Ex Parte Miners

Patent Trial and Appeal Board

Apr 17, 2018

13132030 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/132,030 05/31/2011
20350 7590 04/19/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Allan Graeme Miners
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.
73079-807413 1378
EXAMINER
COLLINS, DANIELS.
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN GRAEME MINERS
Appeal2017-004464
Application 13/132,030
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision1 rejecting claims 6-13, 16-18, 21, and 22. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 6, 21, and 22 are the independent claims on appeal. Claim 6,
1 Appeal is taken from the Final Office Action dated February 1, 2016.
2 The Examiner's indication in the Office Action Summary of the Final
Office Action that these claims are allowed is a typographical error. Final
Act. 1.
Appeal2017-004464
Application 13/132,030
reproduced below, is illustrative of the claimed subject matter on appeal.
6. An actuator assembly, comprising:
a linear actuator comprising an elongate housing having
an elongate axis and having a working end and an indicator end,
the linear actuator further comprising:
a piston arranged for linear travel through the housing, the
piston comprising a shaft having a hollow interior, wherein the
shaft extends out of the working end of the housing and is
movable linearly along the elongate axis;
a twisted bar having a piston end and a connector end,
wherein the piston end is stored within the hollow interior of the
shaft, with the twisted bar extending through a plurality of
bearings and an aperture defined by the piston such that linear
motion of the piston rotates the twisted bar, wherein the twisted
bar comprises a rectangular body having a length, a width and a
thickness, wherein the width is larger than the thickness, the
twisted bar twisting around a longitudinal axis of the twisted bar;
and
an external connector coupled with the connector end of
the twisted bar so that linear movement of the piston causes
rotation of the external connector;
an accessory unit with a rotary input shaft that provides a
position indicating output responsive to a rotary position of the
shaft; and
a bracket operably coupled to the indicator end of the
housing to support the accessory unit in a fixed position relative
to the housing, to allow the shaft of the accessory unit to couple
with the external connector such that movement of the piston
causes rotation of the external connector that rotates the input
shaft of the accessory, to thereby generate the position indicating
output of the accessory unit indicating a position of the piston
relative to the working end of the housing.
2
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Application 13/132,030
THE REJECTIONS
I. Claims 6-13, 17, 18, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Muller (US 2006/0207421 Al; published Sept.
21, 2006), Appellant's Admitted Prior Art (Spec. i-fi-13-5, Figs. 1-2)),
Tikkanen (US 2005/0000350 Al; published Jan. 6, 2005), and Cederquist
(US 1,511,049; issued Oct. 7, 1924).
II. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Muller, Appellant's Admitted Prior Art, Tikkanen, Cederquist, and
Geraci (US 4,089,229; issued May 16, 1978).
OPINION
Rejection I
Appellant argues claims 6, 8-13, 18, 21, and 22 as a group and
presents separate arguments for each of dependent claims 7 and 17 discussed
infra. See Appeal Br. 13-15. We select claim 6 as representative and
address Appellant's arguments regarding claims 7 and 17 separately. See 37
C.F.R. § 41.37(c)(l)(iv). Claims 8-13, 18, 21, and 22 stand or fall with
claim 6.
Independent claim 6
Regarding independent claim 6, the Examiner finds, inter alia, that
Muller generally discloses the claimed actuator assembly, including a
twisted bar (i.e., spindle 5) within a hollow piston 2, such that linear motion
of the piston rotates the twisted bar, and also an external connector (i.e.,
rotary disk 7) coupled to the twisted bar and piston, such that linear
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Appeal2017-004464
Application 13/132,030
movement of the piston causes rotation of the external connector. Final Act.
5 (citing Muller i-f 23, Figs. 1-7). The Examiner determines, however, that
Muller fails to disclose that "the twisted bar comprises a rectangular body
having a length, a width, a thickness, wherein the width is larger than the
thickness" or that the twisted bar extends through bearings, as claimed. Id.
The Examiner also determines that Muller fails to disclose the claimed
accessory unit and bracket. Id.
The Examiner relies on Tikkanen for disclosing a twisted bar (i.e.,
twisted slide 38) with the claimed dimensions, "which rotates via an opening
in the piston." Final Act. 7 (citing Tikkanen, Fig. 1 ). The Examiner reasons
that it would have been obvious to replace the twisted bar of Muller with
Tikkanen's rectangular twisted bar because "it is a simple substitution of
components providing the identical functionality," namely, "a response of
rotational position on the external connector." Id.; see also Ans. 3 ("it
would have been obvious ... to obtain predictable results by simply
substituting the threaded bar actuation means [of Muller] with that of the
twisted ... actuation means ... [of] Tikkanen"). The Examiner further
determines that one skilled in the art "would realize that modifying M[u]ller
with Tikkanen would provide the benefit of only allowing the rotational
movement to be one cycle allowing for more precise rotational responses."
Final Act. 7-8; see, e.g., Tikkanen i-f 42 (disclosing that the invented cylinder
is compact with a stroke that is precisely controlled).
The Examiner relies on Cederquist for disclosing a twisted bar
extending through bearings 20. Final Act. 8 (citing Cederquist 2:80-84, Fig.
4
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Application 13/132,030
3). The Examiner reasons that it would have been obvious to further modify
Muller to incorporate Cederquist's teachings, by positioning bearings in the
aperture of the piston "for more accurate translation of movement from the
piston to the twisted bar as a result of the reduced friction between the
parts." Id.
The Examiner relies on the Specification 3, as Admitted Prior Art, for
disclosing that (i) the claimed accessory unit is known to be a "[ s ]tandard
rotary switch box or similar device" with a rotary input device, or
"[ s ]tandard connection shaft," for providing a position indicating output
responsive to a rotary position of the shaft (Final Act. 6 (citing Spec.
i-fi-13--4))); and (ii) the claimed bracket is a "[s]tandard mounting bracket" to
support the unit (id. (citing Spec. i123)); see also Ans. 4 (citing Spec. i18
(noting that "the actuator control accessories use 'a common standard
mounting pattern"'); see also Ans. 5 (citing Spec. i-f 10 (noting that
Appellant refers to the bracket as "' ... a standard off the shelf item"'), Fig.
2). The Examiner reasons that it would have been obvious
to modify M[ii]ller to incorporate the teachings of . . .
[Appellant's] Admitted Prior [A]rt by attaching the accessory
unit to the end of the actuator by using a bracket attached to the
indicator end of the housing because in doing so the accessory
unit allows the rotational output of the external connector to be
indicated to a controller, thereby giving the user a better sense of
. . . [the piston's] position . . . or providing the benefit of
automated control. Furthermore, attaching the accessory unit to
the actuator allows the actuator to be used not only for its linear
3 We refer to the Specification dated May 5, 2014, including the drawings.
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Appeal2017-004464
Application 13/132,030
functions but also for its rotational functions as suggested by
M[u]ller (i.e.[,] actuating switches, valve control). Also
providing a bracket allows for the accessory [unit] to be firmly
mounted to the actuator preventing any potential slipping
between the coupling.
Final Act. 6-7.
Appellant argues that the Examiner has improperly relied on
hindsight, because the Examiner has not provided reasons for modifying
Muller, in view of Tikkanen, Cederquist, and the Appellant's Admitted Prior
Art. Appeal Br. 13-14 (citing Jn re Fine, 837 F.2d 1071, 1075 (Fed. Cir.
1988) for the proposition that "[ o ]ne cannot use hindsight reconstruction to
pick and choose among isolated disclosures in the prior art to deprecate the
claimed invention"); see also Reply Br. 3. We disagree; rather, the
Examiner has provided, with respect to each proposed modification, support
from the prior art references or admissions made in the Specification, as set
forth supra.
Appellant also argues that modifying Muller as proposed by the
Examiner is not a simple substitution, because replacing Muller's spindle 5
with Tikkanen's twisted slide 38 "would be unable to translate linear motion
of the piston rod 3 into rotational motion without additional modifications,"
for example, the addition of bearings. Appeal Br. 14. Appellant submits
that the Examiner's proposed modification requires "a substantial redesign"
of Muller, including "changing the piston rod design, incorporating bearings,
and designing an appropriate connection between the twisted slide 3 8 and
the rotary disk 7." Id.; see also Reply Br. 2._ We are not persuaded by
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Appeal2017-004464
Application 13/132,030
Appellant's argument. Substituting Muller's spindle 5 with a twisted bar 38,
as taught in Tikkanen, would still allow the linear movement of Muller's
piston rod 3 to be translated into rotary motion to drive rotary disk 7. For
example, rather than the linear motion of Muller's piston rod 3 causing
spindle 5 to rotate by the internal screw thread 4a,, the linear motion of
Muller's piston rod 3 would cause a twisted bar (as taught in Tikkanen) to
rotate via passing the helical configuration of the bar through the opening in
piston rod3. Thus, the Examiner's reasoning is grounded in the principle of
simple substitution. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("when a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result").
Moreover, Appellant has not presented persuasive argument or
evidence that the addition of bearings (at the opening of Muller's piston), as
disclosed by Cederquist, to address friction, as further proposed by the
Examiner, represents a substantial redesign of Muller's actuator. Rather, we
agree with the Examiner that "[t]he bearings do not alter the functionality [of
Muller's actuator, as modified by Tikkanen,] but work to improve the
efficiency of the system," by "provid[ing] support for the bar [and]
preventing misalignment and also reduc[ing] the frictional wearing between
the components created by the translation of motion." Ans. 4. We also are
not persuaded that designing an appropriate connection between a twisted
slide and Muller's rotary disk 7 would involve a substantial redesign of
Muller's actuator, as opposed to a modification within the knowledge of one
7
Appeal2017-004464
Application 13/132,030
of ordinary skill in the art.
Appellant further argues that "the Examiner's rational[e] appears to be
conclusory" because Muller "already discloses the ability to precisely
control rotational responses of the actuator with a locking piston 29 that
engages the rotary disk." Appeal Br. 15 (citing Muller i-fi-136-42; Fig. 6).
We are not persuaded by Appellant's argument because as discussed supra,
the Examiner provides support for reasoning that the proposed modification
of Muller's slide for a twisted bar as disclosed in Tikkanen is a simple
substitution of one element for another known in the field to yield a
predictable result.
Appellant also argues that "none of the references disclose a bracket,"
as claimed, and that the Specification, and in particular Figure 2, is not
Admitted Prior Art. Appeal Br. 15. 4 Appellant submits that Figure 2 of the
Specification merely "demonstrates the feasibility of attaching a standard
rotary accessory to a rotary actuator," but does not admit that such use of a
standard bracket is known. Id.
Claim 6 recites, as disclosed supra, in relevant part, "a bracket
operably coupled to the indicator end of the housing to support the accessory
unit in a fixed position relative to the housing." The Specification discloses
that "FIG. 2 shows the simplicity of matching the two rotary devices
pictured in FIG. 1" (i.e., an actuator at the indicator end of the housing and
4 Appellant refers to original Figure lB,which corresponds to Figure 2 in the
replacement drawings submitted May 5, 2014.
8
Appeal2017-004464
Application 13/132,030
an accessory unit) and that "[e]ven the mounting bracket which joins the two
is a standard off the shelf item." Spec. i-f 10; see also id. i-f 53. Figure 2 of
the Specification is reproduced below.
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FlG. 2 ASSh'MBLED ROT'ARY ACTUATOR ANTI ACCESSORY
Figure 2 of the Specification depicts a rotary actuator attached to a
"Standard Rotary accessory" by a "Standard mounting bracket." See also
Spec. ,-r 25.
As set forth supra, the Examiner relies on Appellant's Specification
for admitting that it is known to use a standard bracket to join a standard
rotary actuator and a standard rotary switchbox. See, e.g., Spec. i-fi-1 3-10,
Figs. 1, 2. With reference to Figure 2, the Specification states "FIG. 2 shows
the simplicity of matching the two rotary devices pictured in FIG. 1" and
that "[ e ]ven the mounting bracket which joins the two is a standard off the
9
Appeal2017-004464
Application 13/132,030
shelf item." Spec. i-f 10. Appellant argues, however, that although Figure 2
depicts one way of using a standard bracket, Figure 2 is not an admission
that such a bracket is known to connect two standard rotary devices, as set
forth supra. However, the Specification also expressly discloses that "[t]he
valve assembly [as depicted in Figure 9] is identical to [Figure 8], the
positioner however attaches to the invention with just a standard bracket
and four screws, as used in a standard rotary actuator assembly as shown in
[Figure 2]." Id. i-f 53. Thus, a preponderance of evidence supports the
Examiner's determination that Figure 2 depicts a known use for a standard
mounting bracket, namely, for joining standard rotary-to-rotary devices, and
is thus, admitted prior art.
Muller discloses that the rotation from rotary disk 7 at the indicator
end of Muller's housing can be "utilized for various purposes in connection
with a fluid cylinder." Muller ,-r 24; see also Muller ,-r 10 (generally
recognizing that "[t]he conversion of the axial motion of the cylinder to a
rotary motion enables this rotary motion to be exploited so as to perform a
great variety of functions"). Thus, we are not apprised of error in the
Examiner's finding that it is known to use brackets to attach (and therefore,
support in a fixed position) a standard accessory unit to the indicator end of
a linear actuator.
Accordingly, we sustain the Examiner's rejection of independent
claim 6, and claims 8-13, 18, 21, and 22 fall therewith.
Dependent claim 7
Dependent claim 7, which depends from independent claim 6, recites,
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Appeal2017-004464
Application 13/132,030
in relevant part, "wherein the external connector and input shaft are arranged
for tongue and groove type connection in an axial direction." Appeal Br. 8
(Claims App.). The Examiner finds that Muller's Figure 6 depicts "[an]
external connector containing a radial groove," and also determines that
Figures 1 and 2 of the Specification depict the claimed tongue and groove
type connection as Admitted Prior Art. Final Act. 8-9. The Examiner
reasons that it would have been obvious to use such a coupling between a
standard accessory unit and Muller's connection disk 7, because "such a
coupling means is standardized in the industry for accessory devices ... to
provide effective transmission means." Id. at 9. The Examiner also
determines that "the modifications suggested to M[u]ller would not change
its function at all but allow it to be attached to other sensors and accessory
. " A 5 umts. ns ..
Appellant argues that the Examiner's rationale is "based on hindsight"
and that the Examiner's modification "would not work without a substantial
redesign of M[u]ller." Appeal Br. 16. In support, Appellant submits that by
coupling Muller's locking piston 29 to locking disk 7, "there would be no
rotational movement transmission to the accessory unit because the locking
piston 29 does not rotate." Id.
Muller's Figure 6 is reproduced below.
11
Appeal2017-004464
Application 13/132,030
Figure 6 of Muller depicts a rotary disk 7 (i.e., an external connector, as
claimed) and an input shaft of a locking piston 29 (i.e., similar to an input
shaft of an accessory unit, as claimed) arranged for tongue and groove type
connection in an axial direction, as claimed. Figure 1 of the Specification is
reproduced below.
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FIG. 1 COMMON MOUNTJNG DIMENSTONS
12
Appeal2017-004464
Application 13/132,030
Figure 1 of the Specification depicts a tongue and groove type connection
between a standard accessory unit and the connection end of a rotary
actuator, disclosing that such structures have standard dimensions.
We are not persuaded by Appellant's argument. The Examiner relies
on the embodiment depicted in Muller's Figure 6 as merely showing that
tongue and groove like connections are known between Muller's rotary disk
7 (i.e., external connector) and the input shaft of another component-here,
a locking piston. Moreover, we are not apprised of error in the Examiner's
finding that such a connection is well known, in view of Figure 1 of the
Specification. 5 As set forth supra, the Examiner relies on Appellant's
Specification, as Admitted Prior Art, for disclosing that the claimed
accessory units are also known, a finding which is not disputed by
Appellant. Thus, the Examiner's rationale for modifying Muller's actuator,
as depicted in Figure 1, as modified by Appellant's Admitted Prior Art to
include an accessory unit, to also include a tongue and groove type
connection between the accessory unit and Muller's rotary disk 7 (i.e.,
external connector) has rational underpinning and factual support; i.e., the
Examiner did not improperly rely on hindsight bias. Additionally, Appellant
has not provided persuasive argument or evidence that the Examiner's
5 Figure 1 shows the "most common" mounting dimensions. Spec. ,-r 8
("[T]he manufacturers of actuator control accessories design them for rotary
actuators and all manufacturers today make to a common standard of
mounting pattern to allow different manufacturer's devices to be used on
other manufacturer's actuators.").
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Application 13/132,030
proposed modifications involve a substantial redesign of Muller's actuator.
Accordingly, we sustain the Examiner's rejection of claim 7.
Dependent claim 17
Dependent claim 17, which depends from independent claim 6,
recites, in relevant part, "wherein the accessory unit comprises a rotary
switchbox, and a positioner or indicator to provide that indicates [sic] the
linear position of the piston." Appeal Br. 8 (Claims App.). The Examiner
finds that Muller may be further modified to meet the limitations of claim
17, because the Specification, as Admitted Prior Art, discloses that it is
known to use a rotary switchbox having a positioner. Final Act. 10 (citing
Spec. ,-r 4, Fig. 2).
Appellant argues that the Examiner's rationale is "based on hindsight
bias and would not work." Appeal Br. 16. Appellant also argues that the
Specification "does not disclose an accessory unit that combines a rotary
switch box with a positioner or indicator," as claimed. Id.
Notably, we cannot find written description support in the
Specification for combining a rotary switch box with a positioner or
indicator into a single accessory unit. See, e.g., Spec. i-f 46 ("FIG. 7 shows
the invention with a standard rotary positioner mounted," explaining that
"[a]s the linear to rotary conversion is done interlay, a standard rotary
positioner or switch box bolts directly on to the top of the actuator exactly as
it would to a standard rotary actuator as shown in FIG. 2 ... " (emphasis
added)); see also id. at Fig. 7 ("Rotary positioner or switchbox" (emphasis
added)); see also claims 1--4 as originally filed.
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Application 13/132,030
Notwithstanding, we are not apprised of error in the Examiner's
finding that rotary switchboxes or indicators are well known in the art for
use as accessory units for linear actuators, and we further determine that
modifying Muller to incorporate an accessory unit with these combined
functions (i.e., a rotary switchbox and indicator) would be within the general
knowledge of someone skilled in the art, in view of Muller's teachings that
the resulting rotation of rotary disk 7 can be utilized for various purposes, as
set forth supra. In other words, we understand the Examiner's position to be
that the inclusion of a combined switchbox and indicator accessory unit into
Muller's actuator merely constitutes combining prior art elements according
to known methods to yield predictable results. See KSR, 550 U.S. at 401.
Accordingly, we sustain the Examiner's rejection of claim 17.
Rejection II
Appellant argues that "Geraci is unable to correct the deficiencies of
M[u]ller, Appellant's ... [A]dmitted [P]rior [A]rt, Tikkanen, and
Cederquist," as applied to independent claim 6, in Rejection I supra. Appeal
Br. 17. However, because we do not agree that there are deficiencies in the
prior art as applied by the Examiner to claim 6, as set forth supra, we sustain
the Examiner's rejection of claim 16.
DECISION
The Examiner's rejections of claims 6-13, 16-18, 21, and 22 are
affirmed.
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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
16