Ex Parte Deitmerg et al

Patent Trial and Appeal Board

Aug 29, 2018

13338598 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/338,598 12/28/2011
22045 7590 09/06/2018
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Martin Deitmerg
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.
KOA0336PUSA (Rl814) 3342
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN DEITMERG, 1
Marco Rutkowski, Stefan Garneyer, Christian Schirp,
Oliver Maier, Klaus Hirschfeld, Bernd vom Hedt, Sven Kober,
Holger Hasselmann, and Stefan Schroeder
Appeal2018-002250
Application 13/338,598
Technology Center 2800
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Martin Deitmerg, Marco Rutkowski, Stefan Garneyer,
Christian Schirp, Oliver Maier, Klaus Hirschfeld, Bernd vom Hedt,
Sven Kober, Holger Hasselmann, and Stefan Schroeder ("Deitmerg") timely
appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending
claims 21-35. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Leopold Kostal GmbH & Co. KG.
(Appeal Brief, filed 27 June 2017 ("Br."), 2.)
2 Office Action mailed 27 October 2016 ("Final Rejection"; cited as "FR").
Appeal2018-002250
Application 13/338,598
A. Introduction 3
OPINION
The subject matter on appeal relates to a sensor system for detecting
the absolute rotational angle of a shaft, such as the shaft of a steering column
module in a steer-by-wire system of a vehicle. (Spec. 1 [0003], 5 [0020].)
As is generally known, in a steer-by-wire system, the mechanical linkages
between a conventional steering wheel or steering actuator and the "steering
kinematic mechanism" are replaced by sensors, controllers, and
electronically directed actuators. In such a system, according to
the '598 Specification, "[ s ]tringent control quality requirements exclude an
angular sensor system having hysteresis in the range of the angular
resolution." (Spec. 1 [0003].) "Thus," the Specification advises, "using an
angular sensor system based on purely gear driven measurement technology
is problematic." (Id.) Moreover, in such systems, the Specification informs
that "it is necessary to cover an absolute measurement region that includes a
plurality of revolutions of the actuator." (Id. at 2 [0004].) The claimed
invention is said to cover "an angle sensor that implements a relatively high
angular resolution, free from hysteresis, over a measurement region of a
plurality of revolutions in a simple and cost effective manner."
(Id. at 2 [0006].)
3 Application 13/338,598, Sensor system for detecting absolute rotational
angle of a shaft, filed 28 December 2011 as a continuation of
PCT/EP2010/059139, filed 28 June 2010, claiming the benefit of an
application filed in Germany on 29 June 2009. We refer to the
"'598 Specification," which we cite as "Spec."
2
Appeal2018-002250
Application 13/338,598
In the embodiment illustrated in Figure 2, reproduced below,
1b
Fig. 2 3 /
- r, i;\DJlll.Q,Qq,:J, I
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~ i;iii; . . .•' ~· c- \ : / -~'---'
C ~' \. . / f!l!r If:,
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6
2b 4 2a
1a
{Figure 2 shows a top view of an angular sensor system}
the system comprises a drive wheel 34 connected to the rotating shaft of
interest (inner circle, not labeled). The drive wheel is coupled via toothed
gear ring 9 to driven wheels la, lb by gear rings 8a, 8b (not labeled: see
Figure 1 ). Each driven wheel is equipped with sensors 2a, 2b, which
monitor the rotational angle positions of magnets 10a, 10b. (Id. at 6 [0022];
magnets not labeled but are indicated by dashed rectangles.) In this
embodiment, the driven wheels are driven at different gear ratios (i.e., as
shown, gear rings 8a, 8b have different radii and different numbers of teeth).
(Id.) The Specification discloses that the absolute angle of rotation can be
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
3
Appeal2018-002250
Application 13/338,598
determined over a plurality of revolutions by the Nonius5 principle as
described in U.S. Patent No. 5,930,905. (Id. at [0023].)
The Specification explains, however, that the resolution of that
determination of the absolute rotational angle is limited due to the play that
arises from the gear rings, as well as the shape tolerances of the gearing and
wheel bearings. (Id.) This problem is overcome by providing
circumferentially arranged coding 13 of measurement sectors 5--here,
alternately oriented magnets-shown as black and white segments in
Figure 2. In the words of the Specification,
Since the field vector changes its direction continuously in
the vicinity of the magnetic poles, the position of two
adjacent magnetic poles can be determined with high
precision relative to third sensor 4 by a measurement of the
magnetic flux density or the field direction by third sensor 4.
The analog value detected is then converted directly into a
digital value by third sensor 4.
(Id. at 7-8 [0028].)
Claim 21 is representative and reads:
A system for detecting the absolute rotational angle of a shaft
that can rotate through a plurality of revolutions, the system
compnsmg:
a drive wheel [3] directly connected to the shaft to rotate as
the shaft rotates, the drive wheel including
a coding [13] having measurement sectors [5] lying
adjacent to one another in a circumferential direction of
the drive wheel, each measurement sector having an
angular range;
5 The "Nonius" principle is also known as the vernier principle, familiar to
users of calipers and other high precision measuring tools.
4
Appeal2018-002250
Application 13/338,598
an external sensor system having first [la] and second [lb]
driven wheels engaged to the drive wheel to rotate as the
shaft rotates;
the external sensor system further having first [2a] and
second [2b] sensors to respectively detect rotational
positions of the driven wheels;
wherein a coarse absolute rotational angle of the shaft
at an angular resolution of the external sensor system is
determined from the detected rotational positions of the
driven wheels according to the Nonius principle;
a third sensor [ 4] at a position relative to the drive
wheel [3],
wherein one of the measurement sectors [ 5] is nearest
the position of the third sensor [ 4] at a time,
the third sensor [ 4] to sense the one of the measurement
sectors [5] to detect an angular position of the one of
the measurement sectors relative to the position of the
third sensor;
wherein the angular range of each of the measurement
sectors [5] is greater than or equal to the angular resolution
of the external sensor system; and
wherein an absolute rotational angle of the shaft is
determined from
(i) the coarse absolute rotational angle of the shaft and
(ii) the angular position of the one of the measurement
sectors relative to the position of the third sensor.
(Br., Claims App. 1; some indentation, paragraphing, emphasis, and
bracketed labels to elements shown in Figure 2 added.)
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Appeal2018-002250
Application 13/338,598
The Examiner maintains the following grounds of rejection 6, 7 :
A. Claims 21-35 stand rejected under 35 U.S.C. § 112(1) for
lack of adequate written description.
Al. Claims 21-35 stand rejected under 35 U.S.C. § 112(1) for
lack of an enabling disclosure for the full scope of the
claimed invention.
A2. Claims 21-35 stand rejected under 35 U.S.C. § 112(2) as
being indefinite).
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
We shall not sustain the appealed rejections for reasons well-
expressed in the Brief and in the Reply. 8
The Examiner finds that the italicized passages in representative
claim 21 are not adequately described in the Specification because
"applicant does not disclose how the third sensor and measurement sectors
are used" to refine the coarse value of the absolute value of the rotational
angle. (FR 9.)
Whether the written description requirement has been met is a
question of fact. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) ("This inquiry, as we have long held,
6 Examiner's Answer mailed 27 October 2017 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 Reply Brief filed 27 December 2017 ("Reply").
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Appeal2018-002250
Application 13/338,598
is a question of fact.") As the court has explained, the test for an adequate
written description "requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.
Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." (Id.) The court explained further, "[t]he
purpose of the written description requirement is to prevent an applicant
from later asserting that he invented that which he did not." Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003).
The Examiner's concerns with the purported inadequacy of the
written description-that there is not an adequate disclosure of how the
measurements are to be done-sound in enablement, not in written
description. We therefore reverse the rejection for lack of written
description.
The Examiner holds that the disclosure is not enabling of the italicized
passages based on an analysis of certain9 of the so-called Wands 10 factors.
The Examiner emphasizes that it is the full scope of the invention that is not
enabled, notwithstanding that something within the scope of the invention
may be enabled. (Id. at 16-17, ,r 27.)
9 Spec. at 10-16, focusing on the "unbounded" character of the claims
(apparently the absence of how the measurements and determinations are
done) (id. at ,r 21 ), the absence of working examples (id. at ,r 22); and the
amount of experimentation-asserted to be high because the routineer would
have to figure out independently how to implement the claimed invention
(id. at ,r 23).
10 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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Application 13/338,598
Whether a disclosure is enabling is a question of law based on
underlying factual findings aimed at determining whether the amount of
experimentation required to make and use the claimed invention would have
been "undue" for a person having ordinary skill in the art as of the filing
date. Wands, 858 F.2d at 737. The Examiner challenges the enablement of
the magnet-based embodiment described in the Specification based on the
lack of specificity regarding the determination of the coarse angle of rotation
and the determination of the refinement of that coarse determination. (FR 9--
10). But the Examiner has not come forward with evidence that persons
having ordinary skill in the art would have been unfamiliar with combining
separate coarse and fine measurements, for example, using the "Nonius
principle" (i.e., vernier-type measurements), or with processes of
interpolation to achieve refined measurements. Nor has the Examiner come
forward with evidence that the state of the art was such that the description,
particularly given the citation of a United States Patent for the coarse
measurement, would have been inadequate to assist the routineer to
determine the number of full rotations and the sector (i.e., the extent of a
partial rotation) of the drive wheel, and then to refine the angular position of
the drive wheel based on the third sensor measuring the precise position of
the nearest measurement sector. As for other techniques that might be used
to make similar determinations ( the "full scope" of the claims), the
Examiner has not directed our attention to any particular difficulties that the
person skilled in the relevant arts would have been unable to address. Thus,
although some experimentation might be required to reduce any embodiment
of the claimed invention to practice, the Examiner has not shown that that
amount of experimentation would have been, more likely than not, "undue."
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Application 13/338,598
We therefore reverse the rejection for lack of enablement.
Finally, the Examiner holds the appealed claims indefinite because the
claims do not identify "what structural element is performing the claimed
features." (Id. at 18, ,r 31.) This concern is misplaced, as it has long been
settled that "[b ]readth is not to be equated with indefiniteness." In re Miller,
441 F.2d 689,693 (CCPA 1971). Further in this regard, functional
limitations have long been held to be proper, albeit potentially very broad.
In re Swinehart, 439 F.2d 210,213 (CCPA 1971) ("'Functional'
terminology may render a claim quite broad. By its own literal terms a
claim employing such language covers any and all embodiments which
perform the recited function.")
Rather, as our reviewing court has explained, the statutory language of
"particularity" and "distinctness" used in section 112, second paragraph
(now 35 U.S.C. § 112(b)), requires that claims "be cast in clear-as opposed
to ambiguous, vague, indefinite-terms. It is the claims that notify the
public of what is within the protections of the patent, and what is not." In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Because the Examiner has
failed to demonstrate that the recited determinations of rotational angles are
so ambiguous or vague that the public would not be notified of the metes
and bounds of the claims, we reverse the rejection for indefiniteness.
C. Order
It is ORDERED that the rejection of claims 21-35 is reversed.
REVERSED
9