Ex Parte Paulsen et al

Patent Trial and Appeal Board

Feb 12, 2019

14548870 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/548,870 11/20/2014
23456 7590 02/14/2019
PATTERSON Intellectual Property Law, P.C.
1600 DIVISION STREET, SUITE 500
NASHVILLE, TN 37203
FIRST NAMED INVENTOR
Sven Paulsen
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.
012826 (J/0632) 8433
EXAMINER
WHITTINGTON, JESS G
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
docket@IPLA WGROUP.COM
ckr@iplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN PAULSEN,
STEP AN WAGNER, and
CYRUS BARIMANI 1
Appeal2018-005679
Application 14/548,870
Technology Center 3600
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1, 2, 4, 5, 7, 8, 11, and 13-23, which
1 Wirtgen GmbH is identified as the applicant in the Application Data Sheet
dated November 20, 2014 submitted in association with this application.
Wirtgen GmbH is also identified as the real party in interest and as assignee
to this application. See App. Br. 1. Accordingly, pursuant to 37 C.F.R.
§ 1.46, we understand Wirtgen GmbH is the Appellant.
Appeal2018-005679
Application 14/548,870
constitute all the claims pending in this application. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we
AFFIRM the Examiner's rejections and designate our affirmance as a NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to "road reconstruction by
milling, and the removal of mineral deposits with a surface miner ( also by
milling), the earth working tools that are used, and in particular the milling
bits, are subject to a continuous wear process." Spec. ,r 1. Claims 1 and 23
are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A method of determining wear for an earth working
machine, the method comprising:
prior to an earth working operation of the earth working
machine, sensing with a sensor one or more position values
corresponding to a current tool contour of at least one earth
working tool of the earth working machine;
determining a current wear state based on a comparison of
the one or more position values of the current tool contour with
a reference tool contour aligned therewith;
during the earth working operation, continuously
determining from one or more current machine parameters:
an actual work output of the earth working machine,
wherein the actual work output corresponds to a change in
wear on the at least one earth working tool;
a material property of a substrate currently to be
worked by the earth working machine; and
an actual wear state of the at least one earth working
tool;
2
Appeal2018-005679
Application 14/548,870
reading out at least one characteristic value from a
database, said characteristic value derived from the determined
material property and corresponding to a change in the wear state
which is expected for a given work output in the substrate to be
worked;
determining from the determined actual wear state, a
residual wear capacity of the at least one earth working tool until
a predefined wear limit is reached, the determining being done
with a controller; and
determining with the controller a remaining work output
that can still be provided by the earth working machine based
upon the residual wear capacity and the at least one characteristic
value.
Holl et al.
Wagner et al.
Hall et al.
Marx et al.
REFERENCES
US 7,422,391 B2
US 2010/0076697 Al
US 2013/0035874 Al
US 2014/0116776 Al
THE REJECTIONS ON APPEAL
Sept. 9, 2008
Mar. 25, 2010
Feb. 7,2013
May 1, 2014
Claims 1, 2, 4, 5, 7, 8, 11, and 13-18 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Hall, Wagner, and Holl. Final Act. 5.
Claims 19-23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hall, Wagner, Holl, 2 and Marx. Final Act. 17.
2 Holl is omitted in the header of this rejection. Final Act. 17. Because
claims 19-22 depend from claim 1 (App. Br. 25-26 (Claims App'x)) and
because the Examiner refers to the rejection of claim 1 in the rejection of
these claims (see Final Act. 18), we understand this rejection to rely on Holl
as well.
3
Appeal2018-005679
Application 14/548,870
ANALYSIS
The rejection of claims 1, 2, 4, 5, 7, 8, 11, and 13-18
as being obvious over Hall, Wagner, and Holl
Appellant argues claims 1, 2, 4, 5, 7, 8, 11, and 13-18 together. App.
Br. 11-18; see also Reply Br. 2-7. 3 We select claim 1 for review, with
claims 2, 4, 5, 7, 8, 11, and 13-18 standing or falling therewith. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Hall discloses the various steps of a method
of determining wear for an earth working machine, as claimed, including the
limitations "a material property of a substrate currently to be worked by the
earth working machine" and "[a] characteristic value derived from the []
determined material property and corresponding to a change in the wear
state which is expected for a given work output in the substrate to be
worked." Final Act. 6 (citing Hall ,r,r 29, 33, 40). The Examiner
acknowledges that "Hall does not explicitly state 'residual wear capacity', or
the[] term 'contour', [and] does not state measuring/determining an 'actual
wear state' as defined by the claimed subject matter." Final Act. 6.
However the Examiner finds,
this "residual wear capacity" calculation is being carried out, or
its equivalent when Hall states "Furthermore, the processor may
generate a three-dimensional profile from a plurality of images
of the wearable component. The processor may determine the
remaining life based off the three-dimensional profile. It may
detect the contrast of the image to determine the boundaries of
the three-dimensional profile."
Final Act. 6-7 (citing Hall ,r 12).
3 As only page 1 of the Reply Brief is numbered, we will refer to the Reply
Brief as if the pages are numbered consecutively after page 1.
4
Appeal2018-005679
Application 14/548,870
The Examiner concludes that based on Hall's teachings, it would have
been obvious to "substitute using a 'residual wear capacity' or 'three[-]
dimensional model to calculate remaining life' for further calculating
remaining work (life expectancy), and using contours instead of images
[because] the outcome would have been predictable." Final Act. 8.
As support for this conclusion, the Examiner finds that Wagner
discloses, inter alia, "measuring tool wear states and further shows doing so
by using contours." Final Act. 8 ( citing Wagner ,r,r 20, 21, 50, 65; Fig. 7).
The Examiner concludes that it would have been obvious to modify the
method of Hall to "create contour lines of the tool for wear analysis as
taught by Wagner with a motivation of showing known and used art[-
]recognized wear estimates." Final Act. 9 (citing Wagner ,r 14).
Regarding Holl, the Examiner finds that this reference discloses "a
tool wear measuring system" and "teaches measuring/determining an 'actual
wear state' during working operations." 4 Final Act. 9 (citing Holl 4:40-5:5
("[t]he measured values can be continuously detected ... ")). The Examiner
concludes that it would have been obvious to modify the method of Hall "to
4 Claim 1 additionally includes language directed to "an actual work output
of the earth working machine." The Examiner relies on Holl for disclosing
this limitation. See Final Act. 9. Appellant explains that in accordance with
Paragraph 15 of Appellant's Specification, "[t]he 'actual work output' that is
determined during operation for the machine relates to a detected 'milling
output."' Reply Br. 3. We note that the primary reference to Hall discloses
examining "[ e ]xcavation conditions [which] may include: material being
excavated, speed of the excavation, time spent excavating, and other
factors." Hall ,r 33 (emphasis added). This is similar to Appellant's
"milling output" discussed above. Thus, consistent with Appellant's
Specification, the teachings of Hall likewise relate to "an actual work output
of the earth working machine."
5
Appeal2018-005679
Application 14/548,870
measure tool wear during the machine operation as taught by Holl with a
motivation ofbeing able to [be] continuously detected independently of the
display." Final Act. 10 (emphasis added).
Appellant contends,
Hall does not disclose any steps which take place subsequently
and during the earth working process, such as for example
accounting for changes in the earth working process or in the
material properties of a substrate to be worked, but instead
captures images of a pick and determines a "remaining life" or
"life expectancy" of the pick therefrom.
App. Br. 11-12 (emphasis added). However, the Examiner relies on Holl
for teaching monitoring "during the earth working process" (i.e.,
"continuously"), not Hall (which is relied on for teaching "material
properties of a substrate to be worked"). See supra.
Appellant argues that Wagner and Holl also do not disclose the
limitation of "continuously determining ... a material property" as claimed
(App. Br. 12-14), but the Examiner relies on Hall (supported by Wagner)
combined with Holl for this, not Wagner and/or Holl alone. See supra.
Appellant further argues that because "none of the cited prior art
references teach at least th[is] limitation" (i.e., "continuously determining ..
. a material property"), they also do not disclose the subsequent limitation of
"reading out at least one characteristic value from a database ... derived
from the determined material property," and also the limitation of
"determining . . . a remaining work output that can still be provided by the
earth working machine based upon the residual wear capacity and the at
least one characteristic value." App. Br. 14--15; see also Reply Br. 4--6.
These arguments are unpersuasive for the reasons provided above. To
the extent Appellant's arguments are addressing Wagner or Holl for not
6
Appeal2018-005679
Application 14/548,870
teaching these "material property" limitations, the Examiner explains, "[ t ]he
Wagner reference and further the Holl reference were not introduced to
show material properties." Ans. 6. Regarding the primary reference to Hall,
the Examiner states that Hall specifically discloses that the failure
mechanism of an excavation pick may be caused by "[ e ]xcavation
conditions [which] may include: material being excavated, speed of the
excavation, time spent excavating, and other factors." Ans. 7, quoting Hall
,r 33 ( emphasis added). Concerning this teaching in Hall, the Examiner
points out that Appellant's Specification addresses machine parameters
including "machine advance [and] milling drum rotation speed" (Spec.
,r 21), with Appellant's Specification explaining that "[t]hese machine
parameters provide information regarding the material properties." Ans. 8
(referencing Spec. ,r 21 ( emphasis added)). As these machine parameters
relate to evacuation speed, Appellant's Specification discloses that
evacuation speed can be used to provide information regarding the material
properties of the substrate worked on. One skilled in the art would
understand that, in Hall, identifying the material that is being excavated
would provide information about the relevant material properties of that
material that affect excavation. Thus, as Hall discloses determining similar
machine parameters including evacuation speed, and as Hall teaches
determining the material being excavated as another excavation condition,
Appellant does not explain persuasively how this disclosure in Hall would
7
Appeal2018-005679
Application 14/548,870
fail to likewise disclose or suggest determining "material properties" from
machine parameters, such as evacuation speed. 5
Further, even if Hall may not explicitly describe specific claim
language, the Supreme Court has emphasized that "the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int'! v. Teleflex Inc., 550 U.S. 398,418 (2007). As noted by the Court
in KSR, "[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton." Id. at 4 21.
Regarding the limitation directed to determining a material property
"of a substrate currently to be worked," we note that Hall discloses "[t]he
excavation pick [] may fail more rapidly in excavating certain materials"
and "[r]eceiving data and providing a failure mechanism[] for the
excavation pick [] may be advantageous to prevent a future failure
mechanism." Hall ,r 33 (emphasis added). Thus, a skilled artisan would
understand from Hall that there is a recognized link between the material
properties of a substrate currently being excavated and tool wear arising
from excavating in that material. This understanding is further supported by
Hall's desire to provide data "to prevent a future failure" of the excavation
device. Hall ,I 33; see also ,r,r 5, 7, 8, 12, 29, and 39-41; Ans. 7.
5 Additionally, Hall's "speed of excavation" is a parameter based on the
passage of a certain, continuous length of time-rather than simply being an
instant snap-shot of the situation. Thus, it can be said that Hall, itself, also
discloses or suggests the limitation of "continuously determining from one
or more current machine parameters: ... a material property of a substrate
currently to be worked by the earth working machine."
8
Appeal2018-005679
Application 14/548,870
Appellant further contends the Examiner relied on "Impermissible
Hindsight" in reaching the stated rejection. App. Br. 15. However, in view
of the extensive disclosures in the applied references, and the reasons
expressed by the Examiner above, we are persuaded the Examiner's
rationale is based on evidence and sound technical reasoning rather than
impermissible hindsight reconstruction.
Appellant acknowledges that the Examiner "proposes to modify the
data acquisition device of Hall to include tool wear measurements during
machine operation as disclosed by Holl." App. Br. 16. Nevertheless,
Appellant contends, "neither of these references suggest any such problem,
much less any associated motivation to correct such a problem." App. Br.
16. Thus, according to Appellant, the Examiner "fails to provide sufficient
underlying reasoning or evidence in the record as to how such teachings
would rationally be combined." App. Br. 17. These arguments are also
unpersuasive because Hall is clearly concerned with tool wear (see Hall
generally) and Holl teaches "continuously" monitoring the situation for
"[e]xtensive wear of the chisels" (Holl 4:57---63). The Examiner's stated
reason for the combination focuses on the ability and desire to continuously
detect tool wear. See Final Act. 10. Thus, Appellant's contention above is
not persuasive of Examiner error.
We further note that Wagner also discloses "a method for determining
a wear state of a chisel" in which its Figures 1-10 are substantially identical,
if not completely identical, to Appellant's Figures 1-10 (only Appellant's
Figure 11 which relates to milling through areas having different material
properties, is not disclosed in Wagner). See Wagner Abstract, Figs. 1-10;
see also Spec. Figs. 1-11, ,r,r 78-80. Thus, Wagner also discloses many of
9
Appeal2018-005679
Application 14/548,870
the various claim steps recited, even though not specifically relied upon for
such.
Appellant also contends that Hall only determines a "life expectancy"
of the tool because Hall only "captures information online that relates
directly to whether or not a tool has already failed." Reply Br. 4. This
argument is unpersuasive because Hall ( as mentioned above) discloses that
"[r ]eceiving data and providing a failure mechanism [] for the excavation
pick [] may be advantageous to prevent a future failure mechanism." Hall
,r 33 (emphasis added). That is, Hall's teachings are preemptively applied so
that failure does not occur during an excavation. Thus, Hall is not limited to
only addressing tools that have already failed, as Appellant contends.
For these reasons, we sustain the Examiner's decision rejecting claims
1, 2, 4, 5, 7, 8, 11, and 13-18. However, because our reasoning may differ
from, or be supplemental to, the Examiner's reasoning, we designate our
affirmance as a new ground of rejection under 37 C.F.R. § 4I.50(b) so as to
provide Appellant with a "fair opportunity to react to the thrust of the
rejection." In re Kronig, 539 F.2d 1300, 1302---03 (CCPA 1976).
The rejection of claims 19-23
as being obvious over Hall, Wagner, Holl, and Marx
Appellant contends that dependent claims 19-22 "are nonobvious as
depending from a nonobvious independent claim" and that "[independent
claim] 23 is believed to be patentable substantially in view of the arguments
presented above with respect to [ c ]laim 1." App. Br. 18.
Because we find no deficiencies in the Examiner's rejection of
independent claim 1 as being obvious over Hall, Wagner, and Holl for the
10
Appeal2018-005679
Application 14/548,870
reasons discussed above, we likewise sustain the Examiner's rejection of
claims 19--23 as being obvious over Hall, Wagner, Holl, and Marx.
DECISION
The Examiner's rejections of claims 1, 2, 4, 5, 7, 8, 11, and 13-23
under 35 U.S.C. § 103 are affirmed and designated as NEW GROUNDS OF
REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 to the examiner. The new ground of rejection is
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 of rejection
designated in the 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
11
Appeal2018-005679
Application 14/548,870
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 (see 37 C.F.R. § 1.136(a)(l)) maybe extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED; 37 C.F.R. § 4I.50(b)
12