Ex Parte Verstegen et al

Patent Trial and Appeal Board

Aug 29, 2017

12097075 (P.T.A.B. Aug. 29, 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.
12/097,075 08/19/2008 Eugene Gijsbertus Maria Verstegen 08-586 7954
20306 7590 08/29/2017
MrnnNNFT T ROFFTNFN HT TT RFRT Rr RFRGROFF T T P
EXAMINER
300 S. WACKER DRIVE CAHN, DANIEL P
3 2ND FLOOR
CHICAGO, IL 60606 ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
08/29/2017 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 EUGENE GIJSBERTUS MARIA VERSTEGEN
and JORIS VEEGER
Appeal 2016-002227
Application 12/097,075
Technology Center 3600
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6, 8—10, and 14—17.2 We have jurisdiction over
these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Joris Patent B.V. (App. Br.
1.)
2 Claims 7 and 11—13 have been withdrawn. (Final Act. 1; App. Br. 1, 9-10
(Claims App’x).)
Appeal 2016-002227
Application 12/097,075
STATEMENT OF THE CASE
Introduction
According to Appellants, the invention is directed to “devices for
safely lowering an individual. . . from the higher floor levels of a tall
structure to the ground level at a predetermined speed.” (Spec. 1:6—10.) In
particular, Appellants’ Specification purports to describe a device that will
“automatically lower a person at a safe, controlled speed” (Spec. 2:23—24)
by using a cable wound around a drum with a rotation regulator that uses
“centrifugal force” to expand one member to frictionally engage another
member and limit rotation speed of the drum. (Spec. 5:1—30.)
Exemplary Claim
Claims 1 and 16 are independent. Claim 1, reproduced below (with
disputed limitation italicized and formatting added), is exemplary of the
claimed subject matter:
1. A device for safely evacuating an individual during an
emergency from a structure, said device comprising
a frame having a first side wall having an inner surface and
an exposed outer surface, and a second side wall having an inner
surface and an exposed outer surface,
a rotatable drum having an axle rotatable within the frame,
the drum positioned between the first and second side walls of
the frame,
a length of cable wound about said drum and a rotation
regulator for controlling a rotation speed of said drum,
said rotation regulator positioned outside of the drum and
outside of the frame and extending outwardly from the frame,
said rotation regulator comprising a first member rigidly
mounted on the exposed outer surface of the first side wall of the
frame,
2
Appeal 2016-002227
Application 12/097,075
said first member encasing an expandable second member
rotatable in said first member,
wherein expansion of said second member is configured
to be controlled by the rotation speed of said drum, such that
during rotation of the drum, the expansion of the second member
will become large enough to fictionally engage an inner surface
of the first member to provide a braking force.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jolkovski US 1,500,943 July 8, 1924
Hildebrandt US 4,177,962 Dec. 11, 1979
Munton US 2005/0023085 A1 Feb. 3,2005
REJECTIONS
Claims 16 and 17 stand rejected under 35 U.S.C § 112, second
paragraph, as being indefinite for lack of antecedent basis. (Final Act. 2.)
Claims 1—4, 8—10, and 14—17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jolkovski and Hildebrandt. (Final Act. 2—9.)
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jolkovski, Hildebrandt, and Munton. (Final Act. 9—13.)
ISSUE
Based on Appellants’ arguments, the issue presented for review is
whether the Examiner erred in finding the combination of Jolkovski and
Hildebrandt teaches or suggests “said rotation regulator positioned outside of
the drum and outside of the frame and extending outwardly from the frame,
said rotation regulator comprising a first member rigidly mounted on the
3
Appeal 2016-002227
Application 12/097,075
exposed outer surface of the first side wall of the frame,” as recited in
independent claim 1 and commensurately recited in independent claim 16.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2—
13) and (2) the reasons set forth by the Examiner in the Examiner’s Answer
in response to Appellants’ Appeal Brief. (Ans. 12—18.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis.
A. Rejection under 35 U.S.C. § 112, Second Paragraph
Appellants do not argue on appeal, the Examiner’s rejection of
independent claim 16 (and its dependent claim 17) as indefinite under 35
U.S.C. § 112, second paragraph. In particular the Examiner rejects these
claims for “lack of proper antecedent basis” because claim 16 recites “said
frame” without antecedent basis. (Final Act. 2.) Appellants state only that
they intend to amend claim 16 to add the term “frame” as indicated on page
1 of their Appeal Brief. (App. Br. 7.)
Nonetheless, because this rejection has not been withdrawn by the
Examiner (Ans. 18) and has not been addressed substantively on appeal, we
summarily sustain this rejection. See 37 C.F.R. § 41.37(c)(l)(iv) and
Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., March
2014 (“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
4
Appeal 2016-002227
Application 12/097,075
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
B. Rejection under 35 U.S.C. § 103(a)
The Examiner finds Jolkovski teaches or suggests all of the limitations
of independent claim 1, except for “said rotation regulator positioned outside
of the drum and outside of the frame and extending outwardly from the
frame, said rotation regulator comprising a first member rigidly mounted on
the exposed outer surface of the first side wall of the frame.” (Final Act. 4.)
As to that limitation, the Examiner relies on Hildebrandt in combination
with Jolkovski. (Id. at 4—7.)
Appellants argue the Examiner’s findings are in error because
Hildebrandt is, according to Appellants, “a patent from the disparate, non-
analogous art of seat belt locking mechanisms, not braking mechanisms.”
(App. Br. 3.) In particular, Appellants argue
Hildebrandt is not from the same field of endeavor as the present
claims which are directed a device for lowering a person from [a]
device with a length of cable wound about a rotatable drum using
a braking device in the form of a rotation regulator to slow the
rate of descent of a person being lowered. Instead, Hildebrandt
is directed to a seat belt locking mechanism, not a braking
mechanism, which uses a locking means to completely stop the
seat belt from being further wound out of the device when a
predetermined level of angular acceleration is exceeded, such as
when the vehicle is in an accident.
(Id. at 3^4 (bold italicized emphasis in original; italicized emphases added).)
Appellants further argue “[ujsing a locking mechanism to prevent the
unreeling of a seat belt is clearly not within the same field of endeavor as the
present claims, which include a braking mechanism in the form of a rotation
regulator.” (Id. at 4.)
5
Appeal 2016-002227
Application 12/097,075
A cited reference need not be directed to identical purposes or
problems as the claimed invention to constitute analogous art. Rather, the
test for whether a reference is from an analogous art is two-fold:
“(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) (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986)).
Here, we find that Appellants are too narrowly interpreting the field of
endeavor of the Hildebrandt reference as limited to a “locking” mechanism.
As the Examiner finds, and we agree, Hildebrandt (and Jolkovski) includes a
“rotation regulator[] specifically designed to impede motion of a strand
unwinding from a reel by using centrifugal force to impede the motion.”
(Ans. 13.) The Examiner also finds, and we agree, Hildebrandt is “designed
to prevent injury to a person by impeding the motion of the strand and reel.”
(Id.) Similarly, Appellants’ Specification describes a goal of the invention as
“automatically lowering] a person at a safe, controlled speed” (Spec. 2:23—
24) by using a “rotation regulating means for controlling the rotation speed”
of a drum that is wound with cable. (Id. at 3:5—6; see also id. at 5
(describing use of centrifugal force to cause one member to expand and
frictionally engage another member to limit rotation speed of drum and,
hence, limit descent speed of individual attached to the cable).) Thus, we
are not persuaded of error in the Examiner’s finding that Hildebrandt is
analogous art because “Hildebrandt. . . involves winding, tensioning, or
guiding with a reeling device similarly as found in the [Appellants’ instant
6
Appeal 2016-002227
Application 12/097,075
invention which uses winding, tensioning and guiding with a reeling
device.” (Ans. 13.)
Although not necessary because the Examiner finds Hildebrandt is
from the same field of endeavor, the Examiner nonetheless also finds that
Hildebrandt is “reasonably pertinent to the problem faced by the inventor.”
(Id.) In particular, the Examiner finds, and we agree,
Hildebrandt solves the same “problem” of regulating the
unwinding motion of a strand on a reel, in fact, both of the instant
invention and Hildebrandt are rotation regulators specifically
designed to affect motion of a strand unwinding from a reel by
using centrifugal force to impede the strands motion, and
furthermore, they are both meant to prevent injury to a person as
a result of impeding motion of the strand and reel.
(Id. at 14.)
Thus, even if Hildebrandt were not from the same field of endeavor, it would
still qualify as analogous art.
Appellants additionally argue that, even if Hildebrandt is analogous
art, the Examiner erred in combining Hildebrandt with Jolkovski “because
Hildebrandt discloses a locking mechanism, not a braking mechanism, and
therefore cannot provide a ‘braking force’ as specified in claims 1 and 16.”
(App. Br. 6; see also Reply Br. 8.) We are not persuaded of error by the
Appellants’ arguments, which rely at least in part on the premise that the
references cannot be physically combined. “[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citing Orthopedic Equip. Co. Inc. v. United States, 702 F.2d 1005, 1013
(Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
7
Appeal 2016-002227
Application 12/097,075
references does not involve an ability to combine their specific structures.”).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Specifically, Appellants’ argument that Hildebrandt discloses a
locking mechanism, not a braking mechanism, and therefore cannot provide
a ‘braking force’ as specified in claims 1 and 16.” (App. Br. 6; see also
Reply Br. 8) is unpersuasive because the Examiner’s rejection does not rely
on Hildebrandt for its locking system as suggested by the Appellants. (See
Ans. 16.) Rather, the Examiner relies on Jolkovski for teaching the
limitation of the braking mechanism (rotation regulator), and relies on
Hildebrandt only “to teach the positioning of Jolkovski’s braking mechanism
[rotation regulator] with respect to its frame.” {Id. (emphasis added).) As
the Examiner finds:
Hildebrandt is only applied to teach that it would have been
obvious to have positioned the braking mechanism of Jolkovski
outside of the frame and extending outwardly from the frame, and
said braking mechanism as having a first member rigidly
mounted on the exposed outer surface [as oppose to the inner
surface] of the first side wall of the frame as taught by
Hildebrandt [as seen in page 4 of the Final Rejection of
11/12/2014],
{Id. (emphasis added).)
The Examiner further finds, and we agree, “this repositioning is a mere
reversal of parts since it is simply reversing the orientation of the braking
mechanism [rotation regulator] and the frame taught by Jolkovski.” {Id. at
16-17.)
8
Appeal 2016-002227
Application 12/097,075
For the foregoing reasons, we are unpersuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1 and also
claims 2-4, 8—10, and 14—17, which Appellants argue collectively with
claim 1. Although claims 5 and 6 are rejected over Jolkovski, Hildebrandt,
and a third reference (Munton), Appellants do not present separate
arguments for claims 5 and 6 and do not address the Munton reference.
(App. Br. 3, 6.) We, therefore, sustain the rejections.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—6, 8—10,
and 14—17 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9