ATLAS COPCO AIRPOWER, N.V.

Patent Trials and Appeals Board

Mar 3, 2020

14185436 - (D) (P.T.A.B. Mar. 3, 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.
14/185,436 02/20/2014 Alexander Antoon Frans M. SMETS SMET3001C/TJM/TL 8260
23364 7590 03/03/2020
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
COMLEY, ALEXANDER BRYANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER ANTOON FRANS M. SMETS

Appeal 2018-006427
Application 14/185,436
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on February 6, 2020.
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Atlas
Copco Airpower N.V. Appeal Br. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 9, and 10 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A gas compressor comprising:
a gas compressor element;
a variable speed motor powering the gas compressor
element;
a motor control unit configured to control the variable
speed motor, said motor control unit having a setting to set a
maximum number of revolutions (Nmax) for the compressor
element;
an air blower arranged to suck environmental air via an
inlet and to blow it back to the environment through a housing
via an exhaust;
a cooling circuit arranged to cool gas which has been
compressed by the compressor element;
a first temperature sensor arranged to sense an
environmental temperature; and
said housing containing said gas compressor element,
variable speed motor, motor control unit, air blower, and
cooling circuit,
wherein the motor control unit includes an algorithm that
reduces the maximum allowed set number of revolutions
(Nmax) from an initial level when the sensed environmental
temperature rises above a maximum set environmental
temperature level (Tmax) and increases the maximum allowed
set number of revolutions (Nmax) to the initial level when the
sensed environmental temperature falls below said maximum
set environmental temperature level (Tmax), and
wherein a regulation of the maximum number of
revolutions does not occur with a control of the number of
revolutions by the variable speed motor.

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Application 14/185,436

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Rejections
Claims 1–9 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written-description requirement.
Claims 10–16 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 1–5 and 8–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grimm et al. (US 2006/0090490 A1, pub. May 4, 2006)
(hereinafter “Grimm”) and Moens (US 2005/0214128 A1, pub. Sept. 29,
2005).
Claims 6, 7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grimm, Moens, and Hutchinson (US 5,718,563, iss.
Feb. 17, 1998).

ANALYSIS
Written Description
Independent claims 1 and 9 recite “wherein a regulation of the
maximum number of revolutions does not occur with a control of the
number of revolutions by the variable speed motor.” Appeal Br. 24, 26.
The Examiner rejects claims 1–9 under 35 U.S.C. § 112, first
paragraph, because the foregoing recitation fails to comply with the written
description requirement. Final Act. 5–6. In view of our determination that
claims 1–9 are indefinite, infra, in this case, it follows that the rejection of
these claims under 35 U.S.C. § 112, first paragraph, must fall because it is
necessarily based on a speculative assumption as to the meaning of the
claims. See also In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
Therefore, we do not sustain the Examiner’s rejection of claims 1–9 under
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this ground of rejection. It should be understood, however, that our decision
in this regard is pro forma and based solely on the indefiniteness of the
claimed subject matter set forth below.

Indefiniteness
Claim 10 recites “wherein the algorithm is carried out continuously or
regularly intermittently.” Appeal Br. 27.
The Examiner determines that claim 10’s phrase “regularly
intermittently” is indefinite because its meaning is unclear. See Final
Act. 7–8. The Examiner turns to a dictionary definition to construe the
meaning of the term “intermittently,” i.e., “coming and going at intervals;
not continuous.” Id. at 7 (emphasis omitted) (citing Merriam-Webster’s
Online Dictionary).2 As for the term “regularly,” the Examiner determines
that “it is not clear ‘how regular’ the intermittence must be to meet the
claim.” Final Act. 8; Ans. 20.
The Appellant argues that one of ordinary skill in the art “would have
appreciated that the term ‘intermittently’ is used, in conjunction with the
term ‘continuously,’ to describe when the monitoring of the environmental
temperature occurs.” Appeal Br. 12–13 (citing Spec. ¶¶ 10, 27). Further,
the “Appellant submits that a skilled person would have understood that the
term ‘regularly intermittently’ clearly refers to regular intervals, e.g., every
hour, every twelve hours, etc., in which the environmental temperature can

2 The definition of the term “intermittently” ––as proposed by the Examiner
–– is not disputed by the Appellant. See, e.g., Appeal Br. 13.
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be monitored for use in the algorithm.” Id. at 13. The Appellant’s argument
is persuasive.
In the context of claim 10 and the Specification, particularly
paragraph 27, we determine that one of ordinary skill in the art would
understand the meaning of the term “regularly” as the Appellant argues.
Further, a dictionary definition of the term “regularly” is “[a]t uniform
intervals of time[;] ‘the reunion has taken place regularly every two years’.”
Regularly def. 2, LEXICO DICTIONARY, https://www.lexico.com/definition/
regularly (last visited Feb. 27, 2020). Therefore, the phrase “regularly
intermittently” may be understood as coming and going at uniform intervals
of time. Therefore, the term “regularly” modifies the way in which the
algorithm is carried out intermittently, e.g., uniformly.
Thus, we do not sustain the Examiner’s rejection of independent
claim 10, and claims 11–16 that depend therefrom.

Grimm in view of Moens, and Grimm in view of Moens and Hutchinson
The Examiner rejects, under 35 U.S.C. § 103(a), claims 1–5 and 8–14
as unpatentable over Grimm and Moens, and claims 6, 7, 15, and 16 as
unpatentable over Grimm, Moens, and Hutchinson. Final Act. 8–17. In
view of our determination that claims 1–16 are indefinite, infra, in this case,
it follows that the rejections of these claims under 35 U.S.C. § 103(a) must
fall because they are necessarily based on a speculative assumption as to the
meaning of the claims. See also In re Steele, 305 F.2d 859, 862–63 (CCPA
1962). Therefore, we do not sustain the Examiner’s rejection of claims 1–16
under this ground of rejection. It should be understood, however, that our
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decision in this regard is pro forma and based solely on the indefiniteness of
the claimed subject matter set forth below.

New Ground of Rejection
For the following reasons, we reject claims 1–16 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Independent claims 1 and 9 recite, with added emphasis, “wherein a
regulation of the maximum number of revolutions [(Nmax)] does not occur
with a control of the number of revolutions by the variable speed motor,”
hereinafter, “the regulation clause.” Appeal Br. 24, 26. The regulation
clause of claims 1 and 9 shares language that is similar to paragraph 32 of
the Specification, which states, with added emphasis, “[t]his regulation does
not normally occur between the normal control of the motor’s number of
revolutions but it works with dynamic limited number of revolutions.”
The Examiner construes the regulation clause in a manner that is
different from the Appellant. See, e.g., Final Act. 6 (“The Examiner must
respectfully assert that Applicant appears to have misconstrued paragraph 32
(as well as the newly-added claim limitation), and has actually interpreted
them in a manner that is opposite from what they actually state.”).
The Examiner understands paragraph 32 of the Specification as
implying that the regulation “of Nmax occurs along with (i.e. simultaneous
with) motor speed adjustments.” Id. This leads us to the understanding that
the Examiner construes the phrase “does not occur,” in the regulation clause,
as not simultaneous (i.e., not at the same time). In other words, the
Examiner construes the regulation clause as “wherein a regulation of the
maximum number of revolutions [(Nmax) is not simultaneous] with a
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control of the number of revolutions by the variable speed motor.” Here, the
Examiner construes the regulation clause grammatically. See also Final
Act. 5–6 (The Examiner rejects independent claims 1 and 9 as failing to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph, because paragraph 32 differs from the regulation clause of
claims 1 and 9.). Although the Examiner’s construction grammatically
appears reasonable, it does not appear to be consistent with gist of the
remainder of the subject matter of claims 1 and 9 –– or the Specification ––
i.e., contextually.
The Appellant asserts that “the skilled person would have understood
that claim 1 is at least directed to regulating the maximum number of
revolutions (Nmax) separately, e.g., does not occur, with controlling the
number of revolutions by the variable speed motor.” Appeal Br. 11. Here,
the Appellant submits that the phrase “does not occur with” is an example of
the phrase “separately with.” In other words, the Appellant construes the
regulation clause as “wherein a regulation of the maximum number of
revolutions [(Nmax) is separately] with a control of the number of
revolutions by the variable speed motor.” The gist of the Appellant’s
construction of the regulation clause is generally consistent with subject
matter of claims 1 and 9 –– and the Specification. However, claiming that a
regulation of Nmax is separate with a control of the number of revolutions
by the variable speed motor, is oddly worded and fails grammatically.
Further, we have reviewed the regulation clause of claims 1 and 9
independent from the apparent constructions of the Examiner and the
Appellant, and we cannot ascertain a meaning of the clause that is clear both
contextually and grammatically. Therefore, we determine that claim 1 and
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claim 9, as well as claims 2–8 that depend from claim 1, are indefinite. See
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a
claim is indefinite when it contains words or phrases whose meaning is
unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25,
2017) (precedential) (explaining that the USPTO considers a claim indefinite
when it “contains words or phrases whose meaning is unclear”).
Independent claim 10 recites, “wherein a regulation of the maximum
number of revolutions does not normally occur between a normal control of
the motor’s number of revolutions but works with a dynamic limited number
of revolutions.” Appeal Br. 27. The language of claim 10 is slightly
different than the wording of the regulation clause of claims 1 and 9.
However, similar to the reasons discussed with regard to the regulation
clause of claims 1 and 9, we cannot ascertain a meaning of the foregoing
recitation of claim 10 that is clear. Therefore, we determine that claim 10, as
well as claims 11–16 that depend from claim 10, are indefinite.

CONCLUSION
We REVERSE pro forma the Examiner’s rejection of: claims 1–9
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; claims 1–5 and 8–14 under 35 U.S.C. § 103(a) as
unpatentable over Grimm and Moens; and claims 6, 7, 15, and 16 under
35 U.S.C. § 103(a) as unpatentable over Grimm, Moens, and Hutchinson.
We REVERSE the Examiner’s rejections of claims 10–16 under
35 U.S.C. § 112, second paragraph, as indefinite.
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We enter a NEW GROUND OF REJECTION of claims 1–16 under
35 U.S.C. § 112, second paragraph, as indefinite pursuant to our authority
under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record.
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).

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In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed New
Ground
1–9 112, first
paragraph
Written
Description

1–9
10–16 112, second
paragraph
Indefinite 10–16
1–5, 8–14 103(a) Grimm,
Moens
1–5, 8–14
6, 7, 15, 16 103(a) Grimm,
Moens,
Hutchinson
6, 7, 15,
16

1–16 112, second
paragraph
Indefinite 1–16
Overall
Outcome
1–16 1–16

REVERSED; 37 C.F.R. § 41.50(b)