Ex Parte Greeb

Patent Trial and Appeal Board

Nov 18, 2016

13489832 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/489,832 06/06/2012
53609 7590 11/22/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Kevin E. Greeb
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
505966-CON 7927
EXAMINER
MCCALISTER, WILLIAM M
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/22/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN E. GREEB
Appeal2015-000808
Application 13/489,832
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-000808
Application 13/489,832
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A current to pressure converter (CPC), comprising:
a housing defining a control port, a supply port, and a drain
port fluidly coupled therethrough;
a digital controller, configured to reduce the effects of
thermal drift, enclosed within said housing;
a 3-way rotary valve configured to alternatively couple the
control port with the drain port, the supply port, or neither the
drain port or supply port;
a limited angle torque rotary actuator operatively coupled
to the digital controller and drivably coupled to the 3-way rotary
valve; and
a pressure transducer in fluid communication with the
control port, the pressure transducer providing pressure feedback
to the digital controller; and
wherein the digital controller is configured to control the
pressure supplied by the control port in proportion to an input
analog control signal of 4 - 20 mA.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rempel
Dantlgraber
Semaan
Grobbel
Newman
Greeb
us 4,858,637
us 4,864,210
us 5,158,108
us 5,720,313
US 6,889,705 B2
US 8,215,329 B2
Aug. 22, 1989
Sept. 5, 1989
Oct. 27, 1992
Feb.24, 1998
May 10, 2005
July 10, 2012
Woodward D, Woodward CPC Product Specification 85202D,
Copyright 1996; prior art date of October 2005 shown by Woodward's
"Industrial Controls Non-restricted Publications Index".
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Application 13/489,832
REJECTIONS
I. Claims 1-16 stand rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1-13 of U.S.
Patent No. 8,215,329.
II. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodward D.
III. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodward D and Rempel.
IV. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodward D and Newman.
V. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodward D and Semaan.
VI. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodward D and Grobbel.
VII. Claims 2-10 and 12-16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Woodward D (alternatively over
Woodward D in view of Rempel, Newman, Semaan, or
Grobbel) and Dantlgraber.
DISCUSSION
Rejection I
The Examiner contends that a terminal disclaimer has not been filed
in the instant Application. Ans. 2. However, an electronic terminal
disclaimer was filed and subsequently approved on February 21, 2014. As
this terminal disclaimer obviates the rejection based on double patenting, we
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Application 13/489,832
do not sustain the Examiner's decision rejecting claims 1-16 on the ground
of nonstatutory double patenting.
Rejection II
Claim 1
The Examiner finds that Woodward D discloses all of the limitations
of claim 1 except for "the specific structure of the controller, and as such
does not disclose the controller to be a digital controller." Final Act. 6
(emphasis omitted). In addition, the Examiner finds that "there were a finite
number of predictable, potential solutions (i.e., the controller must be either
digital or analog) to the problem of how to physically embody a valve
controller" and that "one of skill would have had a reasonable expectation of
success in embodying Woodward D's controller as a digital controller." Id.
Based on these findings, the Examiner determines that "the limitation
'configured to reduce the effects of thermal drift' would be met, as
analogously disclosed by Applicant, in that thermal drift effects are reduced
by using a digital, rather than analog controller." Id.
Appellant contends that "the Examiner has incorrectly applied the
'Obvious to try doctrine' explained in MPEP § 2143." Appeal Br. 6. In
support of this contention, Appellant argues that "the Examiner has not
identified a finite number of predictable, or known, solutions to a recognized
problem" because, "there are potentially an infinite number of analog
controllers that may be used with the CPC of Woodward D." Id.; see also
Reply Br. 7-9.
Responding to this argument, the Examiner explains that "all of the
analog controllers collectively represent only a single potential solution,
namely that of an analog controller. Similarly, all of the known digital
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Application 13/489,832
controllers represent the single potential solution of a digital controller."
Ans. 12. Given that claim 1 merely requires "a digital controller" (Appeal
Br., Claims App. 1) and does not specify any particular digital controller, the
Examiner is correct. All known controllers are either analog or digital.
Thus, there are only two options available.
Appellant further argues that the Examiner provides no evidence "to
show that the proposed modification could have been pursued with a
reasonable expectation of success." Appeal Br. 6. However, Appellant
offers no evidence or persuasive argument that rebuts the Examiner's
finding. Moreover, the proposed modification, which merely substitutes a
digital controller for Woodward D's analog controller, is nothing more than
the substitution of one element for another known in the field to yield a
predictable result. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (citing to
Adams, 383 U.S. 38, 50-51 (1966)) ("[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result."). Appellant provides no evidence or persuasive
argument that the claimed digital controller does more than yield a
predictable result. Thus, Appellant's argument is unconvincing.
In addition, Appellant argues that "[t]he Appellant has not asserted
that the invention is directed to the problem of how to embody a controller ..
. . Thus, the Examiner's definition of the problem, when applied to the cited
reference (i.e., Woodward Product Specification), is incorrect." Appeal Br.
7; see also Reply Br. 6-7. However, we are unaware of any requirement
that the problem identified by the Examiner in support of an "obvious to try"
rationale be the same problem with which Appellant was concerned. Rather,
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Application 13/489,832
the Court explained that "[w]hen there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense." KSR, 550 U.S. at 421. In this case the Examiner
identified a design need because Woodward D does not address the specific
structure of the controller. See Final Act. 6. Thus, Appellant does not
apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1.
Claim 11
The Examiner determines that Woodward D fails to disclose a "CPC
[capable of] determin[ing] the reasonableness of its inputs." Final Act. 6.
The Examiner finds that "alarm limits were well known in the art at the time
of invention for warning of dangerous pressure" 1 and explains that "[a ]larm
limits are seen as defining reasonableness in that alarms are activated in the
event of unreasonableness. Id. Based on this finding and reasoning, the
Examiner further determines that "it would have been obvious to use alarm
limits associated with Woodward D's measured pressure to warn users of
potentially dangerous pressure levels in the output line." Id.
Appellant argues that
the Examiner has provided no facts or evidence of an alarm
which determines reasonableness of input signals. Further, the
Examiner has not provided a single example of an alarm used in
1 The Examiner notes that this finding, which was made in the prior Office
action, was not contested by Appellant. Final Act. 6.
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Application 13/489,832
such a fashion. Nor has the Examiner provided evidence that
these alarm limits were the result of a digital controller
diagnosing input signals to determine reasonableness. A mere
conclusory statement based on a feature not even shown in the
cited reference does not support the Examiner's claim of
obviousness.
Appeal Br. 8.
Responding to this argument, the Examiner further explains
Woodward D's measured pressure is disclosed as a signal which
is input to the controller, and therefore the use of an alarm limit
with this measured pressure would, as claimed, "diagnose [an]
input signal to determine reasonableness thereof'. The further
claim limitation "for use in controlling a position of the 3-way
rotary valve" is seen as met in that Woodward D's determination
of reasonableness (i.e., the alarm limits) could be used by an
operator to control position of the 3-way rotary valve (such as by
power shut down, resulting in Woodward D's valve moving to
the disclosed "failsafe" position; see Woodward D's "Features":
"Upon loss of power, a return spring will force the output
pressure to the drain pressure (failsafe)").
Ans. 14--15. However, even if we accept the Examiner's finding that the use
of alarm limits was known, the Examiner does not explain why one skilled
in the art would use an alarm limit based on Woodward D's measured
pressure to diagnose the reasonableness of the measured pressure signal.
The Examiner's reasoning is circular and incomplete; and thus, lacks
rationale underpinning.
For this reason, we do not sustain the Examiner's decision rejecting
claim 11 as unpatentable over Woodward D.
Rejections III-VI
Claim 1
As claim 1 is unpatentable over Woodward D, it follows that claim 1
is also unpatentable over the combined teachings of Woodward D and
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Application 13/489,832
Rempel, Newman, Semaan, or Grobbel. We sustain the Examiner's
decisions rejecting claim 1 as unpatentable over Woodward D and Rempel,
Newman, Semaan, or Grobbel.
Claim 11
The Examiner's rejection of claim 11 as unpatentable over Woodward
D and Rempel, Newman, Semaan, or Grobbel, relies upon the same faulty
reasoning, as the rejection of claim 11 as unpatentable over Woodward D
alone. Final Act. 7, 8, 9. Accordingly, we do not sustain the Examiner's
decision rejecting claim 11 as unpatentable over Woodward D and Rempel,
Newman, Semaan, or Grobbel.
Rejection VII
Claims 2 and 3
Claims 2 and 3 depend from claim 1. Appellant does not provide
separate arguments for the patentability of claims 2 and 3. See Appeal Br.
23-25. Rather, Appellant argues that "Dantlgraber does not cure the
deficiencies in Woodward D with respect to the claimed digital controller.
Id. at 24. As we find no deficiencies in the rejection of claim 1 as
unpatentable over Woodward D, Appellant's argument is unconvincing. We
sustain the Examiner's rejection of claims 2 and 3 as unpatentable over
Woodward D and Dantlgraber, and for the same reasons, sustain the
Examiner's alternative rejections of claims 2 and 3 over Woodward and
Rempel, Newman, Semaan, or Grobbel, and Dantlgraber.
Claim 12
Claim 12 requires a "digital controller [that] is configured to impart an
anti-silting impulse to the 3-way rotary valve." Appeal Br. Claims App. 3.
The Examiner determines that Woodward D fails to disclose "the use of an
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Application 13/489,832
impulse for the 3-way valve." Final Act. 10.2 The Examiner finds that
"Dantlgraber teaches that it was known in the art at the time of invention to
use a controller that periodically imparts an impulse to a valve to keep the
valve from sticking." Id. (citing Dantlgraber 4:45--48). Based on this
finding, the Examiner reasons that it would have been obvious "to use
[Woodward D's] controller to periodically impart an impulse, as taught by
Dantlgraber." Id.
Appellant contends that "no combination of Woodward D, Rempel et
al., Dantlgraber, Newman, Semaan, or Grobbel teaches imparting the anti-
silting impulse recited in claims 4-10 and 12-16." Appeal Br. 24. However,
Appellant provides no evidence or persuasive argument in support of this
contention. See id. An "[a ]ttomey' s arguments in a brief cannot take the
place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Thus, Appellant's bald assertion is unconvincing.
We sustain the Examiner's decision rejecting claim 12 as unpatentable
over Woodward D and Dantlgraber or alternatively, Woodward D and
Rempel, Newman, Semaan, or Grobbel, and Dantlgraber.
Claims 4--10 and 13-15
Claim 4 requires a "digital controller [that] is configured to
periodically impart an anti-silting impulse to the 3-way rotary valve" and
claim 13 similarly requires "the digital controller is configured to
periodically impart an anti-silting impulse to the 3-way rotary valve."
Appeal Br. Claims App. 2, 3. As discussed supra, the Examiner finds that
"Dantlgraber teaches that it was known in the art at the time of invention to
2 In rejecting claim 12, the Examiner refers to the analysis of claim 4. Final
act. 11. Accordingly, we likewise refer to the rejection of claim 4.
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Application 13/489,832
use a controller that periodically imparts an impulse to a valve to keep the
valve from sticking." Final Act. 10 (citing Dantlgraber 4:45--48). 3
Appellant argues that
Dantlgraber clearly does not disclose symmetrically opposed
movement of the control valve, as demonstrated by slight
movements of the valve in both directions as an anti-silting
measure, but instead discloses a hammer like impact to free up
the motor after it becomes stuck. Nor does Dantlgraber disclose
a controller configured to impart periodic anti-silting impulses,
as required by claims 4-10 and 13-15. The hammer-like impact,
taught by the device of Dantlgraber to dislodge a stuck valve, is
very different from the anti-silting features of the claimed
invention which are designed to prevent the valve from
becoming stuck.
Appeal Br. 24.
Responding to this argument, the Examiner explains that
in mechanics the meaning of "impulse" is "the product of the
average force acting upon a body and the time during which it
acts" (Dictionary.com). It seems clear that Dantlgraber's
"hammer-like impact'; involves a force acting over a period of
time, thus bringing it within the broadest reasonable
interpretation of the term "impulse". Also see Dantlgraber at col.
4 lines 17-22, which equates the hammer-like impact with an
"impulse transmission". It is the examiner's position that
Dantlgraber's impact/impulse is "anti-silting" since it is designed
to release a stuck condition that occurs because of a chip of
material which is trapped between the control edges of the valve.
Ans. 20 (citing Dantlgraber 1:45--47).
In response, Appellant further contends that "even if one accepts the
Examiner's argument that Dantlgraber provides an "impulse", Dantlgraber
does not teach providing a periodic impulse, as required by the rejected
3 In rejecting claim 13, the Examiner refers to the analysis of claim 4. Final
act. 11. Accordingly, we likewise refer to the rejection of claim 4.
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claims." Reply Br. 14. In support of this contention, Appellant notes that
"Dantlgraber teaches striking a portion of the motor only when the motor
gets stuck." Id.
Appellant is correct. Although, Dantlgraber teaches an electro-motor
generating a force to sever a chip of material when the spool is in a stuck
position (Dantlgraber 1 :41-53), Dantlgraber does not teach a controller
configured to periodically impart this force.
For this reason, we do not sustain the Examiner's decision rejecting
claims 4 and 13 as unpatentable over Woodward D and Dantlgraber. We
likewise do not sustain the Examiner's alternative decisions rejecting claims
4 and 13 as unpatentable over Woodward D and Rempel, Newman, Semaan,
or Grobbel, and Dantlgraber. Claims 5-10 depend from claim 4 and claims
14 and 15 depend from claim 13. Accordingly, we do not sustain the
Examiner's decision rejecting these claims either.
Claim 16
Claim 16 depends from claim 12, and further requires that "the anti-
silting impulse imparts symmetrically opposed movement of the 3-way
rotary valve." Appeal Br. Claims App. 3. As discussed supra, Appellant
argues that "Dantlgraber clearly does not disclose symmetrically opposed
movement of the control valve, as demonstrated by slight movements of the
valve in both directions as an anti-silting measure, but instead discloses a
hammer like impact to free up the motor after it becomes stuck." Appeal Br.
24.
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Appellant is correct. Dantlgraber fails to describe an impulse that
imparts symmetrically opposed movement. See Dantlgraber 1 :41-53.
For this reason, we do not sustain the Examiner's decision rejecting
claim 16 as unpatentable over Woodward D and Dantlgraber. We likewise
do not sustain the Examiner's alternative decisions rejecting claim 16 as
unpatentable over Woodward D and Rempel, Newman, Semaan, or Grobbel,
and Dantlgraber.
DECISION
The Examiner's rejections of claims 1-3 and 12 are AFFIRMED.
The Examiner's rejections of claims 4--11 and 13-16 are
REVERSED.
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)(l )(iv).
AFFIRMED-IN-PART
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