Ex Parte Sullivan

Patent Trial and Appeal Board

Feb 28, 2018

11924653 (P.T.A.B. Feb. 28, 2018)

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.
11/924,653 10/26/2007 Steven SULLIVAN 7013-114 1629
84649 7590 03/02/2018
Symbus Law Group, LLC
Cliff Hyra
11710 Plaza America Drive
Suite 2000
Reston, VA 20190
EXAMINER
KING, BRADLEY T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
docketing @ sy mbu s. com
chyra @ symbus .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN SULLIVAN
Appeal 2017-001789
Application 11/924,653
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant seeks rehearing of the August 29, 2017 Decision on Appeal
(the “Decision”), in which we affirmed the Examiner’s rejections of claims
1-12 and 6A-74.
ANALYSIS
Appellant argues that (1) we overlooked arguments relating to claims
67 and 69-72 made in the Reply (Request 1—2), (2) we overlooked
arguments relating to written description and indefiniteness (id. at 2-4), and
(3) we misapprehended facts relating to the Arnold reference and/or claims
Appeal 2017-001789
Application 11/924,653
73 and 74 (id. at 4). We address Appellant’s arguments in the order
presented.
Claims 67 and 69—72
In the Appeal Brief, Appellant argued “[t]he Examiner does not
address claims 67 and 70—72, which recite limitations not contained in any
prior art references.” (App. Br. 14.) In the Answer, the Examiner provided
additional detail regarding those claims. (See Ans. 14.) In the Reply Brief,
Appellant made arguments regarding the new information in the Answer.
(See Reply Br. 4.) Appellant’s objection that we overlooked these Reply
Brief arguments concerning claims 67, 70, and 72 is noted, and we
accordingly address those arguments below.
Claim 67 recites that the motorized braking control of claim 6 “is
configured to be controlled by processor control signals in applying
motorized braking commands.” The Examiner found that “col. 8 lines 21—
31 have previously been identified for the motorized braking” and that it is
“readily apparent from figure 7 that Goldman discloses a controller for
applying these commands, for instance element 209.” (Ans. 14.) Appellant
argues “Goldman discloses a controller, but not that a motorized braking
control applies motorized braking commands under control of processor
control signals.” (Reply. Br. 4.) We agree with the Examiner that one of
skill in the art would have understood Goldman’s use of a
“microprogrammed controller” to involve application of braking commands
“under control of processor control signals.”
Claim 70 recites that the electric devices of claim 1 “are configured
for dynamic braking.” The Examiner states that “col. 3, lines 39-41 of
DeVries and col. 8, lines 21—31 of Goldman have been noted in the rejection
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Application 11/924,653
of claim 1 which describe active (dynamic) control of the magnets for
braking.” (Ans. 14.) Appellant argues the “active (dynamic) control of the
magnets for braking” cited by the Examiner “is the use of electric traction
motors of a vehicle as generators when slowing, with the generated electrical
power dissipated as heat” and that “Goldman does not teach or suggest such
a configuration, nor does the Examiner argue otherwise.” (Reply. Br. 4.)
We agree with the Examiner, as DeVries column 3, lines 39-41 states
“[w]hen the knob is turned counterclockwise, the polarity of electro-magnets
reverse and powerful electro-magnetic braking begins,” which we find
sufficient to describe the claimed “dynamic braking.” Appellant does not
argue for a construction of “dynamic braking” that would exclude what is
described in DeVries from the broadest reasonable interpretation of that
term.
Claim 72 further limits the method of claim 1 “using the electric
devices to motor the wheel and accelerate the wheeled vehicle and using the
electric devices to effect a combination of regenerative or dynamic braking
and motorized braking of the wheel and decelerate the wheeled vehicle and
bring it to a stop.” The Examiner states that “[sjupport [for] the braking
features have been provided within the rejection of claim 1,” and particularly
identifies “col. 3, lines 39-41 of DeVries and col. 8, lines 21—31 of Goldman
and the modification to Goldman provided in the rejection of claim 1.”
(Ans. 14.) The Examiner further explains that “[t]he feature of accelerating
the vehicle can readily be found in DeVries at col. 3, lines 35—38 and
Goldman in the abstract, col. 6, lines 46—51.” {Id. at 14—15.) Appellant
argues “the cited references do not disclose a combination of regenerative or
dynamic braking and motorized braking (which are not required by claim 1),
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Application 11/924,653
nor does the Examiner argue otherwise.” (Reply Br. 4.) We find this
argument unpersuasive because Appellant does not explain why the portions
of the references cited by the Examiner do not describe regenerative/
dynamic and motorized braking, and Appellant does not address the finding
that it would have been obvious to combine the two.
Because we find Appellant’s arguments regarding claims 67, 70, and
72 unpersuasive, we sustain the rejections of those claims, along with the
rejection of claim 71, which is not separately argued.
Written Description and Indefiniteness
Appellant asserts it did “present arguments directed to [written
description and indefmiteness] in the Appeal Brief, on page 7, first two
paragraphs” and “submits that a mistake in the headings of an appeal brief,
reflected in the ‘grounds of rejection’ identified in section VI of the appeal
brief, is a formality only.” (Request 2.) We do not agree that Appellant
argued these issues in the Appeal Brief. Both the Table of Contents and the
“Grounds of Rejection to be Reviewed on Appeal” sections of the Brief omit
written description and indefmiteness entirely, and the arguments at the top
of page 7 are most reasonably read as applying to enablement only,
particularly given that they are made in a section titled “Arguments
Traversing § 112, First Paragraph Rejection Based On Lack Of
Enablement,” which concludes “the rejection [singular] of claims 1—12 and
64—74 under 35 U.S.C. [§] 112, first paragraph [which does not include
indefmiteness] is improper and should be withdrawn.” (App. Br. 7.) To be
clear, the Brief was not “non-complaint” such that it should have been
rejected; instead, it only addressed a subset of the issues raised below, which
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Application 11/924,653
is an appellant’s prerogative. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(l)(iv).1
Claims 73 and 74
Appellant argues “[cjaims 73 and 74 recite a parking brake used to
lock the rotor in place,” that “[t]he Board did not address this claim
limitation,” and that “Arnold does not teach a parking brake that locks a
rotor in place, nor do any of the other reference.” (Request 4.) We are not
persuaded. First, Appellant did not specifically argue the “lock the rotor in
place” language in the Brief (see App. Br. 15), so this is not an issue that
was overlooked.2 Second, we agree with the Examiner that “Arnold
describes a parking brake system” (see Decision 10) and we conclude that,
as one of skill in the art would appreciate, application of a parking brake—
the point of which is to prevent movement of the wheels—would have the
effect of locking a rotor.
1 We note that the material Appellant cites at the top of page 7 of the Appeal
Brief was also included in the earlier Appeal Brief, which was filed before
the written description and indefmiteness rejections had been made, a fact
that undercuts Appellant’s argument that the material was intended to
address those issues.
2 The argument in the Brief was that “the parking brake function involves
clamping a permanent magnet of the rotor to a corresponding stator” (App.
Br. 15), and we see no reason why “the parking brake function” should be
limited to magnetic clamping.
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Application 11/924,653
DECISION
We grant Appellant’s Request for Rehearing of our Decision, but
decline to modify the ultimate results, which remain the same, as follows:
the rejections of claims 1—12 and 64—74 under 35 U.S.C. § 112 as indefinite,
lacking adequate written description, and non-enabled are affirmed; the
rejection of claims 1—4, 64, and 68 under 35 U.S.C. § 102 is affirmed; the
rejection of claims 70-72 under 35 U.S.C. § 102 is reversed; and the
rejections of claims 1—12, 64—67, and 69-74 under 35 U.S.C. § 103 are
affirmed.
Our Decision is final for purposes of judicial review. See 37 C.F.R.
§ 41.52(a)(1).
DENIED
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