Ex Parte Caldwell et al

Patent Trial and Appeal Board

Jun 16, 2017

13320972 (P.T.A.B. Jun. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/320,972 11/17/2011 Niall James Caldwell 5221-016 1054
22429 7590 06/20/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
PARK, JOHN C
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
EAnastasio @ IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIALL JAMES CALDWELL
and STEPHEN MICHAEL LAIRD
Appeal 2017-003740
Application 13/320,972
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
The claimed invention relates to a method of measuring a property of
entrained gas in a hydraulic fluid and fluid-working machine. (Title).
Appeal 2017-003740
Application 13/320,972
Illustrative Claim
Claim 1 is exemplary of the subject matter on appeal:
1. A method of measuring a property of entrained gas in a
hydraulic liquid received by a working chamber of a fluid
working motor, wherein said property is determined from the
period of time elapsing between the closure of a first valve to
isolate the working chamber and the passive opening of a
second valve to bring the working chamber into fluid
communication with a manifold.
(contested limitation emphasized).
Rejection
Claims 1—14 are rejected under 35 U.S.C. § 102(b) as anticipated over
Williamson (US 4,164,137; issued Aug. 14, 1979).
ANALYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellants. To the extent Appellants have
not advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Independent Claim 1
Appellants contest the recited “passive opening of a second valve,” in
the Appeal Brief (22), and also in the Reply Brief (12), pointing out that the
cited sections of the Williamson reference do not disclose this element of
method claim 1. Appellants additionally argue Williamson’s counter 26
measuring air-liquid volume “does not disclose the output of the counter
‘represents a period of time’ as alleged in the final Office action.” (App.
Br. 21).
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Application 13/320,972
We focus our analysis on the contested temporal limitation “wherein
said property is determined from the period of time elapsing between the
closure of a first valve to isolate the working chamber and the passive
opening of a second valve” (claim 1, emphasis added).
In rejecting claim 1 under 35 U.S.C. § 102(b), the Examiner cites to
Williamson, without providing a clear mapping of the contested limitation
“period of time elapsing between the closure of a first valve to isolate the
working chamber and the passive opening of a second valve.'” Final Act. 3.
The Examiner clarifies his findings in the Answer, by mapping the “first
valve” (claim 1) to Williamson’s check valves 96 and 98, and mapping the
“passive opening of a second valve” (claim 1) to Williamson's check
valve 24. (Ans. 9). The Examiner explains in the Answer (id.) that
Williamson's counter 26 measures entrained air-liquid volume between the
cycle times of forward piston movement.
In the Answer (9), the Examiner advances a new finding that the
opening and closing of the valves at the time of the forward piston
movement inherently occurs. However, the Examiner does not provide a
clear mapping of the claim 1 limitation “said property is determined from
the period of time elapsing” in the Final Rejection, or in the Answer. (Final
Act. 3, Ans. 8—9).
Although the Examiner maps the recited “period of time elapsing”
(claim 1) to Williamson’s cycle of the piston movement (Ans. 8), we find the
Examiner has not fully developed the record to establish that the “property”
(claim 1) as measured in Williamson (e.g., particulate matter and bubbles,
col. 3,11. 44-45) is determined from the “period of time elapsing between
the closure of a first valve to isolate the working chamber and the passive
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Application 13/320,972
opening of a second valve,'1'’ as required by the contested temporal language
of independent method claim 1.
We further observe the Examiner maps elements of claim 1 to features
of both Figures 1 and 2 of Williamson. (Final Act. 3, Ans. 8—9). However,
these figures appear to represent different respective embodiments. Our
reviewing court guides that elements from different embodiments in a
reference cannot be combined to support an anticipation rejection. See Net
MoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Therefore, to the extent that Figures 1 and 2 of Williamson depict features
pertaining to different embodiments, the evidence proffered by the Examiner
is insufficient to support an anticipation rejection.
Because the Examiner has not fully developed the record to establish
how Williamson expressly or inherently discloses the “property of entrained
gas in a hydraulic liquid” is determined from the period of time elapsing
between the closure of a first valve and the opening of a second passive
valve, as required by claim 1, we find speculation would be required to
affirm the Examiner on this record. We decline to engage in speculation.1
Therefore, on this record, we find a preponderance of the evidence
supports Appellants’ contention (App. Br. 21) the Examiner has not
identified an express or inherent “method of measuring a property of
entrained gas in a hydraulic liquid . . . wherein said property is determined
from the elapsed period of time between the closure of the first valve . . . and
1 “A rejection . . . must rest on a factual basis . . . .” In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not. . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” Id. (emphasis added).
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Application 13/320,972
the passive opening of the second valve,” as recited in independent claim 1.
Accordingly, we are constrained on this record to reverse the Examiner’s
anticipation rejection of method claim 1 over Williamson.2
Because we have reversed the anticipation rejection of independent
claim 1 on appeal, we also reverse the anticipation rejection of associated
dependent claims 2—6.
Independent Claims 7, 9, and 10
Apparatus claim 7 is directed to a “fluid working machine.”
(Preamble). The Examiner finds Williamson inherently discloses the
contested limitation of “wherein the controller is operable to take into
account measured entrained gas when determining the timing of the active
opening or closure of at least one of the low pressure valve and the high
pressure valve,” within the meaning of claim 7. Final Act. 5.
However, the Examiner eviscerates the prima facie case of
anticipation for claim 7 by concluding: “Achieving desired pressure of
hydraulic fluid by determination of timing of opening and closing of valves
would be obvious and common to a person of ordinary skill in the art.”
(Id.). Although “anticipation is the epitome of obviousness,” Jones v.
2 Because a rejection under §103 is not before us on appeal, we do not reach
and express no opinion as to whether claim 1, or other independent claims,
might be obvious over the teachings and suggestions of the Williamson
reference, considered alone, or considered in combination with one or more
additional references. In the event of further prosecution of this application,
we leave such consideration to the Examiner. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984), the reverse is not true, because
obviousness is insufficient to establish anticipation.3 See n.l, supra.
On this record, we do not find the Examiner has identified an express
or inherent determination of the “timing of the active opening or closure of
at least one of the low pressure valve and the high pressure valve,” as
required by the express language contested in claim 7. Therefore, we find a
preponderance of the evidence supports Appellants’ contention the
Examiner has failed to establish a prima facie case of anticipation for
independent claim 7, and independent claim 10, which similarly recites
“determining the timing of the active opening or closure of at least one
of the low pressure valve and the high pressure valve.” Independent non-
transitory medium claim 9 similarly recites “caus[ing] the fluid working
machine to determine the timing of the active opening or closure of one
or more actively controlled valves . . . .”
On this record, and based upon a preponderance of the evidence,
Appellants have persuaded us the Examiner erred. Therefore, we reverse the
rejection under § 102(b) of independent claims 7, 9, and 10, and the
associated claims which depend therefrom.
3 “A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). Anticipation additionally requires a single prior art
reference to disclose the elements arranged as in the claim. See Net
Moneyln, Inc., 545 F.3d at 1369.
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Application 13/320,972
Independent Claim 12
Regarding claim 12, Appellants contend (App. Br. 29):
Claim 12 recites features similar to those recited in claim
7, and therefore distinguishes over Williamson for reasons
analogous to those discussed with respect to claim 7. Further
regarding claim 12, Williamson fails to provide a method of
modelling a function of a fluid working machine, let alone taking
into account properties of entrained gas in fluid received into the
working chamber from the high pressure manifold. The passage
of Williamson referred to by the Examiner merely relates to how
the sampling system of Williamson can be adjusted for use with
different particle counters and flow rates, and is not relevant to
the features of claim 12.
Similar arguments to those offered for claim 7 also apply
to claim 12, which recites to "actively control at least closure of
the high pressure valve and closure of the low pressure valve to
determine the net displacement of fluid by the working chamber
on a cycle by cycle basis . . . taking into account properties of
entrained gas in fluid received into the working chamber from
the high pressure manifold "
We note method claim 12 is of different scope than apparatus
claim 7. After reciting a preamble comprising structural components with
associated intended functions,4 the body of method claim 12 comprises a
single step or act: “taking into account properties of entrained gas in fluid
received into the working chamber from the high pressure manifold.”
4 In the event of further prosecution, we leave it to the Examiner to consider
whether claim 12 is a hybrid claim that should be rejected under 35 U.S.C.
§ 112, second paragraph. We note “[a] single claim which claims both an
apparatus and the method steps of using the apparatus is indefinite under
35 U.S.C. 112, second paragraph.” MPEP § 2173.05(p)(ll) (citing In re
Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318
(Fed. Cir. 2011) (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005)).
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Thus, the single step or act of method claim 12 does not determine
the “timing of the active opening or closure of at least one of the low
pressure valve and the high pressure valve,” as required by the language
contested above regarding claim 7. Nor does the preamble of claim 12 recite
a function (performed by any structure in the preamble of method claim 12)
that determines the “timing of the active opening or closure of at least one
of the low pressure valve and the high pressure valve,” as contested
above regarding claim 7.
Because we find Appellants’ previous arguments regarding
apparatus claim 7 are inapplicable to single-step method claim 12, we find
these arguments unpersuasive. Moreover, given that method claim 12 does
not define exactly how the properties of entrained gas are taken into
account,5 we also find unpersuasive Appellants’ remaining argument that
“Williamson fails to provide a method of modelling a function of a fluid
working machine, let alone taking into account properties of entrained gas
in fluid received into the working chamber from the high pressure
manifold.” (App. Br. 29 (emphasis added)).
5 In the event of further prosecution of this application, we leave it to the
Examiner to consider whether all claims which recite the “taking into
account” language should be rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more
plausible claim constructions, the IJSPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite.”). Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
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In the Final Office Action (7), the Examiner relies on Williamson
(col. 5,11. 3—15) to support the rejection of claim 12. As described in
Williamson, column 5, lines 3—11:
The embodiment of FIG. 2 is preferred to that of FIG. 1 primarily
because of the availability of standardized and simpler parts to
manufacture or procure, and because the use of pressure
compensated valve 86 permits the use of the system with a
variety of particle counters and with various flow rates, the
required adjustment being merely to adjust the desired control
pressure at the pressure compensator valve and the air pressure
to the air cylinder.
Given this evidence {id.), and the insufficiency of Appellants’
arguments regarding independent single-step method claim 12, on this
record, we are not persuaded the Examiner erred. Therefore, we sustain the
Examiner’s anticipation rejection of independent claim 12, and the rejection
of claims 13 and 14, which depend therefrom.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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Appeal 2017-003740
Application 13/320,972
DECISION
We reverse the Examiner’s decision rejecting claims 1—11 under pre-
AIA 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 12—14 under pre-AIA
35 U.S.C. § 102(b).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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