Ex parte ALCONE et al.

Board of Patent Appeals and Interferences

Oct 29, 1998

08046056 (B.P.A.I. Oct. 29, 1998)

Application for patent filed April 12, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JERRY M. ALCONE, KIRK A. LOHNES and JAMES W. JETER
_____________
Appeal No. 96-2143
Application 08/046,0561
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
2, 9, 10, and 15 through 19. Subsequent to the final
rejection, amendments (Paper Nos. 10 and 16) were entered by
the examiner amending claims 1 and 9, and canceling claims 2,
Appeal No. 96-2143
Application 08/046,056
On the last two pages of the supplemental examiner’s answer of July 29,2
1996, the examiner offers an explanation as to why the content of claim 1,
previously under final rejection based upon the combined teachings of
Froeschle and Ivers (35 U.S.C. § 103), is now considered allowable. However,
in light of our assessment of the low force actuator system of claim 9
relative to the combined teachings of Froeschle and Ivers, infra, it appears
appropriate to us for the examiner to again consider the low force actuator
system of claim 1 relative to this prior art and take appropriate action.
2
10, and 17
through 19. On page 2 of the answer (Paper No. 14), now
superseded by the supplemental examiner's answer of July 29,
1996, the examiner indicated that claim 1 was now considered
to be allowable. Non-elected claims 3 through 8, 11 through2
14, and 20 through 22, the only other claims remaining in the
application stand withdrawn from consideration by the
examiner. In light of the above, we have before us for review
on appeal only claims 9, 15, and 16.
Appellants’ disclosed invention pertains to a low force
actuator system. An understanding of the invention can be
derived from a reading of exemplary claims 9 and 15, copies of
which appear in the main brief (Paper No. 13).
As evidence of obviousness, the examiner has applied the
documents listed below:
Appeal No. 96-2143
Application 08/046,056
An appeal brief supplement (Paper No. 19) was submitted in response to3
an order for compliance (Paper No. 18).
3
Ivers et al. (Ivers) 4,887,699 Dec. 19, 1989
Froeschle et al. (Froeschle) 4,981,309 Jan. 01, 1991
The following rejection is the sole rejection before us
for review.
Claims 9, 15, and 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Froeschle in view of Ivers.
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the
supplemental examiner’s answer of July 29 1996., while the
complete statement of appellants’ argument can be found in the
main and reply briefs (Paper Nos. 13 and 16). 3
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
Appeal No. 96-2143
Application 08/046,056
In our evaluation of the applied patents, we have considered all of the4
disclosure thereof for what it would have fairly taught one of ordinary skill
in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not only the
specific teachings, but also the inferences which one skilled in the art would
reasonably have been expected to draw from the disclosure. See In re Preda
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The test for obviousness is what the combined teachings of references5
would have suggested to one of ordinary skill in the art. See In re Young, 927
F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
4
appel-lants’ specification and claims, the applied patents,4
and the respective viewpoints of appellants and the examiner.
As a con-
sequence of our review, we make the determination which
follows.
We affirm the examiner’s rejection of claims 9, 15, and
16.
In applying the test for obviousness, we reach the con-5
clusion that the low force actuator system of claim 9, and the
low force actuator of claims 15 and 16, would have been
obvious to one having ordinary skill in the art on the basis
of the combined teachings of Froeschle and Ivers. More
specifically, it is our opinion that one of ordinary skill in
Appeal No. 96-2143
Application 08/046,056
5
the art would have been motivated to utilize an accelerometer
with the Froeschle actuator since an accelerometer was, at the
time of the present invention, a control alternative in the
art, as exemplified by the Ivers’ disclosure.
This panel of the board is not in accord with appellant’s
view that combining Froeschle with Ivers might yield at least
an
accelerometer controlled actuator system “ but not a low
force, high frequency opposed system” (main brief, page 8).

The patent to Froeschle clearly teaches a linear electric
motor 32 as a controllable force source such that “[a]ny
varia-
tion in force that is desired may be effected by
correspondingly varying the control signal” (column 3, lines 8
through 11). Further, Froeschle expressly points out that
control is at “all meaningful frequencies” (column 1, lines 53
through 55).
Appeal No. 96-2143
Application 08/046,056
We note appellant’s indication in the specification (page 4, lines 28,6
29) that the proof mass can be a separate mass, but is typically one or more
magnets of the actuator 21 (electromagnetic actuator).
6
Considering the noted teaching of Froeschle, in
particular, it is apparent to us that one having ordinary
skill in the art would have readily understood the modified
Froeschle system as encompassing an actuator or means capable
of opposing or sized to counter relatively small high
frequency forces, as now set forth in claims 1 and 9. Thus,
appellants’ argument alone simply does not persuade us that
the evidence of obviousness is deficient regarding the content
of claims 1 and 9. As to the argument addressed to claim 16
regarding a proof mass (main brief, page 8), we disagree with
appellants view that Froeschle, in partic-ular, would not have
been suggestive thereof. As we see it, the
permanent magnets of Froeschle (column 3, line 21) would
clearly have been suggestive of the broadly recited “proof
mass” of claim 16. 6
In summary, this panel of the board has affirmed the
rejection of claims 9, 15, and 16 under 35 U.S.C. §103.
Appeal No. 96-2143
Application 08/046,056
7
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
vsh
Appeal No. 96-2143
Application 08/046,056
8
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