Ex Parte Smith et al

Patent Trial and Appeal Board

Mar 4, 2015

13176436 (P.T.A.B. Mar. 4, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN DOUGLAS SMITH, KATHERINE KELLY, and
L. KEITH FORBIS
____________

Appeal 2013-002905
Application 13/176,436
1

Technology Center 3600
____________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Douglas Smith et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision to reject under 35 U.S.C.
§ 103(a) claims 1–8 as unpatentable over Spieldiener (US 5,947,030, issued
Sept. 7, 1999), Pribonic (US 6,659,237, issued Dec. 9, 2003), and Weigand
(US 5,715,756, issued Feb. 10, 1998) and claims 9, 10, and 12–20 as
unpatentable over Spieldiener, Weigand, and either Pribonic or DiFonso (US
5,277,125, issued Jan. 11, 1994). Claim 11 has been canceled. See

1
According to Appellants, the real party in interest is Disney
Enterprises, Inc. Br. 1 (filed Aug. 2, 2012).
Appeal 2013-002905
Application 13/176,436

2

Appellants’ Amendment, filed May 30, 2012, p. 8. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellants’ invention relates to “amusement park rides . . . in which it
is desirable to prevent or control backward rolling of a car or vehicle.”
Spec. ¶ 2.
Claims 1, 9, and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An anti-roll back (ARB) assembly for use with vehicles
that ride on a track including an ARB portion adapted with a
plurality of ARB pins, comprising:
a linear magnet assembly positioned along the track in
the ARB portion, the linear magnet assembly comprising a pair
of magnet arrays spaced apart to define a slot extending the
length of the linear magnet assembly;
an ARB element having a body pivotally supported on a
frame of one of the vehicles; and
an electrically conductive reaction plate supported on the
frame of the vehicle and positioned such that the reaction plate
passes through the slot when the vehicle travels on the track
over the ARB portion, wherein the reaction plate is connected
to the ARB element and the ARB body pivots in response to
movement of the reaction plate to position the ARB body
relative to the frame of the vehicle.

Appeal 2013-002905
Application 13/176,436

3

ANALYSIS
The obviousness rejection based upon Spieldiener, Pribonic, and Weigand
Appellants do not present arguments for the patentability of claims 2–
8 apart from claim 1. See Br. 6–10. Therefore, in accordance with 37
C.F.R. § 41.37(c)(1)(vii) (2013), we select claim 1 as the representative
claim to decide the appeal of the rejection of these claims, with claims 2–8
standing or falling with claim 1.
The Examiner finds that the combined teachings of Spieldiener and
Weigand disclose the limitations of claim 1, but fail to disclose a slot in a
linear magnet assembly. Final Act. 2–3. Nonetheless, the Examiner finds
that Pribonic discloses a linear magnet assembly 20 including laterally
spaced magnet arrays 16, 18 forming a slot/gap therebetween through which
fin 14 slides. Id. Thus, the Examiner concludes that it would have been
obvious for a person of ordinary skill in the art to provide Pribonic’s linear
magnet assembly to the ARB magnetic assembly of Spieldiener and
Weingand in order “to achieve expected advantages thereof, such as a
balanced interaction between the reaction plate and the linear magnet
assembly.” Id. at 3.
Although Appellants are correct that Spieldiener fails to disclose a slot
(see Br. 7–8) and Weigand fails to disclose a linear magnetic assembly (see
id. at 9), we note that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). In this case, the Examiner relied on Pribonic to disclose a linear
magnet assembly 20 including laterally spaced magnet arrays 16, 18 forming
a slot/gap therebetween through which fin 14 slides. See Final Act. 2–3.
Appeal 2013-002905
Application 13/176,436

4

Appellants further argue that “[t]he only motivation, however, for
modifying Spieldiener with Pribonic is [an] ‘obvious to try’” rationale. Br.
9. According to Appellants, “there is no indication in Spieldiener that there
are any deficiencies with its design or that it should be modified to provide a
greater magnetic force (stronger eddy currents) or the like.” Id.
We are not persuaded by Appellants’ argument because such an
argument appears to be holding the Examiner to the old TSM standard; such
a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). The Examiner did not use an “obvious to try” rationale, but rather
states that the combination of Spieldiener with Pribonic “achieve[s] expected
advantages thereof, such as a balanced interaction between the reaction plate
and the linear magnet assembly.” Final Act. 3 (emphasis added). Although
Appellants contend that the Examiner’s reasoning is a “mere conclusory
statement” (see Br. 9), Appellants do not provide a reason as to why the
Examiner’s reasoning is deficient. See Br. 9. It seems logical that providing
a pair of laterally spaced magnet arrays 16, 18 as taught by Pribonic, to
replace the linear assembly of magnets on structure 11 of Spieldiener would
balance the interaction between electrically conductive plate 9 as it travels
through the gap between laterally spaced magnet arrays 16, 18 in the anti-
roll back (ARB) assembly of Spieldiener as modified by Weigand and
Pribonic. Appellants give no reason to believe otherwise. The modification
proposed by the Examiner is nothing more than the mere application of a
known technique (i.e., the use of laterally spaced magnet arrays 16, 18) to a
piece of prior art ready for the improvement. See KSR, 550 U.S. at 417.
Appeal 2013-002905
Application 13/176,436

5

In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 2–8 falling with claim 1, as
unpatentable over Spieldiener, Pribonic, and Weigand.

The obviousness rejection based upon Spieldiener, Weigand, and
either Pribonic or DiFonso
Appellants do not present arguments for the patentability of claims 10
and 12–20 apart from claim 9. See Br. 10–12. Therefore, we select claim 9
as the representative claim to decide the appeal of the rejection of these
claims, with claims 10 and 12–20 standing or falling with claim 9.
In addition to the arguments presented supra, which we have found
unpersuasive, Appellants argue that in contrast to claim 9, the opposing
magnets in Pribonic are of the same polarity. See Br. 10–11. Thus,
according to Appellants, “even if Spieldiener were modified by Pribonic, the
result would not be the eddy current assembly defined in claim 9.” Id. at 11.
We do not agree with Appellants’ arguments because, as the
Examiner correctly finds, DiFonso’s Figure 2C discloses a permanent
magnet brake assembly including permanent magnets 22 with opposite poles
facing each other across gap 29. See Ans. 5–6 (citing DiFonso, Fig. 2C); see
also DiFonso, col. 5, ll. 26–31.
Lastly, we note that the Examiner did not use a “mere design choice”
rationale to combine the teachings of Spieldiener and DiFonso, as
Appellants contend (see Br. 11), but rather states that the combination of
Spieldiener with DiFonso “achieve[s] expected advantages thereof, such as
balanced interaction between the reaction plate and the linear magnet
Appeal 2013-002905
Application 13/176,436

6

assembly.” Final Act. 6 (emphasis added). Appellants do not provide a
reason as to why the Examiner’s reasoning is deficient. See id. at 11–12.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 9, and claims 10 and 12–20 falling with
claim 9, as unpatentable over Spieldiener, Pribonic, Weigand, and DiFonso.

SUMMARY
We AFFIRM the Examiner’s decision to reject claims 1–10 and 12–
20.
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).

AFFIRMED

mls