Ex Parte Meier et al

Patent Trial and Appeal Board

Jun 15, 2016

12485338 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,338 06/16/2009
28249 7590 06/15/2016
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE405
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Simon Meier
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.
298-468 3033
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
MAILDATE DELIVERY MODE
06/15/2016 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 SIMON MEIER and THOMAS REISCH
Appeal2014-005613
Application 12/485,338
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3, 5-11, and 13-20. Br. 1 (referencing Final Act. 1
(Office Action Summary)). Claims 4 and 12 have been canceled. Br. 19,
20, Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
1 Appellants are advised that should claim 5 be found allowable, claim 14
would be objected to under 37 C.F.R. § 1.75 as being a substantial duplicate
thereof. Final Act. 5.
Appeal2014-005613
Application 12/485,338
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to
a hydraulic drive comprising a hydraulic motor which includes a
first hydraulic connector and a second hydraulic connector. Such
a hydraulic motor converts hydraulic energy into mechanical
energy and is driven in that a pressure difference is applied
between the first hydraulic connector and the second hydraulic
connector of the hydraulic motor, whereby hydraulic fluid flows
through the hydraulic motor.
Spec. 1. 2 Independent claim 1, the sole independent claim, is representative
of the claims on appeal and is reproduced below:
1. A hydraulic drive which comprises a hydraulic
motor having a first hydraulic connector and a second hydraulic
connector, wherein the pressure applied at the first hydraulic
connector of the hydraulic motor and the pressure applied at the
second hydraulic connector of the hydraulic motor are each
separately adjustable; and
further comprising:
a first pressure reducing valve for varying the pressure
applied to the first hydraulic connector between a working
pressure and a return pressure;
a second pressure reducing valve for varying the pressure
applied to the second hydraulic connector between a working
pressure and a return pressure;
a first orifice flowmeter arranged between the first
pressure reducing valve and the first hydraulic connector of the
hydraulic motor; and
a second orifice flowmeter arranged between the second
pressure reducing valve and the second hydraulic connector of
the hydraulic motor,
2 Appellants' Specification does not provide line or paragraph numbering,
and accordingly, reference will only be made to the page number.
Moreover, all references herein to Appellants' Specification are in reference
to the Substitute Specification filed August 28, 2009.
2
Appeal2014-005613
Application 12/485,338
wherein a pressure drop is determined via the first orifice
flowmeter and is used to control the first pressure reducing valve
and a pressure drop is determined via the second orifice
flowmeter and is used to control the second pressure reducing
valve.
THE REJECTIONS ON APPEAL
Claims 1-3, 5-11, and 13-20 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1-3 and 5-11, and 13-20 are rejected under 35 U.S.C. § 101
as lacking utility. 3
ANALYSIS
The Rejection of Claims 1-3, 5-11, and 13-20 under 35 US.C. § 112,
Second Paragraph
Claim 1 recites "wherein the pressure applied at the first hydraulic
connector of the hydraulic motor and the pressure applied at the second
hydraulic connector of the hydraulic motor are each separately adjustable."4
Emphasis added. The Examiner states that this limitation "appears to be
wrong (see objection to the specification and 101 rejection)." Final Act. 4.
The Examiner states, "the detailed description and drawings of the control of
the pressure reducing valves show they are not and cannot be separately
controlled." Ans. 2. Instead, according to the Examiner, "[t]he only
3 The Examiner's statement of the rejection under 35 U.S.C. § 101
inadvertently indicated that claims 1-3 and 5-20 were rejected. Final Act. 4.
As claim 12 has been canceled, the claims subject to rejection under 35
U.S.C. § 101 are 1-3, 5-11, and 13-20.
4 Claim 1 further recites first and second pressure reducing valves that,
respectively, vary the pressure applied to the first and second connectors.
3
Appeal2014-005613
Application 12/485,338
apparatus causing the pressure reducing valves 1 and 2 to change is the
control valve 46. But a change in this valve changes both pressure reducing
valves by the same amount. Therefore, they are not separately set." Final
Act. 4. In other words, "the pilot pressures [i.e., in line 22] of both are the
same." Ans. 5. Hence, the Examiner deems the limitations of claim 1
"confusing" and that "[a]ppropriate correction is required." Final Act. 4.
Appellants' figure 1 is reproduced below.
FIG. 1
The above figure is a schematic embodiment of the invention
illustrating hydraulic connectors 11 and 12; pressure reducing valves 1 and
2; feed line 22; control valve 46; and motor 10.
4
Appeal2014-005613
Application 12/485,338
The Examiner's understanding of the operation of Appellants'
invention is incorrect. See Ans. 3-8; see also Br. 8-12. Indeed, valve 46
pre-controls the pressure in line 22 that feeds valves 1 and 2, but this is a
control of their inlet pressure, not their outlet pressure to connectors 11 and
12 and hence, motor 10. See Fig. 1 and Spec. 7; see also Br. 12. As can be
seen (and as described in Appellants' Specification), it is the difference in
pressure emerging from the outlet side of individually (see infra) adjustable
valves 1 and 2 that causes motor 10 to operate. See Spec. 5-7 and Fig. 1;
see also Br. 11. The motor does not operate due to the inlet pressure value
of valves 1 and 2, i.e., the pressure in line 22 emerging from valve 46, as the
Examiner understands. Ans. 3---6.
Additionally, Appellants enlarge a portion of Figure 1 to provide a
better view of the pressure reducing valves illustrated therein. Br. 10. This
enlargement is provided below.
I
The above is an enlarged view of pressure reducing valve 2 as shown
in Appellants' Figure 1.
Regarding this enlarged view, Appellants state:
In addition, between each of the hydraulic connectors (11 or 12)
and its respective hydraulic control connector 22 is the element
schematically illustrating the variable control for the first and
second hydraulic connectors 11112. The pressure reducing
valves 112 are also illustrated as having an up/down arrow
indicating that the pressure reducing valves 112 are variable.
5
Appeal2014-005613
Application 12/485,338
Br. 14 (emphasis added); see also Br. 10. Appellants' above statement is
consistent with Appellants' Specification discussing the fact that the
pressure applied at connectors 11 and 12 "can now be set separately" and
that "[fJor this purpose," valves 1 and 2 are provided. Spec. 5; see also Br.
11.
Additionally, when addressing Appellants' contention regarding the
illustration of variable control above, the Examiner addresses the "spring"
having "an arrow at 45 degrees through it." Ans. 4. Importantly, the
Examiner admits that "[t]he arrow indicates that the force of the spring can
be varied or adjusted," i.e., "the spring is adjustable." Ans. 4. However, the
Examiner interprets this adjustment in the spring "as meaning that a variable
pressure in the pilot control line [i.e., inlet line] 22 applies a variable force to
the one side of the spring," i.e., the inlet side. Ans. 4. Although we agree
with the Examiner's assessment that the spring means that the valve can be
adjusted, we understand that the adjustability applies to the outlet side of the
valve, not the inlet side, as interpreted by the Examiner. Ans. 4. Further, the
Examiner does not make clear how this spring in each of the downstream
valves can vary the pressure in inlet line 22 when earlier it was the
Examiner's understanding that the pressure in inlet line 22 is constant due to
line 22 being controlled by a single upstream valve 46. 5 See supra.
5 The Examiner also addresses the other vertical arrow in the above
enlargement stating that "pressure reducing valves can be adjusted to
connect either the pump (by 20) or the tank (by 21) to the respective motor
line (11, 12), which is what the arrow inside the box represents." Ans. 2.
Presuming that this is the case, then the Examiner does not explain how such
acknowledged adjustability of the pressure reducing valves fails to be a
disclosure, by Appellant, of separate adjustability of valves 1 and 2.
6
Appeal2014-005613
Application 12/485,338
In view of the express teachings in Appellants' Specification, and in
view of Appellants' Figure 1, we do not agree with the Examiner's
interpretation of Appellants' disclosure. Consequently, we do not agree with
the Examiner that claim 1 "appears to be wrong" (Final Act. 4) when such a
statement is premised on the Examiner's flawed understanding of
Appellants' disclosure. Accordingly, we do not sustain the Examiner's
rejection of claims 1-3, 5-11, and 13-20 as being indefinite under 35 U.S.C.
§ 112, second paragraph.
The Rejection of Claims 1-3, 5-11, and 13-20 under 35 US.C. § 101
Having reversed the Examiner's determination that claims 1-3, 5-11,
and 13-20 are indefinite under 35 U.S.C. § 112, second paragraph, we tum
our attention to whether "the disclosed invention is inoperative and therefore
lacks utility" as stated by the Examiner as the basis for this rejection under
35 U.S.C. § 101. Final Act. 4. In this connection, see Brooktree Corp. v.
Advanced Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992) (stating
"[ t Jo violate § 101 the claimed device must be totally incapable of achieving
a useful result"); see also Br. 15. Despite the Examiner's contention that the
pressure in line 45 delivers equal pressure to the hydraulic control
connectors 22 and that such equal pressure would prevent the pressure
reducing valves from being separately controlled (see supra), we are
satisfied, for reasons set forth above, that the adjustable springs associated
with the first and second pressure reducing valves enable separate control of
such valves. By virtue of these separate pressure reducing valves, the
pressure applied at the first hydraulic connector of the hydraulic motor and
the pressure applied at the second hydraulic connector of the hydraulic
motor are each separately adjustable whereby the motor can rotate.
7
Appeal2014-005613
Application 12/485,338
Consequently, we are of the opinion that the claimed device is capable of
achieving a useful result and is not in violation of Section 101. See also Br.
16. Accordingly, we do not sustain the Examiner's rejection of claims 1-3,
5-11, and 13-20 as lacking utility under 35 U.S.C. § 101.
Lastly, the Examiner has objected to the Specification and Drawings
to which Appellant has responded. Final Act. 3--4, Br. 7-8. Ordinarily, an
objection is petitionable, and a rejection is appealable but when the objection
is directly connected with the merits involving a rejection, as is the case
here, the matter may be addressed by the Board. In re Hengehold, 440 F.2d
1395, 1403 (CCPA 1971); see also 37 C.F.R. § 1.181(a)(l). However, for
the reasons stated above, we need not address the Examiner's objections to
the Specification and Drawings as they, too, are based on the same
misunderstanding of Appellants' disclosure as discussed herein.
DECISION
The Examiner's rejections of claims 1-3, 5-11, and 13-20 are
reversed.
REVERSED
8