Ex Parte Hayashikawa et al

Patent Trial and Appeal Board

Mar 29, 2018

13511024 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/5ll,024 05/21/2012
52473 7590 04/02/2018
RATNERPRESTIA
2200 RENAISSANCE BL VD
SUITE 350
KING OF PRUSSIA, PA 19406
FIRST NAMED INVENTOR
Hiroyuki Hayashikawa
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.
MAT-10553US 2795
EXAMINER
HOANG, MICHAEL G
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
pcorrespondence@ratnerpres tia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI HAY ASHIKA WA, HITOSHI HONGU,
and NOBUO SHINNO
Appeal2017-003121
Application 13/511,024
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hiroyuki Hayashikawa et al. (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 2, 5-8, and 10-12,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as Panasonic Intellectual
Property Management Co., Ltd. Appeal Br. 2.
Appeal2017-003121
Application 13/511,024
THE CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent. Claim 1, reproduced below, is
representative of the claimed subject matter on appeal.
1. A gas laser oscillation device comprising:
a 0 -as·
b '
an electric discharge pmi to generate electric discharge in
a power source for applying power to the ekctric
discharge pmi so that the electric discharge part produces 1aser
output;
a blower unit to blmv the gas to a pmiion in which electric
discharge is generated by the electric discharge part, wherein a
rnember including a motor is used as the blower unit:
bearings disposed between a rotating part that rotates and
a non-rotating part that does not rotate in the blower unit;
a grease supply mechanism to supply grease to each of the
bearings;
a grease supply control device to directly measure an
amount of grease in the bearings and supply grease to the grease
supply mechanism; and
a control unit including a first coupling with the blower
unit and a second coupling with the power sourcei the control
unit configured to:
during a first time period, reduce operation of the
blower unit via the first coupling, the first time period
occun-ing when the grease supply control device signals
that the amount of grease is below a predetermined
amount,
during a second time period following the first time
period, maintain the blower unit at a first rotation rate
greater than zero via the first coup 1 ingi the second time
period occurring after grease is supplied to the bearings,
during a third time period following the second time
period, drive the blower unit at a second rotation rate
higher than the first rotation rate,
0 •
during the first and second time periods, prevent the
pmver source from causing the electric discharge part from
producing laser output via the second coupling, and
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Appeal2017-003121
Application 13/511,024
during the third time period, allow the power source
to cause the electric discharge part to produce laser output
via the second coupling,
vvherein the control unit is further configured to
detect a load of the motor by detecting a current fiowing
in the motor, and wherein the control unit is configured to
change frorn the second time period to the third time
period when the load of the motor falls below a
predeten11ined value.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hayashikawa '850
Hayashikawa '147
Hornick
Ohta
Yanohara
US 2004/0125850 Al
US 2006/0049147 Al
US 2008/0059089 Al
US 2008/0056325 Al
US 2008/0083585 Al
THE REJECTION
July 1, 2004
Mar. 9, 2006
Mar. 6, 2008
Mar. 6, 2008
Apr. 10, 2008
Claims 1, 2, 5-8, and 10-12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hayashikawa '14 7, Yanohara, Ohta, Hornick, and
Hayashikawa '850. Final Act. 3-15.
OPINION
The Examiner relies on Hayashikawa '14 7 for many of the limitations
of independent claim 1, but acknowledges that Hayashikawa '14 7 fails to
teach or suggest, among other things, a grease supply control device to
directly measure an amount of grease in the bearings. Final Act. 3-5. The
Examiner relies on Yanohara for this limitation. Id. at 5 (citing Yanohara
Fig. 1, i-fi-121, 24). More particularly, the Examiner finds that Yanohara's
calculating unit 23 is "capable of directly measuring an amount of grease in
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Appeal2017-003121
Application 13/511,024
bearings." Id. The Examiner further "takes the position that it could be
interpreted that the structure ofYanohara's calculating unit (23) calculating
an amount of remaining lubricant in the bearings 4 (para. 0021) is a 'direct
measurement,' since the calculating unit is directly measuring the lubricant
to analyze a parameter of the lubricant, i.e.[,] a remaining lubricant amount."
Id. at 17; Ans. 8. The Examiner concludes that it would have been obvious
to modify Hayashikawa '14 7 with the teachings of Y anohara "in order to ...
prevent wear/detrimental friction to the bearings by providing a good
lubricant state of the bearings prior to operating the blower unit at full
operating capacity for machining." Final Act. 6-7.
Appellants argue that Y anohara does not teach or suggest "any way to
directly measure the amount of grease in bearings 4" in that "Y anohara
teaches calculating[,] and not measuring[,] the amount of grease in bearings
4." Appeal Br. 10 (citing Yanohara i-f 21) (emphasis omitted). "Appellants
submit that [] one of ordinary skill in the art would have understood a direct
measurement to be different from, and not overlapping with, a calculation."
Reply Br. 3. The Examiner responds that "[t]he claim does not recite any
other language to specify what constitutes a 'direct measurement' in the
context of the grease supply control device performing the function, nor
does the claim recite any further structural details of the 'grease supply
control device' that enables it to carry out the direct measurement." Final
Act. 17; Ans. 8.
There does not appear to be any dispute about the scope of
Yanohara's disclosure, which teaches a controlling unit that "stores data of
an amount of lubricant to supply to the bearing and a rotation speed of the
main spindle in the storing unit as time-series data, and when the main
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Appeal2017-003121
Application 13/511,024
spindle is started, the time-series data stored in the storing unit is used to
calculate an amount of remaining lubricant in the bearings." Y anohara i-f 11.
Rather, the dispute appears to be whether such disclosure amounts to a
teaching of "a grease supply control device to directly measure an amount of
grease in the bearings,~' as claimed.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims "their broadest
reasonable interpretation consistent with the specification" and "in light of
the specification as it would be interpreted by one of ordinary skill in the
art." In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted). The Specification states that "[g]rease supply
control device 22 is connected to grease supply mechanism 21 so as to carry
out detection of an amount of grease and supply of grease to grease supply
mechanism 21." Spec. 7: 6-8. The Specification further states that "when an
operation is started for carrying out a laser oscillation, ... a signal from
grease supply control device 22 is input into control unit 12, and the amount
of grease in bearings 19a and 19b is detected (Step S2)." Id. at 7:27-8:5.
Thus, the Specification does not expressly define a "direct measurement,"
and, "in determining the ordinary and customary meaning of the claim term
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word for guidance." Comaper Corp. v.
Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary and
customary meaning of the term "directly" is"[ w ]ithout anyone or anything
intervening." The American Heritage Dictionary of the English Language,
5th ed. 2018 (available at www.ahdictionary.com); see also Dictionary of
Engineering 2015 (available at www.dictionaryofengineering.com) (defining
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Appeal2017-003121
Application 13/511,024
"[ d]irect [ m ]easurement" as "[t ]he determination of a value without utilizing
an intervening process").
Here, we view "to directly measure" as having a particular meaning
ascribed by a person of ordinary skill in the art-namely, to determine a
value without anything (e.g., a calculation process) intervening. Thus, even
though there is no lexicographical definition of "to directly measure" in the
Specification, the Examiner should have considered how the ordinary skilled
artisan would have interpreted this claim terminology. The Examiner's
finding that a calculating unit that calculates an amount of remaining
lubricant is "directly measuring the lubricant" (Final Act. 17), and suffices to
meet the claim limitation, is not supported by a preponderance of the
evidence. That is, the Examiner has not provided sufficient evidence to
show that one of ordinary skill in the art would understand the claim
terminology to extend to a device that calculates an amount of lubricant in a
set of bearings. The Examiner's finding that Yanohara's grease supply
control device is "capable of directly measuring an amount of grease in
bearings (plurality of bearings 4[)]" (Final Act. 5) also is not supported by a
preponderance of the evidence. Accordingly, the Examiner's conclusion of
obviousness is based on an erroneous finding as to the scope and content of
Yanohara. 2
2 The Examiner's rejection does not address whether one of ordinary skill in
the art might be led to use a device that directly measures an amount of
grease in a set of bearings, rather than a device that calculates an amount of
grease in a set of bearings. On this record, we see no reasoning to support
why one of ordinary skill in the art would have used a device to directly
measure an amount of grease in a set of bearings, instead of to calculate an
amount of grease in a set of bearings. We note that the Patent Trial and
Appeal Board is a review body, rather than a place of initial examination,
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Appeal2017-003121
Application 13/511,024
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of independent claims 1 and 7 is rendered
obvious by Hayashikawa '14 7, Yanohara, Ohta, Hornick, and Hayashikawa
'850. We do not sustain the rejection of claims 1 and 7, or claims 2, 5, 6, 8,
and 10-12, which depend therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Hayashikawa '14 7, Y anohara, Ohta, Hornick, and
Hayashikawa '850. Final Act. 3-15.
DECISION
The Examiner's decision to reject claims 1, 2, 5-8, and 10-12 under
35 U.S.C. § 103(a) as unpatentable over Hayashikawa '147, Yanohara, Ohta,
Hornick, and Hayashikawa '850 is reversed.
REVERSED
and we therefore decline to make a determination of what one of ordinary
skill in the art may deem obvious; rather, we leave it to the Examiner to
determine the appropriateness of any further course of action should there be
further prosecution of this application.
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