Ex Parte Pettersson et al

Patent Trial and Appeal Board

Apr 27, 2017

12406798 (P.T.A.B. Apr. 27, 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.
12/406,798 03/18/2009 Jens Pettersson 04189 - P0013A 6100
137670 7590
ABB - Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
04/27/2017 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 JENS PETTERSSON, LARS LEDUNG, and
PATRIK WESTERLUND
Appeal 2015-005256
Application 12/406,798
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 14—27 and 29—33. Oral argument was
presented at a Hearing conducted on April 25, 2017. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a device for controlling
material separation process.
Claim 14 is illustrative and reproduced below:
14. A device for controlling a material separation process,
comprising:
at least one processor,
at least one computer-readable medium, and
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Application 12/406,798
a state estimating unit implemented through software
stored in the computer-readable medium and programmed to
execute on the at least one processor, the software including
instructions:
to receive at least one measured process output variable
in said material separation process that is indicative of the
degree of separation between a desired material and an
undesired material, and
to estimate the state of the process at a certain instant in
time by applying the measured output variable and external
constraints for a prediction time interval on a model of the
material separation process, said model being based on at least
one input variable that can be manipulated and said output
variable, and
an optimizing unit implemented through software stored
in the computer-readable medium and programmed to execute
on the at least one processor, the software including
instructions:
to optimize an objective function that involves at least
one predicted controlled process output variable and said
external constraints, where said predicted controlled process
output variable is defined by said process model based on said
state and this optimising takes place under either or both of
constraints imposed by said process model and said external
constraints through adapting said input variables,
to provide at least one set point value for each input
variable for said prediction time interval, for use in regulating
said separation process in order to influence the separation
process for separating the desired material from bulk material,
to, when optimizing the objective function, maximize the
recovery of the desired material in the separation process or
minimize the amount of additives or the amount of energy used.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Pollock US 6,733,662 B2 May 11,2004
Persson et al. US 2004/0260421 A1 Dec. 23, 2004
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The Examiner maintains the following grounds of rejection:
Claims 14—27 and 29-33 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regards as the invention.
Claims 14—27 and 29-33 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. Claims
14—24, 26 and 29—33 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Persson. Claim 25 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Persson in view of Pollock.
We reverse the stated rejections for substantially the reasons argued
by Appellants, as discussed below (App. Br.; Reply Br. 6—8).
For each of the stated rejections, the Examiner bears the initial burden
of presenting a prima facie case establishing the non-patentability of the
rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Indefmiteness Rejection
The test for compliance with the requirements of § 112, second
paragraph is whether the claims set out and circumscribe a particular area
with a reasonable degree of precision and particularity when read in light of
the application disclosure as they would be interpreted by one of ordinary
skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner appears to be arguing, in a conclusory way, that the
rejected claims are indefinite because they lack sufficient detail respecting
the manner in which the structure is connected, how data is measured and
received, whether subsequent steps are required, and the manner in which
the optimization is performed rendering the terms “optimize” or optimizing”
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relative (Ans. 3 4). In this regard, the Examiner appears to have improperly
equated breadth with indefmiteness under § 112, second paragraph. In re
Miller, 441 F.2d 689, 693 (CCPA 1971). It is well-settled that a claim term
can be broad without being indefinite. In re Gardner, 427 F.2d 786, 788
(CCPA 1970); In re Borkowski, 422 F.2d 904, 908 (CCPA 1970).
For reasons argued by Appellants (App. Br. 10—11; Reply Br. 6—8),
the Examiner has not reasonably explained, in the first instance, why the
claim language, as it would have been interpreted by one of ordinary skill in
the art in light of Appellants’ Specification and the prior art, fails to set out
and circumscribe a particular area with a reasonable degree of precision and
particularity.
Accordingly, we agree with Appellants that the Examiner has not
carried the burden to establish that any of the rejected claims fail to satisfy
the requirements of the second paragraph of 35 U.S.C. § 112.
We reverse the Examiner’s rejection of claims 14—27 and 29—33 under
the second paragraph of 35 U.S.C. § 112.
Lack of Enablement Rejection
The Specification is presumed to be in “compliance with the enabling
requirement of 35 U.S.C. § 112, first paragraph, unless there is reason to
doubt the objective truth of the statements contained therein.” In re
Marzocchi, 439 F.2d 220, 223 (CCPA 1971). In this regard, it is well settled
that the Examiner has the “burden of giving reasons, supported by the record
as a whole, why the specification is not enabling... [and] [sjhowing that the
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disclosure entails undue experimentation is part of the PTO’s initial
burden...” In re Angstadt, 537 F.2d 498, 504 (CCPA 1976); see also
Marzocchi, 439 F.2d at 223. In determining whether any given disclosure
requires undue experimentation to practice the claimed subject matter, the
Examiner should consider, inter alia, the amount of direction or guidance
presented, the presence or absence of working examples, the nature of the
invention, the state of the prior art, the relative skill of one of ordinary skill
in the art, the quantity of experimentation necessary, and the predictability or
unpredictability of the art. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Determining enablement is a question of law based on factual
underpinnings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991).
Here, the Examiner maintains that the Specification is directed to a
separation process system employing particular models, it is unclear how
each structure is connected to perform the claimed functions, such as how
data is measured and received, the independent claims 14, 20, and 29 lack a
cycle step with a determined maximum value, and such features that are
critical should be recited in the claims (Ans. 2—3).
In contending a lack of enabling support for the claimed device for
controlling a material separation process, the Examiner alleges a lack of
clearness in ways of proceeding with certain method steps or device system
functions as well as an alleged omission of certain critical steps and a lack of
detail as to structural connections; however, the Examiner fails to
appropriately address and present a factual consideration of, inter alia, the
totality of the direction or guidance presented in the Specification, the nature
of the invention claimed (device for controlling a material separation
process), the state of the prior art, the relative skill of one of ordinary skill in
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the art, the quantity of experimentation necessary, and the predictability or
unpredictability of the art. As argued by Appellants, the Examiner has not
discharged the burden of establishing that the claimed invention would not
have been enabled to one of ordinary skill in the art (App. Br. 7—10; Reply
Br. 2-6).
In other words and while the Examiner has raised some concerns the
Examiner perceives with respect to the disclosed invention, the Examiner
has not carried the burden to establish that one of ordinary skill in the art
armed with the disclosures set forth in the subject Specification and given
the state of the prior art would not have been enabled to make and use the
subject matter of any of the rejected claims without undue experimentation.
On this record, the Examiner’s analysis fails to establish that the
relative skill of one of ordinary skill in the art, the state of the prior art, and
the nature of the invention are such that one of ordinary skill in the art would
not have been able to carry out the claimed method steps without undue
experimentation based on the guidance provided in Appellants’
Specification.
Accordingly, we reverse the Examiner’s decision rejecting claims
14—27 and 29—33 under the enablement requirement of 35 U.S.C. § 112,
first paragraph.
Anticipation Rejection
In order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
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inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Here, the Examiner has not established that Persson describes a device
corresponding to the claimed device, by specifying how the cited portions of
Persson describe a device for controlling a material separation process that
includes elements/features corresponding to all of the recited
elements/features of independent claims 14, 20, and/or 29, and arranged as
required by these claims.
Rather, in the anticipation rejection of claims 14—24, 26 and 29—33 by
Persson, the Examiner reversibly errs in failing to give any patentable
weight to the stored software instructions (processor configuration) for
controlling the material separation process, as claimed by Appellants, in
applying Persson as an anticipatory reference (App. Br. 12—13; Reply Br.
8—11; see Ans. 6—7). In this regard, the Examiner has not directed us to any
credible evidence demonstrating that the production process processing
control system of Persson that is disclosed as preferably applied to control of
chemical additives to a pulp and paper production process using a sulfate
process is configured or otherwise set up to perform the material separation
process control functions required by any of the rejected appealed claims, as
required by independent claims 14, 20 and/or 29 (see generally Ans.;
Persson || 89, 90).
It follows that we shall reverse the Examiner’s anticipation rejection
on this record.
Obviousness Rejection
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The Examiner’s separate obviousness rejection of dependent claim 25
is built on the faulty foundation of the afore-discussed anticipation rejection
and the additionally applied Pollock references is not applied by the
Examiner in a manner to cure the aforementioned deficiency (Ans. 9).
Accordingly, we reverse the Examiner’s obviousness rejection.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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