Ex parte DOLGAS et al.

Board of Patent Appeals and Interferences

Aug 26, 1998

08430580 (B.P.A.I. Aug. 26, 1998)

Application for patent filed April 28, 1995. According to the appellants, the1
application is a continuation of Application 08/234,134, filed April 28, 1994.
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publication in a law journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PATRICK A. DOLGAS, E. WAYNE ZICHT
and ALVIN C. BANNER
__________
Appeal No. 97-0986
Application 08/430,5801
___________
ON BRIEF
___________
Before MEISTER, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final rejection of claims 2, 9
and 12. Claims 1, 3-8, 10 and 11, the only other claims remaining in the application, have
been allowed.
Appeal No. 97-0986
Application 08/430,580
2
Appellants’ invention pertains to a pallet for supporting an armature and maintaining
it in a single angular orientation during manufacture. Claims 9 and 12, copies of which are
found in Appendix A to appellants’ brief, are illustrative of the appealed subject matter.
The references of record relied upon by the examiner in support of rejections under
35 U.S.C. § 103 are:
Smolen 2,885,165 May 5, 1959
Eckart et al. (Eckart) 4,911,606 Mar. 27, 1990
Saunders 5,061,008 Oct. 29, 1991
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over Eckart
in view of Smolen.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Eckart in view of Smolen and further in view of Saunders.
Reference is made to appellants’ brief (Paper No. 22) and to the examiner’s
answer (Paper No. 23) for the respective positions of appellants and the examiner with
respect to the merits of these rejections.
The § 103 rejection of claim 9
The only limitation of claim 9 argued by appellants as patentably distinguishing over
the combination of Eckart in view of Smolen is the means plus function limitation calling for
“means for maintaining said armature in a single angular orientation.” The examiner’s
position is that “in Eckart et al belt 94 when not driven by the motor holds the armature in a
Appeal No. 97-0986
Application 08/430,580
3
selected winding attachment position. This is deemed to be a ‘means for maintaining the
armature in a single angular orientation’” (answer, page 5).
We appreciate the examiner’s point that Eckart’s tensioning belt 10 in conjunction
with the motor 66 is capable of functioning to maintain the armature 12 in a single angular
orientation (column 4, lines 39-44). However, as aptly pointed out by appellants on page 9
of the brief, and in contrast to what the examiner would apparently have us believe, this is
not all that is required by claim 9. In view of In re Donaldson Co., Inc., 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994), the “means for maintaining” limitation of
claim 9 must be interpreted in accordance with the sixth paragraph of 35 U.S.C. § 112,
i.e., “construed to cover the corresponding structure . . . described in the specification and
equivalents thereof.” Thus, the circumstance that the belt and motor of Eckart, taken
together, are capable of functioning in the manner called for in the means plus function
limitation is not enough because the sixth paragraph of 35 U.S.C. § 112 operates to cut
back on the types of means which could literally satisfy the claim language. Johnston v.
Ivac. Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386 (Fed. Cir. 1989).
Looking to appellants’ specification, we find disclosed therein two alternative
structures for performing the maintaining function set forth in the means plus function
limitation in question. The first structure is illustrated in Figures 1 and 2 and comprises
two U-shaped support surfaces, namely, a smaller radius support surface
38A for engagement with the cam body 24 and a larger radius support
Appeal No. 97-0986
Application 08/430,580
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surface 38B for engagement with the portion of the armature shaft 16
immediately adjacent the cam body 24. By loading the armature 10 into the
pallet 30 so that its cam body is supported by the smaller radius support
surface 38A, the armature is held by gravity in a single angular orientation.
[Specification, pages 3-4.]
The second structure is illustrated in Figure 3 and comprises
a blade 54 extending . . . [from one of the support assemblies] toward the
other of the support assemblies . . . . The blade 54 is sufficiently thin and so
located that it is received within the radially outermost margin of one of the
armature core slots to maintain the rotary orientation of an armature.
[Specification, page 5.]
Clearly, Eckart’s belt 10 and motor 66 are different from and do not suggest either
of appellants’ disclosed structures for performing the armature maintaining function.
Further, given the structural dissimilarity of Eckart’s belt and motor compared to either of
the alternative constructions disclosed by appellants for performing the maintaining
function, and the dissimilarity in how they function to hold an armature in a given angular
orientation, it is our view that the belt and motor of Eckart cannot be fairly viewed as an
equivalent in the context of the sixth paragraph of 35 U.S.C. § 112 of either the
larger/smaller radius support surfaces of appellants’ Figures 1 and 2 embodiment, or the
blade construction of appellants’ alternative Figure 3 embodiment. Accordingly, Eckart’s
belt and motor do not correspond to or suggest the claimed “means for maintaining.”
In light of the foregoing, and in that nothing in the Smolen reference additionally
applied against claim 9 makes up for the deficiencies of Eckart in this regard, we will not
Appeal No. 97-0986
Application 08/430,580
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sustain the standing § 103 rejection of claim 9.
The § 103 rejection of claim 2 and 12
Turning to the standing § 103 rejection of claim 2 and 12, each of these claims calls
for a blade extending from one of the support assemblies toward the other support
assembly, with the blade being sufficiently thin and so located that it is received within an
armature core slot to maintain angular orientation of an armature loaded onto the pallet.
The examiner has taken the position (answer, page 5) that it would have been obvious to
employ a blade on one of the support assemblies of Eckart in view of Saunders’ teaching
at blade 56 in order to locate the armature at a desired annular position, and that the
Eckart device, as modified, would correspond to the subject matter of claims 2 and 12.
As a threshold issue, appellants argue that Saunders is nonanalogous art. This
argument is well taken. Saunders pertains to a fixture for selectively and reproducibly
positioning and orienting a nock with respect to the lead feather of an arrow.
Notwithstanding the examiner’s view to the contrary, we agree with appellants that
Saunders is not in the same field of endeavor as appellants’ invention, and is not
reasonably pertinent to the problem with which appellants were involved, namely, the
problem of maintaining the angular orientation of an armature supported on a pallet during
manufacture. This constitutes a first reason necessitating reversal of the examiner’s
rejection of claims 2 and 12.
Appeal No. 97-0986
Application 08/430,580
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Further, assuming that Saunders is analogous art, it would not have been obvious to
one of ordinary skill in the art to modify Eckart in the manner proposed in view of
Saunders. We fail to perceive any teaching, suggestion or incentive in either Eckart or
Saunders which would have led one of ordinary skill in the art to modify the Eckart
apparatus by adding a blade located to be received within an armature core slot, other
than the hindsight provided to one who first views appellants’ disclosure. Hindsight
reconstruction, however, is not a proper basis for establishing the obviousness of the
subject matter of claims. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992). Simply put, there is no suggestion in either Eckart or Saunders, or need
in view of their divergent objectives, for their combination. Smolen, additionally relied upon
by the examiner, does not make up for the deficiencies of Eckart and Saunders in this
regard. This constitutes a second reason necessitating reversal of the examiner’s
rejection of claims 2 and 12.
Finally, even if we were to consider that it would have been obvious to provide a
“blade” of the type disclosed by Saunders at element 56 in Eckart, the claimed subject
matter would not ensue. This is so because neither Eckart nor Saunders teach locating a
blade on one of the support assemblies “extending therefrom toward the other of said
support assemblies,” much less locating the blade such that “it is received within . . . one of
the armature core slots . . . so that the rotary orientation of said armature shaft is
Appeal No. 97-0986
Application 08/430,580
7
maintained,” as required by the claims. The “blade” 56 of Saunders is not disclosed as
“maintaining” the angular orientation of either the arrow or the nock. Instead, element 56 is
merely an alignment device. This constitutes a third reason necessitating reversal of the
examiner’s rejection of claims 2 and 12.
Remand
This application is remanded to the examiner for consideration of the following
matter.
As earlier mentioned, the Donaldson case makes it clear that appellants’ claimed
“means for maintaining” is construed to cover corresponding structure, e.g., the smaller
radius support surface 38A and the larger radius support surface 38B, described in the
specification (pages 3-4) and “equivalents thereof.”
We note that in the Eckart patent applied by the examiner against the appealed
claims, “[e]ach plate support 58 includes an arcuate shaped support surface 64 which is
radially open in an upward direction for retaining the ends of the shaft” (column 3, lines 29-
32), and that the plate support 58 is made of a suitable soft material such that it “provides
some friction with the shaft to prevent rotation of the rotor 12 when it is not being driven by
the drive means 8" (column 3, lines 39-41). In addition, upon inspection of the drawing
figures, the support 56 to which the plate support 58 is secured also appears to include an
arcuate surface radially opening in an upward direction.
Appeal No. 97-0986
Application 08/430,580
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Consistent with the Donaldson case, it is appropriate, in the first instance, for the
examiner to make findings as to whether or not the aforementioned structure of Eckart is
an equivalent of the claimed “means for maintaining.” We therefore remand this
application to the examiner to determine, on the record, if the aforementioned arcuate
shaped surfaces of elements 56 and/or 58 of Eckart are an equivalent of the smaller and
larger radius support surfaces described in appellants’ specification, and to take any
suitable action thereafter.
Summary
The standing § 103 rejection of claim 9 as being unpatentable over Eckart in view
of Smolen is reversed.
The standing § 103 rejection of claims 2 and 12 as being unpatentable over Eckart
in view of Smolen and further in view of Saunders is also reversed.
Additionally, we have remanded the application to the examiner to consider the
matter of equivalency (sixth paragraph of 35 U.S.C. § 112) of the arcuate shaped surfaces
of Eckart’s elements 56 and/or 58 vis-à-vis the claimed “means for maintaining.”
The decision of the examiner is reversed.
This application, by virtue of its “special” status, requires an immediate action. See
Section 708.01(d) of the Manual of Patent Examining Procedure, 6th Edition, Rev. 3, July
1997.
Appeal No. 97-0986
Application 08/430,580
9
REVERSED AND REMANDED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0986
Application 08/430,580
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Roger S. Dybvig
22 Green Street
Dayton, OH 45402