Ex Parte Windgassen

Patent Trial and Appeal Board

Feb 3, 2016

12753181 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121753,181 04/02/2010
19636 7590
Reinhart (Schneider only)
2215 Perrygreen Way
Rockford, IL 61107
02/05/2016
FIRST NAMED INVENTOR
William P. Windgassen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
507779 4055
EXAMINER
KENERL Y, TERRANCE L
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
rockmail@reinhartlaw.com
patent-docketing@ schneider-electric .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM P. WINDGASSEN
Appeal2014-004085
Application 12/753,181 1
Technology Center 2800
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the
Primary Examiner rejecting claims 1-27. Final Act. 3-38. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
OPINION
Appellant's invention "relates to valve actuators and synchronous
motors and more particularly to valve actuators using synchronous motors."
Spec. ,-r 1.
1 According to Appellant, the Real Party in Interest is Schneider Electric
Buildings, LLC. Appeal Br. 2.
2 Final Office Action, mailed March 22, 2013 ("Final Act.").
Appeal2014-004085
Application 12/753,181
Claim 1, reproduced below, is representative of the appealed subject
matter:
1. A valve comprising:
a valve assembly including a valve member moveable
between open and closed positions;
a valve actuator operably coupled to the valve member to
drive the valve member between the open and closed positions,
the valve actuator having a default normal position
corresponding to one of the open and closed positions and a non-
normal actuated position corresponding to the other one of the
closed and open positions, the valve actuator including:
a synchronous motor for driving the valve member and a
gear assembly operably coupled between the motor and the valve
member to transfer the rotational output of the synchronous
motor to the valve member; and
the synchronous motor including a magnetic coil for
generating alternating magnetic flux; a stator arrangement
including a magnetic hub surrounded by the magnetic coil, the
stator arrangement including an upper disc and a lower disc
attached proximate a first end of the magnetic hub, the upper disc
including upper radially extending pole pieces and the lower disc
including lower radially extending pole pieces, the upper and
lower radially extending pole pieces alternating angularly, an
undulating shielding disc is interposed between adjacent upper
and lower radially extending pole pieces, the undulating
shielding disc passes above the lower radially extending pole
pieces and below the upper radially extending pole pieces
shading the upper radially extending pole pieces, the stator
including a set of shielded and a set of unshielded pole pieces
and an undulating shielding ring interposed between adjacent
ones of the shielded and unshielded pole pieces such that the
shielding ring passes over a radially outer surface of the
unshielded pole pieces and radially inward of a radially inner
surface of the shielded pole pieces; the synchronous motor
further including a rotor including a rotor shaft coupled to an
annular magnetic flange, the magnetic hub including a pair of
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Application 12/753,181
plastic bearings mounted therein, the rotor shaft passing through
central apertures of the plastic bearings and being supported for
rotation therein, the annular magnetic flange being positioned
within an annular channel formed between the axially extending
pole pieces and the radially extending pole pieces.
Appeal Br., Claims App'x 1.
The Examiner rejected claims 1, 2, 9, 20, 22, 24, and 27 under
35 U.S.C. § 103(a) as obvious over the combination of Schreiner,3 Hansen,4
and Hanamori. 5 Final Act. 3-21. In addition, the Examiner rejected the
following sets of claims under 35 U.S.C. § 103(a) as obvious over the
following combinations of references: claims 3-5, 10, and 11 over
Schreiner, Hansen, Hanamori, and Meades; 6 claims 6 and 12 over Schreiner,
Hansen, Hanamori, Meades, and Adam;7 claims 7, 8, 13, 14, and 21 over
Schreiner, Hansen, Hanamori, Beaumont,8 and PMI; 9 claims 15, 18, 25, and
26 over Hansen and Hanamori; claims 16, 17, and 19 over Hansen,
Hanamori, Beaumont, and PMI; and claim 23 over Schreiner, Hansen,
Hanamori, and Ida. 10 Id. at 21-38.
In response to all these rejections, Appellant argues that the
combination of Hanamori with the other references would not have been
obvious to a person of ordinary skill in the art, as demonstrated by objective
3 Schreiner, Jr. et al., US 6,073,907, issued June 13, 2000.
4 Hansen et al., US 2,256,711, issued Sept. 23, 1941.
5 Hanamori et al., US 4,720,650, issued Jan. 19, 1988.
6 Meades, Jr. et al., US 4,902,945, issued Feb. 20, 1990.
7 Adam, US 3,815,761, issued June 11, 1974.
8 Beaumont, US 2004/0071375 Al, published Apr. 15, 2004.
9 GOODFELLOW POLYPROPYLENE MATERIAL INFORMATION,
http://www.goodfellow.com/E/Polypropylene.html (last visited Jan. 23,
2010).
10 Ida et al., US 5,677,585, issued Oct. 14, 1997.
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Application 12/753,181
evidence of nonobviousness. Appeal Br. 9-12. Specifically, Appellant
argues that the claimed invention resolved a long-felt but previously
unresolved need, id. at 10-11, and that the claimed invention led to
expressions of disbelief from industry experts, id. at 11-12. Appellant
directs us to discussion in the Specification as well as to the Windgassen
Declaration 11 for evidence supporting these arguments.
As to the long-felt need, Appellant's evidence states that an unnamed
"industry leader suggested several solutions to the problem" of motors that
caused valve actuators to stick. Windgassen Deel. i-f 8. The evidence also
states that the valve "supplier indicated that they could not provide a
solution" to the sticking problem after trying the suggested solutions.
Id. i-f 9. In addition, "the industry leader indicated that they ha[ d] been
working on fixing this problem on and off for many years but ha[ d] not been
able to fix it." Spec. i-f 13.
The Examiner concluded that this evidence "fail[ ed] to outweigh the
evidence of obviousness." Answer 3.
We are not persuaded by Appellant's argument that the Examiner
committed harmful error in coming to this conclusion. First, Appellant's
Specification and the Windgassen Declaration are hearsay in that they report
the statements of someone (i.e., the "supplier" or "industry leader") other
than the author that are offered for their own truth. Second, they do not
identify the "supplier" or "industry leader" who made the statements being
reported, nor do they report the circumstances under which those statements
were made. These evidentiary problems with Appellant's Specification and
11 Declaration of William P. Windgassen, submitted on Jan. 25, 2013.
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Application 12/753,181
the Windgassen Declaration adversely affect their reliability. See Jn re
Yoder, 204 Ct. Cl. 931, 933 (Ct. Cl. 1974) (Kunzig, J., concurring) ("While
we traditionally do not require administrative proceedings to comply strictly
with judicial rules of evidence, we have recognized that the probative value
of uncorroborated hearsay may be insufficient to constitute substantial
evidence supporting an administrative determination."). Moreover,
Appellant's Specification and the Windgassen Declaration lack specificity in
that they report that the unnamed "industry leader" had engaged in efforts to
solve the sticking problem over "many years," without specifying how many
years constitute "many" or whether these efforts were continuous or
sporadic. Given the reliability problems with Appellant's evidence and the
conclusory nature of that evidence, we cannot say that the Examiner erred
harmfully in concluding that the inherently biased testimony of an interested
party12 was of insufficient weight to overcome the evidence that Appellant's
claims were obvious. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations."); Verlander v. Garner, 348 F.3d
1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within [its] discretion."); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir.
2010) (Board has discretion to give more weight to one item of evidence
than to another "unless no reasonable trier of fact could have done so").
12 Both the Windgassen Declaration and the Specification were authored by
Appellant.
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Application 12/753,181
Similarly, we are not persuaded that the Examiner committed harmful
error in concluding that the evidence of expressions of disbelief from
industry experts was insufficient to overcome the evidence of obviousness.
Appellant's evidence consists of reports by Appellant in the Specification
and in the Windgassen Declaration of statements of the unnamed "supplier"
and "industry leader" that Appellant's proposed solution to the sticking
problem "would result in more rapid failure" than the original design.
Appeal Br. 11-12 (emphasis omitted) (citing Spec. i-f 24; Windgassen
Deel. i-f 13). These suffer from the same reliability problems as the
statements discussed above: they are hearsay, and they do not identify the
person making the statements being reported or the circumstances under
which those statements were made. Accordingly, we are not persuaded that
the Examiner erred harmfully in concluding that this evidence was
insufficient to overcome the evidence that Appellant's claims were obvious.
Because we do not find any of Appellant's arguments persuasive, we
affirm the Examiner's rejections.
ORDER
The Examiner's rejections under 35 U.S.C. § 103(a) of claims 1, 2, 9,
20, 22, 24, and 27 as obvious over the combination of Schreiner, Hansen,
and Hanamori; of claims 3-5, 10, and 11 as obvious over Schreiner, Hansen,
Hanamori, and Meades; of claims 6 and 12 as obvious over Schreiner,
Hansen, Hanamori, Meades, and Adam; of claims 7, 8, 13, 14, and 21 as
obvious over Schreiner, Hansen, Hanamori, Beaumont, and PMI; of claims
15, 18, 25, and 26 as obvious over Hansen and Hanamori; of claims 16, 17,
and 19 as obvious over Hansen, Hanamori, Beaumont, and PMI; and of
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claim 23 as obvious over Schreiner, Hansen, Hanamori, and Ida 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.
AFFIRMED
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