Ex Parte Kunow et al

Patent Trial and Appeal Board

Dec 11, 2018

11568097 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/568,097 10/19/2006 Peter Kunow
141837 7590 12/11/2018
Eubanks PLLC (OneSubsea)
12777 Jones Road
Suite 465
Houston, TX 77070
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.
SUB-030616 US
(18001-016)
CONFIRMATION NO.
9672
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
12/11/2018 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 PETER KUNOW and KLAUS BIESTER
Appeal2018-001775
Application 11/568,097
Technology Center 2800
Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-9, 11-28, and 31-33. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appeal2018-001775
Application 11/568,097
Appellants' 1 invention relates to a position determination device and
an associated method of position determination. Spec. ,r 2. The device and
method are used to determine the position of a spindle of a screw drive in an
actuator employed in the production of mineral oil or natural gas. Id. ,r 3.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. A position determination device for a linear
moving spindle of a screw drive in an actuator, comprising:
a deformation element extending along a range of
movement of the linear moving spindle, the deformation
element comprising:
a measurement end;
a reflective end; and
a length extending between the measurement end
and the reflective end;
a deformation initiation device disposed on the linear
moving spindle and movable relative to the deformation
element, the deformation initiation device being magnetic and
comprising a magnetic field;
an electrical winding circumferentially wound around the
deformation element and extending along the range of
movement of the deformation initiation device;
a deformation sensor assigned to the measurement end of
deformation element;
1 The real party in interest is identified as OneSubsea IP UK Limited, a
company having its principal place of business in London, England, United
Kingdom. App. Br. 3.
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Appeal2018-001775
Application 11/568,097
an evaluation unit to determine the position of the linear
moving spindle;
wherein the electrical winding is configured to produce a
magnetic field so as to interact with the deformation initiation
device magnetic field to displace the deformation element and
initiate a direct oscillation in the deformation element starting at
the deformation initiation device and traveling directly toward
the measurement end and a reflective oscillation travelling
toward the reflective end and reflecting back to the
measurement end;
wherein a first time period is the time required for the
direct oscillation to reach the measurement end;
wherein a second time period is the time required for the
reflected oscillation to reach the measurement end; and
wherein the evaluation unit is configured to determine
the position of the linear moving spindle relative to the
deformation element solely based on sensor measurements of
both the direct and reflected oscillations and from a ratio of a
product of the first time period and the length of the
deformation element to a sum of the first time period and the
second time period.
App. Br. 19 (Claims App'x). Independent claim 27 is directed to a method
of using the device of claim 1. Independent claim 32 is directed to a device
similar to the device of claim 1.
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Appeal2018-001775
Application 11/568,097
Appellants, App. Br. 11, request review of the following rejections
from the Examiner's final office action: 2
I. Claims 1, 2, 4--7, 11, 12, 15-21, 24--27, and 31-33 rejected under
35 U.S.C. § I03(a) as unpatentable over Ehling (US 6,351,117 Bl, issued
February 26, 2002), Ueda (US 4,238,844, issued December 9, 1980), and
Moreau (US 5,717,330, issued February 10, 1998).
II. Claim 3 rejected under 35 U.S.C. § I03(a) as unpatentable over
Ehling, Ueda, Moreau, and DeCastro (US 2003/0220567 Al, published
November 27, 2003).
III. Claims 6, 8, 9, 13 and 14 rejected under 35 U.S.C. § I03(a) as
unpatentable over Ehling, Ueda, Moreau, and Yokota (JP 63-317731 A,
published December 26, 1988).
IV. Claims 21-23 rejected under 35 U.S.C. § I03(a) as unpatentable over
Ehling, Ueda, Moreau, and Mulrooney (US 5,640,880, issued June 24,
1997).
V. Claim 28 rejected under 35 U.S.C. § I03(a) as unpatentable over
Ehling, Ueda, Moreau, and Van Ostrand (US 6,833,697 B2, issued
December 21, 2004).
In addressing Rejection I, Appellants do not argue any claim separate
from the other. See generally App. Br. Appellants also rely on the same
line of arguments to address the separate rejections of claims 3, 6, 8, 9, 13,
14, 21-23, and 28 (Rejections II-V). Id. Accordingly, we select claim 1 as
representative of the subject matter before us for review on appeal and
decide the appeal as to all grounds of rejection based on the arguments made
by Appellants in support of patentability of claim 1.
2 In addition to the rejections noted below, Appellants argue that the
Examiner rejected certain claims in an advisory action, dated March 27,
2017, based on the doctrine of resjudicata. App. Br. 12. The Examiner
indicates in the Answer that there is no rejection based on the doctrine of res
judicata. Ans. 2. Therefore, we do not address the positions Appellants and
the Examiner present on res judicata.
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Appeal2018-001775
Application 11/568,097
Claim 1
OPINION
Claim 1 is directed to a position determination device that relies on
measuring both direct and reflected oscillations in a deformation element for
operation. App. Br. 13-14.
After review of the respective positions that Appellants and the
Examiner provide, we affirm the prior art rejections of claims 1-9, 11-28,
and 31-33 under 35 U.S.C. § 103(a) for the reasons the Examiner presents
and add the following.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 3-11. 3 Briefly, the Examiner finds Ehling discloses a
positioning device that differs principally from the claimed invention in that
Ehling does not teach measuring both direct and reflected oscillations in a
deformation element for operation. Final Act. 3-7. The Examiner relies on
Ueda to teach the measurement of direct and reflected oscillations as a
known technique to determine the location of the linear moving spindle
relative to the deformation element. Final Act. 8-11. The Examiner
determines it would have been obvious to substitute (replace) Ueda's
measuring technique for the one Ehling teaches because it would lead to a
position detecting device having a simple low-cost structure that ambient
conditions, such as temperature, do not affect. Final Act 8-9; Ueda col. 1, 11.
39--45.
3 A discussion of the reference to Moreau is unnecessary to dispose of this
appeal. Appellants do not contest the Examiner's specific findings with
respect to Moreau. Final Act. 9-1 O; see generally App. Br.
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Appeal2018-001775
Application 11/568,097
Appellants argue that the claimed invention, as well as Ueda, relies on
reflected waves to determine the position of the spindle. App. Br. 13, 15.
Appellants contend that Ehling uses a damper to minimize reflection of
waves and, thus, modifying Ehling by removing the damper would frustrate
Ehling' s purpose and render Ehling unsatisfactory for its intended purpose.
Id. at 14--15.
We are unpersuaded of reversible error. Appellants' arguments do not
address the rejection the Examiner presents. As noted above, the
Examiner's rejection is based on substituting Ueda's measuring techniques
for displacement determination for Ehling's measuring techniques for
displacement determination. Final Act. 8-9. A person of ordinary skill in
the art desiring to effectively determine the linear position/ displacement of a
spindle would have reasonably expected that using a well-known
displacement measuring technique, such as Ueda's technique, would result
in the desired position/displacement determination. "For obviousness under
§ 103, all that is required is a reasonable expectation of success." In re
O'Farrell, 853 F.2d 894,904 (Fed. Cir. 1988); see also KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining that patentable subject
matter must "involve more than the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement"). Although Appellants argue that
Ehling preferably uses a damper to minimize interference from reflected
waves (App. Br. 14--15; Reply Br. 7; Ehling col. 6, 11. 10-15), we agree with
the Examiner that this disclosure does not discourage the use of other well-
known displacement measuring techniques (Ans. 28). Moreover, Appellants
have failed to explain adequately why one skilled in the art would not have
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Appeal2018-001775
Application 11/568,097
been capable of adapting Ueda's measuring techniques to perform the
functions desired for Ehling's positioning device. See In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). And
Appellants have not adequately explained why one skilled in the art would
have expected Ueda's measuring technique to be unsuitable for use in
Ehling' s positioning device.
Accordingly, we sustain the rejections of claims 1-9, 11-28, and 31-
33 under 35 U.S.C. § 103(a) for the reasons given above in addition to the
reasons the Examiner provides.
ORDER
The prior art rejections of claims 1-9, 11-28, and 31-33 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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