Ex Parte Zumbusch

Patent Trial and Appeal Board

Nov 8, 2012

10980089 (P.T.A.B. Nov. 8, 2012)

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.
10/980,089 11/03/2004 Steven J. Zumbusch 01-HSP-140 6424
200 7590 11/09/2012
EATON CORPORATION
EATON CENTER
1111 SUPERIOR AVENUE
CLEVELAND, OH 44114
EXAMINER
KRAUSE, JUSTIN MITCHELL
ART UNIT PAPER NUMBER
3658
MAIL DATE DELIVERY MODE
11/09/2012 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 STEVEN J. ZUMBUSCH
____________

Appeal 2010-010146
Application 10/980,089
Technology Center 3600
____________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Steven J. Zumbusch (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 11 and 12. Claims 1-10
and 13-15 are withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Appellant’s claimed invention relates to “control assemblies of the
type including some sort of handle adapted for manual manipulation by the
vehicle operator.” Spec., para. [0002]. Claims 11 and 12, reproduced
below, are on appeal.
11. A control assembly adapted for use on a vehicle to be
controlled in response to variations in first and second control
signals, said control assembly comprising a handle member
adapted to be held in a hand that is connected to an arm of a
vehicle operator, said handle member being moveable in
forward and reverse directions to generate said first control
signal, and being moveable in left and right directions to
generate said second control signal; characterized by:
(a) said handle member being mounted on a connector
member and moveable in forward and reverse directions about
a first pivot axis, and being moveable in left and right directions
about a second pivot axis;
(b) said handle member and said connector member
being configured such that said first pivot axis substantially
intersects an axis defined by the arm of the vehicle operator
when said handle member is held in the hand of the vehicle
operator, said axis extending radially outward from said handle
member, wherein the substantial intersection of said first pivot
axis and said axis is adapted to minimize unintended inputs to
said handle member in said forward and reverse directions; and
(c) said handle member and said connector member
being configured such that said second pivot axis is oriented
substantially parallel to said axis of the arm of the vehicle
operator, to minimize unintended inputs to said handle.

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12. A control assembly as claimed in claim 11, characterized
by said handle member and said connector member being
configured such that said second pivot axis is oriented
coincidental with said axis of the arm of the vehicle operator.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 11 and 12 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 11 and 12 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Schottler (US 5,969,520; iss. Oct. 19, 1999).
ISSUES
The issues presented by this appeal are:
Would one skilled in the art understand what is encompassed by
claims 11 and 12 when those claims are read in light of the Specification?
Does Schottler disclose a handle member and a connector member
“configured such that said first pivot axis [about which said handle member
is moveable in forward and reverse directions] substantially intersects an
axis defined by the arm of the vehicle operator when said handle member is
held in the hand of the vehicle operator, said axis extending radially outward
from said handle member, wherein the substantial intersection of said first
pivot axis and said axis is adapted to minimize unintended inputs to said
handle member in said forward and reverse directions” as called for in
claim 11?
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ANALYSIS
Indefiniteness
The Examiner determined that claim 11 is indefinite because it defines
the device with respect to an axis which is defined by the arm of a vehicle
operator. Ans. 4. The Examiner explained that because the vehicle operator
is free to move in any manner, the scope of the claim cannot be determined.
Id. The Examiner further explained that “Appellant has no control over how
the end user will actually interact with the device. The claim is therefore
unclear because numerous situations exist where appellant’s exact device
could be used for its intended purpose and not satisfy the claim that purports
to cover it.” Ans. 6. Appellant argues that claim 11 is definite because
“both the angle of the arm of the operator and the manner in which the
handle member is gripped is specifically described in Applicant’s
application.” App. Br. 3.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Independent claim 11 recites “a handle member adapted to be held
in a hand that is connected to an arm of a vehicle operator” where the handle
member is “mounted on a connector member and moveable in forward and
reverse directions about a first pivot axis” and is “moveable in left and right
directions about a second pivot axis.” Independent claim 11 then recites that
the handle member and connector member are “configured such that said
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first pivot axis substantially intersects an axis defined by the arm of the
vehicle operator when said handle member is held in the hand of the vehicle
operator” and “said second pivot axis is oriented substantially parallel to said
axis of the arm of the vehicle operator.”
The description of the embodiments provided in Appellant’s
Specification showing particular orientations of the arm of the operator and
the manners in which the handle member is gripped do not limit the manner
in which the handle member of claim 11 is gripped. While the Specification
should be used to interpret the meaning of a claim, it is improper to confine
the claims to the embodiments found in the Specification. In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citations omitted).
The language of claim 11, however, limits the manner in which the operator
grips the handle member by calling for “said axis [defined by the arm of the
vehicle operator when said handle member is held in the hand of the vehicle
operator] extending radially outward from said handle member.” We
interpret this claim language, when read in light of Appellant’s
Specification, to call for the axis defined by the operator’s arm to extend
radially outward from a longitudinal axis of the handle member. See, e.g.,
Figures 1 and 3 in which the axis defined by the operator’s arm extends
radially outward from a longitudinal axis of handle member 33, 57.
The fact that the claim calls for the axis defined by the arm of the
vehicle operator to extend radially outward from the handle member, rather
than limiting the claim more narrowly to, for example, a particular manner
of gripping the handle member in which the palm of the operator’s hand
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engages the outside of the handle member and the fingers of the operator’s
hand curl about the forward portion of the handle member, is a matter of
breadth, not indefiniteness. Merely that a claim is broad does not mean that
it is indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re
Gardner, 427 F.2d 786, 788 (CCPA 1970). As such, we reverse the
rejection of claim 11 under 35 U.S.C. § 112, second paragraph.
The Examiner determined that claim 12 is also indefinite because the
claim establishes no reference frame to determine whether the second pivot
axis is coincidental with the axis of the arm of the vehicle operator. Ans. 4.
It appears that the Examiner’s rejection is again based on the fact that the
claim language does not limit the manner in which the vehicle operator must
grasp the handle member, and as such, the claim is so broad as to render it
indefinite. We reverse the rejection of claim 12 under 35 U.S.C. § 112,
second paragraph, for the same reason as claim 11 in that claim breadth is
not indefiniteness.
Anticipation
The Examiner determined that Schottler discloses a handle member
(joystick 18) mounted on a connector member (ball 16) and moveable about
first and second pivot axes (X and Y axes). Ans. 4-5. Appellant argues that
“the joystick mechanism 10 of Schottler does not minimize unintended
inputs to the handle member.” App. Br. 5. Appellant explains that “[a]n
axis that extends radially outward from the joystick shaft 18 would not
intersect the x or y axes of the ball 16 of Schottler.” Id. The Examiner
responds that because Appellant’s Specification describes that “within the
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scope of the invention, there can be some separation between the axis A of
the operator’s arm and the particular pivot axis” the device of Schottler, in
which there would be some separation between the axis of the operator’s
arm and the x and y axes, would still fall within Appellant’s invention. Ans.
8. The Examiner also determined that “the operator is free to grip the device
of Schottler in any manner, and thus the pivot axis substantially intersecting
an axis which extends radially outward from the handle member is satisfied.
For example, see axis Z of Schottler, which intersects both axis X and axis
Y.” Id.
Claim 11 calls for:
said handle member and said connector member being
configured such that said first pivot axis substantially intersects
an axis defined by the arm of the vehicle operator when said
handle member is held in the hand of the vehicle operator, said
axis extending radially outward from said handle member,
wherein the substantial intersection of said first pivot axis and
said axis is adapted to minimize unintended inputs to said
handle member in said forward and reverse directions.
Despite the fact that Appellant’s Specification may allow for some
separation between the axis A of the operator’s arm and the first pivot axis,
the language of claim 11 does not allow for the substantial separation
between the axes as disclosed in Schottler. See App. Br. 5 (“As a result of
the joystick shaft being disposed above the center of rotation 22, the joystick
mechanism 10 of Schottler does not minimize unintended inputs to the
handle member.”) Instead, claim 11 recites that the first pivot axis
“substantially intersects” the axis A so as “to minimize unintended inputs to
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said handle member in said forward and reverse directions.” We decline to
construe “substantially intersects” so broadly as to encompass the
conventional “two-axis” joystick distinguished in Appellant’s Specification.
Spec., paras. [0005]-[0006].
For these reasons, Schottler does not disclose each and every element
of independent claim 11. As such, Schottler does not anticipate independent
claim 11 or its dependent claim 12.
CONCLUSIONS
One skilled in the art would understand what is claimed by claims 11
and 12 when those claims are read in light of the Specification.
Schottler does not disclose a handle member and a connector member
“configured such that said first pivot axis [about which said handle member
is moveable in forward and reverse directions] substantially intersects an
axis defined by the arm of the vehicle operator when said handle member is
held in the hand of the vehicle operator, said axis extending radially outward
from said handle member, wherein the substantial intersection of said first
pivot axis and said axis is adapted to minimize unintended inputs to said
handle member in said forward and reverse directions” as called for in
claim 11.
DECISION
We REVERSE the decision of the Examiner to reject claims 11 and
12.
REVERSED

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