Ex Parte Daniel-Wayman et al

Patent Trial and Appeal Board

Jul 21, 2016

12396922 (P.T.A.B. Jul. 21, 2016)

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.
12/396,922 03/03/2009 Robert Daniel-Wayman 5569-93407 (08-14; 08-15) 7189
22242 7590 07/22/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
STRIMBU, GREGORY J
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
07/22/2016 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 ROBERT DANIEL-WAYMAN, BRIAN F. BUTLER, and
PATRICK B. EVANS
___________

Appeal 2014-0002921
Application 12/396,9222
Technology Center 3600
___________

Before MICHELLE R. OSINSKI, KEVIN W. CHERRY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Daniel-Wayman et al. (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–5, 7–10, and 12–21, the only

1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed
July 10, 2013, and Reply Brief (“Reply Br.”), filed September 27, 2013, the
Final Action (“Final Act.”), mailed April 10, 2013, and the Examiner’s
Answer (“Ans.”), mailed July 29, 2013.
2 Appellants’ brief identifies The Chamberlain Group, Inc., a subsidiary of
The Duchossois Group, Inc., as the real party in interest for this appeal
(Appeal Br. 3).
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claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ claimed invention relates to “movable barrier operators
using linear actuators” (Spec. ¶ 1).
Claim 1, the only independent claim, is illustrative of the subject matter
on appeal and is reproduced below.
1. A movable barrier system comprising:
a movable barrier pivotally connected to a movable barrier
pivot connection;
a linear actuator with a first end pivotally connected to the
movable barrier and a second end pivotally connected to a linear
actuator pivot connection;
a processor configured to variably control operation speed of
the linear actuator during operation between a first position of
the movable barrier and a second position of the movable barrier
based on a position of the movable barrier pivot connection
relative to a position of the linear actuator pivot connection;
an input device operatively coupled to the processor to input
information regarding position of the movable barrier pivot
connection relative to the linear actuator pivot connection;
wherein the processor is configured to variably control the
operation speed of the linear actuator in response to a ratio of a
distance from the linear actuator pivot connection to a fixed point
and a distance from the movable barrier pivot connection to the
fixed point as determined from the information received from the
input device.
(Appeal Br. 22, Claims App.).
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Rejections
Claims 1, 2, 4, 5, 8–10, 12–14, 16, 17, and 19–21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Vial (US 5,394,651, iss. Mar.
7, 1995) and Hormann (US 2001/0037600 A1, pub. Nov. 8, 2001).
Claims 3, 7, 15, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vial, Hormann, and VanDrunen (US 2007/0075655
A1, pub. Apr. 5, 2007).
ANALYSIS
Obviousness over Vial and Hormann
Claim 1
Appellants argue that neither Vial nor Hormann teach or suggest a
processor “configured to variably control the operation speed of the linear
actuator in response to a ratio of a distance from the linear actuator pivot
connection to a fixed point and a distance from the movable barrier pivot
connection to the fixed point,” as recited by claim 1 (Appeal Br. 8–13; id. at
22 (emphasis added); Reply Br. 5–7). In the Final Rejection, the Examiner
relies on Hormann to teach the control of the gate based on the position of
the movable barrier pivot connection relative to the linear actuator pivot
connection (Final Act. 3–4). But as Appellants point out, Hormann does not
disclose controlling a linear actuator based on the claimed ratio (Appeal
Br. 8–11). Instead, Hormann discloses that the speed of the linear actuator
may be controlled “depending on the position of the closing device and
depending on the mechanical closing characteristic of the closing device in
question” (id. at 8 (quoting Hormann ¶ 11)). Appellants further note that the
only example in Hormann of how a “mechanical closing characteristic” can
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be determined is “by determining the torque converter course via the
operating path of the closing device” (id. at 9 (quoting Hormann ¶ 15)).
The Examiner does not dispute that Hormann does not disclose using
the claimed ratio for controlling the speed (Ans. 2), but instead presents two
arguments. First, the Examiner contends that “[o]ne of ordinary skill in the
art would have known that the only two mechanical characteristics affecting
the speed of the gate of Vial are the distances [of a linear actuator pivot
connection to a fixed point] and [of a barrier pivot connection to the fixed
point]” (id. at 3; see also id. at 4 (“The Examiner’s position is that the
teachings of Hormann can be readily applied to the teachings of Vial
because there are only two mechanical characteristics, A and B, that affect
the opening and closing speed of the gate of Vial.”); id. at 4–5). The
Examiner asserts, based on this contention, that
[t]hus, when combining the teaching of Vial and Hormann to
achieve the beneficial result of constant opening and closing
speed, one of ordinary skill in the art would naturally look to
using the distances [of a linear actuator pivot connection to a
fixed point] and [of a barrier pivot connection to the fixed point]
(Ans. 3). Second, the Examiner argues that
“[e]ven if a person with less than ordinary skill in the art were
attempting to solve the problem of varying opening and closing
speeds of a gate, said person would have easily determined
through routine experimentation that the distances [of a linear
actuator pivot connection to a fixed point] and [of a barrier pivot
connection to the fixed point] are the only two mechanical
characteristics affecting the opening and closing speed of the
gate”
(id.; see also id. at 5 (“One of ordinary skill in the art would have known this
or, it would have been easily obtained by routine experimentation.”). The
Examiner concludes that “the concept of using the distances [of a linear
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actuator pivot connection to a fixed point] and [of a barrier pivot connection
to the fixed point] of Vial would be well within the purview of one with
ordinary skill in the art when combining the teachings of Vial and Hormann”
(id. at 3).
We agree with Appellants that the Examiner’s reasoning is
unsupported and insufficient to make out a prima facie case of obviousness
(Reply Br. 5–7). Fundamental to the Examiner’s reasoning supporting the
rejection of claim 1 is the repeated assertion that “the distances [of a linear
actuator pivot connection to a fixed point] and [of a barrier pivot connection
to the fixed point] are the only two mechanical characteristics affecting the
opening and closing speed of the gate” (see Ans. 2–5). Yet, there is no
reasoning or explanation of how the Examiner arrives at this key conclusion.
As Appellants persuasively demonstrate, there are a number of factors that
could affect the speed of the gate (Reply Br. 5–7), so the assertion that “the
distances [of a linear actuator pivot connection to a fixed point] and [of a
barrier pivot connection to the fixed point] are the only two mechanical
characteristics affecting the opening and closing speed of the gate”
(emphasis added) appears to be simply speculation by the Examiner. The
Examiner makes no effort to explain why these distances or their ratio is
similar to the characteristics described in Hormann or how a person of
ordinary skill would arrive at this conclusion. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417–18 (2007). In making such a rejection, the Examiner has the
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initial duty of supplying the requisite factual basis and may not, because of
doubts that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, the
Examiner has resorted to such speculation, so we cannot sustain the rejection
of claim 1 as obvious over Vial and Hormann.
Claims 2, 4, 5, 8–10, 12–14, 16, 17, and 19–21
Claims 2, 4, 5, 8–10, 12–14, 16, 17, and 19–21, all depend from claim
1. The Examiner’s rejection of these claims relies on the same reasoning we
found inadequate to account for the limitations of claim 1. Accordingly, we
cannot sustain the rejection of claims 2, 4, 5, 8–10, 12–14, 16, 17, and 19–21
for the reasons stated above with respect to claim 1.
Obviousness over Vial, Hormann, and VanDrunen
Claims 3, 7, 15, and 18, all depend from claim 1. The Examiner’s
rejection of claims 3, 7, 15, and 18 as obvious over Vial, Hormann, and
VanDrunen relies on the same reasoning we found inadequate to account for
the limitation of claim 1. Accordingly, we cannot sustain the rejection of
claims 3, 7, 15, and 18 for the reasons stated above with respect to claim 1.
DECISION
The Examiner’s decision to reject claims 1–5, 7–10, and 12–21 is
reversed.
REVERSED