Ex parte Okamura

Board of Patent Appeals and Interferences

Feb 23, 2000

08402498 (B.P.A.I. Feb. 23, 2000)

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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TOSHIO OKAMURA
________________
Appeal No. 1999-1063
Application No. 08/402,498
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HEARD: JANUARY 27, 2000
________________
Before STAAB, NASE, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 2 through 7, 11, 15, 16 and 18 through 23.
Appeal No. 1999-1063
Application No. 08/402,498
See Paper No. 9.1
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Claim 17 has been allowed. Claims 10 and 12 through 14, the1
only other claims remaining in the application, are objected
to as being dependent upon a rejected claim, but would be
allowable if rewritten in dependent form including all of the
limitations of the base claim and any intervening claims.
Claims 1, 8 and 9 have been canceled.
We REVERSE and REMAND.
The subject matter on appeal is directed to
an escape device for escaping from a multi-storied
building or other high areas in an emergency
comprising a worm gear mechanism [40] driven by an
electric motor [51], operatively coupled to a reel
[30] having a length of high tensile line [60] wound
around it, a casing [20] enclosing operative
components, and a belt [76] connected to the casing
for supporting a person’s body. (Specification, page
1, reference numerals added)
A copy of the appealed claims is appended to the main
brief (Paper No. 10).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
O’Neil 4,503,933 Mar. 12, 1985
Cox 1,440,919 Jun. 30, 1976
(British published application)
Appeal No. 1999-1063
Application No. 08/402,498
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The following rejections are before us for review:
I) Claims 15, 16, 18 and 19 stand rejected under 35
U.S.C.
§ 102(b) as anticipated by Cox;
II) Claims 2 through 7, 11 and 21 through 23 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Cox; and
III) Claim 20 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cox in view of O’Neil.
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the answer (Paper No. 11, mailed February 10, 1998), while the
complete
statement of appellant's arguments can be found in the main
brief (Paper No. 10, filed September 22, 1997) and the reply
brief (Paper No. 12, filed April 10, 1998).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
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Application No. 08/402,498
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respective positions articulated by the appellant and the
examiner. As a consequence of our review, we conclude that
none of the rejections can be sustained.
Considering first the § 102 rejection of claims 15, 16,
18 and 19 based on Cox, we find that Cox discloses a hoist
having a casing 1, an electric motor 32 within the casing 1, a
shaft 34 driven by the motor 32 and a cable 2 coiled on the
shaft 34 to which is attached a harness (page 1, lines 44-48).
The shaft 34 is rotated by the motor 32 to wind and unwind the
cable through a first drive train comprising gears 36, 38, 40
and 42 (page 2, lines 1-5). Operation of the motor also
causes rotation of a second shaft 58, corresponding to a worm
gear, via a gear train including gears 36, 38, 40, 70, 68 and
66 (page 2, lines 88-91). Rotation of shaft 58 controls the
position of a housing 56 and a switch actuating arm 52. Shaft
58 is designed such that the housing 56 and switch actuating
arm 52 will reach a position to open a switch 50, thus,
shutting off the motor, when the cable is completely unwound
(page 2, lines 100-108).
It is the examiner’s position that the shaft 58 in Cox
corresponds to appellant’s claimed “worm gear mechanism” and
Appeal No. 1999-1063
Application No. 08/402,498
Appellant’s specification at page 6, for example, teaches that “[t]he2
electric motor 51 turns the worm gear 42 which interacts with the worm wheel
teeth 41a to turn the reel 30, feeding the line 60 from the reel.”
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that the shaft 34 in Cox corresponds to the claimed “reel.”
Further, the examiner has determined that the shaft 58 in Cox
is operatively coupled to the shaft 34 such that rotation of
the shaft 58 rotates the shaft 34 to unwind the line.
We cannot support the examiner’s determination. It is
true that when shaft 58 in Cox is rotated by the motor 32,
shaft 34 is also rotated by the motor 32. However, rotation
of the shaft 58 does not cause shaft 34 to rotate as called
for in claim 15. It is axiomatic that, in proceedings before
the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light
of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983). Consistent with the
underlying specification, we interpret the language “said2
worm gear mechanism operatively coupled to said reel such that
said rotation of the worm gear mechanism rotates the reel to
Appeal No. 1999-1063
Application No. 08/402,498
On page 5 of the answer, the examiner refers to a non-applied patent3
to Frankel as supporting his obviousness position. For the reasons set forth
in the case of In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970), this is entirely inappropriate. Accordingly, we have not
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unwind the line” in claim 15 to require the worm gear
mechanism to be in the drive or power train connecting the
motor to the reel such that rotation of the worm gear
mechanism causes the reel to rotate. This is clearly not the
case in Cox which teaches a shaft 58 rotated by a motor 32
through a gear train comprising gears 36, 38, 40, 70, 68 and
66 and a shaft 34 rotated by a motor 32 through a gear train
comprising gears 36, 38, 40 and 42. Shaft 58 is not
“operatively coupled” to the shaft 34 such that rotation of
the shaft 58 “rotates” the shaft 34.
Accordingly, the standing § 102 rejection of claim 15,
and of claims 16, 18 and 19 dependent on claim 15, cannot be
sustained.
Turning next to the § 103 rejection of claims 2 through
7, 11 and 21 through 23 based on Cox, alone, we note that3
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Application No. 08/402,498
considered the Frankel patent or the examiner's comments with respect thereto
in reaching our decision on the standing § 103 rejection based on Cox.
However, we are remanding this application for the examiner to determine if
the claimed subject matter is patentable over the combined teachings of
Frankel and other prior art, e.g., Cox.
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claims 2 through 7, 11, 21 and 23 are dependent directly or
indirectly on claim 15 and, thus, contain the limitation found
lacking, supra, in Cox. At pages 4 and 5 of the answer, the
examiner states the position that
[t]he specific arrangement of the components of the
reel (plate, sleeve, etc.) as well as other
mechanical parts (such as a bearing as claimed and
worm wheel teeth) are considered to be an obvious
choice of design to the person having ordinary skill
in the art, as a matter of mechanical and/or
functional expedient and would be [sic, have been]
obvious as such.
We do not agree. We are informed by appellant’s
specification (page 4) that “a worm gear mechanism which has a
large speed reduction ratio is used, requiring a less powerful
electric motor, thereby allowing the electric motor and
battery to be smaller.” In addition, the appellant’s
invention is described as more portable and economical than
prior art escape devices (specification, page 2). Thus,
according to appellant’s specification, the claimed apparatus
does solve a number of known problems in the art. Compare In
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Application No. 08/402,498
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re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975) wherein
the court indicated that the rationale of "obvious matter of
design choice" applies when a modification is made which
"solves no stated problem.” Therefore, we do not agree that,
based on Cox alone, it would have been an obvious matter of
design to replace the gear train
comprising gears 36, 38, 40 and 42, operably coupling the
motor 32 to the shaft 34, with a worm gear mechanism.
From our perspective, the examiner has impermissibly
relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. This being the case, we will not
sustain the rejection of claims 2 through 7, 11, 21 and 23
under 35 U.S.C.
§ 103 based on Cox alone.
Claim 22, the only other independent claim, calls for a
reel supported by a casing, a plurality of worm wheel teeth
arranged proximate an outer circumferential edge of the reel,
a worm gear operatively engaged with the worm wheel teeth, and
an electric driving means operatively coupled to the worm gear
for effecting a rotation of the worm gear, the rotation of the
worm gear rotating the reel to unwind the line. The rationale
Appeal No. 1999-1063
Application No. 08/402,498
U.S. Patent No. 2,721,685 to Frankel was cited by the examiner as4
being pertinent to applicant’s disclosure in the Office action mailed July 5,
1996 (Paper No. 2).
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expressed above with regard to claims 2 through 7, 11, 21 and
23 leads us to a like conclusion, that is, the teachings of
Cox fail to establish a prima facie case of obviousness with
regard to claim 22, and the rejection of that claim cannot be
sustained.
Finally, we will also not sustain the standing § 103
rejection of claim 20 based on Cox and O’Neil. Even assuming
that it would have been obvious, in view of O’Neil to provide
Cox’s hoist with a support member comprising a pair of short
pants attached to a belt as recited in claim 20, the rejected
claim would still distinguish over the prior art applied in
that it would not have been obvious to replace the gear train
comprising gears 36, 38, 40 and 42, operably coupling the
motor 32 to the shaft 34, with a worm gear mechanism, as
discussed above.
REMAND TO THE EXAMINER
Frankel discloses a fire escape device having: a housing4
or casing 10a; straps 28 and 29 and a body belt 30 coupled to
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Application No. 08/402,498
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the housing for supporting a user; a drum or reel 13 mounted
on shaft 14 which is supported by the housing; a cable or line
10 wound on the drum; a worm gear 19 mounted on shaft 14; a
worm shaft 20 which may be moved into engagement with worm
gear 19 when the weight of a user is supported by the straps
28 and 29 and body belt 30; and a wheel 23 and crank 24
mounted on worm shaft 20 such that when the shaft 20 is
engaged with worm gear 19 “the drum 13 may be turned to unwind
the cable 10, by manually turning the wheel 23 with the aid of
the crank handle 24” (col. 2, lines 28-30). Frankel
specifically teaches that
[t]he type of gear teeth used will determine the
effort required to turn the drum and to lower the
person supported by the body harness. A gear ratio
may be provided which will use the worm shaft as a
resistance to quick descent, and which will slowly
turn the worm shaft, and a gearing may be used which
will lock the drum against turning except when the
worm shaft is manually turned. (Col. 2, lines 30-37)
Accordingly, we remand this application to the examiner
to consider the patentability of the claimed subject matter in
view of the patent to Frankel in combination with other prior
art, e.g., Cox which teaches a shaft 34 rotated by an electric
motor 32 to wind and unwind a cable through a first drive
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Application No. 08/402,498
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train.
In summary, all of the examiner's rejections are
reversed.
Additionally, we have remanded the application to the
examiner for consideration of issues relating to additional
prior art.
REVERSED AND REMANDED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1999-1063
Application No. 08/402,498
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)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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