Ex Parte Sambar et alDownload PDFPatent Trial and Appeal BoardSep 22, 201613297155 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/297, 155 11/15/2011 14991 7590 09/26/2016 Rockwell Automation, Inc./(VHP) Attention: Linda Kasulke, Patent Dept. E-7F19 1201 South Second Street Milwaukee, WI 53204 FIRST NAMED INVENTOR Homer S. Sambar 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. 07600.004US1 6632 EXAMINER JOHNSON, VICKY A ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): raintellectualproperty@ra.rockwell.com docketing@vhpglobalip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOMERS. SAMBAR, JEFFREY ANNIS, and BRIAN G. STAEDEN Appeal2014-008731 Application 13/297,155 Technology Center 3600 Before JOHN C. KERINS, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Homer S. Sambar et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants submit the real party in interest is Rockwell Automation Technologies, Inc. Appeal Br. 2. Appeal2014-008731 Application 13/297,155 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An assembly comprising: a shaft including an elongate shaft extending from a first end portion to a second end portion; the first end portion is adapted to engage with a disconnect switch; the second end portion is adapted to engage with a handle of a handle assembly; and the shaft including a first structure at a first radial position, and a second structure at a second radial position of the shaft, where the first radial position is different than the second radial position. REJECTIONS 1) Claims 5, 11, and 13-20 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2) Claims 1-20 are rejected under 35 U.S.C. § 102(b) as anticipated by Kuratani (US 4,739,300, iss. Apr. 19, 1988). DISCUSSION Rejection 1: Claims 5, 11, and 13-20: Indefiniteness The Examiner rejects claims 5 and 11 under 35 U.S.C. § 112, second paragraph, as indefinite due to lack of antecedent basis for the recitation of "the second structure structure." Final Act. 3 . The Examiner also rejects claim 13 as indefinite "because it is unclear how the first end portion of the shaft (152) is engaged with the disconnect system and what elements make 2 Appeal2014-008731 Application 13/297,155 up the disconnect system." Id. Claims 14--20 are subject to this rejection due to their dependence from claim 13. Appellants did not contest the rejections of claims 5, 11, and 13-20 under 35 U.S.C. § 112, second paragraph. See Appeal Br. 8. Appellants, thus, waived any argument of error, and we summarily sustain the rejections of claims 5, 11, and 13-20. In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejectiononappeal);Hyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection); see also 37 C.F.R. § 41.31(c) ("An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office."); 37 C.F.R. § 41.39(a)(l) ("An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken ... unless the examiner's answer expressly indicates that a ground or rejection has been withdrawn."). Rejection 2: Claims 1-20: Anticipation by Kuratani The Examiner finds that Kuratani discloses all the limitations of claims 1-20. Final Act. 4--5. The Examiner did not make specific findings with respect to the limitations in claim 1 of "the first end portion adapted to engage with a disconnect switch" and "the second end portion adapted to engage with a handle." Id. Rather, the Examiner, relying on MPEP § 2111.04, interprets these claim limitations as not limiting the claim scope to any particular structure. Id. 3 Appeal2014-008731 Application 13/297,155 Appellants contend that Kuratani does not disclose "a first end portion [of the shaft] adapted to engage with a disconnect switch, a second end portion [of the shaft] adapted to engage with a handle of a handle assembly" as recited in claims 1 and 7. Appeal Br. 13. Appellants also contend that Kuratani does not disclose "a disconnect system as recited in claim 13", "a first end portion [of the shaft] engaged with a disconnect system as recited in claim 13 ", and "a second end portion [of the shaft] engaged with a handle of a handle assembly, as recited in claim 13." Id. Appellants also contend that the Examiner is improperly interpreting the "adapted to" claim recitations in claim 1 and claim 7 by ignoring the specification. Id. at 14--15. The Examiner responds with a finding that Kuratani discloses the limitations in independent claims 1, 7, and 13 concerning the first and second end portions of the shaft because it "discloses the shaft (4) engages with the electrical box (13a, 13b) and the handle 1." Ans. 7. For the following reasons, we do not sustain the rejection. Kuratani is directed to "rotary type variable resistors and rotary switches" for audio volume control. Kuratani, col. 1. 7-8, 15-22. Kuratani discloses that tip portion 22 of shaft 4 is inserted into cam 3. Id. at Fig. 1, col. 4, 11. 3-16. After insertion of tip portion 25 into cam 3, shaft 4 is rotated to adjust variable resistor 1 and thereby control audio volume. See id. at col. 1, 11. 15-21, 61---63, col. 2, 11. 19-21. Kuratani discloses that a knob is located on the end of shaft 4 external to front plate 5. Id. at col. 2, 11. 8-12 ("operating parts provided on the operating side 4b of the operating shaft 4 such as a knob"), Fig. 6. Kuratani discloses that elements 13a and 13b are 4 Appeal2014-008731 Application 13/297,155 "side plates" that regulate "the distance between substrates Sa and Sb." Id. at col. 1, 11. 37-38. The Examiner's finding that Kuratani's shaft 4 engages with an electrical box 13a and 13b is not supported by Kuratani because these items are side plates, and not an electrical box as asserted by the Examiner. In addition the claims recite that the end of the shaft engages a "disconnect switch" (claims 1 and 7) or "disconnect system" (claim 13), not a side plate or electrical box. In addition, the Examiner does not direct us to any disclosure in Kuratani indicating that shaft 4 is engaged with elements 13a and 13b. The Examiner's finding that Kuratani's shaft 4 engages with handle 1 is also not supported by Kuratani as element 1 is disclosed as a variable resistor, not a handle. If the Examiner intended to equate Kuratani's disclosure of a knob external to variable resistor 1 with a handle and find that shaft 4 engages with a knob on the end of shaft 4 opposite to cam 3, such a finding would be inconsistent with the Examiner's findings regarding Kuratani' s disclosure of the first and second structures on the shaft. In the Final Rejection, the Examiner finds that Kuratani discloses item 23 as the first structure and item 22 as the second structure. Final Act. 4; see Kuratani, Fig. 5. The Examiner also finds that first structure 23 and second structure 22 engage the handle in connection with claims 2, 3, 8, 9, 11, 19, and 20. Id. at 4--5; see also Spec. pp. 6-7, Fig. 5. However, Kuratani's elements 22 and 23 are on the end of shaft 4 that is inserted into cam 3, not on the end where a knob or the recited handle would be disposed. For the foregoing reasons, the Examiner's finding that Kuratani anticipates independent claims 1, 7, and 13 is not supported by a 5 Appeal2014-008731 Application 13/297,155 preponderance of the evidence. Therefore, we do not sustain the rejection of claims 1, 7, and 13 under 35 U.S.C. §102(b). Likewise, we do not sustain the rejection of claims 2---6 that are dependent on claim 1, claims 8-12 which are dependent on claim 7, and claims 14--20 which are dependent on claim 13. DECISION The Examiner's decision rejecting claims 5, 11, and 13-20 under 35 U.S.C. § 112, second paragraph, is affirmed. The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 102(b) 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 6 Copy with citationCopy as parenthetical citation