Ex Parte Schmidt

Patent Trial and Appeal Board

Dec 27, 2018

13847065 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/847,065 03/19/2013
10800 7590 12/28/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Stefan Schmidt
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.
2179-0188 6707
EXAMINER
PRICE, CRAIG JAMES
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
12/28/2018 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 STEP AN SCHMIDT 1
Appeal2018-000942
Application 13/847,065
Technology Center 3700
Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2, 4, 5, 8-13, 15, and 162 under 35 U.S.C. § 103(a)
as unpatentable over Schepers (Ingo Schepers et al., A Novel Model for
Optimized Development and Application of Switching Valves in Closed Loop
Control, International Journal of Pluid Power 12, No. 3, pp. 31--40 (2011))
1 Robert Bosch GmbH ("Appellant") is the Applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
2 Claims 1 and 3 are cancelled, and claims 6, 7, and 14 are withdrawn from
consideration. Final Act. 2.
Appeal2018-000942
Application 13/847 ,065
and Thomsen (US 6,629,020 Bl, iss. Sept. 30, 2003). Final Act. 3-7. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claim 11, the sole independent claim, is reproduced below.
11. A hydraulic valve arrangement comprising:
at least one pilot valve arrangement including:
a first pilot valve configured to be activated
electromagnetically in a pulse-width-modulated manner,
a high pressure connection configured to connect to
a pressure medium source and a low pressure connection
configured to connect to a pressure medium sink, and
a first control connection configured to connect to a
first control chamber which is pilot-controlled, wherein
when the first pilot valve is in an open position, the first
control connection is configured to be connected to one of
the high pressure connection and the low pressure
connection, and wherein the first pilot valve is configured
to be activated ballistically; and
at least one valve which is pilot-controlled by the pilot
valve arrangement, wherein the first control connection of the
pilot valve arrangement is configured to connect to the first
control chamber of the at least one valve which is pilot-
controlled.
OPINION
Appellant argues claims 2, 4, 5, 8-13, 15, and 16 as a group. Appeal
Br. 5-8. We select independent claim 11 as the representative claim, and
claims 2, 4, 5, 8-10, 12, 13, 15, and 16 stand or fall therewith. 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 13/847 ,065
The Examiner finds that Schepers discloses all of the limitations of
independent claim 11, but "is silent [as] to having at least one valve which is
pilot controlled by the pilot valve arrangement, wherein the first control
connection of the pilot valve arrangement is configured to connect to the
first control chamber of the at least one valve which is pilot-controlled."
Final Act. 3--4. The Examiner finds that "Thomsen teaches the use of a
valve housing 1 having at least one valve 3 actuated by a handle 1 O" having
first and second chambers. Id. at 4 (citing Thomsen, 5:42-51, Fig. 1). The
Examiner concludes that it would have been obvious "to employ at least one
valve housing having a valve body and manual actuator as taught by
Thomsen into the device of Schepers," thereby resulting in the claimed
invention, "in order to motivate the fluid from one chamber or the other
chamber as selected by the operator using the manual handle to motivate the
piston in a manner as required by the user." Id. The Examiner clarifies in
the Answer that it would have been obvious "to employ at least one valve
housing having a valve body as taught by Thomsen into the device of
Schepers ... to have at least one valve which is pilot controlled by the pilot
valve arrangement ... so that a hydraulic working machine can be operated
in one direction or another as taught by Thomsen." Ans. 5 ( citing Thomsen,
2:13-20).
Appellant does not contend that the combination of Schepers and
Thomsen fails to teach any of the limitations of independent claim 11, but
instead argues that one of ordinary skill in the art would not have been led to
combine Thomsen's valve with the hydraulic system structure described in
Schepers. More particularly, Appellant argues that "there is nothing in
Schepers that advocates using the dynamic model as a blueprint for
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Application 13/847 ,065
designing an actual hydraulic valve arrangement." Reply Br. 3. Appellant
argues that "Schepers does not purport to disclose any particular application
of a switching valve or the use of a ballistic mode in the operation of such a
valve[; rather,] Schepers simply acknowledges that switching valves can be
operated in several modes, one of them being a ballistic mode." Appeal
Br. 5. We are not persuaded by these arguments in that they appear to insist
on an explicit teaching, suggestion, or motivation in Schepers for the
modification proposed by the Examiner, whereas such an insistence has been
foreclosed by the Supreme Court. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398,415,419 (2007) (stating that a rigid insistence on teaching, suggestion,
or motivation is incompatible with its precedent concerning obviousness).
Rather, the Court requires that we look to whether the Examiner has
provided "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.
Appellant also argues that "the object of Schepers is to model
switching valve dynamics" and "there is no need to couple the schematic
model of Fig. 11 of Schepers to an actual pilot-controlled valve" to achieve
this object. Reply Br. 3. Indeed, Appellant asserts that the addition of a
pilot-controlled valve would "impact the model of the hydraulic circuit in
Schepers Fig. 11" and "would be contrary to the entire purpose of the
Schepers article, namely[,] to develop a model to study the dynamic
behavior of switching valves." Appeal Br. 6. Although we agree with
Appellant that employing a valve that will be controlled by the arrangement
of Schepers will not assist with the modeling of the dynamic behavior of the
switching valves described in Schepers, this does not obviate the Examiner's
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Application 13/847 ,065
articulated reasoning for the combination of Schepers with Thomsen, which
is to control a valve for operating a hydraulic working machine (Ans. 5).
Appellant also argues that "[ t ]here is nothing in Schepers or Thomsen
that contemplates th[ e] improvement achieved by [Appellant's] claimed
invention"-that is, "[b ]y applying the ballistic principle to the piloted two
stage valve, the movement of the valve slider ( 4) can be made sufficiently
smooth without excessive damping in the pilot stage[, which] produces fast
and smooth control of the load connected to the valve (4) that is piloted by
the pilot valve arrangement (2)." Appeal Br. 7. Although the Examiner's
stated reasoning for combining Schepers and Thomsen is not based on a
recognition that applying a ballistic principle to a piloted two-stage valve
will "produce[] fast and smooth control of the load connected to the valve
(4) that is piloted by the pilot valve arrangement (2)" (id.), one of ordinary
skill in the art may be prompted to do what an inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggest the modification to achieve the same advantage or result
discovered by an applicant. See, e.g., In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane)
("Although the motivation to combine here differs from that of the applicant,
the motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.")).
Appellant argues that "there can be no rationale for modifying a
model of a valve system, and in the absence of any legitimate rationale there
can be [no] foundation for obviousness." Reply Br. 4; see also Appeal Br. 5
("[T]here is no rational basis to modify the schematic representation in Fig.
11 of Schepers to incorporate the structure from Thomsen."). Appellant
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suggests that the "only purported support for the proposed modification is
the comparison of the schematic of Fig. 11 of Schepers with the schematic
of [Appellant's] Fig. 2" and that, "in the absence of using hindsight, the fact
of similarities between the schematics does not provide foundation for the
modification made by [Appellant] in the claimed invention." Reply Br. 3--4.
As an initial matter, we disagree with Appellant that the rejection is based
solely on the similarity between Appellant's Figure 2 and Schepers'
Figure 11. Rather, the Examiner reasons that one of ordinary skill in the art
would have been led to employ a valve in the hydraulic system structure
described by Schepers, the valve being controlled by the arrangement of
Schepers so that a hydraulic working machine can be operated, similar to the
use of pilot valves described in Thomsen. Ans. 5; see also id. at 11 ("[T]he
device of Thomsen discloses structure of a valve which is operated by pilot
valves ... for the purpose of permitting the use of a manual operation in the
valve system to operate the intended piston."). Moreover, as to Schepers
describing a model, the Examiner points out that "[ t ]he switching valves of
Fig. 11 represent real valves ... just as the entire hydraulic circuit shown in
Fig. 11 represents a real hydraulic circuit" and that "the use of utilizing
hydraulic schematics to describe an invention is old and well known in the
fluid handling art." Ans. 10-11. 3
3 The Examiner notes that "there are no distinguishing restrictions within
the section of 35 USC [ §] 102/103 that non-patent literature disclosure
cannot be relied upon or can only be relied on as a secondary teaching."
Ans. 10. As explained by the Examiner, "drawings or schematics found on
any published document available to the public having a proper filing or
publication date prior to the application for appellant's filing/publication
date is available as prior art under 35 USC[§] 102/103." Id.
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Schepers describes that "[ c ]onventional hydraulic actuators like
cylinders or hydraulic motors are controlled by hydraulic valves" and that
"[ m Jost of these valves are directional valves," but that "[ o ]ne attempt to
reduce costs is to use switching valves instead of directional valves."
Schepers 31. Schepers further explains that it is desirable to create models
of switching valves that fit the behavior of real valves. Id. at 36, 37.
Schepers describes a "structure of [a] hydraulic system" that includes
"switching valves" and a "hydraulic cylinder." Id. at 38, Fig. 11. Schepers
describes that "the results of the ... model in ballistic mode is closer to the
behaviour of the real valve than the results of the existing models with lower
complexity." Id. at 39.
Based on Schepers description of using switching valves in a
hydraulic system with a hydraulic actuator ( e.g., cylinder), Appellant has not
persuaded us of error in the Examiner's determination that one of ordinary
skill in the art would have been led to employ Thomsen's valve for operating
a hydraulic working machine into the hydraulic system structure described
by Schepers for ultimately operating a hydraulic working machine in one
direction or another. That is, Appellant does not adequately explain why the
Examiner's reasoning articulated in support of the conclusion of obviousness
(Ans. 5) lacks rational underpinning. As to Appellant's argument that the
Examiner is relying on hindsight (Reply Br. 3), we find this argument
unconvincing in that it does not identify any knowledge relied upon by the
Examiner that was gleaned only from Appellant's disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of the
invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971) ("Any
judgement on obviousness is in a sense necessarily a reconstruction based
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upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper.").
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 11 is rendered obvious by
Schepers and Thomsen. We sustain the rejection of claim 11, and claims 2,
4, 5, 8-10, 12, 13, 15, and 16 falling therewith, under 35 U.S.C. § 103 as
unpatentable over Schepers and Thomsen.
DECISION
The Examiner's decision to reject claims 2, 4, 5, 8-13, 15, and 16
under 35 U.S.C. § 103 as unpatentable over Schepers and Thomsen 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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