Ex Parte Setbacken et al

Patent Trial and Appeal Board

Oct 3, 2012

11961864 (P.T.A.B. Oct. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/961,864 12/20/2007 Robert M. SETBACKEN 10901/175 7035
26646 7590 10/03/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
LUU, THANH X
ART UNIT PAPER NUMBER
2878
MAIL DATE DELIVERY MODE
10/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT M. SETBACKEN, GARY RHODES,
ESTEBAN CORTINA, and TONY CEPEDA
____________

Appeal 2010-004887
Application 11/961,864
Technology Center 2800
____________

Before THOMAS S. HAHN, BRUCE R. WINSOR,
and JOHN A. EVANS, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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Application 11/961,864

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STATEMENT OF THE CASE
Appellants’ “invention relates [to] an encoder, e.g., a rotary encoder,
having an overmolded cover.” (Spec. 1:2-3). Claim 1, which is illustrative
of the invention, reads as follows:
1. An encoder, comprising:
a rotor including a shaft and a code disk attached to the
shaft;
a stator including a scanning unit configured to generate
an electrical signal corresponding to an angular position of the
code disk;
a cable configured to transmit the electrical signal; and
a cover overmolded onto the stator and the cable;
wherein the scanning unit is sealed from an outer
environment by the cover and the cable is strain relieved by the
cover.
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Thaler (US 2002/0000512 A1; Jan. 3, 2002) and Bender (US
2007/0210675 A1; Sept. 13, 2007). (Ans. 3-4).
Rather than repeat the arguments here, we refer to the Briefs for the
positions of Appellants and the Final Rejection and Answer for the positions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).

ISSUES
Except as to issues specifically identified below, Appellants’
contentions are directed to the rejection of claims 1-22 collectively.
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Therefore, we discuss the rejections by reference to claim 1, except as to the
issues raised that apply to specific claims. The issues raised by Appellants’
contentions are as follows:
Is Bender’s brushless electric motor analogous art to Appellants’ and
Thaler’s rotary encoders?
Does Thaler teach away from combination with Bender because the
combination of Thaler with Bender articulated by the Examiner would
render Thaler’s rotary encoder unsuitable or inoperative for its intended
purpose?
Has the Examiner set forth some articulated reasoning with some
rational underpinning to support the combination of Thaler and Bender?
Has the Examiner erred in taking Official Notice of masking during
an overmolding process being notoriously well known in rejecting claims 8
and 19?
Has the Examiner articulated a prima facie case of the obviousness of
claim 3, which recites “[a] cover [that] contacts and insulates an electrical
lead of an integrated circuit of [a] scanning unit”?
Has the Examiner articulated a prima facie case of the obviousness of
claim 9, which recites “[a] cover overmolded onto . . . connectors to prevent
uncoupling of the connectors”?
Has the Examiner articulated a prima facie case of the obviousness of
claim 18, which recites “[a] cover is formed of an elastomer”?

ANALYSIS
We note as an initial matter that in the Answer the Examiner has
supplemented the grounds of rejection articulated in the Final Rejection
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(compare Ans. 3 with Final Rej. 2). The Examiner did not designate the
supplemental verbiage as new grounds of rejection, nor did Appellants
petition to have new grounds designated. See MPEP § 1207.03 (IV) (8th
ed., Rev. 3, Aug. 2005). Accordingly, we treat the supplemental verbiage
(Ans. 3), together with the portion of the Answer designated “Response to
Argument” (Ans. 4-6), as explanatory comments in response to Appellants’
arguments.
CLAIM 1
Analogous Art
Appellants implicitly contend (see App. Br. 4) that Bender’s electric
motor is not analogous art to Appellants’ and Thayer’s rotary encoders. The
Examiner responds that “the structure of a motor and encoder are analogous
as they both include a rotor, an axis of rotation and a stator. Therefore, one
of ordinary skill in the art would also look to motors in addition to the
encoder art.” (Ans. 4). We agree with the Examiner.
“Two separate tests define the scope of analogous prior art: (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 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)). Appellants have not presented any
persuasive argument or evidence that electric motors are not in the same
field of endeavor as rotary encoders or reasonably pertinent to the problems
addressed by Appellants’ invention.
Inoperability
Appellants contend as follows:
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To overmold [Thaler’s] cover 40 or housing 30 with the cable
80 and a stator would negate the ability to access the strain-
relief device, would negate the ability to connect and change
the connection cable 80, and would negate the ability to insure
an easy connection of the shaft 1. In other words, the proposed
modification would render the device described by Thaler et al.
entirely unsatisfactory or inoperable for its intended purpose.
Accordingly, the combination of Thaler et al. and Bender is
insufficient to render unpatentable the present claims. In re
Gordon, 733 F.2d 900, 221 U.S.P.Q. 1125 (Fed. Cir. 1984). In
effect, Thaler et al. teaches away from the proposed
modification. Id.
(App. Br. 5; see also Reply Br. 2-3).
As pointed out by the Examiner (Ans. 5), overmolding the cover as
taught by Bender would not render Thaler’s rotary encoder inoperative, even
if it did reduce accessibility to internal parts (id.). The prior art in Gordon
was a filter designed to remove undesired dirt and water from gasoline and
other light oils with the assistance of gravity. The prior art filter had top
fluid inlet and outlet, collected dirt and water at the bottom of the filter
housing , and had a bottom pet-cock to draw off the collected dirt and water.
Gordon, 733 F.2d at 901-02. The court found that it would change the
principle of operation of the prior art filter to invert the filter so that the inlet
and outlet were at the bottom and the pet-cock was at the top because inter
alia the gasoline to be filtered would be trapped at the top of the filter and
the water to be removed would flow freely out the outlet, rendering the filter
completely inoperable and unsuitable for filtering gasoline and other light
oils, its intended purpose. Id. at 902.
Such is not the case here. The intended purpose of Thaler’s rotary
encoder is to measure the rotational movement of a rotatable body (Thaler, ¶
[0004]). Appellants do not contend that combining Bender’s overmolding
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technique with Thaler’s rotary encoder would render the rotary encoder
inoperable or unsuitable for measuring the rotational movement of a
rotatable body. (See generally App. Br. 4-5; Reply Br. 2-3). Rather,
Appellants contend the combination would negate certain aspects of
accessibility to the internal parts of Thaler’s rotary encoder. (Id.). However,
the Examiner explains that “it is well known . . . that there are advantages
and disadvantages in an engineering design. . . . Such trade-offs are known,
[and] would have been obvious and yield a predictable result to one of
ordinary skill in the art.” (Ans. 5).
We agree with the Examiner. Our reviewing court has said that “a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.” Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that
the motivating benefit comes at the expense of another benefit . . . should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Appellants have not persuaded us that the combination of Bender with
Thaler would render Thaler inoperative or unsuitable for its intended
purpose and have, therefore, not persuaded us that Thaler teaches away from
the combination.
Reason to Combine
Appellants contend (App. Br. 5-6) that the Examiner has failed to set
forth some articulated reasoning with some rational underpinning to support
the combination of Thaler and Bender, as required by KSR Int’l Co. v.
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Teleflex Inc., 550 U.S. 398, 418 (2007) . In particular Appellants contend
the Examiner erred by failing to identify which of the various obviousness
rationales set forth in KSR was employed by the Examiner, and to make the
necessary findings.
The Examiner finds that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to provide
overmolding in the apparatus and method of Thaler et al. in view of Bender
to obtain a simpler, integral, more exact and uniform cover as taught.” (Ans.
3). The Examiner then identifies paragraphs [0003] and [0028] of Bender in
support of the reason to combine. (Id.; see also Ans. 5). For example,
Bender teaches that “[a] strain-release boss 48 is molded integrally with
encasement 40” (Bender, ¶ [0028] (emphasis added)) and that “[t]he over-
molded encasement 40 can be fabricated exactly and repeatedly by a
precision mold (id. (emphases added)). We conclude that the Examiner has
articulated a motivation to combine found in the references themselves, see
KSR, 550 U.S. at 418-19, and has, therefore, set forth articulated reasoning
with rational underpinning to support the combination of Thaler and Bender,
see id. at 418.
Additionally, the Examiner explains that “the advantages of
overmolding are predictable and do not yield any unpredictable results.”
(Ans. 5). In other words, the combination of Thaler and Bender renders
claim 1 obvious because it is no more than “[a] combination of familiar
elements according to known methods [that] . . . does no more than yield
predictable results,” KSR, 550 U.S. at 416.
Appellants have not made any persuasive arguments that contradict
either of the obviousness rationales articulated by the Examiner.
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Accordingly, we are not persuaded that the Examiner has failed to articulate
sufficient rationale for combining Thaler and Bender.
Summary
Appellants have not persuaded us of error in the Examiner’s rejection
of claim 1. We will, therefore, sustain the rejection of claim 1 and claims 2,
5-7, 10-17, and 20-22, which were not separately argued with particularity.
CLAIMS 8 AND 19
The Examiner finds, with regard to claims 8 and 19, that “masking
parts before an overmolding process is notoriously well known.” (Ans. 3;
see also Final Rej. 2). In addition to the arguments presented for claims 1-
22 collectively, discussed supra, Appellants contend as follows:
Regarding the assertion of “notoriously well known”
facts at page 2 of the Final Office Action, Appellants traversed,
in the Reply, any and all assertions of well known fact and
requested that the Examiner provide published information
and/or an affidavit under 37 C.F.R. § 1.104(d)(2). To date, the
Examiner has not provided any published information or an
affidavit in this regard.
(App. Br. 6).
The Examiner responds as follows:
Regarding Appellant[s’] request (pg 6 of Brief) for
support of the Examiner’s use of official notice, Examiner notes
that Appellant[s] do[] not point out with specificity why
Appellant[s] think[] such facts are not well known.
Furthermore, Appellant[s] did not traverse the official notice
until after prosecution was closed, after the final rejection.
Thereafter, Appellant[s] filed the Appeal Brief. Thus,
Examiner had no chance to cite art in rebuttal.
(Ans. 5-6).
Appellants assert that the Examiner used the term “Official Notice”
for the first time in the Answer, and contest the Examiner’s statement that
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“‘it is well known in that there are advantages and disadvantages in an
engineering design.’” (Reply Br. 4 (quoting Ans. 5)). Appellants do not
otherwise dispute the Examiner’s statement. (See generally Reply Br. 4-5).
Appellants’ assertion regarding the Examiner’s statement regarding
“engineering design” is discussed supra with regard to claim 1.
Despite the lack of the term “Official Notice” in the grounds of
rejection, we conclude the Examiner’s finding that masking was
“notoriously well known” gave Appellants notice that the Examiner was
taking Official Notice. We note that the Examiner made substantially the
same finding at page 2 of a Non-Final Rejection mailed November 12, 2008.
In the Remarks section at pages 5-7 of Appellants’ responding Amendment
filed February 6, 2009, Appellants did not traverse or otherwise comment on
the Examiner’s finding.
We conclude that the thrust of Appellants’ contentions regarding
claims 8 and 19 and the propriety of the Examiner taking “Official Notice”
goes to whether or not the Final Rejection was premature. The contentions
are, therefore, directed to matters that should have been raised during
prosecution or by a timely filed petition. See MPEP § 1002 (8th ed., Rev. 2,
May 2004). We will, therefore, sustain the rejection of claims 8 and 19.
CLAIM 3
Appellants contend that the Examiner has failed to make any findings
with regard to claim 3, which recites “[a] cover [that] contacts and insulates
an electrical lead of an integrated circuit of [a] scanning unit.” (App. Br. 6).
The Examiner explains, for the first time in the Answer, that “[o]nce
overmolded, the cover would insulate an integrated circuit (7) . . . .” (Ans.
3). We note that the Examiner’s explanation does not address all of the
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limitations of the claim, e.g., that the “cover contacts and insulates an
electrical lead” (emphases added). We conclude that such a conclusory
statement, presented for the first time in the Answer, that does not take into
account all of the limitations of the claim, and identifies no support in the
record, does not establish a prima facie case of obviousness. Accordingly,
Appellants have persuaded us of error in the rejection of claim 3, and we
will not sustain the rejection of claim 3 or of claim 4, which depends from
claim 3.
CLAIM 9
Appellants contend that the Examiner has failed to make any findings
with regard to claim 9, which recites “[a] cover overmolded onto . . .
connectors to prevent uncoupling of the connectors.” (App. Br. 6). The
Examiner explains, for the first time in the Answer, that “[o]nce
overmolded, the cover would . . . prevent uncoupling of a connector (8).”
(Ans. 3). We note that the Examiner’s explanation does not address all of
the limitations of the claim, e.g., that the “cover [is] overmolded onto the
connectors” (emphasis added). We conclude that such a conclusory
statement, presented for the first time in the Answer, that does not take into
account all of the limitations of the claim, and identifies no support in the
record, does not establish a prima facie case of obviousness. Accordingly,
Appellants have persuaded us of error in the rejection of claim 9, and we
will not sustain the rejection of claim 9.
CLAIM 18
Appellants contend that the Examiner has failed to make any findings
with regard to claim 18, which recites “[a] cover is formed of an elastomer.”
(App. Br. 6). The Examiner explains, for the first time in the Answer, that
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“Bender further teaches ([0008]) an elastomer material (polyester resin).”
(Ans. 3). Although presented for the first time in the Answer, Appellants
have not contested the Examiner’s finding from Bender or the substance of
the explanation. (See generally Reply Br.). Furthermore, the Examiner’s
explanation addresses the recited limitations and is reasonable and supported
by the record (see Bender, ¶ [0008]).
Accordingly, Appellants have failed to persuade us of error in the
rejection of claim 18, and we will sustain the rejection.

ORDER
The decision of the Examiner to reject claims 1, 2, 5-8, and 10-22 is
affirmed.
The decision of the Examiner to reject claims 3, 4, and 9 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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