Ex Parte Rosheim

Patent Trial and Appeal Board

May 19, 2016

12583022 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/583,022 08/13/2009
164 7590 05/23/2016
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
FIRST NAMED INVENTOR
Mark E. Rosheim
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.
Rl93.12-0024 1197
EXAMINER
PRATHER, GREGORY T
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
uspatdocket@kinney.com
smkomarec@kinney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK E. ROSHEIM
Appeal2014-004648
Application 12/583,022 1
Technology Center 3600
Before JENNIFER D. BAHR, BEYERL Y M. BUNTING, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark E. Rosheim (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-16. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to the Appellant, the real party in interest is Ross-Hime
Designs, Inc. App. Br. 2.
Appeal2014-004648
Application 12/583,022
SUMMARY OF INVENTION
The Appellant's invention is directed to "a controlled relative motion
system permitting a controlled motion member, joined to a base member, to
selectively move with respect to the base member." Spec. i-f 6. Claim 1 is
the sole independent claim. Claim 1, reproduced below from pages 12-13
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A controlled relative motion system permitting a
controlled motion member, joined to a base member, to
selectively move with respect to said base member, said system
compnsmg:
a base support substantially extending along a base plane,
an output structure,
a fork arc structure having a pair of arc output ends, each
at an end of a corresponding one of a pair of arc arms,
positioned across from one another with said output structure
rotatably connected on opposite sides thereof to a
corresponding one of said pair of arc arms adjacent said arc
output end thereof so as to be rotatable about an output
structure rotation axis intersecting each of said pair of arc arms
adjacent said arc output end thereof,
a fork arc structure rotary support to which each
remaining base end of said pair of arc arms, opposite said arc
output end thereof, is joined, said fork arc structure support
being rotatably connected to said base support so that said fork
arc structure is rotatable about a fork axis extending
substantially perpendicular to an arc structure plane that
includes said output structure rotation axis and intersecting said
base plane at a selected suspension angle,
an output structure force imparting means having an
output structure stator portion connected to a selected one of
said output structure and a operating one of said pair of arc
arms, and further having a rotor portion, selectively rotatable
with respect to said output structure stator portion thereof,
connected to that one remaining of said output structure and
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Application 12/583,022
said operating one of said pair of arc arms, and
a fork arc structure force imparting means having a fork
arc structure stator portion connected to a selected one of said
base support and said fork arc structure, and further having a
rotor portion, selectively rotatable with respect to said fork arc
structure stator portion thereof, connected to that one remaining
of said base support and said fork arc structure.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Vold2
Yi
Kataoka
Umeda
us 4,975,856
US 2005/0177054 Al
US 2008/0073987 Al
US 2008/0169891 Al
Dec. 4, 1990
Aug. 11, 2005
Mar. 27, 2008
July 17, 2008
Torque Motor, Sectional, Limited Rotation AS-912-001. Specification
Drawing [ online]. Moog components group, 27 July 2004 (hereinafter
"l\ ,r ~ ~ ~"\
lYlUUt:, )
REJECTIONS
Claims 1, 4, 5, 8-10, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yi in view of Vold.
Claims 2, 3, 7, 12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yi in view of Vold and Umeda.
Claims 6 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yi in view of Vold and Kataoka.
2 We note that both the Examiner and the Appellant incorrectly refer to this
reference as "Void."
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Application 12/583,022
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yi in view of Vold and Moog.
ANALYSIS
Claims 1, 4, 5, 8-10, and 16
Regarding independent claim 1, the Examiner finds that Yi discloses
the invention substantially as claimed, including a fork arc structure rotary
support that is rotatably connected to a base support and a fork arc structure
force imparting means having either a stator portion thereof or a rotor
portion thereof connected to the base support. Final Act. 2-3 (citing Yi,
i-fi-173, 81; Figs. 1, 4). Additionally, the Examiner finds that the Yi fork arc
structure support and fork arc structure force imparting means are connected
to the base via linkages and joints. Id. at 11.
The Examiner further finds that "Yi does not expressly disclose a
system compnsmg: a fork arc axis intersecting said base plane at a selected
suspension angle." Id. at 3. To cure this deficiency, the Examiner turns to
the teachings of Vold. The Examiner finds that Vold discloses "a fork arc
axis intersecting said base plane at a selected suspension angle," and
concludes that it would have been obvious to a skilled artisan "to modify the
device of Yi such that there is a fork arc axis intersecting said base plane at a
selected suspension angle, as taught by Void [sic], for the purpose of
creating a convenient center of motion." Id. (citing Vold col. 20, 1. 66-col.
21, 1. 17; Fig. 9).
The Appellant argues that the proposed combination of Yi in view of
Vold
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Application 12/583,022
does not disclose or suggest a "fork arc structure support being
rotatably connected to said base support" and "a fork arc
structure force imparting means having a fork arc structure
stator portion connected to a selected one of the base support
and said fork arc structure, and further having a rotor portion
... connected to that one remaining of said base support and
said fork arc structure."
App. Br. 6-7. The Appellant elaborates that "the motor/servo 19 in Yi that
serves as the fork arc structure force imparting means in Yi is not connected
to the base 2 but is connected between the fork arc 13 and a linkage 11 at the
rotational joint 14" and "there are a plurality of intervening linkages and
rotational joints between the fork arc structure and the base support in the
Yi structure." Id. 8-9 (emphasis added). The Appellant further argues that
it is not obvious to combine Void [sic] with Yi because Yi
teaches a structure having six rotational joints and several
linkages between the base and the fork arc structure.
Combining Void [sic] with Yi to make the fork arc axis in Yi
intersect the base plane at a selected suspension angle would
require tlze elirrzirzatiorz of at least five of tlzese six rotatiorzal
joints since these joints would rotate the fork arc axis such that
it would not intersect the base plane at a selected suspension
angle.
Id. at 9 (emphasis added).
The Examiner responds that "the claim language does not preclude
intervening structure such as linkages and rotational joints between the fork
arc structure and the base support." Ans. 11. The Examiner asserts that "Yi
is capable of being manipulated so that the fork arc axis intersects the base
plane at a selected suspension angle," and "the claim does not require the
device [to] be incapable of the fork arc axis no [sic] intersecting the base
plane, only [that] it be capable of performing the function of the fork arc axis
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Appeal2014-004648
Application 12/583,022
intersecting the base plane at a selected suspension angle, of which Yi is
clearly capable." Id.
The Appellant's first argument turns on the definition of "connected
to"; the Appellant contends that this term requires a direct connection
between the subject components, while the Examiner interprets the term to
allow for intervening parts between the subject components. The
Appellant's argument is not convincing.
It is well settled that the United States Patent and Trademark Office
(USPTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
found in the specification. In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) ("[W]e look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation."). See also Superguide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. . . . [A] particular embodiment appearing in the written description
may not be read into a claim when the claim language is broader than the
embodiment.")
As the Examiner points out, the term "connected to" allows for
intermediate components between the recited elements; that is, the term
allows for direct or indirect connection. Ans. 11. See Douglas Dynamics
LLC v. Buyers Prods. Co., 717 F.3d 1336, 1342 (Fed. Cir. 2013) ("The
ordinary meaning of 'connected to' encompasses indirect linkages.") The
Appellant does not direct us to, nor do we find any indication in the
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Specification that the claim term "connected to" was used outside of its
ordinary meaning. If a divergent specialized usage were intended, such a
meaning was required to be clearly explained in the Specification. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
("[A] patentee may choose to be his own lexicographer and use terms in a
manner other than their ordinary meaning, as long as the special definition of
the term is clearly stated in the patent specification or file history.").
We are also unpersuaded by the Appellant's second argument, namely
that the proposed combination of Yi and Vold is improper because Yi
teaches a structure having six rotational joints and several linkages between
the base and the fork arc structure." App. Br. 9. The term "connected to"
includes indirect connection, so the proposed combination would not require
the elimination of any Yi components. As noted by the Examiner, the Yi
fork arc is rotatable about an axis intersecting the base plane. See Ans. 11-
12. Moreover, the Appellant's arguments do not apprise us of error in the
Examiner's reason to combine the teachings of Yi and Vold, which is
expressly articulated and supported by rational underpinnings. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1. The Appellant does not make any other
substantive argument regarding the rejection of dependent claims 4, 5, 8-10,
and 16. See App. Br. 10. Therefore, we likewise sustain the rejection of
dependent claims 4, 5, 8-10, and 16.
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Application 12/583,022
Claims 2, 3, 7, 12, and 15
With respect to the rejection of dependent claims 2, 3, 7, 12, and 15,
the Appellant expressly relies on arguments advanced with respect to the
Examiner's combination of Yi and Vold discussed supra. App. Br. 10. For
the reasons stated supra, the Appellant's arguments do not apprise us of
error in the Examiner's conclusion, and the rejection of claims 2, 3, 7, 12,
and 15 is therefore sustained.
Claims 6 and 11
With respect to the rejection of dependent claims 6 and 11, the
Appellant expressly relies on arguments advanced with respect to the
Examiner's combination of Yi and Vold discussed supra. App. Br. 10. For
the reasons stated supra, the Appellant's arguments do not apprise us of
error in the Examiner's conclusion, and the rejection of claims 6 and 11 is
therefore sustained.
Claims 13 and 14
With respect to the rejection of dependent claims 13 and 14, the
Appellant expressly relies on arguments advanced with respect to the
Examiner's combination of Yi and Vold discussed supra. App. Br. 10. For
the reasons stated supra, the Appellant's arguments do not apprise us of
error in the Examiner's conclusion, and the rejection of claims 13 and 14 is
therefore sustained.
DECISION
The Examiner's decision to reject claims 1-16 is sustained.
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Application 12/583,022
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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