Ex Parte HADownload PDFPatent Trial and Appeal BoardJul 28, 201713227705 (P.T.A.B. Jul. 28, 2017) Copy Citation 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. 13/227,705 09/08/2011 Jiuhu HA 071225.00000 6044 26712 7590 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER RILEY, JONATHAN G ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 08/01/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipdocketing @ hodgsonrus s. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIUHU HA Appeal 2015-004867 Application 13/227,705 Technology Center 3700 Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004867 Application 13/227,705 STATEMENT OF THE CASE Appellant Jiuhu Ha1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final Office Action dated May 27, 2014 (“Final Act.”), rejecting claims 1, 3—5, and 7—11.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to a microtome having means for reversing a direction of rotation. Claim 1, the only independent claims, is reproduced below: 1. A microtome comprising: a cutting element; a first shaft (12) which is arranged in a fixed position and capable of being driven by a handwheel, wherein the first shaft (12) is configured to rotate in either rotational direction; a first gear wheel (14) non-rotatably mounted on the first shaft; a second shaft (16) arranged in another fixed position, wherein the second shaft (16) is configured to rotate in a preselected rotational direction and is configured to produce a cutting motion along the cutting element; a second gear wheel (18) non-rotatably mounted on the second shaft; and a transmission unit (20) via which the first gear wheel (14) and the second gear wheel (18) are coupled to each other so that the second shaft (16) is driven by the handwheel connected to the first shaft (12); 1 Appellant identifies Leica Microsystems Ltd. Shanghai as the real party in interest. Appeal Brief, dated October 27, 2014, at 2 (“Appeal Br.”). 2 Claims 2 and 6 are cancelled. Appeal Br. 2. 2 Appeal 2015-004867 Application 13/227,705 wherein the first shaft (12) and the second shaft (16) are rotatable in the same direction when the transmission unit (20) is in a first position in which the first gear wheel (14) and the second gear wheel (18) are coupled to each other by an odd number of idler gears (22); wherein the first shaft (12) and the second shaft (16) are rotatable in opposite directions when the transmission unit (20) is in a second position in which the first gear wheel (14) and the second gear wheel (18) are coupled by an even number of idler gears (24 through 26); wherein the idler gears (22 through 26) rotate on axes that are in a fixed position relative to each other on a bearing unit (28); and wherein the bearing unit (28) is movable relative to the first gear wheel (14) and the second gear wheel (18). REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Chapman US 230,613 Aug. 3, 1880 On- US 902,677 Nov. 3, 1908 Sparks US 1,050,704 Jan. 14, 1913 Shatzel US 3,926,085 Dec. 16, 1975 Kiene US 5,881,626 Mar. 16, 1999 Schneider US 2008/0000339 A1 Jan. 3, 2008 Robert O. Parmley, The Illustrated Sourcebook of Mechanical Components, McGraw-Hill, 2000, pages 1—36, 1—37, 1—52, 1—53 (hereinafter “Parmley”). Peter R.N. Childs, Mechanical Design, Butterworth-Heinemann, 12/2003, pages 107—136 (hereinafter “Mechanical Design”). 3 Appeal 2015-004867 Application 13/227,705 REJECTIONS The Examiner made the following rejections: 1. Claims 1, 3—5, 7, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneider, Chapman, Parmley, and Mechanical Design. 2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and Sparks. 3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and Shatzel. 4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneider, Chapman, Parmley, Mechanical Design, and Orr. Appellant seeks our review of these rejections. DISCUSSION The Rejection of Claims 1, 3—5, 7, 8, and 11 As Unpatentable Over Schneider, Chapman, Parmley, and Mechanical Design Appellant argues claims 1, 3—5, 7, 8, and 11 as a group. Appeal Br. 5, 11. We select claim 1 as the representative claim, and claims 3—5, 7, 8, and 11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds, in part, that Schneider discloses a microtome wherein first shaft 12 is configured to rotate in either rotational direction. Final Act. 2 (citing Schneider 14). The Examiner also finds that Chapman discloses (1) a first shaft (shaft on which gear B rotates in Figs. 3^4 of 4 Appeal 2015-004867 Application 13/227,705 Chapman) and a second shaft (shaft on which gear H rotates in Figs. 3^4 of Chapman); (2) as shown in Figure 3, the first and second shafts are rotatable in the same direction when the transmission unit is in a first position in which the first gear wheel and the second gear wheel are coupled to each other by an odd number of idler gears (D); and (3) as shown in Figure 4, the first and second shafts are rotatable in opposite directions when the transmission unit is in a second position in which the first gear wheel and the second gear wheel are coupled by an even number of idler gears (E, F). Final Act. 3. Appellant contends that the Examiner’s rejection is erroneous for several reasons. First, Appellant argues that the Examiner’s rationale for combining Schneider and Chapman is “circular” and “conclusory.” Appeal Br. 6—7. According to Appellant, “the Examiner argues that it would have been obvious to modify Schneider to have a mechanism for revolving shafts in either rotational direction ‘to provide an improved mechanism for revolving shafts in either rotational direction’” and this “rationale merely states the consequence of the Examiner's own modification: that shafts can be rotated in either rotational direction with a mechanism.” Id. at 6. Appellant also argues that the Examiner’s finding that replacing Schneider’s and Chapman’s gear trains for each other is simply substituting one gear train for another is “circular” (Reply Brief, dated March 26, 2015, at 2 (“Reply Br.”)) and “lacks the required rational support” {id. at 3). Appellant, however, does not address the Examiner’s findings and reasoning for combining Schneider and Chapman, as well as Parmley and Mechanical Design. Contrary to Appellant’s argument that the Examiner’s rationale merely “states the consequence of the Examiner’s own 5 Appeal 2015-004867 Application 13/227,705 modification,” the Examiner finds that Schneider discloses first shaft 12 that “is configured to rotate in either rotational direction” (Final Act. 2 (citing Schneider 14)), and “Schneider teaches a gear box or gear train for changing the rotational direction of shafts in a microtome.” Ans. 6; see also id. at 5—6. Similarly, with respect to Chapman, the Examiner finds that “Chapman teaches a similar gear train for reversing the direction of a shaft, wherein the rotation of the input shaft is one direction and the gear train shifts the rotational direction of the output shaft.” Id. at 6. The Examiner also finds that Chapman’s first and second shafts “are rotatable in the same direction when the transmission unit is in a first position (see Fig. 3) in which the first gear wheel and the second gear wheel are coupled to each other by an odd number of idler gears (D),” and the first and second shafts “are rotatable in opposite directions (see Fig. 4) when the transmission unit is in a second position (Fig. 4) in which the first gear wheel and the second gear wheel are coupled by an even number of idler gears (E,F)”. Final Act. 3; see also Ans. at 6—7. The Examiner explains that: [MJechanical Engineers, or one of ordinary skill in the art, [would] understand that transmissions can be used to alternate rotation of shafts, by way of gearing or drive pulleys. This is illustrated by Parmley. Chapman teaches a reversible power transmission mechanism for rotating shafts. In Chapman[,] the input is fixed in one rotational direction so that the rotational output can be alternated. However, a person of ordinary skill in the art recognizes that the opposite is also true. For the output to remain constant and for the rotational direction of the input to alternate, the reverse can be implemented. This is because gearing and drive pulleys can be adapted to the design of an engineer, as shown by Mechanical Design (see Mechanical Design Pgs. 116—118, 6.3 Gear trains, providing different 6 Appeal 2015-004867 Application 13/227,705 illustrations of various gear trains). In other words, one of ordinary skill in the art modifies gearing to what he/she wants to have done. As such, in a Microtome, it is the cutting motion of the sample that needs to be fixed, and it is the input, or crank rotation, that needs to be alternated. Although [Schneider] and Chapman are in different fields, both utilize rotating shafts to transmit power and movement, and a teaching of a power transmission mechanism with a simple and efficient device to drive shafts in alternative directions will be equally applicable in both areas. See KSR International Co. v. Teleflex Inc. etal. No. 04-1350, 550 U.S. 398, 418 (2007) slip op at 13, which states, “When a work is available in one field of endeavor, design incentives ... can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability” (emphasis added). Here, because the need for a left hand and right hand microtome was recognized in the art by gearing mechanism of [Schneider], and Chapman teaches a gear mechanism for alternating the rotation of the gearing assembly, it would have been obvious to one of ordinary skill in the art to modify the gear mechanism of [Schneider] with the gearing design of Chapman as one of ordinary skill in the art recognizes that alternative gearing mechanisms do the same thing, as taught by Parmley and Mechanical Design. The motivation to combine is to provide an improved mechanism for revolving shafts in either rotational direction. Final Act. 4—5; see also Ans. 6—8. Finally, the Examiner determines that “replacing the gear train of Schneider with the gear train of Chapman is simply substituting one gear train for another.” Ans. 8. The key to supporting any rejection under 35 U.S.C. § 103 is a clear “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)). Here, the Examiner’s articulated reasoning is supported by rational underpinning. 7 Appeal 2015-004867 Application 13/227,705 Appellant does not address the rejection as articulated by the Examiner, and, thus, does not identify error by the Examiner. Second, Appellant argues that the “Examiner’s modification to Chapman in the rejection of independent claim 1 renders Chapman[’s hoisting machine] unsatisfactory for its intended purpose.” Appeal Br. 7—8; see Reply Br. 3^4. Appellant’s argument mischaracterizes the Examiner’s rejection. Contrary to Appellant’s argument, the Examiner proposes modifying Schneider’s microtome, not Chapman’s hoisting machine, to use Chapman’s gear mechanism so that Schneider first and second shafts “are rotatable in the same direction when the transmission unit is in a first position in which the first gear wheel and the second gear wheel are coupled to each other by an odd number of idler gears,” and the first and second shafts “are rotatable in opposite directions when the transmission unit is in a second position in which the first gear wheel and the second gear wheel are coupled by an even number of idler gears,” as recited in claim 1. Final Act. 3^4; see also Ans. 9 (“Schneider is the base reference.”). Appellant does not address the rejection as articulated by the Examiner, and, thus, does not identify error by the Examiner. Third, Appellant argues that “Chapman is nonanalogous art and cannot be properly used in an obviousness rejection of independent claim 1.” Appeal Br. 8—10. [T]o qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of [the inventor’s] endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. 8 Appeal 2015-004867 Application 13/227,705 K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)). Appellant argues that the “problem faced by the inventor is enabling the microtome handwheel to be rotated in either of two rotational directions, according to the user’s personal preference or comfort, as input for providing a single output rotational direction.” Appeal Br. 10. According to Appellant, “Chapman solves a problem with two different output rotational directions whereas Appellant solves a problem with a preselected output rotational direction. Furthermore, Chapman solves a problem with a single, constant input rotational direction whereas Appellant solves a problem with two different input rotational directions.” Id. In response to Appellant’s argument, the Examiner asserts that the references are analogous prior art. Ans. 11—12. Addressing the particular problems with which Chapman and the inventor are involved, the Examiner explains that, like Appellant’s microtome, “the gear train system of Chapman is directed to changing the direction of a rotating shaft.” Ans. 12. The Examiner concludes that “Chapman is pertinent to the particular problem (changing the direction of a rotating shaft) which the Appellant was concerned with.” Ans. 12. We find that the Examiner’s position is more persuasive than Appellant’s position. Appellant narrowly focuses on the differences between the Specification and the Chapman reference, but concedes that one of the problems addressed by the Specification is that a shaft must “be rotated in either of two rotational directions.” Appeal Br. 23. Appellant does not show error in the Examiner’s determination that Chapman 9 Appeal 2015-004867 Application 13/227,705 overcomes similar problems, and is prior art under the second prong of the analogous art test. Fourth, Appellant argues that “the Examiner admitted that Chapman is nonanalogous art to microtomes, like that in Kiene, Schneider, or Appellant's invention, and conceded that Chapman is nonanalogous art.” Appeal Br. 10; see also id. at 9; Reply Br. 6. Appellant, however, focuses on the first prong of the analogous art test. As discussed above, Chapman is analogous art under the second prong of the test because it is reasonably pertinent to the particular problem with which the inventor is involved. Appellant’s argument is not persuasive. Fifth, Appellant argues that “as Chapman is nonanalogous art, Chapman cannot be properly used in an obviousness rejection and the Examiner's rationale for combination with Schneider is immaterial.” Appeal Br. 11; Reply Br. 4—5. Because Chapman is analogous art, as discussed above, Appellant’s argument is not persuasive. Sixth, Appellant argues that “Parmley and Childs fail to remedy the deficiencies of Chapman.” Id. For the reasons discussed above, there is no deficiency in the Examiner’s findings and reasoning relating to Chapman, and Appellant’s argument is not persuasive. For the reasons above, the rejection of independent claim 1 is sustained. Claims 3—5 and 7—11 fall with claim 1. The Rejection of Claim 5 As Unpatentable Over Schneider, Chapman, Parmley, Mechanical Design, and Sparks Appellant argues that the rejection of claim 5, which depends from independent claim 1, is erroneous because Sparks does not remedy the 10 Appeal 2015-004867 Application 13/227,705 deficiencies in the rejection of claim 1. Appeal Br. 11—12. For the reasons discussed above, there is no deficiency in the Examiner’s rejection of claim 1, and Appellant’s argument is not persuasive. For the reasons above, the rejection of claim 5 is sustained. The Rejection of Claim 9 As Unpatentable Over Schneider, Chapman, Parmley, Childs, and Shatzel Appellant argues that the rejection of claim 9, which depends from independent claim 1, is erroneous because Shatzel does not remedy the deficiencies in the rejection of claim 1. Appeal Br. 12. For the reasons discussed above, there is no deficiency in the Examiner’s rejection of claim 1, and Appellant’s argument is not persuasive. For the reasons above, the rejection of claim 9 is sustained. The Rejection of Claim 10 As Unpatentable Over Schneider, Chapman, Parmley, Childs, and Orr Appellant argues that the rejection of claim 10, which depends from independent claim 1, is erroneous because Orr does not remedy the deficiencies in the rejection of claim 1. Appeal Br. 12. For the reasons discussed above, there is no deficiency in the Examiner’s rejection of claim 1, and Appellant’s argument is not persuasive. For the reasons above, the rejection of claim 10 is sustained. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3—5, and 7-11 is AFFIRMED. 11 Appeal 2015-004867 Application 13/227,705 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation