Ex Parte Jones et al

Patent Trial and Appeal Board

Dec 26, 2018

12682753 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/682,753 06/03/2010
36822 7590 12/26/2018
GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE407
STAMFORD, CT 06902
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Karl Jones
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.
UDL-172 5196
EXAMINER
CHIN-SHUE, AL VIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
12/26/2018 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 KARL JONES and OW AIN JONES
Appeal2017-003230
Application 12/682,753
Technology Center 3600
Before JOHN C. KERINS, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Karl Jones and Owain Jones (Appellants) 1 seek our review under 3 5
U.S.C. § 134 of the Examiner's rejection of claims 3-9, 11, 12, 15-18, 21,
24--28, 30, 31, 35, and 40-42. We heard oral argument on December 17,
2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Latchways PLC as the real party in interest. App.
Br. 3.
Appeal2017-003230
Application 12/682,753
THE INVENTION
Appellants' claimed invention pertains to a rotational energy absorber
for use in a fall arrest system. Spec. 1. Claim 21, reproduced below, is
illustrative of the subject matter on appeal.
21. A safety device for use in a fall arrest system, comprising:
a rotatable drum supporting a safety line wound on the
drum, wherein the drum is constructed to rotate in response to
deployment of the safety line from the drum;
a speed responsive clutch connected to the drum, the
clutch being responsive to the rotational speed of the drum; and
a rotational energy absorber operatively coupled to the
clutch, the energy absorber including a coiler member, a
deforming structure, and a plastically deformable element, the
plastically deformable element having a first end coupled to the
coiler member, a second free end remote from the first end, and
an intermediate portion between the first and second ends
positioned through the deforming structure;
wherein the clutch is constructed to couple the rotatable
drum to the rotational energy absorber in a first configuration
when the rotational speed of the drum is equal to or exceeds a
predetermined speed, and is constructed to not couple the drum
to the rotational energy absorber in a second configuration when
the rotational speed of the drum is less than the predetermined
speed, and
wherein in the first configuration, relative rotation of the
coiler member and the deforming structure causes the
deformable element to plastically deform by being drawn
through the deforming structure to absorb energy.
App. Br. 26-27 (Claims App.).
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Application 12/682,753
THE REJECTIONS 2
The following Examiner's rejections are before us for review:
1. Claims 28, 30, 35, and 40 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention;
2. Claims 3-9, 11, 12, 15-18, 21, 24--28, 30, 31, 35, and40-42
are rejected under 35 U.S.C. § I03(a) as being unpatentable over
Feathers (US 6,279,682 Bl, issued Aug. 28, 2001) and Sayles
(US 5,618,006, issued April 8, 1997); and
3. Claim 18 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Feathers, Sayles, and Fujii et al. (US 6,042,042, issued
March 28, 2000) (hereinafter "Fujii").
ANALYSIS
The Indefiniteness Rejection
The Examiner rejects claims 28, 30, 35, 40, concluding that
"deployment couple" in, for example, independent claim 35 is unclear and
that the Specification does not explain the meaning. Final Act. 2, 16; see
also Ans. 4--7. Independent claim 35 recites, in pertinent part:
wherein the coiler member and the deforming structure are
constructed to begin to rotate relative to one another when a
couple transferred by the clutch between the coiler member and
the deforming structure is at least equal to a predetermined
deployment couple that is based on the resistance to plastic
deformation of the deformable element, and wherein the couple
required to continue relative rotation between the coiler member
2 The Examiner has withdrawn three obviousness rejections. Ans. 3.
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and the deforming structure is equal to the predetermined
deployment couple.
App. Br. 29 (Claims App.) ( emphasis added).
The basis for the Examiner's rejection is unclear to us. The stated
reasoning is, in the articulation of the rejection in the Final Action, "[fJrom
the description of the invention it is unclear what are the deployment couple,
as set forth in claims 28 and 35" and, in response to Appellants' earlier
arguments, "[t]he examiner disagrees as the ... portion of the specification
[ cited by Appellant] does not provide support or explain [ much of the claim
language quoted above]." Final Act. 2, 16. The Answer suggests that the
Examiner believes that the lack of clarity is in the identification of the
specific components that provide the recited "deployment couple." See
Ans. 5---6.
Appellants, pointing to portions of the Specification discussing the
"predetermined deployment value" and "the predetermined value of the
applied couple required to deploy the elongate element," contend that "one
of ordinary skill in the art would appreciate that the 'deployment couple'
refers to the magnitude of the applied couple required to deploy the
plastically deformable element." App. Br. 7-8 (quoting Spec. 6:9-14, 3:22-
29); see Reply Br. 2 (Appellants arguing that "[o]ther terms used for couple
are force couple or pure moment.").
While, in order to decide the appeal before us, we need not define
explicitly the meaning of a "predetermined deployment couple," we find to
be persuasive Appellants' argument that it is a reference to the magnitude of
a threshold force. The Examiner has not established that the meaning of the
recited "deployment couple" is not reasonably ascertainable by a person of
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ordinary skill in the art. Accordingly, we cannot sustain the Examiner's
indefiniteness rejection.
The Obviousness Rejections
The Examiner rejects claims 3-9, 11, 12, 15-18, 21, 24--28, 30, 31,
35, and 40-42 as being obvious over Feathers and Sayles. Final Act. 3-5,
6-8, 17-28. The Examiner relies on Feathers for much of the subject matter
of the independent claims, and finds that Feathers lacks the particular energy
absorber of the claims, namely one using a coiled deformable element. Id.
at 3--4, 25 ("The examiner notes that the difference at hand to be resolved
between the primary references and the claimed invention is that of the
energy absorber being a coiler member and a plastically deformable elongate
element."). The Examiner turns to Sayles for the teaching of a clutch-
engaged energy absorber having a coiled deformable element. Id. at 4--5.
The Examiner reasons that it would have been obvious to substitute, for
Feathers' energy absorber, the "clutch engaged energy absorber" of Sayles.
Id. at 6-7; see also Ans. 18 ("the modification in view of Sayles would be
the use of a coiler member (102), as taught by Sayles, in lieu of Feathers
discs (11,12), and further for his ratchet wheel (13) to comprise a deforming
structure (as at 80) of Sayles to deform the deformable element (120) .... ").
Thus, we understand the Examiner's proposed combination to be the
modification of Feathers' system so as to have Sayles' energy absorber (by
adding Sayles' "deforming element" to Feathers' "ratchet wheel") but to
retain the overall existing drum-clutch-energy absorber relationship of
Feathers.
Appellants argue that the proposed combination lacks the recited
relationship between the drum, the clutch, and the energy absorber where the
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Application 12/682,753
clutch is constructed so as to couple or not couple the drum to the energy
absorber based on drum rotation speed. See, e.g., App. Br. 10. Specifically,
Appellants contend that the structure found by the Examiner to be Feathers'
energy absorber is coupled to the drum during low speeds, contrary to the
recitation in the claims. See id. at 11-12.
Appellants' Specification describes speed sensitive clutch 25 as
located between drum 22 (holding safety line 21 which is connected to the
user) and energy absorber 1. Spec. 8:6-13, Fig. 2. In normal use, the drum
rotates slowly as the user moves about. Id. at 8: 15-20. "The speed sensitive
clutch 25 is set not to respond to the slow rotation of the drum 22
encountered during this normal 20 movement of the user." Id. at 8:18-20.
If the user falls, the drum begins to rotate rapidly and, when the drum
rotation speed reaches the "response speed" of the clutch, "the clutch 25
engages the drum 22 to the energy absorber 1" thereby arresting the fall. Id.
at 8:22-27. This relationship and configuration is reflected in the following
language of claim 21 :
wherein the clutch
is constructed to couple the rotatable drum to the rotational
energy absorber in a first configuration when the rotational speed
of the drum is equal to or exceeds a predetermined speed, and
is constructed to not couple the drum to the rotational
energy absorber in a second configuration when the rotational
speed of the drum is less than the predetermined speed.
App. Br. 27 (Claims App.) (with formatting added); see id. at 29
(independent claim 35 reciting the same or substantively similar language).
Feathers discloses a fall arrest system utilizing braking means 5 to
slow the rotation of the safety line drum ( drum 1) when a threshold
unwinding speed is exceeded, with the "braking means being brought into
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operation to effect such braking of the drum by the speed responsive
coupling device of the invention." Feathers, 5:31--40. The Examiner finds
that various components of Feathers' braking means and the speed
responsive coupling device together constitute the energy absorber and
clutch of the claimed invention. Final Act. 3, 22 (finding the clutch
comprises Feathers' ratchet wheel/reaction member 13 and pawl 20 and the
energy absorber is ratchet wheel/reaction member 13 and friction discs 12
and 14); Ans. 11. Feathers discloses the braking means (found to be the
energy absorber) as friction discs 12 and 14 that bear upon reaction
member 13 (having the appearance of a toothed gear). Feathers, 6:5-9;
Fig. 4. The friction discs are permanently mounted to and rotate with the
drum, and the reaction member rotates with the drum during normal
unwinding speeds. Id. The speed responsive coupling device (found to be
the clutch) includes reaction member, or wheel, 13, having teeth 22, and
pawl member 20. Id. at 6:50-53. The pawl is configured to have a rocker
and serves as a toggle switch that, during rapid rotation of the drum (i.e.
during a fall), flips over into the locked position where it engages the teeth
of the reaction member. Id. at 2:52-3:7; see Ans. 12-13 (the Examiner
quoting the same). In this locked position, the friction between the discs
rotating with the drum and the now-locked reaction member slows the drum
rotation. Feathers, 6:9-17; see Ans. 11 (the Examiner quoting the same).
The Examiner construes the phrase "not couple" in the claims to mean
"not respond to" based upon the Specification's description of the purpose of
the clutch. Ans. 8 ( quoting Spec. 8: 15-20 ( which states, in part: "The speed
sensitive clutch 25 is set not to respond to the slow rotation of the drum 22
encountered during this normal movement of the user.")). Thus, according
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to the Examiner, "Feathers is constructed to not couple (respond to) the
drum to the rotational energy absorber in a second configuration when the
rotational speed of the drum is less than the predetermined speed, as
claimed." Id. at 13.
We determine that the Examiner has applied an unreasonably broad
construction of "couple" and "not couple." The term "couple," when read in
light of at least the portions of the Specification discussed above, refers to
the physical connection or disconnection of the components, not whether
there is a response due to that configuration at a certain threshold speed.
See, e.g., Spec. 8:22-27 (when the drum rotation speed reaches the
"response speed" of the clutch, "the clutch 25 engages the drum 22 to the
energy absorber 1" thereby arresting the fall ( emphasis added)).
The components of Feathers found to be the energy absorber rotate
together with the drum during normal, low speed operation and thus are
coupled together at speeds less than the predetermined speed. Accordingly,
Feathers' clutch is not, as recited in independent claims 21 and 3 5,
"constructed to not couple the drum to the rotational energy absorber in a
second configuration when the rotational speed of the drum is less than the
predetermined speed." We cannot sustain the Examiner's rejection based on
Feathers and Sayles. Similarly, we cannot sustain the rejection of claim 18
over Feathers, Sayles, and Fugii as it is premised upon the same underlying
Feathers/Sayles rejection. See Final Act. 8.
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DECISION
The decision of the Examiner to reject claims 3-9, 11, 12, 15-18, 21,
24--28, 30, 31, 35, and 40-42 is reversed.
REVERSED
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