Ex Parte Hubbard et al

Patent Trial and Appeal Board

Mar 20, 2018

13201673 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/201,673 08/16/2011
64779 7590 03/22/2018
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
James L. Hubbard
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.
60469-465PUS1; 10327-US 2359
EXAMINER
MANSEN, MICHAEL R
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
frederic.tenney@otis.com
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES L. HUBBARD, DARYL J. MARVIN,
STEPHEN R. NICHOLS, and HAROLD TERRY
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Application 13/201,673
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-22. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a brake device. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A brake device, comprising:
Appeal2017-005324
Application 13/201,673
a brake element configured to apply a braking force to
resist rotation of an associated component;
a mounting member configured to mount the brake device
to a stationary surface, the mounting member being at least
partially moveable relative to the stationary surface in a first
direction responsive to a torque on the brake device during an
application of the braking force; and
a sensor that provides an indication of a force associated
with any movement of the mounting member relative to the
stationary surface in the first direction responsive to the torque,
the sensor does not absorb a load on the brake element as the
braking force is applied.
REJECTIONS
Claims 1-6, 8-16, and 18-22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Traktovenko (WO 2006/093487 Al; published Sept.
8, 2006) and Hubbard (US 2006/0175153Al; published Aug. 10, 2006).
Claims 7 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Traktovenko, Hubbard, and Shea (US 5,477,942; issued
Dec. 26, 1995).
OPINION
The rejections are premised on the obviousness of incorporating the
"microswitches and proximity sensors" taught by Hubbard into
Traktovenko's device. Final Act. 3 (citing Hubbard para. 22). Claim 1
requires, similarly to the other independent claims, claims 8 and 18, a
"sensor [that] does not absorb a load on the brake element." One way to
achieve this, according to Appellants' Specification, is by positioning the
sensor elements 60, 62 on the mounting member 40 and machine frame 38,
and securing them with setting members 70 that compress the sensor
elements so as to sense relative movement between mounting member 40
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Application 13/201,673
and frame 38. Spec. para. 22, 23, 33. Although some of the types of sensing
elements that Appellants describe as suitable for use in this arrangement
(Spec. para. 22) are the same as those suggested in Traktovenko (p. 4, 11. 12-
16) and Hubbard (para. 22), we are not persuaded by the Examiner's
position that using the same type of sensor necessarily results in the recited
requirement that "the sensor does not absorb a load on the brake element."
See Ans. 3. Other factors, including sensor placement, contribute to this.
The Examiner does not provide any explanation as to why, even if one
were to use the sensors described in paragraph 22 of Hubbard,
microswitches and proximity sensors, simply using those sensors, would,
without more, necessarily yield the claimed subject matter. Further, the
Examiner does not provide any rebuttal to Appellants' arguments that
Hubbard expressly teaches away from these sensors that the Examiner
proposes to incorporate. Reply. Br. 2. It is also noted that, in the portion
cited by the Examiner, Traktovenko also makes disparaging remarks
concerning microswitches and proximity sensors which the Examiner does
not discuss. See Traktovenko p. 4, 1. 29.
In the Answer, the Examiner further asserts that the limitation above
pertaining to the absence of load absorption would be met by Traktovenko' s
arrangement because the sensors 46 are mounted between mounting bosses
44a, 44b. Ans. 3. This is a different arrangement than that described in
Appellants' Specification and discussed above. Although the claims do not
necessarily require the exact structure to which the Specification attributes
the recited functionality, the Examiner has not demonstrated why, in light of
these differences, Traktovenko' s arrangement would still necessarily result
in the absence of load absorption by the sensor as required by the claims.
See Ans. 3.
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Application 13/201,673
In light of the lack of evidence demonstrating that combining the
teachings of the cited references would have yielded the claimed subject
matter and the essentially unrebutted assertion that the references teach
against their combination as proposed, we agree with the Appellants that,
based on the totality of the record, the Examiner has not demonstrated that
the evidence of obviousness outweighs the evidence against it. In re Warner
379 F.2d 1011, 1016 (CCPA 1967) ("[T]he precise language of35 U.S.C. §
102 that '(a) person shall be entitled to a patent unless,' concerning novelty
and unobviousness,' clearly places a burden of proof on the Patent Office").
DECISION
The Examiner's rejections are reversed.
REVERSED
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