Ex Parte Petruska et al

Patent Trial and Appeal Board

Sep 7, 2018

14436679 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/436,679 04/17/2015
20551 7590 09/11/2018
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
FIRST NAMED INVENTOR
Andrew J Petruska
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
00846-U5394.PCT.US 4935
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
09/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@tnw.com
rich@tnw.com
annette.fields@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. PETRUSKA and JACOB J. ABBOTT
Appeal2017-011159
Application 14/436,679
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 6-9, 11, 12, 15, 16, 18, 19, and 31-37. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In this Decision, we refer to the Specification filed April 17, 2015
("Spec."), Final Office Action dated August 4, 2016 ("Final Act."), the
Appeal Brief filed January 4, 2017 ("Appeal Br."), the Examiner's Answer
dated June 5, 2017 ("Ans."), and the Reply Brief filed August 7, 2017
("Reply Br.").
2 Appellants identify the real parties in interest as University of Utah, and its
wholly owned subsidiary University of Utah Research Foundation. Appeal
Br. 3.
Appeal2017-011159
Application 14/436,679
The subject matter of the claims on appeal relates to an
omnidirectional electromagnet. Spec. 2, 1. 1 7. Claim 1, reproduced below
from the Claims Appendix of the Appeal Brief, with formatting added, is
illustrative of the claims on appeal.
1. An omnidirectional electromagnet, comprising:
a ferromagnetic core which is configured as a spheroid;
and
three orthogonal solenoids disposed about the core, each
solenoid adapted to receive a current from a current source to
control an orientation and a magnitude of a magnetic field
generated by the omnidirectional electromagnet,
wherein a variance between dipole moments of
each solenoid is minimized when current density of each
solenoid is equal, and such that a diameter of the
ferromagnetic core is between 40% and 75% of a maximum
outer length of an outermost solenoid of the three orthogonal
solenoids.
Appeal Br. 21 (Claims App.) (emphasis added to highlight key disputed
limitations).
DISCUSSION
The Examiner maintains the rejection of claims 1, 6, 8, 9, 11, 12, 15,
16, 18, 19, and 31-37 under 35 U.S.C. § 103 as unpatentable over Kawano
et al. (US 2011/0009697 Al, published January 13, 2011) ("Kawano").
Final Act. 3; Ans. 3.
The Examiner finds that Kawano teaches an omnidirectional
electromagnet that meets all of claim 1 's limitations except for the
limitations "a ferromagnetic core which is configured as a spheroid," "a
variance between dipole moments of each solenoid is minimized when
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current density of each solenoid is equal," and "a diameter of the
ferromagnetic core is between 40% and 7 5% of a maximum outer length of
an outermost solenoid of the three orthogonal solenoids." Id.
With regard to the ferromagnetic core shape, the Examiner determines
that it would have been obvious to one of ordinary skill in the art to modify
Kawano' s electromagnet to include a spheroid core instead of a cube shaped
core because "choosing an optimal shape configuration of a known structure
is an obvious matter of design choice." Final Act. 4 ( citing In re Dailey, 357
F.2d 669 (CCPA 1966)). To support this obviousness determination, the
Examiner points to page 6, lines 5-27 of Appellants' Specification
discussing that many shapes can be used for the ferromagnetic core of its
electromagnet, including a cube or spheroid. Final Act. 4.
As to the core diameter, the Examiner determines that it would have
been obvious to one of ordinary skill in the art to determine the size of the
core within the claimed range because "it has been held that where the
general conditions of a claim are disclosed in the prior art, discovering the
optimum or workable ranges involves only routine skill in the art." Id.
( citing In re Aller, 220 F .2d 454, 456 (CCP A 1955). In addition, the
Examiner points to page 14, lines 5-16 of Appellants' Specification as
evidence that the core diameter range is a design optimization. Final Act. 4.
Based on this disclosure, the Examiner determines that "[ o ]ne of ordinary
skill in the art would have found it obvious to optimize the dimensions of the
prior art structure to achieve the claimed size ratios based on a design
criteria." Id.
Appellants argue that the Examiner's obviousness rejection is
improper because Kawano fails to teach or suggest an omnidirectional
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Application 14/436,679
electromagnet having "a ferromagnetic core configured as a spheroid,"
wherein "a diameter of the ferromagnetic core is between 40% and 75% of a
maximum outer length of an outermost solenoid of the three orthogonal
solenoids," as set forth in the claims. Appeal Br. 19. We agree.
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Aside from
Kawano's Figure 8, the Examiner has not identified any further disclosure in
Kawano regarding the shape of its magnet core. See Appeal Br. 1 7. Thus,
even if the core shape of a magnet is known to affect magnetization, on this
record, the Examiner has failed to identify any disclosure in Kawano or
provide sufficient technical reason, absent hindsight, why a person of
ordinary skill would have changed the shape of Kawano' s core from a cube
to a spheroid. See id.
Additionally, the Examiner has failed to provide adequate factual
support for the determination that "[ o ]ne of ordinary skill in the art would
have found it obvious to optimize the dimensions of [Kawano' s] structure to
achieve the claimed size ratios based on design criteria." Final Act. 4; see
Appeal Br. 18. A particular parameter must first be recognized as a result
effective variable, i.e., a variable which achieves a recognized result, before
the determination of the optimum or workable ranges of said variable might
be characterized as routine experimentation. In re Antonie, 559 F .2d 618,
620 (CCPA 1977). On this record, the Examiner has not directed us to any
disclosure in Kawano regarding core/solenoid size ratio or a relationship
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between core/solenoid size ratio and perfonnance (e.g., dipole moment
strength) of its magnetic field generating coil.
In the Answer, the Examiner finds that "although not shown to a
specific scale[,]" Kawano's Figure 8 "shows a core/solenoid size ratio that
appears to fall within the claimed range." Ans. 4. The Examiner's findings
are not supported by factual evidence, but instead are based on speculation.
Our reviewing court has held that "it is well established that patent drawings
do not define the precise proportions of the elements and may not be relied
on to show particular sizes if the specification is completely silent on the
issue." Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951,
956 (Fed. Cir. 2000). Because Kawano does not indicate that its drawings
are to scale and the Examiner has not identified any disclosure in Kawano
regarding any dimensions for the core or solenoids in Figure 8, the Examiner
has not established that Kawano's Figure 8 teaches a core/solenoid size ratio
that falls within the claimed range.
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Further, a rejection based
on § 103 must rest upon a factual basis rather than speculation. "Where the
legal conclusion [ of obviousness] is not supported by facts it cannot stand."
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Because, as discussed
above, the § 103 rejection is not adequately supported by factual evidence,
the Examiner has not met the initial burden of setting forth a prima facie
case of obviousness over Kawano.
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DECISION
The rejection of claims 1, 6-9, 11, 12, 15, 16, 18, 19, and 31-37 is
reversed.
REVERSED
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