Ex Parte Welsh

Patent Trial and Appeal Board

Nov 10, 2014

10685215 (P.T.A.B. Nov. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM A. WELSH
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Appeal 2012-010564
Application 10/685,215
Technology Center 3600
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
William A. Welsh (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 22,
25–27, and 29–36 as being unpatentable over Ueda (JP 61-164109 A,
published July 24, 1986) 2 and Perry (US 6,813,973 B1, issued Nov. 9,
2004). Claims 1–10 have been canceled and claims 11–21, 23, 24, and 28

1 According to Appellant, the real party in interest is Sikorsky Aircraft
Corporation. App. Br. 1.
2 We derive our understanding of this reference from the translation
contained in the image file wrapper of this application.
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have been withdrawn. We have jurisdiction over this appeal under 35
U.S.C. § 6(b) 3.

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to an “isolation system for minimizing
in-plane vibrations produced in a rotating system.” Spec. 1, l. 4.
Independent claim 22, the sole independent claim, is representative of
the claimed invention and reads as follows:
22. A vibration isolation system for reducing vibrations in a
rotating system rotatable about an axis of rotation, comprising:
a multiple of masses coaxially disposed about an axis of
rotation of a rotating system, each of said multiple of masses
radially offset from said axis of rotation;
a drive system to independently spin each of said
multiple of masses about said axis of rotation at an angular
velocity; and
a control system in communication with said drive
system to control the angular velocity of each of said multiple
of masses to reduce vibrations generated by the rotating system.

ANALYSIS
The Examiner finds that Ueda discloses “a control system . . . to
control the angular velocity of each of said multiple of masses to reduce
vibrations generated by of the rotating system.” Final Act. 2 (mailed June

3 This is Appellant’s second appeal before the Patent and Trial Appeal
Board. In the first appeal (2009-002774, Decision mailed July 30, 2009) the
rejection under 35 U.S.C. § 102(b) of claims 22 and 25–27 as anticipated by
Ueda was affirmed.
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22, 2011) (citing p. 5, ll. 1–8). According to the Examiner, the limitation “to
reduce vibrations generated by the rotating system” is a functional limitation
and “[t]he control system of the Ueda reference is capable of reducing
vibrations.” Ans. 6.
Although we appreciate the Examiner’s position that the above
mentioned limitation is a functional limitation, nonetheless, the Examiner
has the burden of providing a basis in fact and/or technical reasoning to
support the finding that “[t]he control system of the Ueda reference is
capable of reducing vibrations.” Here, it is not apparent, and the Examiner
does not adequately explain, how Ueda’s control system is capable of
reducing vibrations. As correctly noted by Appellant, Ueda’s angular
velocity meter uses detected vibrations as input to calculate an angular
velocity. App. Br. 8; see also Ueda, pages 8–9 and Fig. 3. We thus agree
with Appellant that Ueda’s control system is not consistent with reducing
vibrations, as the Examiner posits, because vibration reduction “would not
provide an accurate angular velocity measurement.” See Reply Br. 3. The
Examiner’s use of Perry’s disclosure does not remedy the deficiencies of
Ueda as described above4. See Final Act. 2.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 22, and its dependent claims
25–27 and 29–36, as being unpatentable over Ueda and Perry.

4 The Examiner turns to Perry to disclose, “multiple [] masses (38, 52)
radially offset from said axis of rotation.” Final Act. 2.
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SUMMARY
The Examiner’s decision to reject claims 22, 25–27, and 29–36 is
reversed.

REVERSED

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