Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Jul 9, 2010

11085764 (B.P.A.I. Jul. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL K. TAYLOR and MARK F. SCHOLAND
____________

Appeal 2009-007573
Application 11/085,764
Technology Center 3600
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Michael K. Taylor and Mark F. Scholand (Appellants) appeal under
35 U.S.C. § 134 (2002) from the Examiner's decision rejecting claims 1, 2,
6-8, and 12 under 35 U.S.C. § 103(a) as unpatentable over Krebs (US Pub.
2001/0020698 A1, published Sep. 13, 2001) and Powell (US Pat. 3,325,148,
issued Jun. 13, 1967) and claims 3, 4, 5, 9-11, and 13 under § 103(a) as
unpatentable over Krebs, Powell, and Rosenberg (US Pat. 6,271,828 B1,
issued Aug. 7, 2001) or Robinson (US Pat. 4,562,430, issued Dec. 31, 1985).
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A user interface for a human power amplifier
lift, wherein the interface is operatively associated
with an end-effector, comprising:
a handle to be grasped by a user, said handle
being affixed to the end-effector to preclude
movement of the handle relative to the end-
effector when the operator applies a force to the
handle;
at least one operable control located on said
handle, wherein said control produces a variable
signal level in response to the amount of the user's
displacement of the control; and
a controller, responsive to the variable signal
generated by the operable control, for controlling
the operation of a lift as a function of the variable
signal.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
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ISSUES
In rejecting independent claims 1, 6, and 12, the Examiner found that
Krebs describes each element of the claims except for where the controls are
mounted on the handle. Ans. 3, 4. The Examiner next found that Powell
describes a handle with controls mounted on the handle. Id. Thus, the
Examiner concluded that it would have been obvious to arrange the controls
in Krebs as described in Powell. Id.
Appellants argue that the Examiner's reason for combination is
conclusory, and unsupported because Powell is directed to pneumatic
controls, whereas Krebs is directed to wireless controls. Appeal Br. 13-14;
Reply Br. 7-8. In addition, Appellants argue that the Examiner's proposed
combination fails to describe a handle affixed to "preclude movement …
relative to the end-effector," as well as controls that produce a "variable
signal." Appeal Br. 15-16; Reply Br. 9-11.
Therefore, the first issue in this appeal is whether the Examiner's
proposed combination of Krebs and Powell is based on rational
underpinning and further satisfies the limitations in independent claims 1, 6,
and 12 regarding a handle and variable controls.
In rejecting dependent claims 2 and 8, the Examiner found that the
handle in Krebs "is offset from the center of gravity of the load-carrying
member 21, i.e., end effector." Ans. 3, 5. Appellants argue that Krebs does
not satisfy the requirement in claims 2 and 8 that "the handle (interface) is
displaced from (non-coincident with) the center of gravity of the end
effector." Appeal Br. 16-17; Reply Br. 11, 12.
Therefore, the second issue in this appeal is whether the Examiner's
proposed combination of Krebs and Powell renders obvious a "user interface
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… at a location … not coincident with…" or a "handle … at a position
displaced from" "the center-of-gravity of the end-effector" as required by
claims 2 and 8, respectively.
The Examiner rejected dependent claims 3-5, 9-11, and 13 as
unpatentable over a proposed combination of Krebs, Powell, and Rosenberg
or Robinson. Ans. 3-4. Appellants incorporate the arguments presented for
the Krebs and Powell combination and further adds that the Examiner has
not provided a reason to combine Krebs, Powell, and Rosenberg or
Robinson. Appeal Br. 18-19; Reply Br. 13-14.
Therefore, the third issue presented in this appeal is whether the
Examiner's proposed combination of Krebs, Powell, and Rosenberg or
Robinson is based on rational underpinning.

ANALYSIS
Issue 1 - Claims 1, 6, and 12
Contrary to Appellants' argument (Appeal Br. 13-14; Reply Br. 7-8),
the Examiner does express a reason to incorporate the particular
handle/control layout described in Powell with the handle of Krebs. In
particular, the Examiner finds that Krebs' handle is not "clearly shown," but
that Powell describes controls on a handle (Ans. 3; see also Ans. 4). Thus,
the Examiner's position is essentially that Krebs lacks certain details and
Powell provides those details. As such, using the handle and control
configuration of Powell to fill in the gaps as to the locations of the handle
and control configuration of Krebs would not have been uniquely
challenging to a person of ordinary skill in the art, because it is no more than
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"the mere application of a known technique to a piece of prior art ready for
the improvement." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants continue that it would not have been obvious to combine
the references because Powell is directed to pneumatic controls and Krebs is
directed to wireless controls. Appeal Br. 13-14; Reply Br. 7-8. However,
the Examiner does not propose to incorporate the particular pneumatic
mechanisms in Powell in the proposed combination. Instead, the Examiner
merely proposes to incorporate the physical configuration described in
Powell with respect to the handle and controls. See Ans. 3, 4 ("Powell
illustrates controls located on a handle …. It is this teaching for which
Powell is used.").
Appellants next argue that while Krebs' "housing is described as
'securely attached,' such a limitation is not believed to preclude movement
relative to the end effector." Reply Br. 9; see also Krebs, para. 21.
However, "secure" means "[t]o make firm or tight; fasten;" "fasten" in turn
means, "[t]o become attached, fixed, or joined."2 Thus, Krebs describes a
handle that is fixed, or "affixed," to the load-carrying member 21 (i.e., end
effector).
Lastly, Appellants argue that Krebs does not describe a "variable
signal level in response to … the user's displacement of the control." Appeal
Br. 15-16; Reply Br. 9-11. However, the Examiner correctly found that
Krebs describes a Hall sensor 16 that "generate[s] a control signal for the
power/rotation speed" based on the movement of a magnet 15 in relation to

2 From The American Heritage Dictionary of the English Language (2007)
(retrieved from http://www.credoreference.com/entry/hmdictenglang) (last
visited Jul. 6, 2010).
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the Hall sensor 16. Ans. 5; see Krebs, para. 27. Further, we find that
actuation of keys 5 and 6 (which raise and lower the lift) push down
connecting element 11, upon which magnet 15 is located; this movement
"generates a control signal commensurate with a distance of the permanent
magnet 15 from the Hall sensor 16." Krebs, paras. 25, 27. Thus, the control
signal is commensurate with the displacement of the raising and lowering
keys 5 and 6. In addition, the control signal must vary to be
"commensurate" with the displacement.
Therefore, we are not persuaded that the Examiner's proposed
combination of Krebs and Powell lacks rational underpinning or fails to
describe a handle and variable control as recited in independent claims 1, 6,
and 12, or dependent claim 7, for which Appellants present no separate
argument.

Issue 2 - Claims 2 and 8
The Examiner rejected, and Appellants argue, claims 2 and 8 as a
group. Ans. 3; App. Br. 16-17. However, claim 2 recites a "user interface
… not coincident with…," while claim 8 recites a "handle … displaced
from," "the center-of-gravity of the end-effector." The Examiner does not
make any finding regarding the positioning of a "user interface" in Krebs.
As such, the Examiner has not made the initial factual findings to support a
conclusion of obviousness with respect to claim 2. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (In making a rejection based on obviousness,
the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
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speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis).
With respect to claim 8, however, the Examiner finds that the "handle
in Krebs is displaced from the center of gravity of the end effector," drawing
attention to the fact that the end effector (load-carrying member 21) is offset
from the handle portion of the control device 30. Ans. 5. Appellants
disagree with the Examiner's characterization, but provide no logical
reasoning tending to show the Examiner's finding to be incorrect. In
particular, Appellants do not appear to appreciate that claim 8 states that the
handle is displaced from the center of gravity of the end effector, unlike
claim 2, which is directed to the user interface (which Appellants appear to
consider reading on the control device 30). The Examiner found that the
handle is offset from the center of gravity of the end effector. This finding is
reasonable because the handle (unlabeled) in Krebs is clearly displaced from
the end effector (21) in a direction both above and to the side of the hook of
the end effector. Appellants do not challenge the Examiner's particular
finding regarding the handle. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (once the PTO establishes a prima facie case that the prior art
possesses a characteristic at issue, the burden shifts to that applicant to prove
that this is not the case).
Therefore, we are persuaded that the Examiner's proposed
combination of Krebs and Powell does not render obvious a "user interface
… at a location … not coincident with the center-of-gravity of the end-
effector," as required by claim 2. However, we are not persuaded that the
Examiner's proposed combination of Krebs and Powell does not render
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obvious a "handle … at a position displaced from the center-of-gravity of the
end-effector," as required by claim 8.

Issue 3 - Claims 3-5, 9-11, and 13
Appellants argue claims 3-5, 9-11, and 13 as a group. In accordance
with 37 C.F.R. § 41.37(c)(1)(vii) (2009), we select claim 3 as representative,
with the remaining claims standing or falling with claim 3. Appellants argue
that the Examiner has not set forth a basis for modifying Krebs in view of
Powell and Rosenberg or Robinson. Appeal Br. 18; Reply Br. 13-14.
However, the Examiner reasons that the additional modification of Krebs
with the teachings of Powell and Rosenberg or Robinson is "an obvious
substitution of equivalents" for the variable motor speed in Krebs. Ans. 3, 4-
5. That is, the Examiner proposes that the speed signal in Krebs, created by
the Hall sensor (Krebs, para. 27), be alternatively created by the rotary
capacitive displacement transducer in Robinson or the linear variable
displacement transducer (LVDT) in Rosenberg.
The only reason Appellants assert for contesting the proposed
substitution of Rosenberg's LVDT for the Hall sensor arrangement of Krebs
is that Rosenberg "specifically indicates that prior art joysticks require
complex electronics … or … force feedback." Appeal Br. 18. However, the
Examiner does not propose to incorporate the force feedback features of
Rosenberg or the "complex electronics" of the prior art discussed in the
background Rosenberg. Instead, the relevant teaching in Rosenberg is of the
LVDT itself.
Further, Appellants allege that Robinson describes a capacitive
transducer "directed to an entirely unrelated technology." Appeal Br. 18.
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Two criteria have evolved for determining whether prior art is analogous: (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 Clay, 966 F.2d 656, 658-
59 (Fed. Cir. 1992); see also In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379-80 (Fed. Cir. 2007) (for purposes of showing obviousness, a
reference is reasonably pertinent, even if in a different field of endeavor, if it
would have logically commended itself to an inventor's attention in
considering his problem, because of the matter with which it deals). Thus,
even assuming, arguendo, that Robinson was not in the present field of
endeavor, Appellants do not address whether Robinson is pertinent to the
problem with which the inventor is involved. In making their invention,
Appellants addressed the problem of accurately indicating the amount of
displacement. Spec., paras. 5, 20. Robinson's position detection device is
useful for "detecting both radial and tilting displacement of the rotor
member of the bearing in relation to the stator member." Robinson, col. 1,
ll. 8-10. Robinson's device, as such, is useful for sensing displacements, a
problem addressed by Appellants, and by the Hall effect sensor in Krebs.
See Krebs, para. 29. Thus, Robinson would have commended itself to an
inventor as an alternative to the Hall effect sensor in Krebs, in considering
the problem of sensing displacements.
Appellants additionally incorporate the arguments presented with
respect to independent claims 1, 6, and 12. Appeal Br. 17, 19; Reply Br. 13-
14. These arguments are likewise unpersuasive. Therefore, we are not
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persuaded that the Examiner's proposed combination of Krebs, Powell, and
Rosenberg or Robinson lacks rational underpinning.

DECISION
We affirm the Examiner's decision as to claims 1 and 3-13. We
reverse the Examiner's decision as to claim 2.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

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