Ex Parte Hala

Board of Patent Appeals and Interferences

Aug 16, 2012

11504063 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER A. HALA
____________

Appeal 2010-008352
Application 11/504,063
Technology Center 3700
____________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Roger A. Hala (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2010-008352
Application 11/504,063

2
The Invention
The claims on appeal relate to “a non-invasive system and method
that measures dynamic performance of a hyper-compressor cylinder by
measuring the inherent operating strain of the compressor assembly.” Spec.
para. [0001].
Independent claim 1 reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A system for monitoring a mechanical
condition of a reciprocating compressor, the
reciprocating compressor including a compressor
frame, a pressure chamber, and a pressure chamber
head, wherein a plurality of tie bolts are secured
between the compressor frame and the pressure
chamber head, the monitoring system comprising a
sensor assembly non-invasively secured to one of
the plurality of tie bolts, the sensor assembly
including a movement member positioned
externally of the plurality of tie bolts and
extending in concert with extension of the one of
the tie bolts and a sensor measuring movement of
the movement member relative to the sensor.

The Rejections
Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matzner (US 2004/0213677 A1, pub. Oct. 28, 2004) and
Rockstead (US 3,844,173, iss. Oct. 29, 1974).
Claims 2-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Matzner, Rockstead and Rasmussen (US 5,808,904, iss. Sep. 15, 1998).

Appeal 2010-008352
Application 11/504,063

3
OPINION
Claims 1 and 11 over Matzner and Rockstead
Claims 7 and 8 over Matzner, Rockstead and Rasmussen

Claim 1
The Examiner finds that Matzner substantially discloses the subject
matter of claim 1, except:
Matzner however fails to disclose the following
limitation which is taught by Rockstead et al:
A non invasively secured sensor assembly (102,
104, 100, 103), the sensor assembly including a
movement member (100,) [sic] extending in
concert with extension of the pressure vessel (101)
and a sensor (104) measuring the movement of the
movement member (100) relative to the sensor
(104) . . . .
Ans. 3-4.
Appellant “respectfully takes issue with the characterization of the
piston rod housing 15 in Matzner as equivalent to the claimed ‘tie bolts’.”
arguing “A piston rod housing as disclosed in Matzner . . . is subjected to
structural influences beyond the tie rods of the claimed invention and would
not serve as a suitable indicator of compressor condition.” App. Br. 13.
In response the Examiner determines:
[T]he [claimed] tie rods are simply structural
members secured between the compressor frame
and the pressure chamber head. As can be seen in
the annotated drawing below structural members
(15) denoted as rod housing has structurally very
similar configuration as applicant’s invention. The
tie rods (15) are located between the compressor
frame and the pressure chamber head (17) being
App
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Appeal 2010-008352
Application 11/504,063

5
Appellant further contends that Rockstead’s measurement of linear
elongation does not meet the limitation “a sensor measuring movement of
the movement member relative to the sensor” as required by claim 1. Id. at
13-14. In support of this contention Appellant states
[T]he sensor 26 [of the instant device] measures an
increase in the space between the sensor 26 and the
target face of the target rod 24, which the
Appellant discovered is related directly to the
strain on the tie bolt 18. This distinction is
significant as the structure of the claimed invention
enables for accurate compensation of ambient
temperature of the device and the tie bolts. . . .
Appellant recognizes that measuring only the
distance between the clamps (i.e., linear
elongation) would not compensate for the thermal
growth. The sensor disclosed in Rockstead merely
measures linear elongation and thereby does not
accurately compensate for thermal conditions.
Rockstead thus lacks the claimed sensor that
measures movement of the movement member
relative to the sensor.
Id. at 14.
Appellant’s contention that claim 1 requires measurement of thermal
growth in addition to measurement of linear elongation is incorrect. The
limitation in question simply requires “a sensor measuring movement of the
movement member relative to the sensor.” Claim 1, ll. 7-8. The
requirement that the sensor compensate for thermal growth is not recited in
the claims. Unclaimed features cannot impart patentability to claims. In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Arguments must be commensurate in scope with
the actual claim language. In re Self, 671 F.2d at 1348. Appellant’s attempt
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Application 11/504,063

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to distinguish the claimed subject matter from the prior art based on features
that are not in the claims is not persuasive.
Appellant’s Specification does not assign or suggest a particular
definition of the term “movement” or otherwise indicate that this term is
used in a manner other than its ordinary and customary meaning. Therefore,
in determining the ordinary and customary meaning of the claim term
“movement” as viewed by a person of ordinary skill in the art, it is
appropriate to consult a general dictionary definition of the word
“movement” for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010). An ordinary and customary meaning of the word
“movement” is “the act, process, or result of moving.”1 In Rockstead, the
linear elongation is the result of the base plate 100 moving and therefore
constitutes “movement” as claimed. For the foregoing reasons, Appellant
does not persuade us of any error in the Examiner's determination of
obviousness of the subject matter of independent claim 1. Accordingly, we
sustain the Examiner's rejection of independent claim 1 under 35 U.S.C. §
103(a) as unpatentable over Matzner and Rockstead.

Claims 7 and 8
Claims 7 and 8 depend from claim 1. Appellant argues that
Rasmussen does not correct the deficiencies of Matzner and Rockstead.
App. Br. 15. Since we have found no such deficiencies in the combination
of Matzner and Rockstead as described hereinabove, we sustain the

1 Dictionary.com Unabridged, Random House, Inc., © 2012, accessed at
http://dictionary.reference.com/browse/movement (last visited Aug. 6,
2012).

Appeal 2010-008352
Application 11/504,063

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Examiner’s rejection of claims 7 and 8 as unpatentable over Matzner,
Rockstead, and Rasmussen as well.

Claim 11
The Examiner rejects claim 11 together with claim 1 and does not
address the limitations of claim 11 that differ from claim 1. Ans. 4.
Appellant
submits that the Office Action is ambiguous with
regard to the treatment of independent claim 11.
As discussed above, claim 11 is rejected as
obvious over Matzner in view of Rockstead. In
paragraphs 6 and 15, the Office Action
acknowledges that Matzner and Rockstead lack at
least certain features defined in claim 11, while
contending that the noted missing features are
disclosed in Rasmussen. If Matzner and Rockstead
fall short of the subject matter of claim 11 from the
Examiner's perspective, it is clear then that the
rejection in paragraph 3 of the Office Action is per
se misplaced.
App. Br. 16.
We agree with Appellant. As admitted by the Examiner, neither
Matzner nor Rockstead disclose or suggest securing a target rod to at least
one of the plurality of tie bolts. See Ans. 7-8.
Accordingly, we cannot sustain the Examiner’s rejection of claim 11
under 35 U.S.C. § 103(a) as unpatentable over Matzner and Rockstead.

Claims 2-6 and 9-13 over Matzner, Rockstead and Rasmussen
Claims 2-6
With respect to dependent claim 2, the Examiner finds:
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Application 11/504,063

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Matzner in view of Rockstead et al [sic] disclose
the claimed invention except the following
limitation which is taught by Rasmussen . . . . The
sensor assembly (24) ,in [sic] figure 2, comprises a
rod clamp (which is threaded portion 90) and a
sensor clamp (98) fixed to the one of the tie bolts
(45a) and spaced from each other, and wherein the
elongation member comprises a target rod (80)
connected between the rod clamp (which is
threaded portion 90) and the sensor clamp (98).

Ans. 4-5. The Examiner further reasons:

It would have been obvious . . . to modify
the sensor system of Matzner and Rockstead by
installing a clamp assembly for the sensor and for
the movement member as taught by Rasmussen et
al [sic] disclose [sic] in order to give structural
support and for ease of assembly or disassembly.
Id. at 5.

Appellant argues:

Rasmussen discloses a sensor that involves
modification of punch press tie bolts to
accommodate an LVDT sensing element . . . . This
invasive construction would necessarily result in a
change in the performance of the structure as
compared to a non-invasive system . . . .Without
proper consideration, the performance of the bolt
could produce a dangerous failure situation when
considering that the bolts help restrain the
thousands of pounds of force.

App. Br. 15. Emphasis added.
We agree with Appellant. The Examiner’s articulated reasoning lacks
rational underpinning. Rasmussen’s sensor assembly is “invasive” in that it
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Application 11/504,063

9
requires a cylindrical bore opening in the tie rods. Rasmussen, col. 3, ll. 62-
67. The Examiner’s reasoning that it would have been obvious to one of
ordinary skill in the art to replace Rockstead’s sensor assembly with
Rasmussen’s sensor “in order to give structural support and for ease of
assembly or disassembly” is speculative if not entirely incorrect. There is no
indication that forming a cylindrical bore opening in the walls of Matzner’s
piston rod housings would give them structural support. Rather, it would
appear that forming a cylindrical bore opening in the walls of Matzner’s
piston rod housings would structurally weaken the walls. Furthermore,
forming such a cylindrical bore opening and locating the sensor assembly
therein does not appear to be an easier method of assembling or
disassembling a sensor assembly than the method disclosed by Rockstead.
Accordingly, we cannot sustain the Examiner’s rejection of claim 2,
and claims 3-6 which depend therefrom, as unpatentable under 35 U.S.C.
§ 103(a) over Matzner, Rockstead and Rasmussen.
Claim 9 and 10
Independent claim 9 recites “a target rod fixed to the rod clamp at one
end and movably coupled with the sensor clamp at an opposite end
proximate to the sensor.” App. Br. 19. For the same reasons as discussed
supra, with respect to claim 2, we do not sustain the Examiner’s rejection of
claim 9, and claim 10 which depends therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Matzner, Rockstead and Rasmussen.

Claims 11-13
Independent claim 11 recites “externally and non-invasively securing
a target rod to at least one of the plurality of tie bolts.” App. Br. 20. For the
Appeal 2010-008352
Application 11/504,063

10
same reasons as discussed supra, with respect to claim 2, we do not sustain
the Examiner’s rejection of claim 11, and claims 12 and 13 which depend
therefrom, under 35 U.S.C. § 103(a) as unpatentable over Matzner,
Rockstead and Rasmussen.

DECISION
We affirm the Examiner’s decision to reject claims 1, 7 and 8.
We reverse the Examiner’s decision to reject claims 2-6 and 9-13.
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-IN-PART

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