Ex Parte Ametek, Inc.

Board of Patent Appeals and Interferences

Jun 9, 2009

90006434 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMETEK, INC.,
Appellant and Patent Owner
____________

Appeal 2008-005904
Reexamination Control 90/006,434
Patent 6,236,293 B1
Technology Center 2800
____________

Decided:1 June 9, 2009
____________

Before SCOTT R. BOALICK, JOHN C. KERINS, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
Ametek, Inc.2 appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1, 2, and 4-7. Claim 3, the only other pending claim, has

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
2 Ametek, Inc. is the real party in interest and the current owner of the patent
under reexamination.
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been indicated as patentable and/or confirmed. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Albright International, Ltd. and Curtis Instruments, Inc. on October 31,
2002 of United States Patent 6,236,293 B1 issued to Richard D. Forster on
May 22, 2001, based on United States Patent Application 09/507,349 filed
February 18, 2000.
Patentee’s invention relates to magnetic latching contactors that use
electrical current pulses to change switching positions (Spec. col. 1, ll. 18-
21). The contactors have multiple stable switching positions, are reliable,
exhibit a relatively high degree of manufacturability, and are extendable to a
wide variety of switched current ranges (id. at col. 2, ll. 21-25).
Claim 1, the only independent claim on appeal, reads as follows:
1. An improved magnetic latching contactor comprising:

a stationary assembly;

a moveable assembly slidably coupled with the stationary
assembly;

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a contact assembly coupled with the stationary assembly and
with the moveable assembly and movable selectively between a
first stable switching position, where an electrical closed circuit
is established, and a second stable switching position, where an
electrical open circuit is established;

a coil assembly that is included in the stationary assembly, that
has a longitudinal central axis and that has electrical coil
windings which have a first end and a second end, which are
annularly disposed about and define a central inner axial cavity
extending between the first and second ends, which have a
central axis coaxial with the longitudinal central axis of the
conductive coil assembly, and which include winding terminals
for supplying electric current to the electrical coil windings so
that when electrical current is supplied to the electrical coil
windings, a magnetic field will selectively be established so as
to selectively bias the movable assembly toward one of the first
stable switching position and the second stable switching
position; and a permanent magnet that is disposed within the
central inner axial cavity adjacent to the first end of the central
inner axial cavity so that the magnetic force field of the
permanent magnet is parallel with the central longitudinal axis
of the conductive coil assembly; and

the movable assembly including a movable core that is
connected with the contact assembly, that is disposed in the
central inner axial cavity adjacent to the second end of the
conductive coil assembly, that is movable axially in the inner
axial cavity between a first position in which the movable
assembly is in the first stable position and where the movable
core is axially adjacent to the permanent magnetic [sic] and a
second position in which the movable assembly is in the second
stable position and where the movable core is axially spaced
from the first position; and a coil compression spring that is co-
axially
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disposed with respect to the longitudinal central axis of the coil
assembly and that biases the movable core to the second
position whereby when the movable core is in the first position,
the biasing force applied to the movable core by the permanent
magnet is greater than the biasing force applied to the movable
core by the coil compression spring so that the movable core
will remain in the first position in the absence of an additional
biasing force being applied to the movable core through an
energization of the coil windings that would bias the movable
core to the second position; and whereby when the movable
core is in the second position, the biasing force applied to the
movable core by the coil compression spring is greater than the
biasing force applied to the movable core by the permanent
magnet so that the movable core will remain in the second
position in the absence of an additional biasing force being
applied to the movable core by an energization of the coil
windings that would bias the movable core to the first position.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Boehne U.S. 2,278,971 Apr. 7, 1942
Read, Jr. U.S. 3,755,766 Aug. 28, 1973

The Examiner rejected claims 1, 2, and 4-7 under 35 U.S.C. § 103(a)
as unpatentable over Boehne and Read, Jr. (Ans. 3-4).
Appellant relied upon the following in rebuttal to the Examiner’s
rejection:
Affidavit under 37 C.F.R. § 1.132 of Grover C. Wilson filed October 15,
2004 (“Wilson”) (Evidence Appendix).

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ISSUES
Appellant contends that the Examiner’s rejection is in error because
the Examiner has ignored the clear teachings of Boehne, which militate
against the proposed modification, because the magnet disclosed in Boehne
is not a permanent magnet in the context of the claims, and because the
Examiner substantially ignored the Wilson affidavit (Br. 5-7). Appellant
asserts that the object of Boehne is to maximize the switching speed of the
apparatus and the elimination of the coils in Boehne, as suggested in the
rejection, would be in complete contradistinction with its disclosure (id.).
The Examiner responds that Boehne makes clear that the use of the releasing
coils is optional, that Appellant’s arguments are directed to a particular
mode of operation and that Boehne teaches other modes of actuation where
the polarity of the permanent magnet is not reversed (Ans. 5). The Examiner
also finds that Appellant’s disclosure does not define “permanent magnet”
and Boehne specifically discloses a permanent magnet (Ans. 6).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
Has Appellant shown reversible error in the Examiner’s determination
that a person having ordinary skill in the art would have been led to modify
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the system in Boehne to eliminate coils provided in that system in view of
Read, Jr.?
Has Appellant shown reversible error in the Examiner’s determination
that Boehne teaches a permanent magnet to effectuate its operation?

FINDINGS OF FACT
1. The present invention is directed to a magnetic latching contactor
(100), having a stationary assembly and a movable assembly. The
movable assembly is axially disposed relative to the stationary
assembly through a longitudinal shaft (130). The movable
assembly includes a switch contact bridge (134) which engages
with two stationary contact plates (118, 120) in the closed circuit
position. (col. 4, l. 12 – col. 5, l. 6).
2. The contactor assumes one of two stable switching positions. In a
first stable switching position, a passive force applied to the
movable assembly through a permanent magnet is greater than the
force applied through the return spring (206). In a second stable
switching position, the force applied to the movable assembly
through the return spring is greater than the force applied through a
permanent magnet (col. 6, ll. 27-45).
3. Switching between the stable switching positions occurs when
current is momentarily forced through electrical windings of the
coil assembly, where the current is of a sufficient magnitude,
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duration and direction to cause the movable assembly to change
switching positions (col. 6, ll. 45-58).
Figure 2 is reproduced below:

Figure 2 of instant invention illustrating a preferred embodiment.

4. Boehne discloses a magnetic latching contactor having a contact
assembly (38, 41) coupled to a movable assembly (4). The system
includes a coil assembly (1), having windings and a permanent
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magnet (M), and a coil compression spring (6) (p. 4, 1st col., ll. 46-
58).
5. Boehne also discloses that the system has two separate releasing
coils (36, 37) which are energized, either separately or
simultaneously, to permit immediate opening of the armature (p. 4,
1st col., ll. 59-67).
Figure 3 is reproduced below:

Figure 3 of Boehne illustrating a preferred embodiment.

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6. Boehne discloses one object of the apparatus for “an improved
high speed operating mechanism of the electromagnetic type that is
simple and compact in construction and capable of releasing
without delay a large operating force” (p. 1, 1st col., ll. 18-23).
7. Read, Jr. discloses a bistable actuator with a single coil energized
with a current of the appropriate polarity (Abstract).
8. Wilson declares that the magnet disclosed in Boehne is
manipulated, recharged and reversed in its operative modes and is
not utilized as a permanent magnet (Decl. 2, ¶ 10).
9. Wilson declares that Boehne teaches that the speed of the response
of actuation and return is of primary importance, and thus teaches
the use of multiple coils (Decl. 3, ¶ 13).
10. Wilson also declares that one would not be led by a reading of
Boehne to eliminate coils and effect polarity reversals in remaining
coils because it would teach away from the desired high speed
response (Decl. 3, ¶ 14).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). Id. at 419 (“The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents”).

ANALYSIS
Appellant argues claims 1, 2, and 4-7 together. We therefore select
claim 1 as representative, and claims 2 and 4-7 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
Appellant asserts that the object of Boehne is to maximize the
switching speed of the apparatus and the elimination of the coils in Boehne,
as suggested in the rejection, would be in complete contradistinction with its
disclosure (Br. 5-6). The Examiner responds that Boehne makes clear that
the use of the releasing coils is optional, that Appellant’s arguments are
directed to a particular mode of operation and that Boehne teaches other
modes of actuation where the polarity of the permanent magnet is not
reversed (Ans. 5). With respect to this first issue, we generally agree with
Appellant.
The embodiment relied upon in the rejection (Ans. 3-4) is the
embodiment illustrated in Fig. 3 of Boehne (FF 4-5). As with the other
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embodiments in Boehne, a main object of the apparatus is high speed
operation (FF 6). As Appellant has argued, the elimination of coils in
Boehne would render it less suited for its intended purposes (Br. 6). We also
acknowledge the Wilson affidavit argues for the same conclusion (FF 9).
While the Examiner may be correct that the releasing coils may be optional,
we do not find that their elimination from the cited embodiment would have
been obvious in view of the clear objectives of Boehne. See In re Gordon,
733 F.2d 900 (Fed. Cir. 1984). Even in view of Read, Jr., which provides an
actuator with a single coil, we cannot say that one of ordinary skill in the art
would have made the modification envisioned by the Examiner in the
rejection in view of the clear objectives of Boehne. As such, we find that the
rejection of claim 1 is in error for failing to make out a prima facie case of
obviousness thereof.
With respect to the second issue, we cannot agree with Appellant’s
contentions. Appellant argues that the magnet taught by Boehne is
significantly different from the magnet required by claim 1 (Br. 6). The
Examiner finds that Appellant’s disclosure does not define “permanent
magnet” and Boehne specifically discloses a permanent magnet (Ans. 6).
We agree with the Examiner. Even in view of the Wilson affidavit, we find
that the claimed permanent magnet cannot be differentiated from the
permanent magnet disclosed in Boehne without importing subject matter
from the Specification into the claim limitations. Claim terms are given
their ordinary and customary meanings, according to the customary
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understanding of a person of ordinary skill in the art who reads them in the
context of the intrinsic record. Phillips v. AWH Corp., 415 F.3d 1303, 1312-
13 (Fed. Cir. 2005) (en banc). As such, we do not find Appellant’s
arguments with respect to the meaning of “permanent magnet” to be a
reason to reverse the rejection.

CONCLUSION
Appellant has shown that the Examiner reversibly erred in
determining that a person having ordinary skill in the art would have been
led to eliminate the coils provided in Boehne in view of the disclosures of
Boehne and Read, Jr.

DECISION
The decision of the Examiner to reject claims 1, 2, and 4-7 is
REVERSED.

REVERSED

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saw

cc:

RAY L. WEBER
RENNER, KENNER, GREIVE, BOBAK, TAYLOR & WEBER
400 FIRST NATIONAL TOWER
AKRON, OH 44308-1456

Third Party Requester:

JOHN H. CROZIER, ESQ.
1934 HUNTINGTON TURNPIKE
TRUMBULL, CT 06611-5116