Ex Parte Newman

Patent Trial and Appeal Board

Sep 28, 2012

11096784 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT C. NEWMAN, JR.
____________________

Appeal 2010-006073
Application 11/096,784
Technology Center 3600
____________________

Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006073
Application 11/096,784

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 12-19. Claim 11 is cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The application pertains to motorized roller tube systems used for
winding flexible members such as shades and screens. See Spec. para.
[0002]. Claims 1 and 10 are the independent claims on appeal. Claim 1,
reproduced below with two disputed limitations emphasized, is illustrative
of the claimed subject matter:
1. A motorized roller tube system comprising:
a rotatably supported roller tube;
a flexible member engaging the roller tube for winding
receipt of the flexible member by the roller tube;
a DC motor having an output shaft rotated at a motor
speed;
a gear assembly connected to the output shaft of the
motor such that the gear assembly is driven by the motor, the
gear assembly including a plurality of gear stages adapted to
produce an output rotational speed that is reduced with respect
to the motor speed; and
a controller connected to the motor for controlling the
motor to wind or unwind the flexible member with respect to
the roller tube,
the controller controlling the motor in at least two
operating modes each providing for movement of the flexible
member at a predetermined linear speed, and wherein the
linear speed for each one of the operating modes is different
from the linear speeds for the other modes,

1 Appellant identifies the real party in interest as Lutron Electronics Co., Inc.
App. Br. 2.
Appeal 2010-006073
Application 11/096,784

3
wherein the motor rotates at an operating speed that is
less than 50 percent of a maximum motor speed of which the
motor is capable when the motor operates in at least one of the
operating modes.

REJECTIONS
Appellant seeks review of the following rejections:
(1) Claims 1-3, 6, 8-10, and 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Admitted Prior Art (Spec., figs. 1-3) (hereinafter “APA”)
and Vafaie (US 6,082,433, iss. Jul. 4, 2000). Ans. 3.
(2) Claims 4, 7, and 12-14 under 35 U.S.C. § 103(a) as unpatentable
over APA, Vafaie, and either Lagarde (US 5,429,558, iss. Jul. 4, 1995) or
Azar (US 6,497,267 B1, iss. Dec. 24, 2002). Ans. 3-4.
(3) Claim 5 under 35 U.S.C. § 103(a) as unpatentable over APA,
Vafaie, and Jacobs (US 5,467,266, iss. Nov. 14, 1995). Ans. 4.

ANALYSIS
Claims 1-3, 6, and 8-10 under § 103(a) over APA and Vafaie
Only issues and findings of fact contested by Appellant in the Briefs
will be addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010). Appellant argues the patentability of claims 1-3, 6, and 8-10 as a
group. App. Br. 11-18. We select independent claim 1 as representative.
See 37 C.F.R. 41.37(c)(1)(vii). The Examiner found that APA discloses all
of the limitations of claim 1 except for “the controller . . . operating in two
operating modes of different linear speeds” and that Vafaie “disclose[s] a
motorized roller tube system comprising a controller 100 which operates in a
plurality of modes including that of differing speeds (see col. 6, lines 13-23;
col. 9, lines 6-38).” Ans. 3. The Examiner concluded that it would have
Appeal 2010-006073
Application 11/096,784

4
been obvious to one of ordinary skill in the art to incorporate the teachings
of Vafaie into the system of APA “for the purpose of selectively controlling
the movement of the flexible member so as to accommodate particular
applications . . . .” Id.
Appellant contends that multiple speed operation of an AC motor in
Vafaie “teaches a person of ordinary skill in the art nothing about the use of
a DC motor . . . to provide multiple linear speeds of a flexible member
mounted to a roller tube driven by the DC motor . . . .” App. Br. 13. The
Examiner’s stated reason to combine APA and Vafaie (Ans. 3) is provided
by Vafaie which discloses that opening and closing of a flexible closure
member at selected speeds can accommodate particular applications, as well
as reduce stress on the closure member. Vafaie, col. 6, ll. 13-23.
Determining whether claimed subject matter is obvious requires a showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). The Examiner has provided adequate reasoning based
on rational underpinnings for combining APA and Vafaie, and Appellant’s
contention is hence not persuasive.
Appellant further contends that there would not be a reasonable
expectation of success in combining the teachings of Vafaie with APA.
App. Br. 15-16. The “teaching being relied upon from the Vafaie reference
. . . is the teaching of a motorized roller tube system which operates in a
plurality of modes including that of differing speeds,” not “the use of an AC
variable frequency controller.” Ans. 7. Appellant “points out that the
person of ordinary skill in the art would have an understanding of the basic
principles of operation of both DC (direct current) and AC (alternating
Appeal 2010-006073
Application 11/096,784

5
current) motors, the manner in which each of these types of motors is
recommended to be operated, and the ways in which various parameters,
such as the speed, torque, and efficiency of the two types of motors, are
affected by the manner of operation.” Reply Br. 4-5. “[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR, 550 U.S. at 417. For the foregoing reasons, we find that
one of ordinary skill in the art would have had a reasonable expectation of
success in incorporating two operating modes of different linear speeds in
connection with the controller of APA’s DC motor, and the Examiner
provided adequate reasoning with rational underpinnings to support the
combination of APA and Vafaie.
Appellant’s contentions that the device of APA “cannot be modified
to use an AC motor . . . without completely redesigning the first device to
account for the many differences between the two types of motors” (App.
Br. 14) and that the combination “would change the principle of operation of
the Figs. 1-3 prior art device” (App. Br. 16) are not persuasive because they
do not address the rejection as articulated by the Examiner. The Examiner’s
rejection relies on modification of the controller for APA’s DC motor to
enable two operating modes at different linear speeds, not on replacement of
APA’s DC motor with Vafaie’s AC motor or applying AC current to a DC
motor. Appellant’s position appears to be that the devices of APA and
Vafaie are not physically combinable, and, if they were, this physical
combination would not result in the claimed invention. “The test for
obviousness is not whether the features of a secondary reference may be
Appeal 2010-006073
Application 11/096,784

6
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted); see also In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” (citations omitted)); In re Nievelt, 482 F.2d 965, 968 (CCPA
1973)(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Appellant does not offer persuasive
argument or evidence that it would have been beyond the skill of the
ordinary artisan in the art to apply the concept of enabling two operating
modes at different linear speeds to APA’s device. Rather, Appellant
acknowledges that a person of ordinary skill in the art would understand the
ways in which AC and DC motors operate. Reply Br. 4-5. Accordingly,
Appellant’s contentions are not persuasive.
Appellant further contends that “Vafaie is not germane to the device
of prior art Figs. 1-3” because Vafaie utilizes an AC motor rather than a DC
motor and that “Vafaie is not reasonably pertinent . . . to the particular
problem solved by Applicant in the claimed invention. App. Br. 13-14. To
the extent that Appellant may be arguing that Vafaie is non-analogous prior
art, the established precedent of our reviewing Court sets up a two-fold test
for determining whether art is analogous: “(1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
Appeal 2010-006073
Application 11/096,784

7
the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Bigio, 381 F.3d at 1325-27. The
Examiner correctly found that “Vafaie . . . [is] from the appellant’s field of
endeavor, that of a motorized roller tube system . . . .” Ans. 5. Vafaie is
within Appellant’s field of endeavor because it describes systems for
controlling the operation of a flexible curtain rollup type door (Vafaie, col.
1, ll. 5-8), which is structurally and functionally similar to the system of
claim 1. Although Appellant has identified a difference in the type of motor,
the remaining structural and functional similarities between Vafaie’s device
and the device recited in claim 1 implies that one of ordinary skill in the art
would have looked to Vafaie for guidance in designing a device of the type
recited in claim 1 notwithstanding the difference in the type of motor.
In addition, one problem with which Appellant was involved is that of
providing “multiple modes of operation in which the fabric speed in each
mode of operation is different from the fabric speed in the other modes of
operation.” Spec. para. [0018]. Vafaie similarly describes a motorized
roller tube system comprising a controller that operates in a plurality of
modes including that of differing speeds. Ans. 3 (citing Vafaie, col. 6, ll.
13-23; col. 9, ll. 6-38). The teachings of Vafaie are reasonably pertinent to a
particular problem with which the inventor was involved. See In re Clay,
966 F. 2d 656, 659 (Fed. Cir. 1992). Vafaie is not non-analogous art.
Appeal 2010-006073
Application 11/096,784

8
The Appellant further contends that the Examiner has not properly
considered the reference as a whole “including portions that would lead
away from the claimed invention.” App. Br. 15 (quoting W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 1552 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984)). The fact that one reference is
silent as to what another reference teaches is not a “teaching away” within
the meaning of § 103(a). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any … alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution
claimed.…”). We find this argument unconvincing because Appellant has
not identified any particular disclosure in Vafaie that discredits or
discourages its teachings with DC motors.
With respect to the claim limitation that “the motor rotate[] at an
operating speed that is less than 50 percent of a maximum motor speed of
which the motor is capable,” Appellant contends that “DC motor
manufacturers recommend operating a DC motor at a relatively high speed
(near the maximum motor speed).” App. Br. 12. Appellant’s contentions
are not convincing because the limitation that the claimed motor of the
motorized roller tube system “rotate[] at an operating speed that is less than
50 percent of a maximum motor speed of which the motor is capable” does
not have patentable weight if the claimed structure of the motorized roller
tube system is already known, regardless of whether the structure has
actually been used as claimed. See In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir.1997). “[A]pparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
Appeal 2010-006073
Application 11/096,784

9
1468 (Fed. Cir. 1990). Similarly, while features of an apparatus may be
recited either structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. Schreiber, 128 F.3d at 1477-78. Therefore, the apparatus of the
prior art meets the recited intended use or functionally defined limitation if it
merely is capable of the recited use or function (i.e., motor rotates at an
operating speed that is less than 50 percent of a maximum motor speed of
which the motor is capable when the motor operates in at least one of the
operating modes).
The Examiner found that APA’s motor is capable of being operated at
an operating speed that is less than 50 percent of a maximum motor speed
under at least some operating conditions. First, “[t]he Prior Art of figures 1-
3 sets forth the use of a variable speed DC motor that operates at speeds of
zero rpm to a maximum of 3150 rpm with such a range encompassing an
operating speed that is less than 50 percent of a maximum motor speed of
which the motor is capable of operating.” Ans. 6. Second, “as the motor
slows to a stop or starts it has to have been operated at a speed that is less
than 50 percent of its maximum motor speed of which it had been operated.”
Ans. 7. Appellant asserts that the term “operated at” must “mean more than
passing through a transitory state while the motor is on its way to stopping.”
App. Br. 16. However, Appellant has not pointed to any disclosure in the
Specification or extrinsic evidence in support of Appellant’s urged
interpretation of the term “operated.” Working of the motor during startup
or stopping can reasonably be considered to be “operation” of the motor
consistent with Appellant’s Specification when the claim is given its
broadest reasonable interpretation. Appellant has not provided any
Appeal 2010-006073
Application 11/096,784

10
persuasive argument or evidence that the prior art structure (i.e., APA’s
device as modified by Vafaie to provide at least two operating modes at
different linear speeds) is incapable of performing the intended use or
functionally defined limitation of the claimed apparatus. Ans. 6, 8.
Appellant further offers evidence of secondary considerations of non-
obviousness. App. Br. 17-18. Once a prima facie case of obviousness has
been established, objective evidence of secondary considerations must be
considered in making an obviousness decision. See Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). In particular,
Appellant asserts that its claimed subject matter is “so counterintuitive and
away from the conventional wisdom” and that “those having ordinary skill
in the art working in this field could not, did not, and still do not recognize
the unexpected benefits resulting from Applicant’s solution.” App. Br. 18.
However, such conclusory statements regarding skepticism by others or
unexpected results are not persuasive. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (An attorney's arguments in a brief cannot take the place
of evidence). Appellant has failed to set forth sufficient evidence of
secondary considerations to outweigh the evidence of record relating to
obviousness for the reasons discussed hereinabove.
Accordingly, we find that the Examiner did not err in concluding that
the subject matter of claim 1 would have been obvious from the combination
of APA and Vafaie; and we sustain the rejection of claims 1-3, 6, and 8-10
under § 103(a).

Appeal 2010-006073
Application 11/096,784

11
Claims 15 and 16 under § 103(a) over APA and Vafaie
Claims 15 and 16 recite that “the motor has a motor torque capability
that is greater than 50 percent of a maximum torque capability for the
motor.” Appellant contends that APA “does not disclose a system wherein
the motor has the claimed torque capabilities” because the APA system is
not “capable of operating at an operating speed of less than 50 percent of the
maximum motor speed.” App. Br. 19. For the reasons discussed, supra, the
Examiner correctly found that the APA device is capable of operating at an
operating speed of less than 50 percent of the maximum motor speed. See
Ans. 6, 7. Accordingly, we find that the Examiner did not err in concluding
that the subject matter of claims 15 and 16 would have been obvious from
the combination of APA and Vafaie; and we sustain the rejection of claims
15 and 16 under § 103(a).

Claims 17-19 under § 103(a) over APA and Vafaie
Claim 17 recites that “the motor rotates at an operating speed that is
less than or equal to approximately 1/14 of the maximum motor speed of
which the motor is capable . . . .” Claim 18 recites that “the motor operates
at less than one-fourth of a peak efficiency for the motor when the motor
rotates at the operating speed that is less than 50 percent of the maximum
motor speed of which the motor is capable.” Appellant contends that APA
operates its DC motor at “much higher operating speeds” and “at or near its
peak efficiency.” App. Br. 19.
Appellant’s contentions are not convincing because the apparatus of
the prior art meets the recited intended use or functionally defined limitation
if it merely is capable of performing the recited intended uses or functionally
Appeal 2010-006073
Application 11/096,784

12
defined limitations (i.e., motor rotates at operating speed less than or equal
to approximately 1/14 of maximum motor speed or at less than one-fourth of
a peak efficiency). See In Schreiber, 128 F.3d at 1477. The Examiner found
that APA’s motor can be operated at an operating speed that is less than 1/14
of maximum motor speed or less than one-fourth of a peak efficiency under
at least some operating conditions. Ans. 8. Appellant has not provided any
persuasive argument or evidence that the prior art structure (i.e., APA’s
device as modified by Vafaie to provide at least two operating modes at
different linear speeds) is incapable of performing the intended uses or
functionally defined limitations of the claimed apparatus. Ans. 6, 8.
Claim 19 recites that “the operating speed of the motor in the set-up
mode is approximately 1000 rpm, and the operating speed of the motor in
the ultra low speed mode is approximately 300 rpm.” Appellant contends
that APA operates only at a single, much higher speed and that “Vafaie
teaches no specific operating speeds.” App. Br. 20. The Examiner states
that:
[T]he particular value of the operating speed and its associated
torque capabilities as represented in figure 3 of the Prior Art
clearly sets forth that operating speed and torque are parameters
of a DC motor which are result-effective variables which
achieve the recognized result of speed and load capacity. As
such, the determination of the optimum or desirable workable
range of the variable is nothing more than a matter of routine
experimentation.
Ans. 9. APA discloses that the motor 22 of motorized roller tube system 10
is operated at a motor speed of approximately 2000 rpm. Spec., para.
[0012]. Although APA does not explicitly disclose the claimed motor
speeds, the Examiner found that APA recognized that operating speed is a
results-effective variable that achieves the recognized result of affecting
Appeal 2010-006073
Application 11/096,784

13
torque capability and load capacity. Ans. 9. The Examiner concluded that
since the operating speed was a results-effective variable as illustrated by
fig. 3, it would have been obvious to one of ordinary skill in the art to have
selected the operating speed in the claimed amount. Ans. 9; see In re Aller,
220 F.2d 454, 456 (CCPA 1955).
Appellant has failed to set forth persuasive arguments or evidence to
establish nonobviousness of the specific claimed operating speeds, such as
evidence that a person of ordinary skill in the art would fail to recognize that
operating speed is a results-effective variable or that the specific claimed
operating speed provides unexpectedly good results as compared to values
outside the claimed range. See In re Antonie, 559 F.2d 618, 620 (CCPA
1977). While Appellant has pointed to several unanticipated benefits of
generally operating the motor at an operating speed that is less than 50
percent of a maximum motor speed (Reply Br. 7), such unanticipated
benefits do not relate to the particular claimed operating speeds of 1000 rpm
and 300 rpm, respectively. Appellant has also not persuaded us that the
prior art taught away from the claimed subject matter. Even if APA is silent
regarding “the operation of a DC motor at low speeds well below the peak
efficiency that can be achieved by operating at higher speeds” (Reply Br. 5),
Appellant has not identified any particular disclosure in APA that discredits
or discourages such speeds.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claims 17- 19 would have been obvious
from the combination of APA and Vafaie; and we sustain the rejection of
claims 17-19 under § 103(a).

Appeal 2010-006073
Application 11/096,784

14
Claims 4, 7, and 12-14 under § 103(a) over APA, Vafaie, and either
Lagarde or Azar
Claim 4 recites that “the noise level produced when the [motorized
roller tube] system is operating in the ultra low speed mode is approximately
3 dBA or more below the noise level produced when the system is operating
in the set-up mode.” Claim 7 recites that “the motorized roller tube system
produces a sound pressure level when operating in the ultra low speed mode
of operation between 38 dBA and 40 dBA at a distance of approximately 3
feet from the roller tube in an ambient sound pressure level of approximately
38 dBA,” and claim 12 recites substantially similar language. Appellant
argues the patentability of claims 12-14 as a group.
Appellant contends that specific noise and sound pressure levels
produced by the system are missing from the cited references. App. Br. 20-
22. Appellant’s argument does not address the Examiner’s stated basis for
the rejection, which does not rely on the cited references for express
disclosure of the specific noise and sound pressure levels. Instead, the
Examiner found that:
inasmuch as Azar [and Lagarde] clearly set forth that noise
reduction is a desirable feature for a motorized roller tube
system it is clear that this is a result-effective variable. As
such, the determination of the optimum or desirable range of
the noise reduction involves nothing more than routine
experimentation.

Ans. 10-11; see also Aller, 220 F.2d at 456. APA discloses that “prior art
motorized roller tube systems (as shown in prior art Figs. 1-3) commonly
generate sound pressure levels exceeding 50 dBA.” App. Br. 21 (citing
Spec., para. [0036]). Azar establishes noise level and sound pressure levels
to be results-effective variables that achieve the recognized result of
Appeal 2010-006073
Application 11/096,784

15
desirable window shade operation. See Azar, col. 7, ll. 21-27 (“quiet
operation is highly desirable for such apparatus used in home and office
applications. . . .”); see also Azar, col. 7, l. 46 – col. 8, l. 36.
Appellant has failed to set forth persuasive arguments or evidence to
establish nonobviousness of the specific claimed noise and sound pressure
levels, such as evidence that a person of ordinary skill in the art would fail to
recognize that noise and sound pressure levels are results-effective variables
or that the specific claimed noise or sound pressure levels resulted in
unexpectedly good results. See Antonie, 559 F.2d at 620. Appellant also
contends that Azar teaches away from the claimed invention because “Azar
states that it is desirable to maintain a high motor speed to achieve high
efficiency of the motor.” App. Br. 23 (citing Azar, col. 7, ll. 16-19).
However, Appellant has not identified any particular disclosure in Azar that
shows that the apparatus of Azar is incapable of being operated at lower
speeds or low sound levels.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claims 4, 7 and 12 would have been
obvious from the combination of APA, Vafaie, and either Lagarde or Azar;
and we sustain the rejection of claims 4, 7, and 12-14 under § 103(a).

Claim 5 under § 103(a) over APA, Vafaie, and Jacobs
Claim 5 depends from claim 1. Appellant argues only that Jacobs
does not remedy the deficiencies of APA and Vafaie. App. Br. 23. Since
we have found no such deficiencies in the combination of APA and Vafaie
as described hereinabove, we sustain the rejection of claim 5 under § 103(a).

Appeal 2010-006073
Application 11/096,784

16
DECISION
The Examiner’s rejection of claims 1-10 and 12-19 is AFFIRMED.
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).

AFFIRMED

Klh