Ex Parte Shaw et al

Board of Patent Appeals and Interferences

Jul 5, 2012

11249809 (B.P.A.I. Jul. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN S. SHAW and CHARLES M. TOMPKINS
____________

Appeal 2010-007639
Application 11/249,809
Technology Center 3600
____________

Before LINDA E. HORNER, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian S. Shaw and Charles M. Tompkins (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2, 4, and 6.
Appellants cancelled claims 3, 5, 9, and 16, and the Examiner withdrew
claims 7, 8, 10-15, 17, and 18 from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-007639
Application 11/249,809

2
The Claimed Subject Matter
The claimed subject matter is directed to “a downhole tool that
includes a moveable component and a stationary component” and a “sensor
element…to sense [the] position of the moveable component relative to the
stationary component.” Spec. 2, para. [0004]. Claim 1 (the sole
independent claim), reproduced below, is representative of the subject matter
on appeal.
1. A downhole tool comprising:
a moveable component of the downhole
tool;
a stationary component of the downhole
tool; and
a sensor element positioned and configured
to be physically compressible by a cam surface of
the moveable component against the stationary
component only during some moveable component
positions to sense position of the moveable
component relative to the stationary component.
App. Br., Clms. App’x.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 4, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Wilson (US 4,181,360; iss. Jan. 1, 1980). Ans. 3.
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wilson in view of Garshelis (US 5,195,377; iss. Mar. 23, 1993). Id.1

1 Appellants present conflicting information in their Appeal Brief concerning
whether the rejection of claim 2 is being appealed. Appellants state that the
“rejection of claims 1, 2, 4 and 6 is appealed” (App. Br. 3), but Appellants
do not list the rejection of claim 2 under the Grounds of Rejection to be
Appeal 2010-007639
Application 11/249,809

3
OPINION
Anticipation based on Wilson
The Examiner determines that Wilson anticipates claims 1, 4, and 6.
Ans. 3. In particular, the Examiner states that “Wilson discloses a cutter (1)
moveable relative to a tool holder (2) wherein a shank (5) eccentric to the
pivot axis (at 18) physically compresses a load cell (8) to sense the position
of the cutter.” Id.
Independent Claim 1
Appellants argue that Wilson “fails to disclose the claimed limitation
that the sensor is compressed by the movable component only during some
moveable component positions” of independent claim 1. App. Br. 5.
Appellants state that “[c]laim 1 includes a limitation that the sensor be
physically compressed by the movable component only during some
moveable component positions,” which requires “that during some positions
of the movable component the movable component is not physically
compressing the sensor.” App. Br. 4.
We are not persuaded by Appellants’ argument as it is not
commensurate with the scope of claim 1. It is the language of the claims
that must patentably distinguish the invention from the prior art. In re
Vamco Machine and Tool, Inc. 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985).
We agree with the Examiner that claim 1 “does not require contact nor
compression.” Ans. 4. Claim 1 recites “a sensor element positioned and
configured to be physically compressible by a cam surface of the moveable
component against the stationary component only during some moveable

Reviewed on Appeal (App. Br. 3). In view of the conflicting information,
we will treat the rejection of claim 2 as being appealed.
Appeal 2010-007639
Application 11/249,809

4
component positions to sense position of the moveable component relative
to the stationary component.” App. Br., Clms. App’x. Claim 1 does not
require that the sensor element be compressed by the moveable component
only during some moveable component positions or that the sensor element
is physically compressed by the moveable component only during some
moveable component positions, as asserted by the Appellants. Instead,
claim 1 requires that the sensor element be positioned and configured to be
physically compressible. Thus, the language of claim 1 does not patentably
distinguish over the prior art in the manner asserted by Appellants.
Appellants also argue that “Wilson discloses a system wherein the
sensor (load cell 8) is specifically constructed to assure that the sensor is
always in compression by a surface (leading wall 11)” and cite column 2,
lines 58-62 of Wilson. App. Br. 4. However, the cited portion of Wilson
states that the “rear face of the shank 5 has a small projection 12…about
which the cutter tool 1 pivots thus ensuring that during cutting the button 10
[of the load cell 8] is always in contact with the wall 11” (emphasis added).
Wilson, col. 2, ll. 58-62. Therefore, Wilson does not describe that the button
10 of the load cell 8 is always in contact with the wall 11. Wilson instead
states that, during cutting, the button 10 of the load cell 8 is in contact with
the wall 11. Wilson does not describe whether the button 10 contacts the
wall 11 when there is no cutting. Accordingly, we do not agree with
Appellants’ argument that Wilson discloses a system wherein the sensor is
specifically constructed to assure that the sensor is always in compression by
a surface.
Appellants further argue that “Wilson… teaches away from the
movable component having any possible position wherein the movable
Appeal 2010-007639
Application 11/249,809

5
component is not physically compressing the sensor.” App. Br. 5. The
question whether a reference “teaches away” from the invention is
inapplicable to an anticipation analysis. Celeritas Techs., Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (The prior art was held to
anticipate the claims even though it taught away from the claimed
invention.).
Thus, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Wilson.
Dependent Claim 4
Claim 4 recites that “the sensor is a mechanical switch type sensor.”
App. Br. Clms. App’x. Appellants contend that “Wilson never mentions a
mechanical switch type sensor at all.” App. Br. 5. Appellants further
contend that “since a mechanical switch by definition provides discrete, as
opposed to variable information, a switch, if used in the cutting force sensor
of Wilson would fail to provide a signal indicative of changes in the cutting
force.” Id. The Examiner responds that the “load cell is responsive to
physical contact which is considered to be ‘mechanical’” and that
“Applicants’ disclosure does not provide a specific definition for
‘mechanical type switch.’” Ans. 4-5. We assume that the Examiner meant
that the disclosure does not provide a specific definition for “mechanical
switch type sensor,” as recited by claim 4.
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed Cir. 2004). The properly interpreted claim must then
be compared with the prior art.
Appeal 2010-007639
Application 11/249,809

6
The Specification does not include the phrase “mechanical switch
type sensor.” However, the Specification does state that “[o]ther sensor
elements can be substituted such as…switch type elements,…which all
would be positioned as is the illustrated magnetostrictive sensor element
14.” Spec. 4, para. [0017]. The Specification does not further define
“switch type elements.” Thus, the Specification does not expressly define
the term “mechanical switch type sensor” or disclaim a broad definition
thereof.
Therefore, the Examiner’s position that the load cell 8 of Wilson
satisfies the recited limitation is reasonable in view of the fact that the
Specification does not expressly define the term “mechanical switch type
sensor” or disclaim a broad definition thereof. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Bigio, 381 F.3d at
1325.
Accordingly, we sustain the Examiner’s rejection of claim 4 under 35
U.S.C. § 102(b) as anticipated by Wilson.
Dependent Claim 6
Appellants state that claim 6 “includes a limitation wherein the
movable member is a closure member that is described in the specification
and figures as the flapper 18 which moves from an open position shown in
Figure 1B to a closed position as shown in Figure 1A.” App. Br. 5.
Appellants argue that the “shank of Wilson…is positioned within the
passage and held therein by bolt (18)” and that the “shank, therefore, is
unable to move between an open position and a closed position with regard
to the passage.” App. Br. 5-6. The Examiner responds that the “claims (sic)
Appeal 2010-007639
Application 11/249,809

7
does not require those limitations and the recitation ‘closure member’ is not
further limited with respect to another element to provide closure.” Ans. 5.
“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” See
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). “For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” Id. Claim 6 recites “wherein the moveable
component is a closure member.” App. Br., Clms. App’x. Claim 6 does not
further require that the closure member move between an open position and
a closed position as described in the Specification or as shown in Figures 1A
and 1B. Thus, we are not persuaded by Appellants’ argument.
Accordingly, we sustain the Examiner’s rejection of claim 6 under 35
U.S.C. § 102(b) as anticipated by Wilson.
Obviousness based on Wilson and Garshelis
Appellants have not presented any arguments with respect to the
Examiner’s obviousness rejection of claim 2. Accordingly, we summarily
sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Wilson and Garshelis. See In re Berger, 279 F.3d 975
(Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection
under 35 U.S.C. § 112, second paragraph, when the appellant failed to
contest the rejection on appeal.).

Appeal 2010-007639
Application 11/249,809

8
DECISION
We affirm the Examiner’s rejection of claims 1, 4, and 6 under 35
U.S.C. § 102(b) as anticipated by Wilson.
We summarily affirm the Examiner’s rejection of claim 2 under 35
U.S.C. § 103(a) as unpatentable over Wilson and Garshelis.
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

mls