Page 4
Application No. 08/173,764
Claims 12 through 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Trumbull '256 in view of Gwinnett.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 10, mailed January 22, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 9, filed September 29, 1995) and reply brief
(Paper No. 11, filed March 27, 1996) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the appealed claims. Accordingly, we will not
Appeal No. 96-3744 Page 5
Application No. 08/173,764
sustain the examiner's rejection of claims 1 through 16 under
35 U.S.C.
§ 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
Appeal No. 96-3744 Page 6
Application No. 08/173,764
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the independent claims on
appeal (i.e., claims 1 and 16).
Trumbull '256 discloses an amusement ride. As shown in
Figure 1, the amusement ride 10 includes a passenger-holding
frame 12, a rear projection screen 16, and a motion picture
projector 18. The particular reel of film or record 22 which
is being used in the projector, contains scenes representing
the view from a rapidly moving vehicle, with the particular
Appeal No. 96-3744 Page 7
Application No. 08/173,764
image shown at 20 representing the view seen from a race car
which is traveling on a road that curves to the right as
indicated by arrow 23. In order to enhance the entertainment
effect, the passenger-holding frame 12 is supported on three
hydraulic rams 24, 26, 28 that support three locations 30, 32,
34 spaced about the passenger frame. The rams can tip the
frame, either to
one side or to the front or back, and can also rapidly raise
and lower the frame. Figure 6 illustrates a portion of the
control system which controls movement of the three rams 24 -
28. The motion picture image is created by an image portion
72 of a film 22 that is contained in the projector. The film
includes a sound track 76 along one edge and a motion control
track 78 along the opposite edge. Three sensors 80, 82, and
84 respectively sense opposite edges of the track and the
density along the center of the track, and deliver
corresponding signals to a control circuit 86. Each of the
sensors 80 - 84 detects signals representing the
position of a different one of the three rams 24 - 28. The
control circuit 86 delivers signals corresponding to those
detected by the sensors 80 - 84 to three valves 90, 92, 94
Appeal No. 96-3744 Page 8
Application No. 08/173,764
that control the passage of pressured oil from an accumulator
96 to the three rams 24 - 28. Three ram position sensors 100,
102, 104 are also provided, each sensing the height of a
corresponding one of the rams, and with each position sensor
being coupled to the control circuit 86. Thus, a feedback
circuit is provided to enable close control of the position of
each ram. Each of the rams has a fluid outlet connected
through a corresponding valve 110, 112, 114 which leads to a
reservoir 106 that stores hydraulic fluid. A pump 108 pumps
fluid from the reservoir to the accumulator 96 to maintain a
high pressure in the accumulator, so that pressured hydraulic
fluid is always available. Each of the outlet valves 110, 112,
114 is electrically energized from the control circuit 86.
Trumbull '256 teaches that each of the inlet valves 90-94
is constructed so that it remains closed when no current is
applied to it, and so that it can be opened only upon the
application of current. On the other hand, each outlet valve
such as 110 is constructed so that it remains open when no
current is applied to
Appeal No. 96-3744 Page 9
Application No. 08/173,764
it, and can be closed only upon the application of current
thereto. As a result, in the event of electrical failure of
the system wherein no current is produced by the control
circuit 86, the inlet valves 90-94 will be closed while the
outlet valves 110-114 will be open. This results in all
hydraulic rams 24-28 losing oil so that their pistons move
down to the lowest possible elevation. This facilitates the
exit of passengers in case of failure, by lowering the frame
to a level orientation and at the lowest elevation. If such a
system were not utilized and failure occurred while the
vehicle was tilted or raised, there could be danger not only
in attempting to remove passengers from an elevated and tilted
floor, but also there could be danger to workmen helping in
the removal of passengers if the frame suddenly descended.
With respect to independent claims 1 and 16, the examiner
determined (answer, pp. 4-5) that Trumbull '256 does not
specifically teach the functions of the "fail-safe means"
recited in claim 1 or the "causing" step recited in claim 16.
The examiner then concluded that these limitations are merely
desired functions and that the control circuit 86 of Trumbull
Appeal No. 96-3744 Page 10
Application No. 08/173,764
'256 is certainly capable of being programmed to perform any
desired functions.
We do not agree.
We agree with the appellant's argument (brief, pp. 8-12)
that there is no reason or motivation in the applied prior art
for one of ordinary skill in this art to modify Trumbull '256
in the manner suggested by the examiner. It appears to us
that the examiner has resorted to speculation, unfounded
assumption or hindsight reconstruction to supply the above-
noted deficiency in Trumbull '256. We have also reviewed
Trumbull '162 and Gwinnett but find nothing therein which
makes up for the deficiency of Trumbull '256 discussed above.
Accordingly, we cannot sustain any of the examiner's rejection
of appealed claims 1 through 16 under 35 U.S.C. § 103.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Appeal No. 96-3744 Page 11
Application No. 08/173,764
Claims 1 through 16 are rejected under 35 U.S.C. § 112,
first paragraph, as the specification, as originally filed,
does not provide support for the invention as is now claimed.
In claim 1, the "fail-safe means operatively arranged . . . to
cause said platform to move automatically toward a
predetermined position relative to said base in the event of
any unsafe and uncontrolled condition in said actuation
mechanism resulting in
. . . exceeding a predetermined velocity" is not supported by
the original disclosure. In claim 16, the step of "causing
said platform to move automatically toward a predetermined
position relative to said base, . . ., whenever said
servoactuators . . . exceed a predetermined velocity" is not
supported by the original disclosure.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
Appeal No. 96-3744 Page 12
Application No. 08/173,764
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
In applying the above-noted test, we conclude that the
language at issue (i.e., "exceeding a predetermined velocity"
in claim 1 and "exceed a predetermined velocity" in claim 16)
is not supported by the original disclosure. The language at
issue was added to claims 1 and 16 by the amendment filed on
January 9, 1995 (Paper No. 3). On page 5 of that amendment,
the appellants stated that the language added is fully
supported by the original disclosure and does not constitute
"new matter." The appellants directed attention to page 6,
lines 32 et seq. for support of the language at issue. Page
6, lines 32 et seq. provide that the electrodynamic braking,
which is introduced by the fail-safe system, will limit the
actuator velocity. In our view, this does not provide support
for causing the platform to move automatically toward a
predetermined position relative to the base whenever the
Appeal No. 96-3744 Page 13
Application No. 08/173,764
actuation mechanism/servoactuators exceed a predetermined
velocity as recited in claims 1 and 16.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 16 under 35 U.S.C. § 103 is reversed and a
new rejection of claims 1 through 16 under 35 U.S.C. § 112,
first paragraph, has been added pursuant to provisions of 37
CFR
§ 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
Appeal No. 96-3744 Page 14
Application No. 08/173,764
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 96-3744 Page 15
Application No. 08/173,764
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-3744 Page 16
Application No. 08/173,764
PHILLIPS, LYTLE, HITCHCOCK, BLAINE & HUBER
INTELLECTUAL PROPERTY GROUP
3400 MARINE MIDLAND CENTER
BUFFALO, NY 14203
APPEAL NO. 96-3744 - JUDGE NASE
APPLICATION NO. 08/173,764
APJ NASE
APJ STAAB
APJ PATE
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 04 May 98
FINAL TYPED: