Vigholm, Bo et al.

Patent Trials and Appeals Board

Dec 30, 2019

14111569 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/111,569 10/14/2013 Bo Vigholm 000009-713 9733
51707 7590 12/30/2019
WRB-IP LLP
801 N. Pitt Street
Suite 123
ALEXANDRIA, VA 22314
EXAMINER
NGUYEN, DUSTIN T
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
HARRY@WRB-IP.COM
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BO VIGHOLM and JAN KARLSSON
____________

Appeal 2018-004949
Application 14/111,569
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated July 6, 2017) rejecting claims 1–
25. Appellant’s representative presented oral argument on December 13,
2019. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Volvo Construction Equipment AB is identified as the real
party in interest in Appellant’s Appeal Brief (filed Nov. 13, 2017). Appeal
Br. 1.
Appeal 2018-004949
Application 14/111,569
2

INVENTION
Appellant’s invention is directed “to a method for reducing vibrations
in a working machine.” Spec. 1, l. 3.2
Claims 1, 18, and 25 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for reducing vibrations caused by a hydraulic
system in a working machine, the working machine comprising
the hydraulic system with a hydraulic machine for providing
hydraulic fluid to at least one working function, the hydraulic
machine being driven by a drive source having a variable speed
of rotation, comprising
identifying a resonance frequency for the working
machine, and
controlling the drive source so as to counteract waves
having the resonance frequency.

REJECTIONS

I. The Examiner rejects claims 1–25 under 35 U.S.C. § 112(a) as
failing to comply with the written description.
II. The Examiner rejects claims 1–25 under 35 U.S.C. § 112(b) as
being indefinite.
III. The Examiner rejects claims 1–4, 7–13, and 15–25 under 35
U.S.C. § 103(a) as being unpatentable over Yoshimatsu,3 Fox,4
and Völker.5

2 Appellant’s Specification, filed Oct. 14, 2013.
3 Yoshimatsu, US 2005/0001567 A1, published Jan. 6, 2005.
4 Fox et al., US 2005/0207907 A1, published Sept. 22, 2005.
5 Völker et al., US 2009/0202360 A1, published Aug. 13, 2009.
Appeal 2018-004949
Application 14/111,569
3

IV. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu, Fox, Völker, and Deeken.6
V. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshimatsu, Fox, Völker, and Nakayama.7
VI. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Yoshimatsu, Fox, Völker, and Adnan.8

ANALYSIS
Rejection I
Each of independent claims 1, 18, and 25 requires, inter alia,
“controlling the drive source . . . to counteract waves having the resonance
frequency.” Appeal Br. 9, 11, 12 (Claims App.) (emphasis added).
The Examiner finds that “[i]f counteracting waves having the
resonance frequency is different than avoiding waves having the
resonance frequency,” such subject matter is not supported by Appellant’s
original disclosure. Final Act. 5 (emphasis added). According to the
Examiner, “[t]here is no discussion of another vibration/wave emitting
device that causes destructive wave interference destruction and no
discussion about waves being out of phase with whatever wave is being
counteracted.” Id. The Examiner explains that the term “[c]ounteract can
imply operating at a specific frequency that would cause destructive
interference with waves caused by another component in the system which is
more specific tha[n] avoiding the frequencies at which resonance occurs.”
Id. at 7.

6 Deeken et al., US 2009/0145122 A1, published June 11, 2009.
7 Nakayama et al., US 6,119,967, issued Sept. 19, 2000.
8 Adnan et al., US 2008/0006089 A1, published Jan. 10, 2008.
Appeal 2018-004949
Application 14/111,569
4

In particular, the Examiner points to various sections of Appellant’s
Specification to conclude that “[c]ounteract means to eliminate or avoid.”
Id. at 6–9 (citing Spec. 2, ll. 19–25 (“to counteract waves with the resonance
frequency, unwanted vibrations in the working machine can be reduced or
avoided”), Spec. 4, ll. 3–4 (“control the electric motor so as to counteract
waves with the resonance frequency”), 8–13, 28–35 (“the frequency to be
avoided can be known in advance and/or by calculation”), Spec. 5, ll. 1–2,
14–15, 20–21, 31–35 (“controlling the electric motor so as to counteract
waves with resonance frequency”), Spec. 6, ll. 10–14 (“the control unit 110
can change the rotation speed of the electric motor . . . to counteract the
resonance frequency”), Spec. 7,9 ll. 2–7 (“limitation on the speed rotation of
the electric motor . . . to counteract or avoid waves with an unwanted
resonance frequency”)). Thus, according to the Examiner, changing the
rotation speed of the electric motor represents “stopping the further
occurrence of waves at the resonance frequencies, but not counteracting
them with destructive wave interference from another source.” Id. at 9
(emphasis added).
Appellant responds that “[t]he present application includes both an
embodiment involving counteracting waves that are identified AND another,
separately described embodiment involving avoiding waves at undesired
frequencies in the sense of preventing them from occurring in the first
place.” Appeal Br. 4 (citing Spec. 4, ll. 1–21, Spec. 4, l. 23–5, l. 5)
(emphasis added).

9 The Examiner cites to page 6 of the Specification for this disclosure. See
Final Act. 7
Appeal 2018-004949
Application 14/111,569
5

In response, the Examiner notes that “the actual issue that raises the
lack of written description rejection is that the [S]pecification does not
disclose what ‘counteracting waves’ actually entails,” that is, “does not
discuss how adjusting the motor speed counteracts the unwanted frequency
waves in applicant’s system specifically.” Ans. 2–3.10
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Here, in a first embodiment,
Appellant’s Specification describes reducing vibrations in a working
machine by controlling an electric motor “counteract[s] waves with the
resonance frequency.” Spec. 4, ll. 4–5. In particular, the Specification
describes decreasing the rotation speed of a hydraulic pump from 2000 rpm
to 1800 rpm in order to reduce the operating frequency from a detected
resonant frequency of 233 Hz to a non-resonant frequency of 210 Hz. Spec.
6, ll. 6–14. Accordingly, Appellant is correct that the Specification
describes a first embodiment in which “resonance frequency waves that are
detected in a working machine are ‘counteracted’ by controlling a drive
source of a hydraulic system of the working machine.” Reply Br. 1 (citing
Spec. 4, ll. 1–21) (emphasis added).11 We further agree with Appellant that
in contrast to the first embodiment, the Specification also distinguishes a
second embodiment, in which the drive source, i.e., electric motor, is

10 Examiner’s Answer, dated Mar. 5, 2018.
11 Appellant’s Reply Brief, filed Apr. 10, 2018.
Appeal 2018-004949
Application 14/111,569
6

operated at a frequency that is known to not be a resonance frequency, and,
thus, avoids the resonance frequency altogether. Id (citing Spec. 4, l. 23–5,
l. 5).
Furthermore, we appreciate the Examiner’s position that the term
“counteract” implies an opposing action or force, such as, “destructive
interference between two waves.” See Ans. 4.12 However, in light of
Appellant’s Specification, a skilled artisan would understand that
“controlling the drive source,” i.e., electric motor, results in waves having
non-resonance frequencies, and, thus, represents an opposing action, i.e., a
counteraction, to generating waves having resonance frequencies. See also
Reply Br. 3. Even though other methods exist to counteract a resonance
frequency, such as employing destructive wave interference (see Final Act.
3, Ans. 4), such methods are not relevant to the instant case because
Appellant’s claims are limited to “controlling the drive source,” i.e., electric
motor, which is supported by Appellant’s original disclosure, for the reasons
discussed supra.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 112(a) of claims 1, 18, and 25, and dependent claims 2–
17 and 19–24, as failing to comply with the written description.

12 An ordinary and customary meaning of the term “counteract” is “to make
ineffective or restrain or neutralize the usually ill effects of by means of an
opposite force, action, or influence.” Appeal Br. 5 (citing
https://www.merriam-webster.com/dictionary/counteract); Reply Br. 3
(emphasis added).
Appeal 2018-004949
Application 14/111,569
7

Rejection II
The Examiner finds that because “[A]pplicant’s [S]pecification never
discusses what ‘counteract’ entails [and] if this term is different than avoid
. . . [it] raises indefiniteness.” Final Act. 10. According to the Examiner,
“there are various methods to ‘counteract’ resonance frequency, such as
through destructive interference between two waves (generating an opposite
force), utilizing dampers, adjusting stiffness of components, etc.” Ans. 4.
Thus, the Examiner contends that because
A]ppellant does not provide adequate discussion with regards to
how controlling the motor speed counteracts the resonance
frequency waves, one of ordinary skill would not know which
of these methods are being employed, if any, and therefore the
metes and bounds of the claimed subject matter is not distinctly
established.

Ans. 4. In particular, the Examiner notes that independent “claim 25 seems
to imply that some type of destructive wave interference occurs when the
drive source generates pressure pulses such that they counteract waves
having the resonance frequency.” Final Act. 10.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must make it clear what subject matter the claims encompass. In re
Hammack, 427 F.2d 1378 (CCPA 1970). In this case, as discussed supra in
Rejection I, Appellant’s Specification describes controlling an electric
motor, i.e., drive source, to counteract waves having a resonance frequency.
See Spec. 4, ll. 1–21, Spec. 6, ll. 6–14. As such, in light of the Specification,
a skilled artisan would understand that controlling Appellant’s drive source,
i.e., electric motor, results in waves having non-resonance frequencies, and,
Appeal 2018-004949
Application 14/111,569
8

thus, such an action counteracts generating waves having resonance
frequencies.
Accordingly, the limitation “controlling the drive source . . . to
counteract waves having the resonance frequency,” as recited in independent
claims 1, 18, and 25, when construed in light of Appellant’s Specification by
a person of ordinary skill in the art, does not lack sufficient precision so that
one endeavoring to practice the invention could not determine the metes and
bounds thereof. In other words, “those skilled in the art would understand
what is claimed when the claim is read in light of the [S]pecification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). By not specifying more about how
“controlling the drive source” takes place, the claims are merely broad, not
indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977)
(breadth is not indefiniteness).
Lastly, we do not agree with the Examiner that independent claim 25
implies “destructive wave interference.” See Final Act. 5. Rather, when
reading claim 25 in light of Appellant’s Specification, a person of ordinary
skill in the art would understand that by “controlling the drive source,” i.e.,
electric motor, the resulting “pressure pulses” have non-resonance
frequencies, and, thus, such an action counteracts generating waves having
resonance frequencies.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 112(b) of claims 1, 18, and 25, and dependent claims 2–
17 and 19–24, as being indefinite.

Appeal 2018-004949
Application 14/111,569
9

Rejection III
The Examiner finds that the combined teachings of Yoshimatsu and
Fox disclose most of the limitations of independent claims 1, 18, and 25, but
do not disclose the limitation of “controlling the drive source . . . to
counteract waves . . . having the resonance frequency.” See Final Act. 11–
12. Nonetheless, the Examiner finds that Völker discloses a method to
operate a pump in which a resonance frequency is identified and the drive
source is controlled by increasing or decreasing the rotational speed of the
drive motor to counteract waves having the resonance frequency. Id. at 12
(citing Völker, paras. 12–15, 26). Thus, the Examiner concludes that it
would have been obvious for a skilled artisan to control the rotational speed
of the drive motor of Yoshimatsu’s hydraulic pump so as to counteract
waves having resonance frequency, as taught by Völker, in order “to prevent
[having] resonance vibrations which are known to be detrimental [to
hydraulic pumps] as taught by Fox.” Id. at 11–12.
Appellant argues that Völker does not disclose “counteracting waves
having the resonance frequency” because Völker discloses changing the
rotational frequency (speed) of the compressor “when natural oscillations
. . . exceed a predetermined limit value.” Appeal Br. 6 (emphasis added).
According to Appellant, Völker “is concerned with avoiding waves having a
resonance frequency so that such waves never occur in the first place.” Id.
at 6–7.
The Examiner responds that because “[A]ppellant defines the resonant
frequency to include frequencies near the undamped frequency, V[ö]lker
actually does let the resonance frequency waves occur and then counteracts
them in the same way [as A]ppellant.” Ans. 5 (citing Appeal Br. 7, n.1;
Völker, paras. 12–14). The Examiner explains that Völker’s “device
Appeal 2018-004949
Application 14/111,569
10

operates at a speed causing resonance frequency waves which causes the
natural oscillations of the compressor to exceed a predetermined limit value,
and then [the] system adjusts the speed of the drive motor only when the
excessive oscillations actually occur to stop further excessive oscillations.”
Id. at 6. The Examiner further points to Völker’s claim 11 and states that
[A]n oscillation sensor which senses oscillations indicative of
operation approaching a resonant frequency” corresponds to
[A]ppellant’s defined resonance frequency which includes a
range of frequencies near an undamped frequency of the
system. The oscillations approaching a resonance frequency in
V[ö]lker must actually occur in order for the oscillation sensor
to sense them. It is only after the sensor detects these actual
oscillations that the drive motor speed is adjusted to stop further
operation at a speed that causes resonance frequency waves.

Id. (emphasis added).
Völker discloses a method for operating a high rotational speed
vacuum pump having a compressor, a drive motor for operating the
compressor, and a motor control unit, at a constant nominal rotational
frequency. Völker, para. 11. The method includes determining the natural
oscillations of the compressor, changing the rotational frequency of the
motor when the natural oscillations of the compressor exceed a
predetermined limit, and operating the motor at the changed rotational
frequency. Id., paras. 12–14.
Although we appreciate that Völker determines when the natural
oscillations of the compressor exceed a predetermined limit, nonetheless, we
agree with Appellant that Völker “does not disclose what this
‘predetermined limit’ is or how close it is to a resonance frequency.” Reply
Br. 4. The Examiner’s position that “it would be reasonable [in Völker] to
construe that the structure with the excessive amplitude . . . is at a resonating
Appeal 2018-004949
Application 14/111,569
11

frequency” is speculative as the Examiner does not make any specific
findings from which a skilled artisan would understand that Völker’s
“predetermined limit” refers to natural oscillations of the compressor at a
resonance frequency. See Advisory Act. 2.13
Furthermore, in contrast to the Examiner’s position, we note that
Völker specifically discloses that “[t]he nominal rotational frequency [of the
motor] is determined such that the resonant frequency or the resonant
frequencies of the vacuum pump are not excited.” Völker, para. 2 (emphasis
added). Völker further discloses adjusting preemptively the rotational
frequency of the drive motor to “eliminat[e] resonance behavior of the
vacuum pump at the nominal rotational frequency.” Id., para. 4. As such, in
light of Völker’s teachings, we agree with Appellant that a skilled artisan
would not reasonably understand Völker’s reference to “oscillations
indicative of operation approaching a resonant frequency,” in claim 11, to
mean “oscillations ‘at’ a resonance frequency, even where resonance
frequency is defined as a ‘frequency . . . equal or very close to the natural
undamped frequency of the system.” Reply Br. 5 (emphasis added). In our
view, Appellant is correct that Völker’s purpose “is to prevent the
occurrence of resonance,” and, thus, Völker does “not disclose counteracting
. . . waves with resonance frequency waves,” as called for by each of
independent claims 1, 18, and 25. Id (emphasis added).
Accordingly, for the foregoing reasons, we find that the Examiner’s
legal conclusion of obviousness is not supported by sufficient factual
evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be

13 Advisory Action, dated Sept. 19, 2017.
Appeal 2018-004949
Application 14/111,569
12

supported by facts.[] Where the legal conclusion is not supported by facts it
cannot stand.”). Therefore, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of independent claims 1, 18, and 25, and dependent claims 2–4, 7–
13, 15–17, and 19–24, as unpatentable over Yoshimatsu, Fox, and Völker.

Rejections IV–VI
The Examiner’s use of the Deeken, Nakayama, and Adnan disclosures
does not remedy the deficiency of the Examiner’s combination of
Yoshimatsu, Fox, and Völker. See Final Act. 19–24.
Accordingly, for the foregoing reasons, we also do not sustain the
rejections under 35 U.S.C. § 103(a) of claim 5 as unpatentable over
Yoshimatsu, Fox, Völker, and Deeken; of claim 6 as unpatentable over
Yoshimatsu, Fox, Völker, and Nakayama; and of claim 14 as unpatentable
over Yoshimatsu, Fox, Völker, and Adnan.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–25 112(a) Written
Description
1–25
1–25 112(b) Indefiniteness 1–25
1–4, 7–13,
15–25
103(a) Yoshimatsu, Fox,
Völker
1–4, 7–13,
15–25
5 103(a) Yoshimatsu, Fox,
Völker, Deeken
5
6 103(a) Yoshimatsu, Fox,
Völker, Nakayama
6
14 103(a) Yoshimatsu, Fox,
Völker, Adnan
14
Appeal 2018-004949
Application 14/111,569
13

Overall
Outcome
1–25

REVERSED