Ex Parte Maier et al

Patent Trial and Appeal Board

Nov 6, 2013

11464540 (P.T.A.B. Nov. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/464,540 08/15/2006 Oliver Maier GP-307644-GAPD-CHE 8786
65798 7590 11/07/2013
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
MARKS, JACOB B
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
11/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVER MAIER, BERND PETER ELGAS,
ULRICH DUMKE, and PETER WILLIMOWSKI
____________

Appeal 2012-001471
Application 11/464,540
Technology Center 1700
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-8 and 17-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Appellants identify the real party in interest as “General Motors
Global Technology Operations LLC, Detroit, Michigan, the assignee of this
application.” Appeal Brief filed March 10, 2011, as revised April 15, 2011
(“App. Br.”) at 3.
Appeal 2012-001471
Application 11/464,540

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BACKGROUND
The invention relates to a system and method for determining whether
a rotor shaft of a compressor, in particular a compressor for a fuel cell stack,
is unbalanced. Specification (“Spec.”) ¶¶ 1, 2, 6. According to the
Appellants, an unbalanced rotor shaft could cause damage to the
compressor. Id. at ¶ 5. Representative claim 1 is reproduced below:
1. A system for providing a signal indicative of whether
a rotor shaft of a compressor is unbalanced, said system
comprising:
a displacement sensor positioned proximate the rotor
shaft configured to determine the distance between an end of
the displacement sensor and the rotor shaft as it rotates and
providing a frequency signal indicative of the balance of the
rotor shaft;
a bandpass filter configured to filter the frequency signal
to provide a single unbalance frequency signal;
a rectifier configured to rectify the filtered signal to
provide a positive unbalance frequency signal; and
a low pass filter configured to average the positive
unbalance frequency signal to provide a DC signal, wherein the
amplitude of the DC signal is an indication of the balance of the
rotor shaft.
App. Br. 18 (Claims App’x).

Appeal 2012-001471
Application 11/464,540

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The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1-4 and 17-19 as unpatentable over Discenzo,2 Chen,3
and Beale;4
II. Claim 5 as unpatentable over Discenzo, Chen, Beale, and
Kotula;5
III. Claim 6 as unpatentable over Discenzo, Chen, Beale, and
Joseph;6
IV. Claim 7 as unpatentable over Discenzo, Chen, Beale, and
Gozdawa;7 and
V. Claim 8 as unpatentable over Discenzo, Chen, Beale, and
Grieve.8
Examiner’s Answer entered July 7, 2011 (“Ans.”) 5-15.

2 U.S. Patent 7,539,549 B1 issued May 26, 2009.
3 U.S. Patent 5,202,824 issued April 13, 1993.
4 U.S. Patent 5,313,399 issued May 17, 1994.
5 U.S. Patent Application Publication 2004/0169977 A1 published
September 2, 2004.
6 U.S. Patent Application Publication 2004/0244485 A1 published
December 9, 2004.
7 U.S. Patent 6,296,441 B1 issued October 2, 2001.
8 U.S. Patent Application Publication 2005/0196659 A1 published
September 8, 2005.
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Application 11/464,540

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DISCUSSION
While the Examiner entered five separate rejections, the Appellants
state that “[i]ndependent claims 1 and 17 are presented here for review and
are the subject of appeal” and that “[t]he remaining claims 2-8 and 18-20
stand or fall with their respective independent claims.” App. Br. 9.
Accordingly, our ruling as to claims 1 and 17 is dispositive for all five
rejections. Furthermore, to the extent that the Appellants rely on essentially
the same arguments for both claims 1 and 17, we confine our discussion to
claim 1, which we select as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Discenzo describes a system for controlling
and diagnosing the health of a motorized system (e.g., a compressor). Ans.
5 (citing Discenzo’s Abst.; col. 3, ll. 22-32). Specifically, the Examiner
found that Discenzo teaches measuring an attribute such as vibration with an
accelerometer and determining the health of the system based on a
diagnostic signal processed from the measured data. Id. (citing col. 7, l. 65
to col. 8, 18; col. 9, ll. 45-58; Fig. 7). Furthermore, the Examiner found that
Discenzo teaches the use of a bandpass filter, a rectifier, and a low pass filter
to provide the diagnostic signal. Id. (citing col. 14, l. 44 to col. 15, l. 10;
Fig. 7). The Examiner acknowledged that Discenzo does not describe a
displacement sensor positioned proximate a compressor rotor shaft to
determine a distance between an end of the sensor and the rotor shaft as it
rotates, as required by claim 1. Id. at 6.
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To account for the difference between Discenzo and the subject matter
of claim 1, the Examiner relied on Chen and Beale. The Examiner found
that Chen, in the context of rotational machinery, teaches the use of an
accelerometer or displacement sensors to monitor vibrations, which are
indicative of rotor imbalance. Ans. 6 (citing col. 3, ll. 3-20; Fig. 2). The
Examiner further found that Beale teaches the use of displacement sensors to
determine the distance between a rotor and a stator to monitor rotor
imbalance. Id. (citing col. 4, l. 63 to col. 5, l. 30; Fig. 2).
The Examiner concluded from these findings that a person of ordinary
skill in the art would have combined the teachings of Discenzo, Chen, and
Beale in the manner claimed by the Appellants. Ans. 6-7.
We have considered the Appellants’ arguments against the
Examiner’s rejection of claim 1 but do not find them persuasive to show
reversible error on the part of the Examiner. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because it has long been the Board’s practice
to require an appellant to identify the alleged error in the examiner’s
rejections).
First, the Appellants contend that Discenzo does not disclose
determining the balance of a rotor shaft. App. Br. 12. The Appellants are
correct on this point. But the Examiner found that Discenzo teaches a
compressor, which necessarily includes a rotor shaft, and further relied on
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two additional references to articulate a reason why a person of ordinary
skill in the art would have monitored the balance of Discenzo’s
compressor’s rotor shaft. Ans. 5-7. “[O]ne cannot show non-obviousness
by attacking references individually where, as here the rejections are based
on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA
1981).
Next, the Appellants argue that “accelerometers and displacement
sensors cannot be considered equivalent substitutes in every application.”
App. Br. 12. Discenzo’s disclosure, however, does not limit the system to
measuring vibration with accelerometers. To the contrary, Discenzo teaches
that “sensors providing signals indicative of other system variables may be
employed in order to diagnose and control a motorized system.” Col. 9, ll.
52-58. Given that it was known from Chen and Beale that vibration is
typically caused by rotor imbalance and rotor imbalance can be monitored
with displacement sensors, a person of ordinary skill in the art would have
been prompted to substitute Discenzo’s accelerometer with Beale’s
displacement sensors in order to monitor rotor shaft imbalance. KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a
structure already known in the prior art that is altered by mere substitution of
one element for another known in the field, the combination must do more
than yield a predictable result.”).
Last, the Appellants argue that Beale teaches measuring the distance
between the stator and the rotor, not the “distance between an end of the
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Application 11/464,540

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displacement sensor and the rotor shaft,” as recited in claim 1. App. Br. 13
(see also Reply Brief filed August 26, 2011 at 4). The Examiner, however,
found:
Displacement sensors operate by determining the distance
between the sensor and another object. As such the
displacement sensor 30 determines the distance between the
sensor and stator 12 and determines the distance between the
sensor and the rotor 10 to determine the relative distance
between the rotor and the stator (col. 4 line 63-col. 5 line 30).
In the relative distance calculation the sensor would
necessarily need to calculate the distance between itself and the
stator (rotor shaft).
Ans. 15. Mere attorney argument that Beale’s displacement sensors are
incapable of measuring the distances between the sensors’ ends and the rotor
shaft, Reply Br. 4, does not demonstrate error reversible error in the
Examiner’s reasonable findings quoted above.
For these reasons and those set forth in the Answer, we uphold the
Examiner’s rejections.

SUMMARY
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1-8 and
17-19 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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