Ex Parte Siegal et al

Patent Trial and Appeal Board

Feb 28, 2017

11734148 (P.T.A.B. Feb. 28, 2017)

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.
11/734,148 04/11/2007 Burton L. Siegal 31071/42661 9478
4743 7590 03/02/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
STRIMBU, GREGORY J
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURTON L. SIEGAL and JOSEPH V. AMBROSE
Appeal 2014-001888
Application 11/734,148
Technology Center 3600
Before JAMES P. CALVE, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Burton L. Siegal and Joseph V. Ambrose (“Appellants”)1 appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—3,
6—8, and 13—15. Appeal Br. 4. Claims 11 and 12 have been withdrawn. Id.
at 12, Claims App. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Joseph V.
Ambrose. Appeal Br. 3.
Appeal 2014-001888
Application 11/734,148
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to a system for moving a load
with a motor assisted by a constant-tension spring. See, e.g., Spec, 2—3,
9-11. Claims 1 and 6, reproduced below, are the only independent claims
and are representative of the subject matter on appeal.
1. An apparatus, comprising:
a load;
a motor having an output shaft; and
a constant tension spring having a first end and a second
end, the first end non-rotatably fixed to the output shaft of the
motor for rotation with the output shaft of the motor, the second
end attached to the load to assist the motor in moving the load.
6. An apparatus comprising:
a base structure;
a panel carried by the base structure for movement
between an open position and a closed position;
a motor carried by the base structure, the motor having an
output shaft;
a constant tension spring having a first end and a second
end, the first end of the spring non-rotatably fixed to the output
shaft of the motor for rotation with the output shaft of the
motor, the second end attached to the panel, the spring biasing
the panel into the open position; and
a control system in communication with the motor to
actuate the motor and rotate the output shaft to move the panel
from the closed position to the open position.
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Application 11/734,148
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kondolf US 3,420,002
Meurer US 5,149,057
Korenaga US 5,518,550
Saint-Jaimes US 7,744,035 B2
REJECTIONS
The following rejections are before us for review:
I. Claims 1,6, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saint-Jaimes and Korenaga. Final
Act. 2—3, 4—5.
II. Claims 2, 3, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saint-Jalmes, Korenaga, and Meurer.
Id. at 3—4, 5.
III. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saint-Jalmes, Korenaga, and Kondolf.
Id. at 5—6.
ANALYSIS
Rejection I— Claims 1, 6, and 13 as unpatentable
over Saint-Jalmes and Korenaga
Claim 1
The Examiner determined that a combination of teachings from Saint-
Jalmes and Korenaga renders obvious the subject matter of claim 1. Final
Act. 2—3. In particular, the Examiner found that Saint-Jalmes discloses most
Jan. 7, 1969
Sept. 22, 1992
May 21, 1996
June 29, 2010
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Appeal 2014-001888
Application 11/734,148
of the structural elements of an apparatus as claimed, specifically a spring
assisted lift mechanism, with the exception of a motor. Id. The Examiner
also found that Korenaga discloses an apparatus that includes a motor in a
spring assisted lift mechanism. Id. at 3. The Examiner concluded that,
given the teachings of the prior art, it would have been obvious to one of
ordinary skill in the art at the time of the invention to include a motor, as
taught by Korenaga, in the apparatus of Saint-Jalmes “to enable the spring
mechanism to open heavy doors or doors that may become stuck due to
environmental reasons.” Id.
Appellants argue that the combination of Saint-Jalmes and Korenaga
does not teach a first end of a spring that is non-rotatably fixed to an output
shaft that is driven by a motor. See Appeal Br. 5—8. Appellants also argue
that “a person having ordinary skill in the art would not have had any
reasonable expectation that [a combination of Saint-Jalmes and Korenaga]
would be successful.” Id. at 8; see id. at 8—9. After careful consideration of
the record before us, Appellants’ arguments do not apprise us of error in the
Examiner’s factual findings from Saint-Jalmes and Korenaga, which are
supported by a preponderance of the evidence, or the Examiner’s reasonable
conclusion of obviousness, which is rationally articulated based on the prior
art teachings. In short, we sustain the rejection based on the reasoned
position set forth therein and in light of the Examiner’s responses to
Appellants’ arguments. See Final Act. 2—3; Ans. 3—6. We address
Appellants’ principal arguments below simply as a matter of emphasis.
Initially, Appellants correctly observe that shaft 30 of Saint-Jalmes is
“fixed” (i.e., does not move) “relative to the baggage compartments Saint-
Jalmes, col. 4,11. 3^4 (emphasis added); see Appeal Br. 5—6. However,
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Appeal 2014-001888
Application 11/734,148
Appellants do not identify—nor do we discern—any disclosure in Saint-
Jalmes to support their contention that such an arrangement means that
shaft 30 somehow “cannot rotate” within brackets 31 that fix the position of
the shaft relative to the baggage compartment. Appeal Br. 6. Saint-Jalmes
discloses that one end of metal band 28 is fixed to shaft 30 so that band 28
coils around shaft 30 as door 2 retracts. See Saint-Jalmes, col. 4,11. 1—10.
Further, even if Appellants’ contention were correct, it attacks a reference
individually, which is insufficient to apprise us of error when the rejection is
predicated upon a combination of prior art teachings. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d413,
425 (CCPA 1981)). Here, Korenaga expressly discloses a motor rotating a
shaft, “around which a constant tension spring ... is wound” (Korenaga,
col. 6,11. 10-11), and Appellants do not explain how the Examiner’s
combination with the shaft being rotated by the motor (lest the motor serve
no purpose) would be beyond the level of ordinary skill in the art. Thus, we
agree with the Examiner’s logical conclusion that “one of ordinary skill in
the art would ensure that the shaft 30 of Saint-Jalmes ... is rotatable when
motorizing the shaft as taught by Korenaga.” Ans. 5.
Moreover, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Appellants have not provided any factual evidence or persuasive
technical reasoning to explain why the combination of teachings applied in
the rejection—namely, enhancing the capability of the spring-only apparatus
of Saint-Jalmes with a known motor technique from Korenaga—would yield
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Application 11/734,148
anything other than a result that would have been predictable to one of
ordinary skill in the art.
We note that any other arguments not specifically addressed in detail
herein have been thoroughly considered by the panel but are not persuasive
for the reasons discussed supra and those well expressed in the Examiner’s
Answer.
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning for the
conclusion of obviousness with respect to claim 1. Accordingly, we sustain
the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Saint-Jalmes and Korenaga.
Claims 6 and 13
With respect to the rejection of these claims, Appellants have not set
forth any other substantive arguments separate from the arguments discussed
supra. See Appeal Br. 9—10. Accordingly, for the same reasons, we
likewise sustain the rejection of claims 6 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Saint-Jalmes and Korenaga.
Rejections II and III— Claims 2, 3, 7, 8, 14, and 15 as unpatentable
over Saint-Jalmes, Korenaga, and either Meurer or Kondolf
With respect to the rejections of these claims, Appellants do not
provide any substantive arguments for Rejections II or III apart from the
arguments discussed supra for claim 1 in Rejection I. See Appeal Br. 10.
Accordingly, for the same reasons, we likewise sustain the rejection of
claims 2,3,1, and 8 under 35 U.S.C. § 103(a) as being unpatentable over
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Application 11/734,148
Saint-Jalmes, Korenaga, and Meurer, and of claims 14 and 15 under
35 U.S.C. § 103(a) as being unpatentable over Saint-Jalmes, Korenaga, and
Kondolf.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 6, and 13
under 35 U.S.C. § 103(a) as being unpatentable over Saint-Jalmes and
Korenaga.
We AFFIRM the Examiner’s decision rejecting claims 2, 3, 7, and 8
under 35 U.S.C. § 103(a) as being unpatentable over Saint-Jalmes,
Korenaga, and Meurer.
We AFFIRM the Examiner’s decision rejecting claims 14 and 15
under 35 U.S.C. § 103(a) as being unpatentable over Saint-Jalmes,
Korenaga, and Kondolf.
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
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