Ex Parte DaleDownload PDFPatent Trial and Appeal BoardJul 29, 201612557579 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/557,579 09/11/2009 40023 7590 07/29/2016 David M, Carter Van Winkle, Buck, Wall, Starnes and Davis, P.A. P.O. Box 7376 ASHEVILLE, NC 28802 James Lawrence Dale 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. AVL-1 4693 EXAMINER BOES, TERENCE ART UNIT PAPER NUMBER 3658 MAILDATE DELIVERY MODE 07/29/2016 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 JAMES LAWRENCE DALE Appeal2014-006480 Application 12/557 ,579 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James Lawrence Dale (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 2, 4, 6, 8-12, 14, and 18-21. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Claims 3, 5, 7, 13, and 15-17 have been cancelled. Appeal Br. 14--15, Claims App. Appeal2014-006480 Application 12/557,579 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A satellite communication antenna system comprising: a parabolic reflector antenna; a driven element operable for precisely positioning the parabolic reflector; the driven element including a drum; the drum having an outer surface; the drum adapted to rotate; a driving element; the driving element having an outer surface; at least one cable connecting the driving element to the drum· ' the outer surface of the drum having a plurality of V-shaped grooves therein; the grooves having two opposing side walls, a bottom and an open top; the side walls sloping inwardly from the open top to the bottom; the side walls being substantially straight in cross section; the side walls form an angle with respect to each other; the angle between the side walls optimized for receiving a portion of the cable and generally being between 32° and 40°; and the portion of the cable received in the grooves being wedged between the side walls so as to provide friction force between the cable and the grooves, and the portion of the cable received in the grooves is deformed where the cable contacts the side walls whereby the stiffness of the system is increased. 2 Appeal2014-006480 Application 12/557,579 REJECTIONS 2 I. Claims 1, 2, 4, 6, 8-10, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McGill (US 6,285,339 Bl, iss. Sept. 4, 2001), Carson (US 4,351,197, iss. Sept. 28, 1982), and Woodard (US 3,874,246, iss. Apr. 1, 1975). II. Claims 11, 12, 14, 18, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McGill and Woodard. DISCUSSION Rejection I - Obviousness based on McGill, Carson, and Woodard Claims 1, 2, 6, 8-10, and 20: In contesting the rejection of claim 1, Appellant initially argues that "McGill's objective is to minimize backlash and makes no mention of the cable/groove interface at all," and that "McGill's apparatus does not improve traction/stiffness." Appeal Br. 6. Appellant also argues that Carson does not disclose "grooves [that] are formed so as to provide high friction force between the cable and the grooves[,] thereby increasing stiffness of the system," nor does Carson disclose "wedging ... the cable within the grooves with a sufficient force so that the portion of the cable received in the grooves is deformed where the cable contacts the side walls." Id. at 7. Appellant further argues that "[ t ]he Woodard apparatus could not work to precisely position a parabolic reflector of a satellite antenna system" (id. at 8) and that Woodard discloses U-shaped grooves rather than V-shaped grooves as claimed. Id. at 10; see also Reply Br. 3. 2 The Examiner withdrew a rejection of claims 1, 2, 4, 6, 8-10, and 20 under 35 U.S.C. § 112, second paragraph, as indefinite. Ans. 8. 3 Appeal2014-006480 Application 12/557,579 We are not persuaded by Appellant's arguments because they essentially attack the references in isolation, rather than considering the combined teachings of the references as proposed by the Examiner in the rejection. Nonobviousness cannot be established by attacking references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, the Examiner did not rely on McGill for teaching cable grooves, or on Woodard for teaching grooves that are V-shaped, but, rather, relied on Carson for teaching V-shaped grooves. Final Act. 3. Moreover, Woodard's grooves, even with their rounded/concave bottom walls, are "V-shaped" as that terminology is defined in Appellant's Specification, which states: As used herein, the term "V-shaped" means both in the shape of a V having a somewhat of a point at its apex, as well as a V shape with a bottom wall rather than a point at its apex which, in the preferred embodiment of this invention, is somewhat rounded to form a concave shape which is illustrated in Figure 7. Spec., para. 17. Likewise, the Examiner did not rely on Carson for teaching a cable wedged within the groove so as to provide friction force, deform the cable, and increase system stiffness, but, instead, relied on Woodard to address these features. Final Act. 4. Moreover, the Examiner did not rely on Woodard alone for disclosing the claimed satellite communication antenna system. Rather, the Examiner determined that such a satellite communication antenna system would have been obvious to one of ordinary skill in the art based on the combined teachings of McGill, Carson, and Woodard. Id. at 2-5. 4 Appeal2014-006480 Application 12/557,579 Appellant argues that "[t]here is no teaching, suggestion or motivation to combine the Woodard patent with the McGill and Carson patents." Appeal Br. 8; see id. at 10 (asserting that "there is no teaching, suggestion or motivation which would cause one skilled in the satellite positioning antenna art to combine [the] Woodard patent[, which] essentially deals with a winch system for a truck[,] with the McGill and Carson patents to render" Appellant's claimed system obvious). This argument does not identify error in the Examiner's rejection. To the extent that Appellant's argument insists on an explicit motivation in the cited references to combine the teachings of Woodard with those of McGill and Carson, such a rigid requirement has been rejected by the Supreme Court. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation (the TSM test) is incompatible with its precedent concerning obviousness). Appellant's argument does not address the Examiner's articulated reasoning for the conclusion of obviousness. Here, the Examiner articulated adequate reasoning based on rational underpinnings as to why it would have been obvious to one of ordinary skill in the art to modify the V- shaped cable grooves in the proposed combination of McGill and Carson so that the cable wedges and deforms in the grooves to increase system stiffness. See Final Act. 5 (explaining that such a modification would "reduc[ e] slippage" of the cable). Appellant's arguments do not specifically address the Examiner's articulated reasoning for the proposed combination of McGill, Carson, and Woodard or explain why the reasoning is in error. Appellant argues that Woodard is non-analogous art. See Appeal Br. 8-9; Reply Br. 1-2. In particular, Appellant asserts that "Woodard is not within the field of endeavor of precisely positioning parabolic reflectors in a 5 Appeal2014-006480 Application 12/557,579 satellite communication antenna system" and "is not reasonably pertinent to the particular problem with which [Appellant] was involved, namely, the need to hold a parabolic antenna reflector in a precise position to enable communications with a satellite thousands of miles above the earth." Appeal Br. 9; see Reply Br. 1. Our reviewing court has explained that "[ t ]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill." Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). Criteria for determining whether prior art is analogous may be summarized as "( 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." Id. at 1359 (quoting Irz re Clay; 966 F.2d 656; 658-59 (Fed. Cir. 1992)). "A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Id. (citinginnovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed.Cir.2011) (quoting Clay, 966 F.2d at 659)). Appellant's argument that Woodard is non-analogous art is not convincing. The Examiner states, and we agree, that Woodard "is reasonably pertinent to the particular problem" facing Appellant at the time of invention because, "[a]lthough [A]ppellant has purported [the] problem to 6 Appeal2014-006480 Application 12/557,579 be precisely positioning a parabolic antennae, in this case the particular ... problem is actually increasing the precision of cable/pulley transmissions." Ans. 14--15; see id. at 15 (citing Woodard, col. 2, 11. 40-51). Appellant's Specification states that their "invention relates ... in particular to a positioning apparatus in which a driving element is rotatably connected to a driven element by a cable for positioning the driven element." Spec., para. 2. The Specification also discloses that "in the preferred embodiment the wedging of the cable in the grooves causes an increase in the contact forces between the cable and the driving and/or driven element(s) thus increasing friction and reducing the likelihood that the cable will slip." Id., para. 5. Similarly, Woodard discloses: Referring now to FIG. 6, the grooves 40 and 42 in the main, double pulley 12 are preferably, generally U-shaped in cross section with their side walls 52 and 54 diverging outwardly from the rounded bottoms 56. The diameter of the cable 46 is such that it normally rides well up in the grooves 40 and 42 and[,] \~1hen a load or tension is applied to one or both of the cable rt1ns 48 and 50, the cable is drawn somewhat deeper into said groove to increase the purchase therebetween to preclude the possibility of cable slippage in the grooves. Woodard, col. 2, 11. 41-51. Thus, both Appellant and Woodard address the problem of how to reduce slippage to increase precision of cable/pulley transmissions. As the Examiner explains, Woodard "teaches that one of ordinary skill [] in [the] art could expect to reduce cable slippage resulting in increased precision, [and] ... one of ordinary skill in the art looking to increase precision in a cable/belt transmission would in fact look to other cable/belt transmissions for a solution to this problem." Ans. 15. Appellant argues that Woodard does not disclose that the cable deforms where it contacts the side walls of the groove. See Appeal Br. 10; 7 Appeal2014-006480 Application 12/557,579 see also Reply Br. 3. In particular, Appellant asserts "that the cable deformation limitations of [the] independent claims are not 'inherent' in the Woodard patent." Reply Br. 3; see also Ans. 17 (the Examiner finding that "in order for the cable of Woodard to be 'drawn somewhat deeper into said groove' [instead of riding well up in the grooves as it normally does,] the cable would inherently need to be slightly deformed" (quoting Woodard, col. 2, 11. 41-51)). Appellant's argument is not convincing because it amounts to a simple assertion that deformation of Woodard's cable in the groove is not inherent unaccompanied by any evidence or persuasive technical reasoning to rebut the Examiner's finding of inherency, which rests on a sufficiently sound basis to shift the burden to Appellant to prove that this would not be the case. See In re Spada, 911 F.2d 705, 708 ("when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not"). Appellant argues that Woodard "makes no mention of the critical component of stiffness improvement because his application does not demand it." Appeal Br. 10. In particular, Appellant asserts that Woodard "shows one how to improve traction capacity of a pulley/cable drive but stops short of providing stiffness improvements vital to applications such as modem satellite antenna positioners." Id. This argument is not convincing because, as Woodard's cable is drawn deeper into the groove (see Woodard, col. 2, 11. 41-51), the increased purchase increases friction forces and reduces slippage. As such, stiffness of the system is increased. Moreover, with respect to Appellant's argument that Woodard increases traction capacity but does not improve stiffness, Appellant's Specification describes: 8 Appeal2014-006480 Application 12/557,579 The wedging of cable 22 within groove 34 also increases the friction between the walls 48 and 50 of groove 34 and cable 22. Thus, the contact forces are increased thereby enhancing the traction capacity of the interface between the cable and the groove. This in turn will improve the stiffness of the system by substantially eliminating the slipping between the cable and the driven element and, in addition, substantially reduces stretching of the cable. Spec., para. 25 (emphasis added). Therefore, as acknowledged in Appellant's Specification, Woodard's increased traction capacity would improve system stiffness. Appellant argues that the Examiner erred in determining that the claimed angle between the side walls of the groove "generally being between 32° and 40°" would have been obvious to one of ordinary skill in the art. See Appeal Br. 11-12; Reply Br. 2; see also Final Act. 5 (determining that "[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to provide this angle, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art"). In particular, Appellant asserts that "[ t ]he angle between the side walls is critical in the formation of the 'V' shaped grooves in [Appellant's] drum so as to enable the cable to be wedged within the grooves to provide high friction force between the cable and grooves." Appeal Br. at 12. Appellant's argument is not persuasive of error. Where the general conditions of a claim are disclosed in the prior art, and the optimized variable is a result-effective variable, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012); see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a 9 Appeal2014-006480 Application 12/557,579 result[-]effoctive variable ... is ordinarily within the skill of the art.") (citations omitted). Here, Woodard discloses cable grooves having side walls that diverge outwardly from the bottom. See Woodard, Fig. 6; col. 2, 11. 43--44. Figure 6 of Woodard specifically shows that side walls 52 and 54 flare outwardly and form a V-shape with an angle in between. See id. Woodard also discloses that "[t]he diameter of the cable 46 is such that it normally rides well up in the grooves 40 and 42 and[,] when a load or tension is applied to one or both of the cable runs 48 and 50, the cable is drawn somewhat deeper into said groove to increase the purchase therebetween to preclude the possibility of cable slippage in the grooves." Id. col. 2, 11. 45-51 (emphasis added). Thus, Woodard teaches that applying tension to a cable and drawing it deeper into a groove produces a wedging effect in which the friction force between the cable and the side walls is increased and, thus, cable slipping is reduced. 3 A person having ordinary skill in the art would recognize that, for a given cable diameter, as the cable is drawn into the groove, the amount of the wedging effect is directly related to the angle between the side walls of the groove. As such, Woodard evidences recognition in the prior art that the amount of wedging and friction between the cable and a V-shaped groove is related to the angle between the groove side walls. Thus, Woodard provides a sufficient factual basis to support the Examiner's determination that the angle between side 3 We note that this disclosure of Woodard is consistent with Appellant's Specification, which states that, "[ s ]ince cable 22 is forced into groove 34 under substantial load, cable 22 becomes wedged between side walls 48 and 50." Spec., para. 24. "This wedging results in higher contact forces and higher pressure between the cable 22 and the drum 24 and/or the driving element 20 which reduces the likelihood that the cable 22 will slip[,] thus[,] increasing the positioning precision for the reflector 12." Id. 10 Appeal2014-006480 Application 12/557,579 walls is an art-recognized result-effective variable and that the claimed angle range amounts to nothing more than routine optimization. For the above reasons, Appellant does not apprise us of error in the rejection of claim 1 as unpatentable over McGill, Carson, and Woodard. Thus, we sustain the rejection of claim 1 and its dependent claims 2, 6, 8-10, and 20, for which Appellant does not present any separate arguments, as unpatentable over McGill, Carson, and Woodard. See Appeal Br. 6-10. Claim 4: In contesting the rejection of dependent claim 4, Appellant argues that neither McGill nor Carson discloses that "[t]he diameter of the cable is ... greater than the width of the bottom of the grooves." Appeal Br. 11. This argument is not convincing because it is not responsive to the rejection as articulated by the Examiner. Here, the Examiner did not rely on McGill or Carson for disclosing a cable diameter greater than the width of the bottom of the groove, but, instead, relied on Woodard for teaching this limitation. See Final Act. 5 (citing Woodard, Fig. 6). Appellant also repeats the arguments, discussed above, that Woodard is non-analogous art and that there is no teaching, suggestion, or motivation to combine Woodard with McGill and Carson. Appeal Br. 11. Appellant also emphasizes that the angle formed between the side walls in the grooves is critical in enabling the cable to be wedged within the grooves. Id. at 12. For the reasons discussed above, these arguments fail to apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claim 4. Accordingly, we sustain the rejection of claim 4 as unpatentable over McGill, Carson, and Woodard. 11 Appeal2014-006480 Application 12/557,579 Rejection II - Obviousness based on McGill and Woodard Incontestingtherejectionofclaims 11, 12, 14, 18, 19, and21, Appellant relies on the same arguments, discussed above, asserted for patentability of claims 1, 2, 4, 6, 8-10, and 20. Appeal Br. 11. For the same reasons that Appellant's arguments do not apprise us of error in the rejection of claims 1, 2, 4, 6, 8-10, and 20, these arguments do not apprise us of error intherejectionofclaims 11, 12, 14, 18, 19,and21under35U.S.C.§103(a) as unpatentable over McGill and Woodard, which we therefore sustain. DECISION The Examiner's decision rejecting claims 1, 2, 4, 6, 8-12, 14, and 18- 21 is 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation