Ex Parte Pettey

Patent Trial and Appeal Board

Jun 30, 2016

12412686 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/412,686 0312712009
7590
Kelly, Holt & Christenson
113 West Main Street
Waconia, MN 55387
07/01/2016
FIRST NAMED INVENTOR
Brian T. Pettey
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.
B538.12-0012 7549
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
MAILDATE DELIVERY MODE
07/01/2016 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 BRIANT. PETTEY
Appeal2014-006974
Application 12/412,686
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian T. Pettey (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-3, 5-9, 33-35, and 37--45. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed "to various kits and components that are
assembled in virtually unlimited combinations to form virtually unlimited
Appeal2014-006974
Application 12/412,686
hobby mechanical applications." Spec. i-f 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A hobby mechanical kit, the kit comprising:
a hobby servo motor having a rotatable output shaft, the output
shaft having gear teeth distributed around an outer
diameter of the shaft;
a first component having an inner diameter with gear teeth that
correspond to the hobby servo output shaft gear teeth;
a second component having a first set of apertures, the first set of
apertures including a center aperture, a first set of satellite
apertures, and a second set of satellite apertures, each of
the center aperture, the first set of satellite apertures, and
the second set of satellite apertures having a diameter, the
diameter of the center aperture being larger than the
diameters of the first and the second sets of satellite
apertures, the first and the second sets of satellite apertures
being spaced apart from the center aperture by radial
distances with at least two of the radial distances being
unequal, the first set of satellite apertures including a
different number of apertures than the second set of
satellite apertures, wherein locations of the first and the
second sets of satellite apertures relative to the center
aperture are defined utilizing a polar coordinate system,
wherein each location is specified by a radius coordinate
and an angle coordinate, wherein each radius coordinate is
a distance from an origin of the polar coordinate system,
wherein each angle coordinate is an angle from a polar axis
of the polar coordinate system, wherein the radius
coordinate for each aperture in the first set of satellite
apertures is a same value, wherein the radius coordinate
for each aperture in the second set of satellite apertures is
a same second value that is different than the same value
for the first set of satellite apertures, and wherein the angle
coordinates for each of the satellite apertures in the first
set of satellite apertures is different than the angle
coordinates for each of the satellite apertures in the second
set of satellite apertures; and
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a third component that includes a second set of apertures, the
second set of apertures having a same number of apertures
as the first set of apertures, the second set of apertures
having at least approximately equivalent diameters and
spacings as the first set of apertures.
REFERENCES RELIED ON BY THE EXAMINER
Gilbert ("Gilbert '302")
Gilbert ("Gilbert '97 6")
Pedersen
Fukasaku
Jinno
us 1,763,302
us 1,792,976
us 3,355,837
us 4,274,036
US 7 ,284,457 B2
REJECTIONS ON APPEAL
June 10, 1930
Feb. 17, 1931
Dec. 5, 1967
June 16, 1981
Oct. 23, 2007
I. Claims 1, 3, 6-9, 33, 35, 37, 38, 40-42, 44, and 45 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Gilbert '976 and Jinno.
II. Claims 2, 5, and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilbert '976, Jinno, and Gilbert '302.
III. Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gilbert '976, Jinno, Pedersen, and Fukasaku.
IV. Claim 39 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gilbert '976, Jinno, and Pedersen.
ANALYSIS
Rejection I
Claim 1
Claim 1 recites, in part, "a second component having a first set of
apertures, the first set of apertures including a center aperture, a first set of
satellite apertures, and a second set of satellite apertures ... the diameter of
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the center aperture being larger than the diameters of the.first and the
second sets of satellite apertures." Appeal Br. 25 (emphasis added).
The Examiner takes the position that the embodiment of Figure 4 of
"Gilbert ['976] does not specifically disclose that the diameter of the center
aperture being larger than the diameter of the second set of satellite
apertures," but because "it has been held that if a change in the relative
dimensions over the prior does not make the claimed invention perform
differently, the claimed device is not patentably distinct from the prior art."
Final Act. 3--4. (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed.
Cir. 1984). The Examiner therefore concludes that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Gilbert to make the diameter
of the center aperture larger than that of the second set of satellite
apertures because doing so would not make the claimed
invention perform differently; that is, elements could be attached
to the second satellite holes, regardless of its size and because
adjusting the size of the second satellite apertures to be smaller
than the center aperture for modular connections with certain
parts would not be a patentable advance.
Id. at 3--4.
In support of the rejection, the Examiner provides a marked-up
version of Figure 4 of Gilbert '97 6 (Final Act. 6), and we reproduce this
marked-up figure below.
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Annotated Figure 4 of Gilbert '97 6 is a section view of a construction
toy model having a plate with apertures relied upon by the Examiner for the
recited center and satellite apertures. Gilbert '976, 1, 11. 45-51.
Appellant asserts that the "Specification calls out the importance of
the relative sizing of the holes in terms of their supporting a variety of
connections to other parts," and that choosing different aperture sizes is
important and specifically, "the size of the center hole is selected to
accommodate a particular shaft and/or bushings," with "'smaller holes
around the center hole [that] are illustratively selected to support a particular
mechanical connection scheme (e.g. to support nuts, bolts, screws, etc.)."'
Appeal Br. 9-10 (citing Spec. i-fi-161, 68, and 69). Appellant argues that
moreover, it is improper to rely on Gardner v. TEC Systems, because in
doing so, "the Examiner fails to provide an explanation of a motivation for
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an inventor to make this combination as of the date of the invention." Reply
Br. 5.
We do not find Appellant's arguments persuasive. The Examiner can
make a rejection using legal precedent as a source of supporting rationale,
"if the facts in a prior legal decision are sufficiently similar to those in an
application under examination, the examiner may use the rationale used by
the court," unless "the applicant has demonstrated the criticality of a specific
limitation." MPEP 2144.04. Appellant's Specification teaches that although
some embodiments of Appellant's invention "include center holes and
surrounding holes of different relative dimensions," in other embodiments,
"center holes and their surrounding holes are the same size," or, "center
holes are smaller than surrounding holes." Spec. i-f 63. Thus, Appellant's
Specification supports the Examiner's finding that the arrangement in claim
1 is non-critical, similar to the arrangement in Gardner v. TEC Systems. 1
Appellant does not show, persuasively, that the size of the center hole
relative to surrounding holes, contrary to the above-noted portion of the
Specification, provides any difference in the principle of performance.
Consequently, we are not persuaded by Appellant's arguments regarding the
size of the center aperture relative to the satellite apertures.
Claim 1 further recites, in part,
wherein the radius coordinate for each aperture in the second set
of satellite apertures is a same second value that is different than
the same value for the first set of satellite apertures, and wherein
the angle coordinates for each of the satellite apertures in the first
set of satellite apertures is different than the angle coordinates for
1 In Gardner, the claim at issue recited certain dimensional limitations such
as, for example, the spacing between a web and a plate and the ratio of this
spacing to a nozzle slot width. Id. at 1341.
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each of the satellite apertures m the second set of satellite
apertures.
The Examiner notes that Gilbert '976 does not explicitly disclose the
recited relationship between the apertures and the radius and angle
coordinates, but considers that the recited positions of the apertures to be a
"rearrangement of parts [that] is not patentable unless it modifies the
operation of the device." Final Act. 5 (citing In re Japikse, 181F.2d1019
(CCPA 1950)).2 The Examiner thus concludes that:
Id.
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Gilbert to make the radius
coordinate for each aperture in the second set of satellite
apertures a same second value that is different than the same
value for the first set of satellite apertures and the angle
coordinates for each of the satellite apertures in the first set of
satellite apertures different than the angle coordinates for each of
the satellite apertures in the second set of satellite apertures
because doing so would not modify the operation of the device;
that is, other pieces and parts could be connected at the satellite
holes regardless of their radial and angular position.
Appellant asserts that "having satellite apertures with varying
distances away from a center aperture grants more flexibility to a user of the
hobby mechanical kit." Appeal Br. 10. Appellant thus asserts that the
Examiner's reliance on In re Japikse is improper because "the
rearrangement of the apertures, as recited in claim 1 does modify the
operation of the device with respect to the prior art by adding increased
2 The Examiner also includes an additional reason for rejecting claim 1.
See Final Act. 5 (citing In re Brandt, 64 F.2d 693 (CCPA 1933). Because
we sustain the Examiner's rejection based on the Examiner's use of Japikse,
we do not reach the Examiner's additional reason for rejecting claim 1.
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flexibility for the user, which is an important improvement over the prior
art." Reply Br. 6. Appellant also states that "the rearrangement of these
apertures is an important modification over the prior art, allowing greater
utility and flexibility for a user by offering more varied connection points."
Id.
In the Answer, the Examiner takes the position that "applicant needs
to establish criticality for having satellite holes having different radii and
angular positions as now claimed." Ans. 30. The Examiner also notes that
Appellant offers no evidence in support of the assertion that the claimed
aperture configuration "offers 'more flexibility to the user.'" Id.
Appellant does not adequately explain how the recited arrangement of
a second set of satellite apertures increases flexibility. The Specification
discloses that "the versatility of the star-shaped connection scheme (of the
first set of apertures) should be apparent." Spec. i-f 81. However, Appellant
does not direct our attention to any portion of the Specification or provide
other evidence discussing the importance of the geometric placement of the
second set of satellite apertures. Modifying the spacing between a center
aperture and satellite apertures is simply rearranging elements without
changing their function. "[W]hen a patent 'simply arranges old elements
with each performing the same function it had been known to perform' and
yields no more than one would expect from such an arrangement, the
combination is obvious." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Because Appellant does not show the criticality of the arrangement of the
second set of satellite apertures, nor adequately explain why the parts of
Gilbert '976 could not be connected at the satellite holes regardless of their
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radial and angular positions (see Final Act. 5) we are not persuaded by
Appellant's arguments.
Claim 1 also recites, in part, "a first component having an inner
diameter with gear teeth that correspond to the hobby servo output shaft gear
teeth."
The Examiner finds that "Gilbert '976 discloses a motor with a shaft
and the ability to mount a first component on a shaft." Final Act. 5---6 (citing
Gilbert '976, p. 3, 1. 100; p. 4, 11. 67---69; Fig. 2). The Examiner relies on
Jinno as disclosing "a servo motor with the output shaft having gear teeth
distributed around an outer diameter of the shaft (item 24a) and a first
component with gear teeth that correspond to the hobby servo output shaft
gear teeth (item 34)." Final Act. 6 (citing Jinno, col. 5, 11. 16-17; Figs. la
and 7). The Examiner concludes that:
Id.
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Gilbert to use a servo motor
with a geared output shaft and corresponding geared first
component as taught by Jinno because doing so would be a
simple substitution of one known element (a servo motor with a
geared output shaft and a corresponding geared horn) for another
(a motor with a shaft and the ability to mount a horn onto the
shaft via a bushing) to obtain predictable results (the continued
ability to create rotational output from a servo motor shaft to a
horn without slip using a geared interlock between the shaft and
horn).
Appellant asserts that "Jinno fails to remedy the deficit of Gilbert with
regard to" a first component with gear teeth that correspond to the hobby
servo output shaft gear teeth. Appeal Br. 11; see also Reply Br. 8.
We have considered this argument, but are not persuaded by it.
Specifically, the Examiner correctly finds that the inner gear teeth of Jinno's
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horn 34 correspond to the gear teeth on Jinno's servo output shaft 24 as
shown in Figs. 1 a and 7 of Jinno (see Final Act. 6), and Appellant does not
apprise us of Examiner error in evaluating this specific disclosure of Jinno.
Nor does Appellant apprise us of error in the Examiner's rationale for
combining Gilbert '976 and Jinno, namely, the ability to create rotational
output from a servo motor shaft to a horn without slip (see Final Act. 6).
Indeed, Appellant's argument on page 11 of the Appeal Brief that the above-
noted feature is not disclosed by the combination is not accompanied by any
further discussion of Jinno, the reference upon which the Examiner relies for
an output shaft having gear teeth. See Final Act. 6;
For the reasons discussed above, we sustain the Examiner's rejection
of claim 1 as unpatentable over Gilbert '97 6 and Jinno.
Claim 3
Claim 3 recites, in part,
a hobby servo motor bracket ... having a center panel ... the
center panel having a third set of apertures, the third set of
apertures having the same number of apertures as the first and
the second sets of apertures, and the third set of apertures having
at least approximately equivalent diameters and spacings as the
first and the second sets of apertures.
Appeal Br. 26-27.
The Examiner takes the position that because "Gilbert ('976) discloses
the particular hole configuration on a connecting panel," and because
"Gilbert discloses a general construction set wherein components may be
attached to each other via the connecting holes," "it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify the combined Gilbert and Jinno to place the same type of hole
configuration on the center panel [12 in Figure 1 of Gilbert '976] because
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doing so would be a duplication of parts." Final Act. 9 (citing Gilbert '976,
Figs. 1-13 and In re Harza, 274 F.2d 669 (CCPA 1960). The Examiner also
considers that such a hole configuration would "allow for easier connection
using corresponding hole placement between the various pieces of the
construction set, especially attachment of the center panel to another piece.
Id.
Appellant argues that when a modification goes beyond merely
duplicating parts, an obviousness rejection is improper. See Reply Br. 9
(citing Ex parte Rippolone, Appeal 2009-015057 (BP AI May 26, 2011 )).
Appellant asserts that "the addition of a third set of apertures is not merely
the duplication of parts but the addition of increased functionality through
additional apertures available as connection points." Id.
In H arza, the claim at issue required a plurality of ribs on each side of
a web whereas the applied reference had only a single rib on each side of the
web. See In re Harza, 274 F.2d at 671. Thus, in Harza, the duplication of
parts duplicated the single rib on the same web where one rib already
existed. Although we appreciate that Gilbert '976 has the recited aperture
configuration on other panels, such as the panel shown in Figure 4, in this
rejection, the Examiner is not merely duplicating one of the panels with the
recited aperture configuration. Rather, the Examiner is adding the aperture
arrangement of the panel shown in Figure 4 onto a different element, i.e.,
plate 12 in Figure 1 of Gilbert '976, which does not have the recited aperture
configuration. As such, the Examiner's modification is beyond the holding
in Harza, which is limited to a mere duplication of existing parts, and thus
Harza does not provide legal support for the Examiner's modification.
Accordingly, we do not sustain the Examiner's rejection of claim 3 as
unpatentable over Gilbert '976 and Jinno.
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Claim 6
Claim 6 recites, in part, "a wheel having a third set of apertures, the
third set of apertures having the same number of apertures as the first and
the second sets of apertures." Appeal Br. 2 7.
The Examiner finds that because Gilbert '976 (i) "discloses the
particular hole configuration on a connecting panel," (ii) discloses that
components may be attached to each other via connecting holes, and (iii)
discloses the use of a wheel 93 and a plate structure connected to a shaft
through hobby servo horn 59, "placing a similar hole configuration on the
wheel," would have been a "duplication of parts" that does not distinguish
over the art "unless a new and unexpected result is produced." Final Act. 10
(citing Gilbert '976, Figs. 1-13 and In re Harza, 274 F.2d 669 (CCPA
1960)).
Similar to claim 3, Appellant again takes issue with the Examiner's
application of In re Harza. See Reply Br. 11.
Once again, for the reasons discussed supra in the rejection of claim
3, the Examiner does not adequately explain how copying an arrangement of
apertures from one element to another element so that the same arrangement
of apertures is on both elements is a duplication of existing parts that is
within the scope of the holding in Harza, as wheel 93 does not have the
recited aperture configuration. Because the Examiner's modification is
beyond the holding in Harza, we do not sustain the rejection of claim 6 as
unpatentable over Gilbert '976 and Jinno.
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Claim 7
Claim 7 recites, in part, "at least six of the plurality of sets of
apertures running along the width." Appeal Br. 27-28.
The Examiner notes that "the combined Gilbert and Jinno do not
specifically disclose at least six of the plurality of sets of apertures
running along the width," but that "making the panel so that six sets of
apertures fit along the width" is a change in relative dimension, and that, "it
has been held that if a change in the relative dimensions over the prior does
not make the claimed invention perform differently, the claimed device is
not patentably distinct from the prior art. Final Act. 11 (citing Gardner v.
TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984).
Appellant asserts that "the addition of five new sets of apertures along
the width provides for significantly increased functionality and flexibility in
modular connection for a user of the hobby mechanical kit." Reply Br. 12.
Thus, Appellant "disagrees with the Examiner's claim that this does not
make the claimed invention perform differently," but rather, "having 6
different aperture positions, to use alone or in combination, inherently
allows the hobby mechanical kit, as a whole, to perform differently than it
would with only one set of apertures." Id.
Although we appreciate that adding more aperture sets allows more
connections, each of the connections still performs the same function.
Appellant does not show the criticality of the number of sets of apertures,
nor explain why the facts of the present case are not sufficiently similar to
the facts of Gardner v. TEC Systems. Indeed, Appellant's Specification
discloses that "[ e ]mbodiments of panel 1003 include any length 1011 such
that from one to any number of star schemas is included along the length of
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the part (FIG. 10-2 shows six star schemas along the length)." Spec. i-f 83.
For these reasons, we are not persuaded by Appellant's arguments.
Accordingly, we sustain the rejection of claim 7 as unpatentable over
Gilbert '976 and Jinno.
Claim 8
Claim 8 recites, in part, "the two sets of apertures being spaced apart
from each other such that neither of the two sets of apertures shares a
common aperture with the other set of apertures." Appeal Br. 28.
The Examiner considers this limitation to be "adjusting the two sets of
apertures so that they do not share a common aperture," and finds that
"creating adjustability where needed is not a patentable advance." Final Act.
12 (citing In re Brandt, 64 F.2d 693 (CCPA 1933)).
Appellant argues that "adjustability here was not necessary for the
function of the invention but provided for more options for a user of the
hobby mechanical kit for modular connection." Reply Br. 12.
The Examiner's use of In re Brandt is misplaced. In re Brandt deals
with an adjustable swivel chute-head which is capable of being swung
horizontally or vertically. In re Brandt, 64 F.2d at 694. The Examiner does
not adequately explain how moving an arrangement of apertures so that they
no longer share a common aperture with another set of apertures is creating
adjustability that is within the scope of the holding in Brandt.
In view of this, we do not sustain the rejection of claim 8 as
unpatentable over Gilbert '976 and Jinno.
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Claim 9
Claim 9 recites, in part, that "each of the first and second portions of
the angle bracket having a set of apertures that has the same number of
apertures as the first and the second sets of apertures." Appeal Br. 28.
The Examiner relies on the bracket shown in Figure 9 of Gilbert '976
and considers the aperture configuration to be a duplication of parts and
notes that "it has been held that the duplication of parts" does not distinguish
over the art "unless a new and unexpected result is produced." Final Act. 13
(citing In re Harza, 274 F.2d 669 (CCPA 1960).
Appellant asserts that the Examiner's reliance on In re Harza is
"improper as the Examiner admits that the duplication of parts here adds
utility to the invention." Reply Br. 13.
Plate 13 (angle bracket) of Figure 9 of Gilbert '976 includes a body
portion 14 having "a plurality of series of longitudinally spaced apart
perforations" that includes large and small apertures similar to the
perforations of Figure 4 of Gilbert '976, upon which the Examiner relies for
the first and second set of apertures. Gilbert '976, p. 2, 11. 11-18, Fig. 9; see
also Final Act. 6. Plate 13 (angle bracket) also includes "flanges 17 and 18
[that] are each provided with a series of spaced apart perforations which are
alternately large, 27, and small, 28." Id. at p. 2, 11. 29-32. Because the
perforations already exist on plate 13 (angle bracket) and the Examiner's
duplication of the apertures results in a grouping of apertures as depicted in
the annotated copy of Figure 4 of Gilbert '97 6 on page 6 of the Final Action,
the Examiner's use of In re Harza in this case is appropriate. Appellant does
not adequately explain why the various plates of Gilbert '976 that are
intended to be connected to each other should not have the same aperture
configuration. Nor does Appellant show the criticality of the number of
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apertures in the configuration. Indeed, Appellant's Specification teaches
that although "points of connection have been shown with four small holes
distributed around a larger center hole," one of ordinary skill would
appreciate that "any number of smaller holes are illustratively spread around
a larger center hole without departing from the scope of the present
invention." Spec. i-f 71. Accordingly, we are not persuaded by Appellant's
arguments.
Therefore, we sustain the rejection of claim 9 as unpatentable over
Gilbert '976 and Jinno.
Claim 33
Claim 33 recites, in part that "the second component is a gear having
gear teeth that surround an outer perimeter of the gear." Appeal Br. 29.
The Examiner's position is that "placing a similar aperture
configuration on the gear [84]," is a "duplication of parts" that does not
distinguish over the art "unless a new and unexpected result is produced."
Final Act. 14 (citing In re Harza, 274 F.2d 669 (CCPA 1960)).
Appellant asserts that the Examiner's reliance on In re Harza is
"improper as the Examiner admits that the duplication of parts here adds
utility to the invention." Reply Br. 13.
The Examiner's use of In re Harza is misplaced in that the Examiner
does not adequately explain how placing the arrangement of apertures from
the panel in Figure 4 of Gilbert '976 onto the gear 84, where a similar
aperture arrangement does not exist, is a duplication of parts that is within
the scope of the holding in Harza.
For this reason, we do not sustain the rejection of claim 33 as
unpatentable over Gilbert '976 and Jinno.
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Claim 35
Claim 3 5 recites, in part, "wherein the kit includes a mounting bracket
that mounts at least two hobby servo motors back-to-back." Appeal Br. 29.
The Examiner's position is that "making a bracket to mount two
motors," is a "duplication of parts" that does not distinguish over the art
"unless a new and unexpected result is produced." Final Act. 15 (citing In
re Harza, 274 F.2d 669 (CCPA 1960).
Appellant asserts that the Examiner's reliance on In re Harza is
improper because the Examiner's modification is not a mere duplication of
parts. See Reply Br. 14.
We agree with Appellant on this point. Although we appreciate that
modifying a bracket simply for use with two motors instead of one motor
might be considered a duplication of parts, the claim also requires that the
motors be mounted back-to-back. Even if one of skill in the art were to
place two motors on a bracket, the Examiner has not adequately explained
why the motors would be mounted back-to-back.
In view of this, we do not sustain the rejection of claim 35 as
unpatentable over Gilbert '976 and Jinno.
Claim 37, 38, 42, and 44
Independent claim 3 7 recites, in part, "the diameters of the center
aperture, the first set of satellite apertures, and the second set of satellite
apertures being different from each other." Appeal Br. 29.
The Examiner takes the position that Gilbert '97 6 does not
specifically disclose this limitation, but, because "it has been held that if a
change in the relative dimensions over the prior does not make the claimed
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invention perform differently, the claimed device is not patentably distinct
from the prior art." Final Act. 16. (citing Gardner v. TEC Systems, Inc., 725
F.2d 1338 (Fed. Cir. 1984).
Appellant argues that it is improper to rely on Gardner v. TEC
Systems, because "having a multiple of different diameters of apertures
allows for increased functionality through the ability to have different types
of modular connections at the different apertures." Reply Br. 15.
We do not find Appellant's arguments persuasive as to this point.
Although Appellant asserts that the aperture size increases functionality,
Appellant does not provide persuasive support for this assertion. Indeed,
Appellant's Specification discloses that although some embodiments
"include center holes and surrounding holes of different relative
dimensions," in other embodiments, "center holes and their surrounding
holes are the same size," or, "center holes are smaller than surrounding
holes." Spec. i-f 63. Moreover, the central hole and surrounding holes of
Gilbert '97 6 perform the same function as Appellant's claimed center
aperture and satellite apertures, namely, to secure additional elements and
whether they have different dimensions will not change their principle of
operation.
Claim 37 also recites, in part, "a hobby servo motor having a rotatable
output shaft, the output shaft having gear teeth distributed around an outer
diameter of the shaft."
The Examiner relies on Jinno as disclosing this limitation including
teeth 24a and considers that the use of Jinno's servo motor in Gilbert '976
"would be a simple substitution of one known element (a servo motor with a
geared output shaft) for another (a motor with a shaft used in a construction
set) to obtain predictable results (the continued ability to create rotational
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output from a servo motor shaft in a construction set)." Final Act. 17 (citing
Jinno Fig. la).
Appellant asserts that "Jinno fails to remedy the deficit of Gilbert with
regard to this limitation." Appeal Br. 17. Appellant also argues that the
Examiner "provides no explanation as to why an inventor, at the time of the
present invention, would have been motivated to make such a combination."
Reply Br. 16.
We do not agree with Appellant's arguments. The Examiner provides
a rationale for combining Gilbert '976 and Jinno, namely, a substitution of
parts related to the ability to create rotational output from a servo motor
shaft in a construction set. Appellant does not adequately explain why the
gear teeth 24a on Jinno' s shaft 24 as shown in Fig. 1 a do not meet the
claimed requirement or why the Examiner's rationale is improper.
Accordingly, we are not persuaded by Appellant's arguments. Therefore,
we sustain the rejection of claim 37 as unpatentable over Gilbert '976 and
Jinno. Claims 38, 42, and 44 depend from claim 37 and Appellant does not
make separate arguments for these claims. Accordingly, we also sustain the
rejection of claims 38, 42, and 44 for the same reasons.
Claims 40 and 41
Claim 40 recites, in part,
wherein the first set of satellite apertures and the second set of
satellite apertures are angularly offset from each other such that
none of the apertures in the first set of satellite apertures is
aligned with any of the apertures in the second set of satellite
apertures in a radial direction.
Appeal Br. 30.
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Claim 41 recites, in part, "wherein the second radial distance is a same
second distance for each of the apertures in the second set of satellite
apertures." Id.
The Examiner takes the position that the location of the second set of
apertures is a "rearrangement of parts [that] is not patentable unless it
modifies the operation of the device." Final Act. 18-19 (citing In re
Japikse, 181F.2d1019 (CCPA 1950)).
Appellant asserts that the Examiner's reliance on In re Japikse is
improper because "the rearrangement of parts provides additional
adjustability (functionality)," which amounts to "a modification of the
operation of the device, and for that reason, the Examiner has not made a
prima facie case for nonobviousness." Reply Br. 16-17.
We are not persuaded by Appellant's arguments because Appellant
does not ascribe the importance of the second set of satellite apertures.
Specifically, the Specification discloses that "the versatility of the star-
shaped connection scheme (first set of satellite apertures) should be
apparent," but merely discloses that the second set of apertures are "in a
satellite pattern around the star-shaped connection scheme." Spec. i-fi-181 and
97. Moreover, as the Examiner notes, "other pieces and parts could be
connected at the satellite holes regardless of their radial and angular
position," and Appellant does not adequately explain why a connection
using the arrangement of the second set of satellite apertures as recited has
increased functionality. See Final Act. 18-20. Moreover, the first and
second satellite sets of Gilbert '976 perform the same function as
Appellant's claimed satellite apertures, namely, to secure additional
elements, and whether they are offset will not change their principle of
operation.
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In view of this, we sustain the rejection of claims 40 and 41 as
unpatentable over Gilbert '976 and Jinno.
Claim 45
Claim 45 recites, in part, "the second center aperture having a
diameter that is larger than the diameters of the third set of satellite
apertures." Appeal Br. 32.
The Examiner takes the position that the claim recites a different
relative dimension from that disclosed by Gilbert '97 6 (and Jinno ), and that
"if a change in the relative dimensions over the prior does not make the
claimed invention perform differently, the claimed device is not patentably
distinct from the prior art." Final Act. 21 (citing Gardner v. TEC Systems,
Inc., 725 F.2d 1338 (Fed. Cir. 1984).
Appellant argues that it is improper to rely on Gardner v. TEC
Systems, because "a third set of satellite apertures with a larger diameter than
the first or second set of satellite apertures allows for increased functionality
and accommodates additional modular connections at new connection points
by accommodating connectors of increased size." Reply Br. 19.
Appellant has not shown the criticality of the relative size of the holes.
Indeed, Appellant's Specification discloses that although some embodiments
"include center holes and surrounding holes of different relative
dimensions," in other embodiments, "center holes and their surrounding
holes are the same size," or, "center holes are smaller than surrounding
holes." Spec. i-f 63. Because Appellant's Specification does not support
Appellant's assertion, we are not persuaded by Appellant's arguments.
Moreover, the central hole and surrounding holes of Gilbert '976 perform
the same function as Appellant's claimed center aperture and satellite
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apertures, namely, to secure additional elements and whether they have
different relative dimensions will not change their principle of operation.
Accordingly, we sustain the rejection of claim 45 as unpatentable over
Gilbert '976 and Jinno.
Rejection II
Claim 2
Claim 2 recites in part, "the third set of apertures (in the motor
mounting bracket) having the same number of apertures as the first and the
second sets of apertures, and the third set of apertures having at least
approximately equivalent diameters and spacings as the first and the second
sets of apertures." Appeal Br. 26.
The Examiner takes the position that "Gilbert ['976] discloses the
particular hole configuration on a panel," "Gilbert '302 discloses a general
construction set wherein components may be attached to each other via the
connecting holes," and "it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the combined Gilbert ['976],
Jinno and 'Gilbert '302 to place the same type of hole configuration on the
center panel because doing so would be a duplication of parts." Final Act.
23-24 (citing Gilbert '976, Fig. 4; Gilbert '302 Figs. 1-7; In re Harza, 274
F.2d 669 (CCPA 1960).
Appellant argues that when a modification goes beyond merely
duplicating parts, an obviousness rejection is improper. See Reply Br. 9
(citing Ex parte Rippolone ). Appellant asserts that "the addition of a third
set of apertures is not merely the duplication of parts but the addition of
increased functionality through additional apertures available as connection
points." Id.; see also id. at 20.
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We agree with Appellant on this point. The Examiner proposes to
modify panel 10 of Gilbert '97 6, Jinno, and Gilbert '302 to include apertures
that correspond to the apertures of the second and third connectors.
Although we appreciate that Gilbert '976 has the recited aperture
configuration on the panel shown in Figure 4, the Examiner is not merely
duplicating this panel but rather, is duplicating only the aperture
arrangement onto a different panel where a similar aperture arrangement
does not exist. As such, the Examiner's modification is beyond the holding
in Harza, which is limited to a mere duplication of parts.
Therefore, we do not sustain the rejection of claim 2 as unpatentable
over Gilbert '976, Jinno, and Gilbert '302.
Claim 5
Claim 5 recites, in part, "a gear having a third set of apertures, the
third set of apertures having the same number of apertures as the first and
the second sets of apertures." Appeal Br. 27.
The Examiner finds that "Gilbert '976 discloses the particular hole
configuration on a panel," and Gilbert '3 02 discloses a gear [ 41] with
mounting holes, and the Examiner determines that "placing a similar hole
configuration on the gear" of Gilbert'976, Jinno, and Gilbert '302 would
have been "the duplication of parts" that does not distinguish over the art
"unless a new and unexpected result is produced." Final Act. 25 (citing
Gilbert '976 Fig. 4; Gilbert '302, Fig. 1; and In re Harza, 274 F.2d 669
(CCPA 1960)).
Appellant argues that when a modification goes beyond merely
duplicating parts, an obviousness rejection is improper. See Reply Br. 21
(citing Ex parte Rippolone ).
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The Examiner's use of In re Harza in this instance is misplaced in that
the Examiner does not adequately explain how placing the arrangement of
apertures from the panel onto the gear (albeit a gear with mounting holes) is
a mere duplication of parts that as was the case in Harza. In view of this, we
do not sustain the rejection of claim 5 as unpatentable over Gilbert '976,
Jinno, and Gilbert '302.
Claim 43
Appellant makes no separate arguments for claim 43, but instead
relies on the arguments made against the rejection of independent claim 3 7.
Appeal Br. 21. Accordingly, we sustain the rejection of claim 43 as
unpatentable over Gilbert '976, Jinno, and Gilbert '302 for the reasons
discussed above regarding the rejection of claim 37.
Rejection III
Claim 34 recites, in part, "wherein an internal potentiometer of the
hobby servo motor has been replaced in a control scheme with an external
potentiometer." Appeal Br. 29.
The Examiner relies on Fukasaku for this limitation and finds that
"Fukasaku discloses the use of an external variable resistor (or
potentiometer) to adjust the output of a motor." Final Act. 27 (citing
Fukasaku, col. 4, 11. 13-29 and col. 2, 1. 65---col. 3, 1. 2). The Examiner
concludes that it would have been obvious "to use an external potentiometer
to operate the motor," as a "use of a known technique (using an external
potentiometer to vary the output of a motor) to improve a similar device (a
construction set having a motor) in the same way (using an external
potentiometer to vary the output of a motor). Id.
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Appellant argues that variable resistor 17 of Fukasaku is not "an
external potentiometer, but only an external means for adjusting an internal
resistor." Appeal Br. 21-22.
In the Answer, the Examiner asserts that under "the broadest
reasonable interpretation, the fact that the Fukasaku's 'adjustable center
connection' is 'external' makes the potentiometer 'external' (i.e. the fact that
part of the potentiometer is external meets the claim requirement as
applicant does not claim 'a completely external potentiometer')." Ans. 34.
The Examiner notes that Appellant's Paragraph 56 "states that the external
potentiometer is 'inserted into the control scheme to facilitate proportional
control of the servo splined output shaft,"' and that the "ability to use an
external control by Fukasaku is consistent with applicant's disclosure and
claim." Id.
In reply, "Appellant respectfully asserts that, without stating a
particular motivation to combine these references, the Examiner has not
stated a prima facie case for obviousness and, as such, this rejection is
improper" Reply Br. 23.
We do not agree with Appellant that the Examiner has not stated a
particular reasoning to combine the references. The Examiner's reasoning is
that the combination involves the use of a known technique to improve a
similar device in the same way with predictable results of motor control.
Final Act. 27. Modifying the kit of Gilbert '976, Jinno, and Pedersen to
include an external potentiometer, as taught by Fukasaku, is an improvement
that is nothing more than the predictable use of prior art elements, namely,
potentiometers for varying motor speed, according to their established
functions. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
The Examiner's modification is an improvement to the kit of Gilbert '976,
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Jinno, and Pedersen to provide an external potentiometer in the same way as
taught by Fukasaku to lead to a predictable result, and the modification is
well within the skill of one having ordinary skill in this art in the same way
as taught by Fukasaku.
As such, we do not agree with Appellant that the Examiner has not
established a prima facie case of obviousness.
In view of this, we sustain the rejection of claim 34 as unpatentable
over Gilbert '976, Jinno, Pedersen, and Fukasaku.
Rejection IV
Claim 39 recites, in part, "wherein the second component is a wheel
having a smooth surface that surrounds an outer perimeter of the wheel."
Appeal Br. 30.
Claim 39 depends from claim 37, which requires that the second
component has a second set of apertures including a same number of
apertures as the first set of apertures and having at least approximately
equivalent diameters and spacings as the first set of apertures. The
Examiner notes that Gilbert '976 discloses the aperture arrangement in
Figure 4 and the use of a wheel 69. Final Act. 28 (citing Gilbert '97 6 Figs. 3
and 4). The Examiner takes the position that "put[ ting] the pattern on the
wheel [69]" is supported by "duplication of parts case law." Id.
In this rejection, the Examiner is not merely duplicating a panel
having the recited hole configuration but rather, is duplicating the aperture
arrangement of the panel onto a completely different element, i.e., wheel 69.
As such, the Examiner's modification is beyond the holding in Harza, which
is limited to a mere duplication of existing parts. In view of this, we do not
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sustain the rejection of claim 39 as unpatentable over Gilbert '976, Jinno,
and Pedersen.
DECISION
The decision of the Examiner to reject claims 1, 7, 9, 37, 38, 40-42,
44, and 45 as being unpatentable over Gilbert '976 and Jinno is affirmed.
The decision of the Examiner to reject claims 3, 6, 8, 33, and 35 as
being unpatentable over Gilbert '976 and Jinno is reversed.
The decision of the Examiner to reject claims 2 and 5 as being
unpatentable over Gilbert '976, Jinno, and Gilbert '302 is reversed.
The decision of the Examiner to reject claim 43 as being unpatentable
over Gilbert '976, Jinno, and Gilbert '302 is affirmed.
The decision of the Examiner to reject claim 34 as being unpatentable
over Gilbert '97 6, Jinno, Pederson, and Fukasaku is affirmed.
The decision of the Examiner to reject claim 39 as being unpatentable
over Gilbert '976, Jinno, and Pederson 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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