Ex Parte Mohr

Patent Trial and Appeal Board

Jul 21, 2017

13868528 (P.T.A.B. Jul. 21, 2017)

United States Patent and Trademark Office
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.
13/868,528 04/23/2013 Carsten Mohr LUKP611US 1095
94603 7590 07/25/2017
Sirrmsinn Rr Sirrmsinn PT T .P
EXAMINER
5555 Main Street
Williamsville, NY 14221
VENKATESAN, UMASHANKAR
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
patentEFS @ idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARSTEN MOHR
Appeal 2016-003819
Application 13/868,528
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Carsten Mohr (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s Non-Final decision rejecting claims 1—6.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submits the real party in interest is Schaeffler Technologies AG
& Co. KG. Br. 2 (filed Sept. 4, 2015).
Appeal 2016-003819
Application 13/868,528
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to methods for controlling an actuator or
valve. Mohr ’897 12.2 Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A method for regulating an actuator or a valve,
comprising the steps of:
transmitting a series of actuating pulses to the actuator or
valve; and,
transmitting an additional pulse or a stochastic signal to
said actuator or valve between at least two of said actuating
pulses, wherein said additional pulse or said stochastic signal
acts neutrally in terms of regulating function with respect to the
actuator, and wherein said additional pulse acts neutrally in
terms of valve function with respect to the valve, and wherein
said additional pulse causes a sound to be emitted from the
actuator or valve.
Br. 31 (Claims App.).
REJECTIONS3
1) Claim 1—6 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite.
2) Claims 1—3 are rejected under 35 U.S.C. § 102(b) as anticipated
by Ricci-Ottati (US 6,345,606 Bl, issued Feb. 12, 2002).
2 In the Appeal Brief, Appellant refers to the paragraph numbering of the
U.S. publication of the present application, Mohr (US 2013/0276897 Al,
published Oct. 24, 2013, hereinafter “Mohr ’897”) rather than the
Specification as filed. For consistency, the decision refers to the paragraph
numbering of Mohr ’897.
3 In the Answer, the Examiner withdrew a rejection of claim 5 and 6 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 7.
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Application 13/868,528
3) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ricci-Ottati and Higgins (US 4,628,951, issued Dec. 16, 1986).
4) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ricci-Ottati and Hafner (US 5,297,523, issued Mar. 29, 1994).
5) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ricci-Ottati.
DISCUSSION
Rejection 1
Claims 1—5
The Examiner finds that claim 1 and the claims depending therefrom
are indefinite because it is not clear how the pulse “acts neutrally” and “how
the valve or the actuator emits a sound.” Non-Final Act. 3^4. The Examiner
also finds that the claim 1 limitation “between at least two actuating pulses”
is not clear. Id. at 4. The Examiner makes similar findings for independent
claim 5. Id.
Appellant asserts that for the limitations “acts neutrally” and “emits a
sound,” paragraphs 15, 16, 21, 23—25, and 29 of Mohr ’897, “provide all the
information one skilled in the art would need to implement the claim
limitation in question.” Br. 9. Appellant argues, for the “between” finding,
that “[sjince the additional pulse or signal is between actuating pulses, the
additional pulse or signal does not overlap the actuating pulses. Br. 10.
Appellant relies on similar assertions for independent claim 5. Br. 10—13.
The Examiner responds that the portions of Mohr ’897 that are relied
upon by Appellant do not explain how the valve is made to emit sound.
Ans. 8. The Examiner states that it is not apparent whether an additional
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loudspeaker or a vibration generator causes the valve to resonate to produce
a noise, and if no additional device is used, what structure of the valve or
actuator will “cause a noise by its structural dynamic property and
resonance.” Id.
“The definiteness inquiry focuses on whether those skilled in the art
would understand the scope of the claim when the claim is read in light of
the rest of the [Specification. Even if the written description does not
enable the claims, the claim language itself may still be definite.” Union
Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692,
(Fed. Cir. 2001) (citation omitted). Here, Mohr ’897 defines “neutral” for an
actuator as “no regulating function is executed” and for a valve as “no valve
function is executed.” Mohr ’897 H 15 and 16. The claim limitation “acts
neutrally” is, thus, not indefinite because one of ordinary skill in the art
would understand that the term refers to when the regulating function or
valve function is not executed in response to the additional pulse or
stochastic signal. For the limitation “emits a sound,” we agree with the
Examiner that no structure is disclosed or adequately described that will
cause a noise or sound in the absence of valve or actuator movement.
However, we determine that this claim limitation is not unclear because one
of ordinary skill in the art would understand the meaning of the phrase
“causes a sound to be emitted from the actuator or valve.” Nonetheless, we
sustain the rejection of claims 1—5 under 35 U.S.C. § 112, second paragraph,
for the following reasons.
Claim 1 recites, in part, “transmitting an additional pulse or a
stochastic signal to said actuator or valve between at least two of said
actuating pulses.” Br. 31 (Claims App.). Claim 5 includes a substantially
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similar limitation. Id. Appellant argues that “pulses are discrete signals or
occurrences that are non-continuous with each other and separated by
respective time intervals.” Br. 10. Appellant further argues “between” in
claims 1 means that “the additional pulse or signal does not overlap the
actuating pulses.” Id. However, the Specification discloses that the time
structure of valve sounds caused by valve movements is changed “by
overlaying a continuous background sound, or one that is considered to be
continuous.” Mohr ’897 121. Mohr ’897 also discloses “[e]nergizing with
a continuous sound signal, whose amplitude and frequency content can be
appropriately matched to the structural dynamic situation, produces a
continuous background noise, so that in sum an unvarying sound without
noticeable individual sound pulses is perceived.” Mohr ’897 Tflf 29
(emphasis added), 24 (“continuous stochastic energization”), and 25
(“continuous stochastic sound signal”). Appellant does not adequately
explain how there can be no overlap in sound pulses if the additional pulse
or stochastic signal is a continuous signal. We determine that one of
ordinary skill in the art would find the limitation “between at least two of
said actuating pulses” is, thus, unclear because it contradicts the explicit
disclosure in the Specification of a continuous signal. See In re Moore, 439
F.2d 1232, 1235-36 (CCPA 1971); MPEP § 2173.03. We, thus, affirm the
rejection under 35U.S.C. § 112, second paragraph, of claims 1 and 5 and
claims 2—4, which are dependent on claim 1, as indefinite. However,
because our analysis differs from that of the Examiner, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to
provide Appellant with a fair opportunity to respond.
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Claim 6
The Examiner finds that “it is not clear how [a] signal causes the
sound to emit” and “how the ‘the continuous stochastic signal acts neutrally
in terms of valve function with respect to the valve.’” Non-Final Act. 4.
Appellant submits essentially the same contentions of error as for claim 1.
Br. 13-15.
For the reasons discussed above, the limitation “causing ... a sound
to be emitted,” is not indefinite because one of ordinary skill in the art would
understand the meaning of the phrase “causes a sound to be emitted from the
valve.” Fikewise, “acts neutrally” is not indefinite because one of ordinary
skill in the art would understand this limitation refers to when a valve
function is not executed in response to the continuous stochastic signal.
Accordingly, we do not sustain the rejection of claim 6 under 35 U.S.C.
§112, second paragraph.
Rejection 2
The Examiner finds that Ricci-Ottati discloses an electric pulse that
causes “only return fluid flow (104, Fig. 4) having [an] amplitude less than
the amplitude of the valve actuating pulse (102, Fig. 4) to act neutrally
toward the valve (16, Fig. 2).” Non-Final Act. 5. The Examiner reasons that
this pulse acts neutrally in terms of valve function and “inherently causes a
noise by relieving the pressure in the actuator (control chamber).” Non-
Final Act. 5 (citing Ricci-Ottati, col. 5,11. 21—39).
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Appellant argues that the Examiner improperly relies on two different
valves to meet the valve recited in claim 1, because valve 58 makes a sound
due to fluid flow, whereas valve 16 is activated by actuator 18. Br. 16—18.
The Examiner responds that Ricci-Ottati’s valve 16 and actuator 18
constitute “The Valve” and that actuator 18 “emits a sound when the neutral
pulse is actuated but the valve element (16, Fig. 2) is still biased against the
seat of the spray tip.” Ans. 12. The Examiner states that Ricci-Ottati’s
“Valve” thus meets claim 1 by: “(a) acting neutrally regarding regulating
function - regulating the flow through the valve element (16, Fig. 2) and (b)
acting neutrally in terms of valve function with respect to the valve - valve
function being flow of fluid though the valve element (16, Fig. 2).” Id.
We do not sustain the rejection because the Examiner does not
adequately explain how the pulse is neutral with respect to the regulating
function of “The Valve” that constitutes valve 16 and actuator 18. The
Federal Circuit has established that the proper construction is not just the
broadest construction, but rather the broadest reasonable construction in
light of the specification. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1298 (Fed. Cir. 2015) (“A construction that is unreasonably broad and
which does not reasonably reflect the plain language and disclosure will not
pass muster.”) (citations omitted). Here, Mohr ’897 states that “[njeutral in
terms of regulating function in reference to the actuator means that no
regulating function is executed.” Mohr ’897 1 15. In order for there to be
return flow through Ricci-Ottati’s valve 58, actuator 18 must operate control
valve 58 to axially separate from control valve seat 60. See Ricci-Ottati, col.
3,11. 44^47 and col. 4,1. 59—col. 5,1. 1. That is, actuator 18 must function in
order to regulate flow through valve 58 to enable the return flow that causes
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“a noise as the fluid flows from a high pressure chamber to a lower
pressure.” Ans. 11. In view of the above, the Examiner’s construction of
“neutrally in terms of regulating function” as only regulating flow through
valve 16 is unreasonable. This unreasonable claim construction led to the
Examiner’s unsupported finding that Ricci-Ottati’s valve 16, that includes
actuator 18, is acting neutrally regarding regulating function. We do not
sustain the Examiner’s rejection of claim 1 and of claims 2 and 3, depending
therefrom as anticipated by Ricci-Ottati.
Rejection 3
The Examiner rejects claim 4 as unpatentable over Ricci-Ottati and
Higgins. Non-Final Act. 5. Claim 4 depends from claim 1. Br. 31 (Claims
App.). The Examiner does not rely on Higgins to cure the deficiencies in
Ricci-Ottati discussed above for claim 1. Non-Final Act. 5. Therefore, we
do not sustain the rejection of claim 4 for the same reasons stated above for
claim 1.
Rejection 4
Claim 5 contains the same limitations as claim 1, that the additional
hydraulic pulse or the additional hydraulic stochastic signal causes a sound
to be emitted from the actuator or valve, and that the signal acts neutrally in
terms of regulating function with respect to the actuator. Br. 31—32 (Claims
App.). The Examiner rejects claim 5 based on Ricci-Ottati and Hafher and
uses the same findings and reasoning with respect to Ricci-Ottati, as for
claim 1. Non-Final Act. 6. The Examiner does not rely on Hafher to cure
the deficiencies in Ricci-Ottati discussed above for claim 1. We, therefore,
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do not sustain the rejection of claim 5 for the same reasons stated above for
claim 1.
Rejection 5
The Examiner states that, for claim 6 only, the “[Ejxaminer is
interpreting the entire assembly disclosed by Ricci-Ottati as the valve.”
Non-Final Act. 6. Appellant relies on the same contentions of error as for
claim 1. Br. 27.
Mohr ’897 discloses that “[njeutral in terms of valve function in
reference to the valve means that no valve function is executed.” Mohr ’897
116. Mohr ’897 also discloses that “[vjalve function means for example the
opening or closing of a valve.” Id. 114. Based on this definition, the term
“neutral” as this term applies to the valve does not include any valve
function, including valve opening or closing. In Ricci-Ottati, actuator 18
that is part of Ricci-Ottati’s valve assembly must open to relieve the control
chamber pressure, in order to “cause a sound to be emitted.” Non-Final Act.
7. Hence, the Examiner’s finding that the valve of Ricci-Ottati acts neutrally
in terms of valve function with respect to the valve is not supported by a
preponderance of the evidence. We do not sustain the Examiner’s rejection
of claim 6 as unpatentable over Ricci-Ottati.
New Ground of Rejection:
35 U.S.C § 112, First Paragraph-Written Description—Claims 16
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, the Specification must describe the claimed invention in
sufficient detail so that one skilled in the art can reasonably conclude that the
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inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991). Specifically, the
Specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; see also Ariad
Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). In addition, the Specification must “demonstrate that the patentee
possessed the full scope of the invention recited in [the] claim.” LizardTech,
Inc. v. Earth Resource Mapping, Inc., 424 F.3d. 1336, 1345 (Fed. Cir. 2005).
The written description requirement of 35 U.S.C. 112, first paragraph,
applies to all claims, including original claims that are part of the disclosure
as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit,
“[although many original claims will satisfy the written description
requirement, certain claims may not.” Id.', see also LizardTech, Inc., 424
F.3d at 1343—46; Regents of the University of California v. Eli Lilly & Co.,
119 F.3d 1559, 1568 (Fed. Cir. 1997); Fiers v. Revel, 984 F.2d 1164, 1170
(Fed. Cir. 1993) (Rejecting the argument that “only similar language in the
[Specification or original claims is necessary to satisfy the written
description requirement.”). In addition, original claims may fail to satisfy
the written description requirement when the invention is claimed and
described in functional language, but the Specification does not sufficiently
identify how the invention achieves the resulting claimed function. Ariad,
598 F.3d at 1349.
Independent claim 1 recites, inter alia, “wherein said additional pulse
acts neutrally in terms of regulating function with respect to the actuator,
wherein said additional pulse acts neutrally in terms of valve function with
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respect to the valve, and wherein said additional pulse causes a sound to be
emitted from the actuator or valve.” Br. 31 (Claims App.). Appellant’s
Specification discloses that “[d]ue to their continuous motion, switching
actuators or valves often produce structure-borne noise vibrations or sounds,
which are either emitted directly as airborne noise or are transmitted via the
adjacent structure as structure-borne noise and emitted audibly at a different
location as disturbing noise pulses.” Mohr ’897 14. Mohr ’897 also
discloses that the term “valve function” is “the opening or closing of the
valve,” i.e., the motion or movement of the valve. Id. 114. From this
disclosure, one of ordinary skill in the art would understand that noise or
sound is caused by vibrations when the valve or actuator moves, or switches.
Mohr ’897 also refers to “dynamic properties of the adjacent sound-emitting
surfaces,” but contains no drawings of or further description of the “sound-
emitting surfaces” or the “dynamic properties.” See Mohr ’897 125,
passim. Given that Mohr ’897 defines the term “neutral” as “no valve
function is executed” (Mohr ’897 1 16), one of ordinary skill in the art
would not understand what causes sound to be emitted in response to the
additional pulse in the absence of movement of the valve or actuator.
In response to the Examiner’s concerns in this matter, Appellant
reproduces paragraphs 15, 16, 21, 23—25, and 29 of Mohr ’897 verbatim and
then asserts:
The above teachings provide all the information one skilled in
the art would need to implement the claim limitation in question.
By definition, actuating pulses are discrete signals or occurrences
that are non-continuous with each other and separated by
respective time intervals. Therefore, the additional pulses or
signals do not overlap or interfere with the actuation pulses.
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Specifically, the actuator or valve is energized by the additional
pulse or signal, which does not overlap actuating pulses and
causes a sound to be emitted by the energized actuator or valve.
Br. 9. Although we appreciate Appellant’s reference to the valve being
energized by the additional pulse, we agree with the Examiner that Mohr
’897 “does not disclose the structure of the valve or the actuator that can
emit a sound without actually performing a regulating function.” Ans. 9.
Independent claims 5 and 6 similarly recite “acts neutrally in terms of valve
function,” and causing, with the stochastic signal, a sound to be emitted from
the valve. Br. 31—32 (Claims App.).
Based on the foregoing, we determine that one of ordinary skill in the
art, after reading Mohr ’897, would not reasonably conclude that Appellant
possessed the full scope of the invention recited in independent claims 1, 5,
and 6 due to the lack of any written description for the additional pulse
(claim 1), additional hydraulic pulse (claim 5), and continuous stochastic
signal (claim 6) causing a sound to be emitted from the actuator or valve.
Therefore, we enter a new ground of rejection against claims 1,5, and 6 for
failure to comply with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112.
Claims 2-4 all depend directly from claim 1. Br. 31 (Claims App.).
These claims suffer from the same defect as claim 1 due to their dependency
from claim 1. Therefore, we enter a new ground of rejection against claims
2-4 for failure to comply with the written description requirement of 35
U.S.C. § 112, first paragraph.
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DECISION
The Examiner’s decision rejecting claims 1—5 under 35 U.S.C. § 112,
second paragraph, is affirmed with the affirmance being designated as a
NEW GROUND OF REJECTION.
The Examiner’s decision rejecting claim 6 under 35 U.S.C. § 112,
second paragraph is reversed.
The Examiner’s decision rejecting claims 1—3 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s decision rejecting claims 4—6 under 35 U.S.C.
§ 103(a) is reversed.
We enter a NEW GROUND OF REJECTION against claims 1—6 for
failure to comply with the written description requirement of 35 U.S.C.
§112, first paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise one of
the following two options with respect to the new ground[s] of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the prosecution will be remanded
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to the Examiner. The new ground[s] of rejection [are]
binding upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground[s] of
rejection designated in this decision. Should the Examiner
reject the claims, [Appellant] may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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