09946130 (B.P.A.I. Aug. 28, 2012)

Ex Parte Hanks

Board of Patent Appeals and InterferencesAug 28, 2012

09946130 (B.P.A.I. Aug. 28, 2012)

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. 09/946,130 09/04/2001 Darwin Mitchel Hanks 10007284-1 4942 7590 08/29/2012 HEWLETT-PACKARD COMPANY Intellectual Property Administration P.O. Box 272400 Fort Collins, CO 80527-2400 EXAMINER DINH, TUAN T ART UNIT PAPER NUMBER 2835 MAIL DATE DELIVERY MODE 08/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DARWIN MITCHEL HANKS ____________ Appeal 2010-007305 Application 09/946,130 Technology Center 2800 ____________ Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and ANDREW J. DILLON, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007305 Application 09/946,130 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-4, 6-21, 23-27, 30-32, and 34-39. Claims 5, 22, 28, 29, and 33 were canceled. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. INVENTION This invention relates to an electromagnetic stator. (Spec. 1) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electromagnetic stator, comprising: a printed circuit board; and at least one conductive coil formed by a conductive trace formed on the printed circuit board such that an axis extending through the at least one conductive coil extends along the printed circuit board. (Disputed limitation emphasized). REJECTION Claims 1-4, 6-21, 23-27, 30-32, and 34-39 stand rejected under 35 U.S.C. § 102(e) as being anticipated by U. S. Patent 6,005,324 ("Kim").1 1 Although the Examiner also rejects claims 28 and 29 (Ans. 3-4), these claims have been cancelled. Appeal 2010-007305 Application 09/946,130 3 GROUPING OF CLAIMS Based on the Appellant's arguments, we will decide the appeal of the anticipation rejection of claims 1-4, 6-21, 23-27, 30-32, and 34-39 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). ANALYSIS We disagree with Appellant's contentions regarding the Examiner’s anticipation rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2), the reasons set forth by the Examiner in the Answer in response to arguments made in Appellant's Appeal Brief. (Ans. 6-7). 2 We highlight and address specific findings and arguments below. Issue: Under §102, did the Examiner err in finding that the cited Kim reference discloses “at least one conductive coil formed by a conductive trace formed on the printed circuit board such that an axis extending through the at least one conductive coil extends along the printed circuit board,” within the meaning of claim 1 and the commensurate language of claims 13, 25, and 34? (Emphasis added). The Examiner sets forth grounds of rejection for the disputed limitation, as follows: "at least one conductive coil (232) form by a conductive trace (see figure 2) formed on the PCB (220) such that an axis extending through the at least one conductive coil that extends along the 2 We cite to the Examiner's First Answer mailed on December 13, 2005. Appeal 2010-007305 Application 09/946,130 4 PCB (figure 4 shows the axis extending along the PCB and, through the conductive trace)." (Ans. 3). Appellant makes the following contentions: Claim 1's recitation of "an AXIS extending through the at least one conductive coil," especially when read in light of Applicant's specification, clearly refers to an axis about which the coil is wound (e.g., if a string were spirally wrapped around a pencil, the pencil represents the axis extending through the coil). Thus, Applicant respectfully submits that the Examiner's interpretation of Claim 1 is not reasonable, especially in light of Applicant's specification and, therefore, Claim 1, and Claims 2- 4 and 6-12 that depend therefrom, are patentable over Kim. (Reply Br. 5) Appellant's arguments are unpersuasive for the following reasons: (1) The features that Appellant relies upon "an axis about which the coil is wound (e.g., if a string were spirally wrapped around a pencil, the pencil represents the axis extending through the coil)" are not recited in the claims. We decline to read limitations into the claims. "[L]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). (2) We agree with the Examiner's finding of anticipation for essentially the same reasons articulated in the “Response to Argument” section of the Answer: The Kim reference discloses the coil formed by the trace (232) formed on the PCB (220). The axis, which is any axis because the claim recites "an axis," is any of the infinite axes that are parallel to the surface of that PCB (extend along it) and that go through the coil (extend through the coil). Figure 4 is a plan view of the PCB in which it is readily visible that any axis that extends through any of the coils and is on the surface of the Appeal 2010-007305 Application 09/946,130 5 PCB will satisfy this claim limitation. In the arguments, appellant states that the axis is that determined by the right- hand rule based on the direction of the current in the coil and that the axis of the coil is perpendicular to the coil and in the center of it, etc. None of these arguments are persuasive because appellant has never set forth a particular definition for the term axis that limits it to such an interpretation. The claim broadly recites an axis. Therefore, any line that is a reasonable interpretation of "an axis" from the standpoint of one of ordinary skill is deemed to read on the claim.[3] In the instant case, the prior art clearly discloses a configuration where "an axis," i.e. any one axis, that extends through the coil also extends along the PCB. (Ans. 6-7). For the above reasons, we are not persuaded that the Examiner erred in finding that the cited Kim reference discloses "at least one conductive coil formed by a conductive trace formed on the printed circuit board such that an axis extending through the at least one conductive coil extends along the printed circuit board," within the meaning of claim 1 and the commensurate language of claims 13, 25, and 34. (Emphasis added). Accordingly, we sustain the Examiner's rejection of representative claim 1. We also sustain the rejection of claims 2-4, 6-21, 23-27, 30-32, and 34-39, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). 3 We correct the Examiner’s statement by noting it is the claim that reads on the reference, and not the reference that reads on the claim. See Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Appeal 2010-007305 Application 09/946,130 6 DECISION We affirm the Examiner's rejection of claims 1-4, 6-21, 23-27, 30-32, and 34-39 under 35 U.S.C. 102(e). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED pgc