Ex Parte White et al

Patent Trial and Appeal Board

Aug 30, 2016

12770868 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121770,868 04/30/2010 Andrew D. White
13871 7590 09/01/2016
McCarter & English LLP I Waters
265 Franklin Street
Boston, MA 02110
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.
121350-32801 1518
EXAMINER
PARK,HYUND
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
Elaine_Akaka@waters.com
docket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. WHITE, TROY D. NICKEL,
and DAVID J. DEVILEY
Appeal2014-005326
Application 12/770,868
Technology Center 2800
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
WESLEY B. DERRICK, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4, 6, 7 and 10-13. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim methods for confirming control system stability
and determining control system filter parameters. Claims 1 and 13 are
illustrative:
1. A method of confirming stability of a control system for a
materials testing system using specified filter parameters,
the method comprising:
Appeal2014-005326
Application 12/770,868
inputting to the control system a test signal having a
predetermined waveform;
automatically monitoring an output of the materials
testing system;
automatically comparing the output to a threshold;
if the output exceeds the threshold, taking a first action to
avoid unintended damage to one or more of a sample to be
tested and the materials testing system; and
if the output does not exceed the threshold, taking a
second action in the form of permitting input to the control
system of a command signal.
13. A method of determining filter parameters for a control
system, the method comprising:
generating a random noise signal;
applying a low-pass filter to the random noise signal to
produce a first filtered signal;
applying a high-pass filter to the first filtered signal to
produce a second filtered signal;
superimposing the second filtered signal on a sinusoidal
waveform to produce a reference test waveform;
applying the reference test waveform to a system under
test;
measuring an output of the system under test;
determining a transfer function of the system under test;
and
convolving the transfer function with the low-pass and
high-pass filters to produce the filter parameters, whereby
use of the filter parameters in the control system avoids
unintended damage to one or more of a sample to be tested
and the system under test.
Neal
Constant
Hinton
Sakiyama
The References
us 3,648,031
us 4,006,351
us 5,511,431
US 2004/0257093 Al
2
Mar. 7, 1972
Feb. 1, 1977
Apr. 30, 1996
Dec. 23, 2004
Appeal2014-005326
Application 12/770,868
Steve Soderling et al., Servo Controller Compensation Methods -Selection
of the Correct Technique for Test Applications, Pub. 1999-01-3000, 1-13
(Soc. Automotive Engrs. 1999) (hereinafter Soderling).
The Rejections
The claims stand rejected as follows: claims 1 and 13 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 1--4, 6, 7 and 10-12 under 35 U.S.C. § 101
as directed to non-statutory subject matter, claims 1--4, 6, 7, 10 and 11 under
35 U.S.C. § 103 over Soderling in view of Hinton, claim 12 under
35 U.S.C. § 103 over Soderling in view of Constant and claim 13 under
35 U.S.C. § 103 over Soderling in view ofNeal, Sakiyama, Constant
and Hinton.
OPINION
We reverse the rejections.
Rejection under 35 U.S. C § 112, first paragraph
The Examiner asserts that "the claims specifically recite 'if the output
exceeds the threshold, taking a first action to avoid unintended damage to
one or more of a sample to be tested, and the materials testing system,' but
said specific limitation is not found anywhere in the original disclosure"
(Ans. 3--4).
To comply with the 35 U.S.C. § 112, first paragraph, written
description requirement an applicant's specification need not disclose a
specific limitation but, rather, must "convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541
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Appeal2014-005326
Application 12/770,868
F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563---64 (Fed. Cir. 1991)).
The Appellants' Specification discloses:
Determination of the gain values for the controller's parameters
involves balancing various specifications. These specifications
may include gain and phase margins, time domain
specifications, power specifications, bandwidth, disturbance
rejection specifications and others. The specifications are used,
among other things, to protect the sample and the test
equipment from being damaged by inappropriate input values,
such as values that exceed the capabilities of the system or that
would cause destructive manipulation of the device under test
(assuming that is not the goal of the test). [i-f 21]
With incorrect parameters, the system may become unstable
when the controller is operated in a closed-loop configuration.
If the system is allowed to operate with an unstable controller
configuration, the sample is likely to be damaged, and elements
of the machine may also be damaged. [i-f 22]
The Examiner does not establish that those disclosures \'l/ould not have
conveyed with reasonable clarity to those skilled in the art, that as of the
Appellants' filing date the Appellants were in possession of a method
including "if the output exceeds the threshold, taking a first action to avoid
unintended damage to one or more of a sample to be tested and the materials
testing system". Accordingly, we reverse the rejection under
35 U.S.C. § 112, first paragraph, written description requirement.
Re} ection under 3 5 U.S. C § 101
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101.
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Appeal2014-005326
Application 12/770,868
The Examiner asserts that claim 1 "does not seem to be tied to a
particular machine or transform a particular article" (Final Act. 4).
The Appellants' claim 1 method is tied to a machine, i.e., a materials
testing system.
The Examiner asserts that "[t]he steps involved as claimed in Claim 1,
including automatically monitoring output, automatically comparing the
output, taking a first action, and taking a second action, can all be performed
by a human" (Ans. 4).
The Appellants' claim 1 also requires "inputting to the control system
a test signal having a predetermined waveform". The Examiner does not
establish that such input of a predetermined waveform can be performed by
a human.
The Examiner asserts that "inputting a test signal to the control
system, though this may require a specific machine, is neither novel nor
inventive in this scenario and thus is considered to be extra-solution activity"
(Ans. 4).
The Examiner cites no legal authority which addresses "extra-solution
activity." The Examiner apparently is referring to "insignificant
post-solution activity." See Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)
("[I]nsignificant post-solution activity will not transform an unpatentable
principle into a patentable process."). The Appellants' step of inputting a
test signal, however, is not post-solution activity.
Hence, we reverse the rejection under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103
We need address only the independent claims (1 and 13).
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Appeal2014-005326
Application 12/770,868
Claim 1
The only references addressed by the Appellants are Soderling and
Hinton (Br. 5---6). Soderling reviews control algorithms that compensate for
the limitations of standard proportional-integral-derivative (PID) servo loop
controllers when combined with the characteristics of the real system being
controlled and the accuracy, repeatability and stability demands of the test to
be performed (p. 2). Hinton shows the stability achieved in a low cycle
fatigue test carried out on a test specimen by a materials testing machine
(col. 5, 11. 28---61; Fig. 4).
The Examiner asserts that "[t]he first embodiment in Soderling
discloses a method of confirming stability of a control system for materials
testing system (Abstract; technique involving iteration, pg. 10, right lowest
paragraph to pg. 13)" (Final Act. 6).
The Appellants assert that in the portions of Soderling relied upon by
the Examiner, "Soderling is using an interative process to calibrate the
system so that an error in the feedback signal is adjusted to fall within
tolerance limits (see Figure 2 of Soderling). Soderling is not confirming the
stability of the system" (Br. 5).
The Examiner responds that "the recitation 'confirming the stability of
the system" has not been given patentable weight because the recitation
occurs in the preamble" (Ans. 5) and "the body of the claim does not depend
on the preamble for completeness but, instead, the process steps or structural
limitations are able to stand alone" (Ans. 5---6).
The effect preamble language is to be given is determined by
reviewing the entirety of the Appellants' disclosure to gain an understanding
of what the Appellants actually invented and intended to encompass by the
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Application 12/770,868
claim. See Corning Glass Works v. Sumitomo Electric, 868 F.2d 1251, 1257
(Fed. Cir. 1989). The Appellants' Specification indicates that the
Appellants' invented and intended to encompass by claim 1 a method for
confirming stability of a control system (Spec. i-fi-16, 23).
The Examiner asserts that Soderling includes disclosures
corresponding to each of the Appellants' claim 1 's limitations except for the
requirement of avoiding unintended damage to the sample and/or the
materials testing system, but the Examiner does not explain how, in
combination, those disclosures would have suggested to one of ordinary skill
in the art a method for controlling the stability of a control system (Final
Act. 6-8).
With respect to the Appellants' claim 1 's requirement of avoiding
unintended damage to the sample and/or the materials testing system, the
Examiner asserts that "[l]ooking at [Hinton's] Figure 4, it's obvious that
unstable oscillation of loading can potentially cause damage to the material
being tested, since there is no control over the magnitude of the amplitude
that is being applied to the said material. In other words, unstable oscillation
of high enough magnitude in loading can exceed the damage threshold of the
material being tested" (Final Act. 8).
The Examiner does not specifically point to the portion of Hinton's
Figure 4 the Examiner relies upon as indicating unstable oscillation due to
no control over the magnitude of the amplitude applied to the material. The
Examiner may be relying upon the end of the second loop at about
42 kN/0.32 MM having no apparent bound. Hinton, however, discloses that
the two loops are shown as separated but actually are superimposed (col. 5,
11. 41--44). Regardless, the Examiner does not explain how Hinton would
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Appeal2014-005326
Application 12/770,868
have led one of ordinary skill in the art to modify any of the techniques in
Soderling to avoid unintended damage to the sample and/or materials testing
system.
For the above reasons we reverse the obviousness rejection of claim 1
and its dependent claims.
Claim 13
The Appellants rely upon the applied references not suggesting
claim 13 's requirement that use of the filter parameters in the control system
avoids unintended damage to one of more of a sample to be tested and the
system under test (Br. 6).
To meet that claim requirement the Examiner relies upon Hinton as
applied to claim 1 (Final Act. 17-18).
The Examiner's reliance upon Hinton is not well taken for the reasons
given above regarding claim 1. Accordingly, we reverse the obviousness
rejection of claim 13.
DECISION/ORDER
The rejections of claims 1 and 13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement,
claims 1--4, 6, 7 and 10-12 under 35 U.S.C. § 101 as directed to non-
statutory subject matter, claims 1--4, 6, 7, 10 and 11under35 U.S.C. § 103
over Soderling in view of Hinton, claim 12 under 35 U.S.C. § 103 over
Soderling in view of Constant and claim 13 under 35 U.S.C. § 103 over
Soderling in view of Neal, Sakiyama, Constant and Hinton are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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