Ex Parte Ehmig et al

Patent Trial and Appeal Board

Oct 18, 2017

13936911 (P.T.A.B. Oct. 18, 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.
13/936,911 07/08/2013 Gerhard Ehmig 212,952 5695
38137 7590 10/18/2017
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
ELDRED, JOHN W
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
10/18/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte GERHARD EHMIG
and TILO DITTRICH
____________________

Appeal 2015-005174
Application 13/936,911
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, JAMES P. CALVE, and
PATRICK R. SCANLON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1–19. Ans. 2–3. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a propellant holder for an
explosion driven setting tool. Spec. 2. Claims 1, 10, and 17 are
independent, and claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A propellant holder for being releasably mounted in a setting
tool having a data processing unit (30) and a setting tool data
communication interface (31), the propellant holder comprising:
a housing (21) having an interior space (22) for receiving
propellant (23); and
a data storage identification unit (40) affixed to the
housing (21) and in which a propellant supply level (27) is stored
for being read-out by the setting tool data communication
interface (31) of the setting tool;
wherein the propellant supply level (27) stored in the data
storage identification unit (40) is changed by the data processing
unit (30) via the setting tool data communication interface (31)
upon the propellant being consumed.

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REJECTIONS
I. Claims 1–19 are rejected under 35 U.S.C. § 103(a) over MacVicar,
Thielman, and Veghte.1
II. Claims 1–19 are rejected under res judicata over the Decision
(Appeal No. 2010-010876, “Dec.” or “the prior Decision”) rendered on
March 16, 2013, in the parent application (11/967,062). Ans. 2–3.

ANALYSIS
I. Obviousness over MacVicar, Thielman, and Veghte
Appellants present two arguments: one, that the proposed
combination does not disclose changing the propellant supply level as
required by independent claims 1, 10, and 17, and two, that the Examiner
relies on impermissible hindsight.2
Changing the Propellant Supply Level
Appellants contend that the data processing unit of independent
claim 1,
determines the amount of consumed propellant, subtracts this
amount from the propellant supply level stored in the data storage

1 MacVicar (US 6,247,626 B1; iss. June 19, 2001), Thielman (US
2004/0215407 A1; pub. Oct. 28, 2004), and Veghte (5,771,021; iss. June 23,
1998).
2 Although Appellants mention each of independent claims 1, 10, and 17,
Appellants do not draw any distinction between these claims (i.e., they argue
these claims as a group), and we choose claim 1 as representative. 37 C.F.R.
§ 41.37(c)(iv).
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identification unit of the propellant holder, and then changes that
stored propellant supply level accordingly (“upon the propellant
being consumed”).
App. Br. 11. In other words, Appellants contend that claim 1 requires the
data processing unit to calculate the propellant supply level by a specified
method. For the reasons that follow, we determine that claim 1 is not
limited in that manner.
The language of claim 1 does not support Appellants’ assertion. See
Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331
(Fed. Cir. 2001) (a claim construction analysis begins with, and is centered
on, the claim language itself). Specifically, claim 1 does not recite that data
processing unit 30 determines the propellant supply level through
calculation. Rather, claim 1 requires that propellant supply level 27 is
“changed” by data processing unit 30 in that data processing unit 30 replaces
the preconsumption propellant supply level 27 with the postconsumption
propellant supply level 27.
The Specification does not include a description that supports
Appellants’ interpretation that the data processing unit calculates the post
consumption propellant supply level by a specific technique. The
Specification describes that for both a solid propellant embodiment, and a
gaseous or liquid propellant embodiment, data processing unit 30 changes
the stored supply level after each use of propellant, so that the actual
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propellant supply level is stored.3 Spec. 12:10–15:5, Figs. 1, 2 (solid
propellant charge 25), 13:10–14:15, Fig. 5 (gaseous or liquid fuel 24).
Therefore, claim 1 is not limited to a specific method of determining
the postconsumption propellant supply level as asserted by Appellants.
Rather, claim 1 requires the data processing unit to change the propellant
supply level by storing the propellant supply level, and then, after propellant
is consumed, storing the propellant supply level again. Claim 1 is broad
enough so that the postconsumption propellant supply level may be
determined from a measurement such as fuel pressure.
Appellants go on to stress that independent claim 1 requires that the
data processing unit “changes” the stored propellant supply level upon the
propellant being consumed while in contrast the portion of MacVicar cited
by the Examiner uses the word “stored.”4 App. Br. 11 (emphasis
Appellants’); Reply Br. 7 (emphasizing that column 115, lines 20–24 of
MacVicar uses the word “stored” rather than “changed”). For the reasons
that follow, Appellants’ contention is not persuasive.
Appellants’ focus on semantics (i.e., use of the claim term “changed”
as contrasted to “stored”) does little or nothing to explain how the

3 Claims 8 and 9 each depend from claim 1 and add that the propellant either
is solid or is gaseous or liquid fuel. The presence of these limitations in
dependent claims 8 and 9 suggests that claim 1 is not limited to either type
of propellant.
4 Claim 1 does not recite the term “changes;” rather, claim 1 recites that the
propellant supply level “is changed by the data processing unit.”
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Examiner’s finding is in error. See In re Gleave, 530 F.3d 1331, 1334 (Fed.
Cir. 2009) (although a reference must disclose each and every limitation in a
claim to anticipate the claim, the reference need not satisfy an ipsissimis
verbis test). For the reasons that follow, the Exmainer’s finding is supported
by the reference.
The Examiner relied on MacVicar for the limitation at issue.
Specifically, the Examiner found that MacVicar discloses a data storage
identification unit (programmable microprocessor 300) that includes a data
communication interface (electrically erasable programmable read-only
memory or EEPROM) that stores the propellant supply level provided by the
fuel pressure sensor. See Ans. 2 (citing MacVicar, 14:66–15:15; 15:25–31;
15:42–64; Figs. 17, 23). Indeed, MacVicar’s microprocessor 300 receives
input signals (e.g., from a fuel pressure sensor), provides output signals, and
includes an EEPROM (a device for storing variable information).
MacVicar, 14:27–31; 14:66–15:6; 16:4–8; 16:53–54; Fig. 23. Appellants
acknowledge that the proposed combination derives the propellant supply
level from a measured fuel pressure. App. Br. 11
MacVicar discloses the example that fuel availability may be checked
every ten combustion cycles. MacVicar, 15:25–29. MacVicar also discloses
that information may be stored in the EEPROM after every combustion
cycle, and that the control system may check the status of the driving tool
after every combustion cycle (to include checking fuel pressure). Id. at
15:20–25; 16:15–20; see also Ans. 3–4 (explaining that MacVicar discloses
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or suggests monitoring and displaying information such a propellant
availability after each combustion cycle, i.e., upon the propellant being
consumed).
A person of ordinary skill would understand that MacVicar’s data
processing unit (microprocessor 300) changes the stored propellant supply
level after the propellant is consumed. Appellants’ conclusory assertion that
the references do not make such a disclosure does not persuade us that the
Examiner’s finding is in error.
Rationale
Appellants urge that “hindsight is strictly forbidden,” and that the
Examiner improperly used claims 1, 10, and 17 as a framework for selecting
individual references to recreate the claimed subject matter. App. Br. 12–13
(citing five cases)5; see also Reply Br. 6–7 (asserting that the Examiner’s
Response did not rebut Appellants’ arguments).
Although none of the five cases were explicitly overruled, each
involves a strict application of the teaching, suggestion, or motivation test
that was subsequently discredited by the Supreme Court. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, the Examiner provided
reasons for combining the references. Specifically, the Examiner reasons

5 In re Fine, 837 F.2d 1071 (Fed. Cir. 1988); In re Jones, 958 F.2d 347 (Fed.
Cir. 1992); In re Fritch, 972 F.2d 1260 (Fed. Cir. 1992); In re Sponnoble,
405 F.2d 578 (CCPA 1969); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044 (Fed. Cir. 1988) (cited by Appellant as “Uniroyal v. Redkin-Willey”).

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that a person of ordinary skill would have modified MacVicar to include a
fuel sensor system to measure and record the fuel level and transmit that data
to a processing system, as taught by Thielman, to provide the advantage of
the fuel data being physically attached to a portable fuel housing. Ans. 2–3.
The Examiner also reasons that modifying the combination of MacVicar and
Thielman to employ transponder tags as a means for storing and transferring
fuel level data, as taught by Veghte, would provide a robust, economical,
and well known means for storing and transferring fuel levels. Ans. 3.
Appellants’ assertion that impermissible hindsight may not be used in an
obviousness analysis is unpersuasive because it is a conclusory statement of
a legal principle that does not address the reasons provided by the Examiner.
See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (hindsight argument
is of no moment where the Examiner provides a sufficient, non-hindsight
reason to combine the references).
Claims 2–9, 11–16, 18, and 19
With regard to dependent claims 2–9, 11–16, 18, and 19, Appellants
rely upon the arguments made for independent claims 1, 10, and 17. App.
Br. 13–14; Reply Br. 4–5. Consequently, Appellants do not persuade us that
the Examiner’s finding is in error with respect to the dependent claims.

II. Res Judicata
The Examiner asserts that claims 1–19 of the present application
involve only issues that were addressed in the Board’s prior Decision. Ans.
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3–4. Specifically, the Examiner contends that changing the stored propellant
supply level upon the propellant being consumed as required by independent
claims 1, 10, and 17, was addressed by the Board’s determination with
regard to claim 17 of the parent application. Id. (citing Dec. 9 for the
determination that MacVicar discloses or suggests monitoring and
displaying information, such as fuel availability, after each combustion
cycle, i.e., upon the propellant being consumed).
The question before us is whether the Examiner has shown identity
between the issues in the prior Decision and the case at hand. See In re
Fried, 312 F.2d 930, 931 (CCPA 1963).
The Examiner only addresses the issue of whether MacVicar discloses
or suggests changing the propellant supply level as required by the
independent claims. Ans. 3–4. As discussed above, the rejection at hand
also involves the issue of impermissible hindsight. See App. Br. 12–13.
Further, the claims at issue in the prior decision are not identical to the
claims at issue in this application. Thus, the Examiner has not shown
identity between the issues in the prior Decision and the application at hand.

DECISION
I. We affirm the Examiner’s decision to reject claims 1–19 under
35 U.S.C. § 103(a) as unpatentable over MacVicar, Thielman, and Veghte.
II. We reverse the Examiner’s decision to reject claims 1–19 under res
judicata.
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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)(1)(iv).

AFFIRMED