Ex Parte Kabir et al

Board of Patent Appeals and Interferences

Aug 20, 2012

11333570 (B.P.A.I. Aug. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte OMAR M. KABIR and EDWARD S. CZECHOWSKI
____________________

Appeal 2010-008679
Application 11/333,570
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
REMY J. VANOPHEM, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/333,570

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7, 10-14, 16, 18, 19, 21-23, and 26-29. Claims 8, 15, 17, 20, 24 and 30 have
been cancelled, and claims 9 and 25 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to a device for preventing reverse rotation of a
compressor drive shaft when, e.g., the compressor loses power. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A device to prevent the rotation of a shaft in one
direction comprising:
a collar disposed around the shaft, wherein said collar is
rotationally fixed relative to the shaft;
a locking-arm with an unlocked position allowing said
collar and the shaft to rotate in a first direction and a locked
position preventing said collar and the shaft from rotating in a
second direction; and
an actuator operable to move said locking-arm between
the locked position and the unlocked position.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shields
Miura
US 3,799,692
US 6,692,224
Mar. 26, 1974
Feb. 17, 2004
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REJECTIONS
The Examiner made the following rejections:
Claims 28 and 29 stand rejected under 35 U.S.C § 112, second
paragraph, as being indefinite;
Claims 1-7, 10-12, 16, 18-19, 21-23, and 26-27 stand rejected under
35 U.S.C § 102(b) as being anticipated by Shields; and
Claims 1, 10, 13-14, and 28-29 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Miura and Shields.

ANALYSIS
Claims 28 and 29 – Indefiniteness
The Examiner rejected claims 28 and 29 under 35 U.S.C. § 112
¶ 2 as indefinite, because, according to the Examiner, it was unclear whether
claims 28 and 29 should be construed as containing means-plus-function
limitations under 35 U.S.C. § 112 ¶ 6. Ans. 3. We note, however, that the
Examiner implicitly construed the language at issue in claims 28 and 29 as
mere functional language, rather than as means-plus-function limitations,
when he examined these claims in the same group as independent claim 1.
Ans. 5-7. We further note that Appellants do not allege that claims 28 and
29 are means-plus-function claims, and indeed state that they are not
intended to be so construed. Reply Br. 5. The Examiner’s rejection of
claims 28 and 29 as indefinite is not sustained.

Claims 1-7, 10-12, 16, 18-19, 21-23, and 26-27 – Anticipation – Shields
For purposes of this rejection Appellants argue claims 1-7, 10-12, 16,
18-19, 21-23, and 26-27 as a group. We choose claim 1 as representative of
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the group, with the remaining claims standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Shields
teaches all of the limitations of claim 1; i.e., that (1) Shield’s toothed ratchet
wheel 13 corresponds to the claimed collar; (2) the pawl 20 corresponds to
the claimed locking arm, and (3) the structure depicted on the left side of
Figure 2, “specifically [stem knob] 41” corresponds to the claimed actuator.
Ans. 4 (citing Shields Fig. 2). The Examiner explained that knob 41 is
directly coupled to pawl/locking arm 20, and that “a user [can] move the
knob 41 manually in order to place the locking-arm 20 in a locked or
unlocked position.” Ans. 8.
Appellants dispute that Shields teaches the claimed actuator.
According to Appellants, knob 41 “is a passive element that doesn’t operate
by itself to move the arm (20) . . . Instead, the knob (41) is moved in both
directions as other elements operate to move the pawl (20) into the locked
and unlocked positions.” Reply Br. 5-6. Appellants also assert that the knob
is not used to disengage the pawl; rather, the ratchet wheel 13 pushes the
pawl 20 from the locked position to the unlocked position, where it is held
by spring 27. Reply Br. 6. Finally, Appellants dispute that claim 1
encompasses user operation as opposed to automatic operation, arguing that
“[d]espite Shields itself never disclosing this possibility [of user operation],
the claimed subject matter doesn’t recite ‘by a user,’ instead requiring that
the actuator itself is operable to effect engagement and disengagement.”
Reply Br. 8.
We agree with the Examiner that Shields teaches the claimed actuator.
As an initial matter, Appellants do not dispute that the knob 41 is directly
connected to the locking arm and that it can be manually operated to move
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the locking arm between the locked position and the unlocked position.
Further, we do not believe that the term “operable to move said locking-
arm,” broadly construed, excludes operation by a user. The term “operable”
simply means “capable of being operated,” without limitation as to manual
or automatic operation. See COLLINS ENGLISH DICTIONARY – COMPLETE
AND UNABRIDGED (5th ed. 2003).1 The Specification does not expressly
define “operable” more narrowly, or otherwise expressly limit the term to
automatic operation. We sustain the Examiner’s rejection of claims 1-7, 10-
12, 16, 18-19, 21-23, and 26-27 as anticipated by Shields.

Claims 1, 10, 13-14, and 28-29 – Obviousness – Miura and Shields
Appellants argue claims 1, 10, 13-14, and 28-29 as a group. App. Br.
13. We select claim 1 as representative with the remaining claims standing
or falling with claim 1. Appellants first argue that the Examiner’s
obviousness rejection is improper because Shields fails to disclose an
actuator operable to move a locking arm between a locked position and an
unlocked position. App. Br. 13. We addressed, and rejected, this argument
above. Appellants next argue that “the primary reference, Miura, fails to
disclose a substantial majority of the features of the claimed subject matter
as set forth in independent claim 1,” and that the “combination of the
references would require a substantial reconstruction and redesign of the
elements shown in Miura as well as a change in the basic principle under
which the Miura construction was designed or intended to operate.” Id. In
his Answer, however, the Examiner clarified that Miura was not relied upon

1 Available at http://www.thefreedictionary.com/operable (last visited Aug.
14, 2012).
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to teach, as Appellants put it, “a substantial majority of the features of the
claimed subject matter;” (App. Br. 13) rather, the Examiner stated that
“Miura was merely used to teach some of the conventional compressor
elements not shown by Shields.” Ans. 7; see also Ans. 5-6. Further, as with
the Examiner’s anticipation rejection, “Shields is [relied upon] for teaching
the limitations regarding the actuator and locking-arm assembly.” Ans. 7.
Appellants did not respond to these contentions in their Reply Brief, or
dispute that Miura teaches the conventional compressor elements as the
Examiner found. Because Appellants have not shown that the Examiner
erred in concluding that claims 1, 10, 13-14, and 28-29 are obvious, we
sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner’s anticipation rejection
of claims 1-7, 10-12, 16, 18-19, 21-23 and 26-27, and the Examiner’s
obviousness rejection of claims 1, 10, 13-14, and 28 and 29. The rejection
of claims 28 and 29 as indefinite is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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