Ex Parte Sambar et al

Patent Trial and Appeal Board

Sep 22, 2016

13297155 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/297, 155 11/15/2011
14991 7590 09/26/2016
Rockwell Automation, Inc./(VHP)
Attention: Linda Kasulke, Patent Dept.
E-7F19
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
Homer S. Sambar
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.
07600.004US1 6632
EXAMINER
JOHNSON, VICKY A
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
raintellectualproperty@ra.rockwell.com
docketing@vhpglobalip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOMERS. SAMBAR, JEFFREY ANNIS,
and BRIAN G. STAEDEN
Appeal2014-008731
Application 13/297,155
Technology Center 3600
Before JOHN C. KERINS, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Homer S. Sambar et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-20. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants submit the real party in interest is Rockwell Automation
Technologies, Inc. Appeal Br. 2.
Appeal2014-008731
Application 13/297,155
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An assembly comprising:
a shaft including an elongate shaft extending from a first
end portion to a second end portion;
the first end portion is adapted to engage with a disconnect
switch;
the second end portion is adapted to engage with a handle
of a handle assembly; and
the shaft including a first structure at a first radial position,
and a second structure at a second radial position of the shaft,
where the first radial position is different than the second
radial position.
REJECTIONS
1) Claims 5, 11, and 13-20 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2) Claims 1-20 are rejected under 35 U.S.C. § 102(b) as anticipated
by Kuratani (US 4,739,300, iss. Apr. 19, 1988).
DISCUSSION
Rejection 1: Claims 5, 11, and 13-20: Indefiniteness
The Examiner rejects claims 5 and 11 under 35 U.S.C. § 112, second
paragraph, as indefinite due to lack of antecedent basis for the recitation of
"the second structure structure." Final Act. 3 . The Examiner also rejects
claim 13 as indefinite "because it is unclear how the first end portion of the
shaft (152) is engaged with the disconnect system and what elements make
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Application 13/297,155
up the disconnect system." Id. Claims 14--20 are subject to this rejection
due to their dependence from claim 13.
Appellants did not contest the rejections of claims 5, 11, and 13-20
under 35 U.S.C. § 112, second paragraph. See Appeal Br. 8. Appellants,
thus, waived any argument of error, and we summarily sustain the rejections
of claims 5, 11, and 13-20. In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir.
2002) (holding that the Board did not err in sustaining a rejection under
35 U.S.C. § 112, second paragraph, when the applicant failed to contest the
rejectiononappeal);Hyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); see also 37 C.F.R. § 41.31(c) ("An appeal, when taken, is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and entered by the
Office."); 37 C.F.R. § 41.39(a)(l) ("An examiner's answer is deemed to
incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken ... unless the examiner's answer expressly
indicates that a ground or rejection has been withdrawn.").
Rejection 2: Claims 1-20: Anticipation by Kuratani
The Examiner finds that Kuratani discloses all the limitations of
claims 1-20. Final Act. 4--5. The Examiner did not make specific findings
with respect to the limitations in claim 1 of "the first end portion adapted to
engage with a disconnect switch" and "the second end portion adapted to
engage with a handle." Id. Rather, the Examiner, relying on MPEP
§ 2111.04, interprets these claim limitations as not limiting the claim scope
to any particular structure. Id.
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Appeal2014-008731
Application 13/297,155
Appellants contend that Kuratani does not disclose "a first end portion
[of the shaft] adapted to engage with a disconnect switch, a second end
portion [of the shaft] adapted to engage with a handle of a handle assembly"
as recited in claims 1 and 7. Appeal Br. 13. Appellants also contend that
Kuratani does not disclose "a disconnect system as recited in claim 13", "a
first end portion [of the shaft] engaged with a disconnect system as recited in
claim 13 ", and "a second end portion [of the shaft] engaged with a handle of
a handle assembly, as recited in claim 13." Id. Appellants also contend that
the Examiner is improperly interpreting the "adapted to" claim recitations in
claim 1 and claim 7 by ignoring the specification. Id. at 14--15.
The Examiner responds with a finding that Kuratani discloses the
limitations in independent claims 1, 7, and 13 concerning the first and
second end portions of the shaft because it "discloses the shaft (4) engages
with the electrical box (13a, 13b) and the handle 1." Ans. 7. For the
following reasons, we do not sustain the rejection.
Kuratani is directed to "rotary type variable resistors and rotary
switches" for audio volume control. Kuratani, col. 1. 7-8, 15-22. Kuratani
discloses that tip portion 22 of shaft 4 is inserted into cam 3. Id. at Fig. 1,
col. 4, 11. 3-16. After insertion of tip portion 25 into cam 3, shaft 4 is rotated
to adjust variable resistor 1 and thereby control audio volume. See id. at col.
1, 11. 15-21, 61---63, col. 2, 11. 19-21. Kuratani discloses that a knob is
located on the end of shaft 4 external to front plate 5. Id. at col. 2, 11. 8-12
("operating parts provided on the operating side 4b of the operating shaft 4
such as a knob"), Fig. 6. Kuratani discloses that elements 13a and 13b are
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Appeal2014-008731
Application 13/297,155
"side plates" that regulate "the distance between substrates Sa and Sb." Id.
at col. 1, 11. 37-38.
The Examiner's finding that Kuratani's shaft 4 engages with an
electrical box 13a and 13b is not supported by Kuratani because these items
are side plates, and not an electrical box as asserted by the Examiner. In
addition the claims recite that the end of the shaft engages a "disconnect
switch" (claims 1 and 7) or "disconnect system" (claim 13), not a side plate
or electrical box. In addition, the Examiner does not direct us to any
disclosure in Kuratani indicating that shaft 4 is engaged with elements 13a
and 13b.
The Examiner's finding that Kuratani's shaft 4 engages with handle 1
is also not supported by Kuratani as element 1 is disclosed as a variable
resistor, not a handle. If the Examiner intended to equate Kuratani's
disclosure of a knob external to variable resistor 1 with a handle and find
that shaft 4 engages with a knob on the end of shaft 4 opposite to cam 3,
such a finding would be inconsistent with the Examiner's findings regarding
Kuratani' s disclosure of the first and second structures on the shaft. In the
Final Rejection, the Examiner finds that Kuratani discloses item 23 as the
first structure and item 22 as the second structure. Final Act. 4; see
Kuratani, Fig. 5. The Examiner also finds that first structure 23 and second
structure 22 engage the handle in connection with claims 2, 3, 8, 9, 11, 19,
and 20. Id. at 4--5; see also Spec. pp. 6-7, Fig. 5. However, Kuratani's
elements 22 and 23 are on the end of shaft 4 that is inserted into cam 3, not
on the end where a knob or the recited handle would be disposed.
For the foregoing reasons, the Examiner's finding that Kuratani
anticipates independent claims 1, 7, and 13 is not supported by a
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Application 13/297,155
preponderance of the evidence. Therefore, we do not sustain the rejection of
claims 1, 7, and 13 under 35 U.S.C. §102(b). Likewise, we do not sustain
the rejection of claims 2---6 that are dependent on claim 1, claims 8-12 which
are dependent on claim 7, and claims 14--20 which are dependent on claim
13.
DECISION
The Examiner's decision rejecting claims 5, 11, and 13-20 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's decision rejecting claims 1-20 under 35 U.S.C.
§ 102(b) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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