Ex Parte Ymker

Board of Patent Appeals and Interferences

May 7, 2012

11791969 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEO YMKER
____________

Appeal 2010-000628
Application 11/791,969
Technology Center 3600
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000628
Application 11/791,969

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STATEMENT OF THE CASE
Leo Ymker (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 8-14 as
unpatentable over Chen (US 7,152,496 B2, issued Dec. 26, 2006) and
Kusiak (US 3,766,798, issued Oct. 23, 1973) and claim 15 over Chen,
Kusiak, and Preuthun (US 6,786,890 B2, issued Sep. 7, 2004). Claims 1-7
have been canceled by the Examiner. We have jurisdiction over this appeal
under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to “an electrically driven linear
actuator,” including an inner cylinder 31, an outer cylinder 32, and an
elastomer material layer 33 that frictionally connects the inner and outer
cylinders 31, 32. Spec. 1, l. 1; Spec. 6, ll. 8-10; and fig. 1.
Claim 8, the sole independent claim, is representative of the claimed
invention and reads as follows:
8. An electrically driven actuator for linearly moving a mass along
an axial direction of the electrically driven actuator, the electrically
driven actuator comprising:
an electric motor;
at least one elongated actuator element having two pipes that
are concentrically arranged and defining a tubular gap having a
predetermined thickness there between, one of the two pipes is
coupled to the mass at an output side of the at least one elongated
actuator element;
a linear driving mechanism is coupled to the electric motor and
to a second of the two pipes at an input side of the at least one
elongated actuator element and converting a rotational motion of the
electric motor into a linear motion of the at least one elongated
actuator element along the axial direction; and
an elastomer material located inside the tubular gap,
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wherein the two pipes are fixedly coupled to each other by the
elastomer material.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Independent claim 8 requires “at least one elongated actuator element
having two pipes,” wherein “one of the two pipes is coupled to the mass”
and “a linear driving mechanism is coupled to the electric motor and to a
second of the two pipes.” App. Br., Claims Appendix.
The Examiner found, and we agree, that Chen discloses an electrically
driven actuator including two concentrically arranged pipes, 15, 16, wherein
pipe 15 is coupled to a mass and a linear driving mechanism (driving
assembly 11, screw 12, and screw nut 13) is coupled to motor 10 and pipe
16. Ans. 4.
Appellant argues that, “exterior tube 16 of Chen cannot reasonably be
considered to correspond to the claimed second of the two pipes because the
exterior tube 16 is not movable with respect to the motor 10.” App. Br. 12.
Thus, according to Appellant, if the system of Chen were modified to
include the elastomer snubber 66 of Kusiak between pipes 15 and 16 of
Chen, as the Examiner proposes, “neither the interior tube 15 nor the
exterior tube 16 would be capable of moving with respect to the motor 10.”
App. Br. 13.
Pointing to column 2, lines 6-8 of Chen, the Examiner responds that
Chen explicitly discloses that both tubes 15, 16 extend and retract. Ans. 7.
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In response, Appellant argues that: (1) the hatching of Figure 1 of
Chen “suggests that the exterior tube 16 is fixedly screwed to the housing of
the linear actuation device” and (2) “the exterior tube 16 appears to provide
a secured position for an outer ring of a ball bearing via a shim.” Reply Br.
2. Thus, according to Appellant, if exterior tube 16 is movable, as the
Examiner opines, the ball bearing and associated screw 12 and bevel gear
would be displaced such that linear device 1 of Chen would be inoperable.
Reply Br. 3.
The USPTO has the initial burden of providing a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic reasonably flows from the teachings of the
applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Once the USPTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the applicant to prove that the prior art does
not possess the characteristic at issue. See id. This is the case whether the
rejection is based on inherency under 35 U.S.C. § 102, prima facie
obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977).
In this case, like the Examiner, we find that Chen explicitly discloses
that:
The movement of the interior tube 15 then actuates
the extension or retraction of the exterior tube 16
of the actuation device 1.

Chen, col. 2, ll. 6-8.
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As such, the explicit disclosure of Chen supports the Examiner’s
determination that both tubes 15, 16 of Chen extend and retract, so as to shift
the burden to Appellant to show that this is not the case. See Ans. 7.
As noted above, Appellant relies exclusively on Figure 1 of Chen to
satisfy this burden. See Reply Br. 2-3.
First, we do not agree with Appellant that the hatching of Figure 1
somehow suggests that the exterior tube 16 is fixedly screwed to the housing
of the linear actuation device. See Reply Br. 2. At most, the hatching in
Figure 1 indicates that the housing of the linear actuating device of Chen is
separate from exterior tube 16.
Second, we do not find that Chen’s Figure 1 provides sufficient detail
to permit a person of ordinary skill in the art to visualize how the exterior
tube 16 secures the outer ring of the ball bearing. See Reply Br. 3.
Although we appreciate that a shim appears to secure the ball bearing in
place, we also note that between the exterior tube 16 and the ball bearing,
Chen’s device includes at least one cylindrically hollow sleeve that presses
against the shim. See Chen, fig. 1. As such, it may just as well be that the at
least one hollow sleeve, rather than the exterior tube 16, secures the ball
bearing such that the ball bearing and associated screw 12 and bevel gear are
not displaced if exterior tube 16 moves.
Hence, since (1) Chen’s Figure 1 does not provide sufficient detail to
determine that exterior tube 16 is not movable with respect to motor 10 and
(2) Chen explicitly discloses that exterior tube 16 is moveable, the burden
did not shift back to the Examiner to further support the rejection of
independent claim 8. Thus, for the foregoing reasons, Appellant’s
arguments do not persuade us that the Examiner erred in rejecting claim 8 as
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unpatentable over Chen and Kusiak. Accordingly, we shall sustain the
rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Chen and
Kusiak.
With respect to claims 9-14, Appellant does not make any other
substantive arguments. App. Br. 13-14. Therefore, we shall also sustain the
rejection of claims 9-14 under 35 U.S.C. § 103(a) as unpatentable over Chen
and Kusiak.
Lastly, regarding the rejection of claim 15, Appellant relies on the
same arguments presented above in the rejection of independent claim 8.
App. Br. 14. Thus, for the same reasons, the rejection of claim 15 under 35
U.S.C. § 103(a) as unpatentable over Chen, Kusiak, and Preuthun is likewise
sustained.

SUMMARY
The decision of the Examiner to reject claims 8-15 is affirmed.
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

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