Ex Parte Fitzgibbon

Patent Trial and Appeal Board

Feb 27, 2019

13330851 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/330,851 12/20/2011
150733 7590 02/27/2019
Fitch, Even, Tabin & Flannery, LLP/CGI
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
James Joseph Fitzgibbon
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5569-97847-US (CDl0-19) 7310
EXAMINER
GRANT, ROBERT J
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
02/27/2019 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 JAMES JOSEPH FITZGIBBON
Appeal 2018-001168
Application 13/330,851
Technology Center 2800
Before GEORGIANNA W. BRADEN, MONTE T. SQUIRE, and
JANEE. INGLESE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-10 and 12-24, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed December
20, 2011 ("Spec."); Final Office Action dated December 9, 2016 ("Final
Act."); Appeal Brief filed June 2, 2017 ("Appeal Br."); Examiner's Answer
dated September 15, 2017 ("Ans."); and Reply Brief filed November 14,
2017 ("Reply Br.").
2 According to the Appeal Brief, The Chamberlain Group, Inc. is the real
party in interest and also identified as a subsidiary of the Duchossois Group,
Inc. Appeal Br. 3.
Appeal 2018-001168
Application 13/330,851
The Claimed Invention
Appellant's disclosure relates to a movable barrier (e.g., garage door)
operator remote controller that comprises a vibration-powered electrical
generator, a user interface, and a wireless transmitter configured to transmit
a movable barrier operator communication in response to the user interface,
and as powered, at least in part, by the vibration-powered electrical
generator. Spec. ,r 11; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A movable barrier operator remote controller
compnsmg:
a vibration-powered electrical generator having an
electric power output;
a user interface;
a wireless transmitter configured to transmit a
movable barrier operator communication in response to
the user interface and as powered, at least in part, by the
vibration-powered electrical generator;
a housing that at least substantially contains the
vibration-powered electrical generator and the wireless
transmitter;
a mount configured to mount the housing to a
portion of a vehicle;
wherein the vibration-powered electrical generator
is configured to generate electricity as a function of
mechanical vibrations imparted to the mount by the
vehicle.
Appeal Br. 15.
2
Appeal 2018-001168
Application 13/330,851
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Lee et al.,
("Lee")
Chiba et al.,
("Chiba")
Galchev et al.,
("Galchev")
US 2007 /0040655 Al Feb. 22, 2007
US 2009/0146797 Al June 11, 2009
US 2011/0140577 Al June 16, 2011
The Re} ection
On appeal, the Examiner maintains (Ans. 2) the following rejection:
claims 1-10 and 12-24 rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Lee in view of Galchev in view of Chiba. Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection based on the fact-finding and reasoning set forth in the Answer and
Final Office Action, which we adopt as our own. We add the following.
Appellant argues claims 1-10 and 12-24 as a group. Appeal Br. 8.
We select claim 1 as representative and claims 2-10 and 12-24 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Lee, Galchev, and
Chiba suggests a movable barrier operator remote controller satisfying all of
the limitations of claim 1 and, thus, concludes that the combination would
3
Appeal 2018-001168
Application 13/330,851
have rendered the claim obvious. Final Act. 3--4 ( citing Lee ,r,r 16, 1 7, Fig.
3; Galchev ,r 5; Chiba ,r 23).
The Examiner finds that Lee and Chiba teach or suggest the majority
of the limitations of claim 1, but that neither of these references expressly
discloses "a vibration-powered electrical generator having an electric power
output and as powered, at least in part, by the vibration-powered electrical
generator" and "wherein the vibration-powered electrical generator is
configured to generate electricity as a function of mechanical vibrations
imparted to the mount by the vehicle," as recited in the claim. Id. at 3--4.
The Examiner, however, relies on Galchev for disclosing these limitations.
Id. at 4. In particular, the Examiner finds that Galchev discloses a
vibration-powered electrical generator having an electric power output,
which is powered, in part, by the vibration-powered electrical generator and
configured to generate electricity as a function of mechanical vibrations. Id.
at 4 ( citing Galchev ,r 5); see Galchev ,r 6.
Based on the above findings, the Examiner concludes:
[i]t would have been obvious to one having ordinary skill
in the art at the time of this invention to take the teachings
of Galchev and use the vibrations of a man-made machine
( motor vehicle) to charge the device of Lee, and further
keep the device of Lee mounted in the vehicle, as disclosed
by [Chiba], as the garage door opener can be conveniently
mounted in the vehicle, and the vehicle will impart
vibrational energy to the device of Galchev ... during
normal operation, and thereby harvesting kinetic energy
which would otherwise be wasted.
Id. at 4
Appellant argues that the Examiner's rejection should be reversed
because the Examiner has failed to establish a prima facie case of
4
Appeal 2018-001168
Application 13/330,851
obviousness. Appeal Br. 8. Appellant argues that the Examiner's proposed
combination of Lee and Galchev would change the principle of operation of
Lee and would render Lee's device inoperable for its intended purpose.
Appeal Br. 8-9; see Reply Br. 5-7. In particular, Appellant contends that
the vibrations that fuel Galchev's generator would have no effect on Lee's
device because vibrations are not capable of activating Lee's movable user
interface element 205 and "Lee's device would need to be entirely re-
designed and re-engineered" to be responsive to vibrations as described in
Galchev. Appeal Br. 10.
Appellant further argues that there is no motivation for combining Lee
with Galchev and the Examiner "does not provide any convincing reason
why a person of ordinary skill in the art would have combined these
references." Appeal Br. 10-11; see also Reply Br. 7 ( arguing the
combination of Lee and Galchev lacks a rational basis). Appellant contends
that because Lee specifically requires a movable user interface element to
operate the device, "it would not make sense to modify Lee in a manner that
does not require such a movable element" and combining the two references
"does not add anything that was not already accomplished." Appeal Br. 11.
Appellant also contends that the combination would result in a device that
has multiple moving elements (i.e., Galchev's inertial mass and Lee's
interface element) within the same small housing that could negatively
impact the ability of each element to operate. Id. at 13.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination (Ans. 2-6; Final Act. 3--4) that the
5
Appeal 2018-001168
Application 13/330,851
combination of Lee, Galchev, and Chiba suggests an electronic device
satisfying all of the limitations of claim 1, and the Examiner's conclusion
that the combination would have rendered the claim obvious. Lee ,r,r 16, 1 7,
Fig. 3; Galchev ,r,r 5, 6; Chiba ,r 23.
Contrary to what Appellant argues, the Examiner does provide a
reasoned basis and identifies a preponderance of evidence in the record to
evince why one of ordinary skill would have combined the teachings of the
cited references to arrive at Appellant's claimed invention. See Final Act. 4
( explaining that it would have been obvious to one of ordinary skill to use
the vibrations of man-made machinery ( e.g., a motor vehicle) as taught by
Galchev to power the device of Lee in order to harvest kinetic energy that
would otherwise be wasted); see also Ans. 4 ( explaining that it would have
been obvious to one of ordinary skill to modify Lee's kinetic-energy-to-
electrical-energy converter, which requires user activation, with Galchev's
kinetic-energy-to-electrical-energy converter because it would generate
power during normal operation without requiring any effort from the user);
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant's argument that the combination of Lee and Galchev would
change the principle of operation of Lee and would render Lee's device
6
Appeal 2018-001168
Application 13/330,851
inoperable for its intended purpose (Appeal Br. 8-9; Reply Br. 5) is not
persuasive because Appellant does not provide an adequate technical
explanation or direct us to sufficient evidence in the record to support it.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Moreover, as the Examiner finds and explains at pages 3--4 of the
Answer, because Lee's principle of operation is to scavenge energy from the
surrounding environment (see Lee ,r 5) modifying Lee's device to include
Galchev's kinetic-energy-to-electrical-energy converter would not change
the principle of operation or render the device inoperable for its intended
purpose. Rather, as the Examiner finds (Ans. 4), like Lee, Galchev is also
directed to energy scavenging and uses a kinetic-energy-to-electrical-energy
converter, but additionally recognizes the benefit of the energy being
generated without the need for it to be physically generated by a user. See
Galchev ,r,r 5, 6, 29, 30.
Appellant's contentions regarding Galchev's vibrations not being
"capable of activating Lee's movable user interface element 205" and that
"Lee's device would need to be entirely re-designed and re-engineered"
(Appeal Br. 10) are not persuasive of reversible error in the Examiner's
rejection because they are conclusory and misconstrue the Examiner's
rejection. As the Examiner explains (Ans. 4) and contrary to what
Appellant's argument suggests, the Examiner's rejection does not indicate or
intend for Galchev's vibrations to be applied to Lee's kinetic-energy-to-
electrical-energy converter; rather, Galchev's kinetic-energy-to-electrical-
energy converter is actually replacing the kinetic-energy-to-electrical-energy
7
Appeal 2018-001168
Application 13/330,851
converter of Lee, with the added capability of generating power from
vibrations from a man-made machine ( e.g., a motor vehicle).
We do not find Appellant's assertions that "it would not make sense to
modify Lee in a manner that does not require such a movable element"
(Appeal Br. 11) and combining the Lee and Galchev references "does not
add anything that was not already accomplished" (id. at 11) persuasive of
reversible error because they are conclusory and unsupported by persuasive
evidence in the record. De Blauwe, 736 F.2d at 705.
Appellant's assertions at pages 12-13 of the Appeal Brief and pages
7-8 of the Reply Brief regarding what Appellant contends Lee and Galchev
discloses are equally unpersuasive because they too are conclusory, and
Appellant does not provide an adequate technical explanation or direct us to
persuasive evidence in the record to support them.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 2-6 of the Answer and pages 3--4 of the Final Office
Action and previously discussed above, we determine that a preponderance
of the evidence supports the Examiner's analysis and factual findings as to
what the combined teachings of the prior art, considered as a whole, would
have taught or reasonably suggested to one of ordinary skill in the art.
Appellant's disagreement as to the Examiner's factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of
disagreement ... as to the existence of factual disputes do not amount to a
developed argument.").
8
Appeal 2018-001168
Application 13/330,851
Accordingly, we affirm the Examiner's rejection of claims 1-10 and
12-24 under 35 U.S.C. § 103(a) as obvious over the combination of Lee,
Galchev, and Chiba.
DECISION/ORDER
The Examiner's rejection of claims 1-10 and 12-24 is affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9