Ex Parte Swift

Board of Patent Appeals and Interferences

Jun 17, 2008

10815047 (B.P.A.I. Jun. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERALD LIAM SWIFT
____________

Appeal 2008-1090
Application 10/815,047
Technology Center 3700
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Decided: June 17, 2008
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Before WILLIAM F. PATE, III, HUBERT C. LORIN, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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Gerald Liam Swift (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-22.1 We have jurisdiction under 35
U.S.C. § 6(b) (2002). We reverse.
The Appellant’s claimed invention is to a linear and rotary system and
method operative to control operation of an associated tool (Spec. 1:11-12).
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A system that facilitates operation of a tool,
comprising:
a moveable member having a length, that
moves in a rotary motion about a central axis and a
linear motion along the central axis to position an
associated drive member; and
the drive member is parallel to the central
axis, and extends the length of the moveable
member to engage the tool, which drive member
operates independently of the moveable member.
Claims 1-7 and 10-19 are rejected under 35 U.S.C. § 102(b) as
anticipated by U.S. Patent No. 4,462,467 issued July 31, 1984 to
Weingartner, and claims 8, 9, and 20-22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Weingartner and U.S. Patent No. 6,216,798
issued April 17, 2001 to Riello.
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-7 and 10-19 under 35 U.S.C. § 102(b)

1 Claims 1-31 are pending. Claims 1-22 are finally rejected. The Examiner
withdrew the sole rejection of claims 23-31 under 35 U.S.C. § 112, second
paragraph (Ans. 3).
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as anticipated by Weingartner and claims 8, 9, and 20-22 under 35 U.S.C.
§ 103(a) as unpatentable over Weingartner and Riello. This issue turns on
whether Weingartner, taken alone or in combination with Riello, discloses a
movable member that moves in a rotary motion about a central axis and a
linear motion along the central axis to position an associated drive member.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Independent claim 1 recites a system that
facilitates operation of a tool including “a moveable member having a
length, that moves in a rotary motion about a central axis and a linear motion
along the central axis to position an associated drive member.” Independent
claim 12 recites a method of operating a tool including “coupling a movable
member to the tool” and “rotating the movable member about a central axis
and moving the movable member along the central axis to position an
associated drive rod.”
Weingartner discloses a percussion drill machine having a drill shaft 1
rotatably supported in a housing 2 and a clamping chuck 3 rigidly supported
in the drill shaft 1 (Weingartner, col. 2, ll. 47-50; Fig. 2). Weingartner
further discloses a free piston 4 disposed in the drill shaft 1 that interacts
with a percussion piston 5 (Weingartner, col. 2, ll. 52-53). The drill shaft 1
is caused to rotate when its bevel gear 6 meshes with a corresponding bevel
gear 13 connected to an electromotor having a rotating armature 8
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(Weingartner, col. 2, l. 66 – col. 3, l. 2). The percussion piston 5 is driven
by a crank drive 11 connected to a separate electromotor having a rotating
armature 9 (Weingartner, col. 2, ll. 62-66). When the crank drive 11 forces
the percussion piston 5 downwardly, the percussion piston 5 interacts with
free piston 4, forcing piston 4 downwardly, which also thereby forces drill
shaft 1 downwardly (Weingartner, Fig. 2). The Examiner equated the free
piston 4 with the claimed movable member and the drill shaft 1 with the
claimed drive member (Ans. 3).
While the linear movement of the free piston 4 arguably “positions”
the drill shaft 1, there is insufficient disclosure in Weingartner to determine
whether free piston 4 “moves in a rotary motion about a central axis … to
position an associated drive member.” It is unclear from the disclosure in
Weingartner if piston 4 is able to rotate within drill shaft 1 or how such
rotary motion, if such could occur, would operate to “position” the drill
shaft 1. As such, Weingartner does not disclose the movable member of
claim 1 or the rotating step of claim 12, and thus does not contain adequate
disclosure to anticipate independent claims 1 and 12, or claims 2-7, 11, and
13-19, which depend therefrom.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Id.
The Examiner relied on Riello to teach the positioning of a moveable
member controlled by magnetic positioning means, as recited in claims 8, 9,
and 20-22 (Ans. 4). Riello fails however to cure the deficiency in
Weingartner, in that it fails to disclose the movable member of claim 1 or the
rotating step of claim 12. Riello discloses a work unit for a machine tool
having an outer tubular body 2 and a sleeve 3 (movable member) that slides
within the body 2 along a work axis Z (Riello, col. 2, ll. 23-25). While
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Riello’s movable member 3 is used to position a spindle (drive member) 5,
Riello fails to disclose that its sleeve 3 rotates about a central axis. As such,
the Examiner has failed to set forth a prima facie case to show how the
combination of Weingartner and Riello renders obvious the subject matter of
claims 8, 9, and 20-22.

CONCLUSION
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-7 and 10-19 under 35 U.S.C. § 102(b) as anticipated by
Weingartner and claims 8, 9, and 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Weingartner and Riello.

DECISION
The decision of the Examiner to reject claims 1-22 is reversed.

REVERSED

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LV

SUSAN M. DONAHUE
ROCKWELL AUTOMATION, 704-P
IP DEPARTMENT
1201 SOUTH 2ND STREET
MILWAUKEE, WI 53204