INVENTUS ENGINEERING GMBH

Patent Trials and Appeals Board

Dec 24, 2020

2020001934 (P.T.A.B. Dec. 24, 2020)

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.
15/158,061 05/18/2016 MARKUS MAYER XBSB-2261P72 2237
24131 7590 12/24/2020
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
NGUYEN, NGA X
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
docket@patentusa.com
office@patentusa.com
vrahimis@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARKUS MAYER, STEFAN BATTLOGG,
GERNOT ELSENSOHN, and JUERGEN POESEL
__________

Appeal 2020-001934
Application 15/158,061
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 26–50. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, DESIGNATING A NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Inventus
Engineering GmbH. Appeal Br. 1.
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Application 15/158,061

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STATEMENT OF THE CASE
The claims are directed to a damper device for controlling damping of
movement between two connecting units via magneto-rheological fluid.
Claim 26, reproduced below, is illustrative of the claimed subject matter:
26. A damper device, comprising:
two connecting units which can move relative to one
another;
at least one controllable damper with a magneto-
rheological fluid disposed for damping relative movements of
said two connecting units, said damper having at least one first
damper chamber and at least one damping valve with at least one
damping duct;
a magnetic field generating device assigned [to] said at
least one damping valve and configured to generate and control
a magnetic field in said at least one damping duct of said
damping valve;
said magneto-rheological fluid being disposed in said at
least one damping duct;
a control device and a memory device;
a sensor device disposed for acquiring measurement data
sets relating at least to a relative movement of said connecting
units with respect to one another; and
a filter device connected to said sensor device for pre-
processing the measurement data sets,
wherein at least one data set, derived from a measurement
data set acquired with said sensor device during the relative
movement of said connecting units, is stored in said memory
device;
an analysis device configured to analyze at least one stored
data set and to determine a filter parameter set as a function of
the result of the analysis; and
wherein said control device is configured to derive a
control data set from the measurement data set with the filter
parameter set, and said control device controlling the damper
device with the control data set.

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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Sims US 2011/0127706 A1 June 2, 2011
Franklin US 5,971,116 Oct. 26, 1999

REJECTION
Claims 26–50 are rejected under 35 U.S.C. § 103 as unpatentable over
Sims and Franklin. Final Act. 3.

OPINION
Claim 26 is representative of claims 26–50 pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv)(2018). See Appeal Br. 5–8.
The Examiner finds that Sims discloses a damper device having most
of the limitations of claim 26, particularly:
(a) two connecting units (shown in Figs. 1 and 6A2);
(b) at least one controllable damper (damper 10) with a magneto-
rheological fluid in a damping duct for damping movements of the two
connecting units;
(c) a magnetic field generating device (coil 34) configured to generate
and control a magnetic field in the damping duct;
(d) a control device and a memory device (control system 52 with
microcontroller 58);

2 In the Final Office Action, “Fig.SA” is recited. Final Act. 3. We
understand the citation to be directed to Fig. 6A, which is recited on page 2
of the Non-Final Office Action dated Aug. 24, 2017.
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(e) a sensor device (sensor 62) for acquiring measurement data sets
relating to movement of the connecting units with respect to one another,
wherein at least one data set, derived from a measurement data set is stored
in the memory device;
(f) a filter device (signal conditioning apparatus 60) connected to the
sensor device for pre-processing the measurement data sets; and
(g) an analysis device configured to analyze the stored data set and
determine a filter parameter set as a function of the result of the analysis.
Final Act. 3–4 (citing Sims ¶¶ 65–79, 81, 84–87; Figs. 1, 4, 6A). Under the
“Response to Arguments” section of the Final Office Action, the Examiner
explains that Sims’s Figure 4 shows “a microcontroller 58 receiving data
from sensor 62 which measures variable data and produces signal data that
[is] conditioned by signal conditioning 60 (see at least [0084])” in which
“the variable data [is a] data [set] depending on the predetermined setting of
the control logic and/or setting input by the user (see at least [0085]).” Final
Act. 2. The Examiner further explains that
[t]he person skilled in the art would know the microcontroller is
a small computer on a single integrated circuit containing a
processor core, memory, and programmable [] [sic]. Thus, the
measured data sets from sensor 62 are sent to signal conditioning
60 and passed to the microcontroller 58 which meets the scope
of “data set, derived from a measurement data set acquired with
said sensor device . . ., is stored in said memory device”. The
microcontroller 58 analy[z]es the signal produced by sensor 62
in combination with [a] time variable to indicate [] the type of
terrain that is being traversed by [a] bicycle (see at least [0085]–
[0087]) which meets the scope of “analyzing stored data to
determine a filter parameter”.
Final Act. 2–3.
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According to the Examiner, Sims does not disclose that the control
device is configured to derive a control data set from the measurement data
set with the filter parameter set, and that the control device controls the
damper device with the control data set. Final Act. 4–5. The Examiner relies
on Franklin for this missing limitation. Final Act. 5 (citing Franklin 7:30–
8:30).
Appellant contends that Sims “fails to disclose an analysis device
which is configured to analyze at least one stored data set and to determine a
filter parameter set as a function of the result of the analysis” because its
“sensor-measured data is not used to determine a filter parameter,” but
rather, Sims only “outputs the signal which controls the switch/damper.”
Appeal Br. 5–6. Appellant argues that “Sims does not determine a parameter
set via the microcontroller to be combined with a measurement data set via a
control device to control the damper.” Appeal Br. 6. According to Appellant,
“[n]either the time variable nor the sensor input is a stored data set” and that
“Sims does not disclose a control device being configured to derive a control
data set from a measurement data set with a filter parameter set, and the
control device controlling the damper device with the control data set” as
required for claim 26. Appeal Br. 6–7. “[Sims’s] microcontroller 58 analyzes
the conditioned signal in combination with a time variable to output a signal
based on the input signal, control logic and user settings.” Appeal Br. 7.
The Examiner responds that Sims’s “sensor 62 measures a variable
(acceleration, velocity or displacement, etc.) and produces a signal which is
converted [from] analog[] signal to a digital signal” and Sims discloses that
“a history of events is produced so the microcontroller 58 can perform
operations based on the amount of time that has elapsed since a particular
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event took place.” Ans. 3 (citing Sims ¶ 87). The Examiner points out that
“Sim[s] discloses that the microcontroller 58 outputs signal to control the
switch of damper device 64.” Ans. 4 (citing Sims ¶¶ 86–87). The Examiner
reiterates that Franklin is relied on for teaching the last limitation of claim
26, namely, the “control device [being] configured to derive a control data
set from the measurement data set with the filter parameter set, and said
control device controlling the damper device with the control data set.” Ans.
4–5 (citing Franklin 8:12–30).
Claim 26 does not indicate, and Appellant does not explain, what
constitutes a “filter parameter set,” other than the “filter parameter set” being
“a function of the result of [an] analysis” and being used to derive a control
data set that is used to control the damper device. We additionally note that
the Examiner does not explain precisely what the Examiner regards as being
filtered in Sims and Franklin. See Final Act. 4, 5. Further, we are unable to
discern from the Examiner’s comments how or why the Examiner regards
Sims’s time variable as the recited “filter parameter set” of claim 26. Final
Act. 3. Appellant, however, also does not explain what is being filtered or
how the filter parameter set is obtained and used to control the damper, for
claim 26. See Specification generally.
For clarity, Appellant’s Specification discloses “[a] filter device is
provided for pre-processing the measurement data sets.” Spec. 5:17–18;
emphasis added. Appellant’s measurement data set (not filter parameter set)
“comprises at least one speed signal and, in particular, at least one
acceleration signal for the relative movement of the connecting units with
respect to one another,” of the damper device. Spec. 5:22–26; emphasis
added. The Specification further discloses that
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[t]he control device is preferably designed to select a filter
parameter set with relatively strong filtering in the case of speed
signals and acceleration signals which are low in absolute value,
and to select a filter parameter set with less filtering in the case
of speed signals or acceleration signals which are relatively high
in absolute value.
Spec. 5:30–6:3; emphasis added. “[I]n the case of a less intensive relative
movement of the connecting units with respect to one another, filtering is
carried out more intensively. This means stronger denoising is carried out on
the measurement data or the value or the values of a measurement data set.”
Spec. 7:26–31; emphases added. The Specification indicates that “[a] filter
parameter set can preferably be selected as a function of the at least one
stored data set.” Spec. 11:11–12.
In order to differentiate whether relatively strong or relatively
weak filtering is carried out, it is possible to provide threshold
values or a limiting value set. The values of the measurement
data set can contain travel values, acceleration values and/or
speed values.
Spec. 16:20–23; emphasis added. The Specification again explains that
“[t]he term ‘stronger’ filtering is understood here to mean more intensive
filtering. This means that more intensive denoising is carried out on more
strongly filtered measurement data.” Spec. 17:6–9.
Summarizing our observations above, Appellant’s Specification
discusses a measurement data set, and denoising of the measurement data,
but Appellant’s Specification does not appear to define or detail what a
“filter parameter set” is nor how the filter parameter set is specifically
derived. Following the disclosures reiterated above, the Specification,
however, indicates only that the following can relate to “filtering” or the
“filter device”: pre-processing the measurement data sets; speed signal or
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acceleration signal relative to the movement of the connecting units; filtering
can be strong or weak, and; threshold values can determine the degree of
filtering, among other things. We note, however, that our review court has
instructed us that “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Nonetheless, Sims’s disclosures, as explained below, have commonalities
with the disclosures from Appellant’s Specification, such that Sims can be
regarded as disclosing a “filtered parameter set” to the same extent that is
used to control a damper, as required for claim 26.
A close review of Sims reveals that there are similarities between its
data processing and what is described above in regard to “filtering” in
Appellant’s Specification, which in some respect, relates to a “filter
parameter set.” For example, Sims discloses that: (1) control of the level of
damping is based on “dynamic quantity as a function of time” that satisfies
“a threshold value” (Sims ¶¶ 28–29; see also id. at ¶ 98 disclosing “dynamic
quantity alone would not suffice to accurately determine the type of terrain
being traversed” and ¶¶ 105, 108); (2) the “threshold value is preferably a
function of a second dynamic quantity which is preferably a function of the
level of damping. This will allow the threshold by which a ‘bump’ is defined
to be automatically adjusted depending on the level of damping” (Sims ¶ 31;
see also id. at ¶ 98 disclosing “the control logic of FIG. 5B can effectively
provide high levels of damping on smooth terrain and low levels of damping
on rough terrain”);3 (3) preferably, the “dynamic quantity is a function of

3 Figures 5A–B shows that control of the damper via “CURRENT OFF” or
“CURRENT ON” (boxes 80, 82) relies on whether the A (acceleration) is
greater than Acrit (acceleration threshold) (boxes 72, 206, 304).
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acceleration” (Sims ¶ 35; see also id. at ¶ 104); and (4) “alteration of
parameters relevant to [a] switch protocol” may be made in which
“[a]djustment of parameters is a desirable property as it allows the user to
adjust the system to their specific rider preference” (Sims ¶ 83).
Thus, similar to Appellant’s damper device, Sims’s device also pre-
processes measurement data such as acceleration of the connecting units
with respect to one another, Sims’s control of the damper device is also
dependent on a sensed acceleration being above or below a threshold value,
and Sims also uses parameters to adjust the damper device. More
particularly, Sims can be regarded as filtering data in much the same manner
as described in Appellant’s Specification in that Sims’s acceleration data, a
dynamic quantity (item 3 above) is used to determine a threshold value
(items 1 and 2), which in turn, is used (in combination with time and (in the
Figure 5B embodiment) bump count) to determine whether to take action in
response to, or ignore, the sensed acceleration resulting from a bump (items
1 and 4). This amounts to “filter[ing]” an acceleration data signal based on
values being below the set threshold. The threshold value can change
because it is a function of a second dynamic quality, which is a function of
the level of damping (item 2). Thus, Sims is reasonably regarded as
disclosing a “filter parameter set” (the set4 of possible threshold values for
the acceleration) using pre-processing of measurement data sets

4 Sims discloses a “dynamic quantity” that satisfies a threshold value (in
item 1 above) and “the threshold value is preferably a function of a second
dynamic quantity” (in item 2 above). As the quantity is dynamic and a
second quantity is also used to determine a threshold value, we regard Sims
as disclosing more than one threshold value, i.e., a set of threshold values.
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(acceleration data), in which the filter parameter set can be similarly
categorized by Appellant as “strong” or “more intensively,” as discussed
above (see Spec. 5:30–6:3, 7:26–31, 17:6–9), by virtue of a threshold value
that can change (item 2).
To the extent that Appellant is arguing Sims does not disclose a
filtered parameter set that is “stored,” we note the following. In the Answer,
the Examiner points out that Sims’s discloses a history of events is provided
to the microcontroller. Ans. 11 (citing Sims ¶ 87). Sims discloses “by
combining the signal produced by the sensor 62 with a time variable, the
overall combined signal is indicative of the terrain that [is] being traversed
by the bicycle.” Sims. ¶ 87. As noted above, Sims uses a threshold value
along with its aim to “accurately determine the type of terrain being
traversed” (see item 1 above, Sims ¶ 98). In other words, Sims’s aim is also
to predict the type of terrain that will be traversed to control its damper. To
do this, Sims necessarily uses stored data, which includes threshold values
(i.e., “filtered parameter sets”) as discussed above. Sims states that “dynamic
quantity alone would not suffice” (Sims ¶ 98), which is indicative that static
data, or stored data, is used. As such, Sims can be regarded as using a
filtered parameter set that is “stored,” as required for claim 26.
As discussed above, Sims is reasonably regarded as providing a “filter
parameter set” that is derived from a “measurement data set.” In addition,
we explained above that Sims discloses using such data to control its damper
device. Thus, Sims can be regarded as having a “control device [that] is
configured to derive a control data set from the measurement data set with
the filter parameter set, and said control device controlling the damper
device with the control data set,” as recited in claim 26.
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In view of the foregoing discussion, we agree with the Examiner’s
ultimate decision to reject claims 26–50 based on Sims in view of Franklin.
As we have supplemented the Examiner’s findings and reasoning, we
designate this opinion as including a new ground of rejection under 37
C.F.R. § 41.50(b) so as to afford Appellant the procedural options for
response associated therewith.

CONCLUSION
The Examiner’s rejection of claims 16–50 is affirmed. We designate
this affirmance as including a new ground of rejection.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26–50 103 Sims, Franklin 26–50

AFFIRMED; 37 C.F.R. § 41.50(b)