Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Apr 15, 2020

14879715 - (D) (P.T.A.B. Apr. 15, 2020)

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.
14/879,715 10/09/2015 Richard A. Himmelmann 90849US01 (U380619US) 3237
114172 7590 04/15/2020
Cantor Colburn LLP - Power Controls,
Sensing Systems
20 Church Street
22nd Floor
Hartford, CT 06103-3207
EXAMINER
JOHNSON, ERIC
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. HIMMELMANN
Appeal 2019-003701
Application 14/879,715
Technology Center 2800
Before GRACE KARAFFA OBERMANN, MICHELLE N. ANKENBRAND,
and JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–18. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Oct. 9, 2015 (“Spec.”), Final
Office Action dated Apr. 24, 2018 (“Final Act.”), Appeal Brief dated Sept.
24, 2018 (“Appeal Br.”), Examiner’s Answer dated Feb. 8, 2019 (“Ans.”),
and Reply Brief dated Apr. 8, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hamilton Sundstrand
Corporation, a unit of United Technologies Corporation. Appeal Br. 3.
Appeal 2019-003701
Application 14/879,715
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a variable stroke linear electrodynamic
machine. Spec. ¶ 1. Claim 1, reproduced below, is the sole independent
claim on appeal:
1. An electrodynamic machine, comprising
a magnetic field generator and an armature in a linear
moving relationship with each other along a first axis; and
a swash plate rotating about a second axis parallel to and
offset from the first axis, the swash plate comprising a surface in
slidable engagement with an end of the magnetic field generator
or an end of the armature, said surface being at a controllably
variable angle to the second axis, thereby providing linear
displacement between the magnetic field generator and the
armature in response to rotation of the swash plate.
Appeal Br. 14 (Claims Appendix).
REFERENCES
The prior art upon which the Examiner relies is:

Name Reference Date
Stephens US 2007/0034178 A1 Feb. 15, 2007
Chen US 2006/0267417 A1 Nov. 30, 2006
Hartman US 4,684,834 Aug. 4, 1987
Gleasman US 7,635,255 B2 Dec. 22, 2009
Beyer US 2013/0325272 A1 Dec. 5, 2013

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REJECTIONS
1. Claims 1–2, 4–7, 9, and 16–18 are rejected under pre–AIA
35 U.S.C. § 103(a) as being unpatentable over the combination of
Stephens, Chen, and Gleasman. Final Act. 3.
2. Claim 3 is rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Stephens, Chen, Gleasman,
and Hartman. Final Act. 12.
3. Claims 8 and 10–15 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Stephens,
Chen, Gleasman, and Beyer. Final Act. 13.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections.”). After considering the evidence
presented and each of Appellant’s arguments in this appeal, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. Final Act. 3–18; Ans. 3–6. We add the following primarily
for emphasis.

Rejection 1
The Examiner finds that Stephens teaches an internal combustion
engine machine comprising piston 110 and cylinder 112 in a linear moving
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relationship with each other along a first axis. Final Act. 3–5 (citing
Stephens Figs. 1, 4, ¶¶ 36, 39). The Examiner further finds that Stephens
teaches swash plate 108 rotating about a second axis parallel to and offset
from the first axis and in slidable engagement with an end of the piston for
linear displacement between the piston and the cylinder in response to
rotation of the swash plate. Id.
The Examiner acknowledges that Stephens does not teach an
electrodynamic machine comprising a magnetic field generator and an
armature in a linear moving relationship with each along the first axis with
the swash plate having a surface in slidable engagement with an end of the
magnetic field generation or an end of the armature. Id. at 5. The Examiner
finds that Chen teaches an electrodynamic machine comprising magnetic
field generator 12 and armature 2 in a linear moving relationship with each
other along a first axis with an internal combustion machine configured with
the magnetic field generator and armature. Id. (citing Chen Figs. 2–3, ¶¶ 6,
13). The Examiner determines that configuring the machine in Stephens to
function as an electrodynamic machine with a magnetic field generator and
an armature in a linear moving relationship with each other along a first axis
would have been obvious, in order to reduce pollution as Chen teaches. Id.
at 6 (citing Chen ¶ 6).
The Examiner further acknowledges that the combination of Stephens
and Chen does not teach that the angle of the surface of the swash plate is
controllably variable to the second axis, but finds that Gleasman teaches
swash plate 128 with surface 126 that is controllably variable to second axis
130. Id. at 6 (citing Gleasman Fig. 3, 9:18–27, 10:45–60, 11:4–5). The
Examiner determines that configuring the surface of the swash plate of
Stephens to be controllably variable to the second axis would have been
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obvious, in order to vary the stroke of the motor as Gleasman teaches. Id. at
6 (citing Gleasman 3:15–23).

Analogous Art
Appellant argues that Stephens is nonanalogous art to the claimed
invention because Stephens is directed to internal combustion engines,
which allegedly is outside the claimed invention’s field of endeavor of
electric motors. Appeal Br. 9–10. Appellant further argues that Stephens is
not relevant to the problem faced by the inventor because Stephens is
directed to translating linear motion and energy of pistons to a rotational
motion for turning a wheel or powering a belt drive, in contrast to electric
motors which can orient magnetic field generators and windings in a circular
configuration to generate rotational motion directly. Id. at 10. Appellant
further argues that because Stephens is nonanalogous art, it is not properly
combinable with Chen, and that Gleasman is directed to a power consuming
pump, which is a third field of endeavor different from Stephens or Chen,
and is not reasonably pertinent to the problems faced by the inventor. Id.
The Examiner responds by noting that both Stephens and the claimed
invention have linear drive pistons (110 in Stephens and 123 in the
Specification) connected to a swash plate (108 in Stephens and 106 in the
Specification) to convert linear motion to rotary motion. Ans. 3 (citing
Stephens Figs. 1–4, ¶¶ 36, 39; Spec. ¶¶ 13, 14). The Examiner further finds
that Gleasman also teaches linear moving pistons connected to swash plates
and Chen teaches electromagnetic linear motors with magnets on pistons.
Id. at 3–4 (citing Chen Fig. 2–3, ¶¶ 6, 13; Gleasman Fig. 3, 7:11–13, 9:18–
27, 11:4–5). The Examiner determines that because the claimed invention
and cited references have similar structure and function they are analogous
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art in the same field of endeavor. Id. at 3. Appellant responds by arguing
that mere similar structure and function between the prior art references and
the claimed invention are insufficient to establish a same field of endeavor.
Reply Br. 2.
Appellant’s arguments do not persuasively identify reversible error.
Two criteria have evolved for determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed; or (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is concerned. In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992). The scope of analogous art is to be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc. . . . , directs us to construe the scope of analogous art
broadly”). Broadly stated, the field of endeavor of the claimed invention
includes motors, which is the same field of endeavor as Stephens, Chen, and
Gleasman. Spec. 2; Stephens ¶ 1; Chen ¶ 6; Gleasman 1:16–21. Although
Stephens is directed toward a motor using internal combustion and Chen is
directed toward a motor using electricity, electric motors are a well-
understood improvement to internal combustion engines to reduce pollution.
See Ans. 4 (Chen discloses “electromagnetic linear motors” useful for
“replacing pistons for an internal combustion motor[] in order to reduce
pollution”); Chen ¶ 6 (recognizing the desirability of “replac[ing] any
internal combustion engine of the prior art” with a motor using electricity in
order to eliminate “flaws” that include “environmental pollution”).
Moreover, the structural similarities between the prior art motors and the
claimed invention show that one of ordinary skill in the art would have
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looked to the broader field of motors. See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004) (the field of endeavor is determined “by reference to
explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.”).

Reason to Combine
Appellant argues that the Examiner’s analytical framework that
identifies Stephens as a primary reference is not appropriate because
Stephens has nothing to do with the problem addressed by the claimed
invention. Appeal Br. 10–11. The Examiner responds that Stephens is not
required to solve the same problem as the claimed invention addresses. Ans.
4.
Appellant’s argument does not persuasively identify reversible error.
It is not necessary that the prior art suggest the combination to achieve the
same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977,
987 (Fed. Cir. 2006). Because there is no requirement that the prior art
address the same problem as the claimed invention, the Examiner’s reason to
combine is appropriate.

Teaching Away
Appellant argues that because Stephens’s swash plate is fixed at a 45°
angle and Gleasman’s swash plate is controllably variable between a 0° and
25° angle, Gleasman teaches away from Stephens. Appeal Br. 11. The
Examiner responds that Gleasman is used to show that the swash plate may
be employed at controllably varying angles, not at a specific angle, and one
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of ordinary skill would have been capable of varying the swash plate at
different angles in order to vary the stroke of the motor. Ans. 4–5.
Appellant’s arguments do not persuasively identify reversible error.
The Examiner relies on Gleasman merely to show that one of ordinary skill
would have been aware that changing the angle of the swash plate would
change the stroke of the motor, not a specific angle. Therefore, the proposed
combination of Gleasman with Stephens and Chen is appropriate.
Accordingly, we affirm the rejection of claim 1. Appellant does not
separately argue dependent claims 2, 4–7, 9, and 16–18. Appeal Br. 9–11.
Accordingly, we also affirm the rejection of these claims. 37 C.F.R.
§ 41.37(c)(1)(vii).

Rejections 2–3
Appellant argues the nonanalogous nature of prior art in the rejection
of claim 3 based on Hartman, and claims 83 and 10–15 based on Beyer,4
similarly to arguing nonanalogous art in Rejection 1. Appeal Br. 11–13.
Both Hartman and Beyer are directed toward motors. Hartman Abstract;
Beyer Abstract. Therefore, we affirm the rejections of claims 3, 8, and 10–
15 for the same reasons as we affirm the rejection of claim 1.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

3 Appellant’s identification of claim 3 (Appeal Br. 12) appears to be a
typographical error. We understand that Appellant intended to identify
claim 8.
4 We understand that Appellant’s reference to Hartman (Appeal Br. 12) was
intended to refer to Beyer.
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Application 14/879,715
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–2, 4–7, 9
and 16–18
103(a) Stephens, Chen and
Gleasman
1–2, 4–7, 9,
16–18

3 103(a) Stephens, Chen,
Gleasman and Hartman
3
8 and 10–15 103(a) Stephens, Chen,
Gleasman and Beyer
8, 10–15
Overall
Outcome:
  1–18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED