Kent Tabor

Patent Trials and Appeals Board

May 17, 2021

2020004785 (P.T.A.B. May. 17, 2021)

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.
14/847,756 09/08/2015 Kent Tabor 20-870-US-CON 8600
20306 7590 05/17/2021
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
KOLB, NATHANIEL J
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
docketing@mbhb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT TABOR
Appeal 2020-004785
Application 14/847,756
Technology Center 2800
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7, 9, 11–15, 17, 18, and 20. See
Appeal Br. 8. We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed September 8, 2015 (“Spec.”); Non-Final Office Action
mailed July 11, 2019 (“Non-Final Act.”); Appeal Brief filed February 11,
2020 (“Appeal Br.”); Examiner’s Answer mailed May 14, 2020 (“Ans.”),
and Reply Brief filed June 8, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Although Appellant identifies the real party in interest as Bimba
Manufacturing Company in the Appeal Brief (Appeal Br. 2), we have been
Appeal 2020-004785
Application 14/847,756

2
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a system and method for
predicting the condition of a cylinder, which uses pressure to determine the
condition of a pneumatic or hydraulic cylinder. Spec. ¶ 2. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter
(Appeal Br. 18, (Claims App.)):
1. An actuator system comprising:
a piston-cylinder arrangement including a piston that is
movable with respect to a cylinder;
a piston seal positioned to form a seal between the piston
and the cylinder;
a shaft coupled to the piston and extending through the
cylinder;
a shaft seal positioned to form a seal between the shaft and
the cylinder;
a first flow path in fluid communication with the piston-
cylinder arrangement;
a second flow path in fluid communication with the piston-
cylinder arrangement;
a control system including a microprocessor and a
memory device, the control system controls a three-way valve
that is operable to fluidly connect the first flow path to a source
of high-pressure fluid and to connect the second flow path to a
drain to move the piston in a first direction;
a pressure sensor fluidly connected to the first flow path
and operable to measure sufficient pressure data during the
movement of the piston to generate a pressure versus time curve,
the pressure sensor removably connected to the cylinder such

informed the name of the real party in interest has been changed to Bimba
LLC, which has been recorded by virtue of assignment real/frame
052710/0968. “NAME CHANGE FOR REAL PARTY OF INTEREST”
filed June 15, 2020.
Appeal 2020-004785
Application 14/847,756

3
that the pressure sensor can be used with a different actuator
system,
wherein the control system is configured to
compare the generated pressure versus time curve
to a known standard pressure versus time curve stored in
the memory device, and
determine the condition of the piston seal and the
shaft seal of the piston-cylinder arrangement.
Claims 9 and 18 are also independent and recite an actuator system
and a method of predicting a failure in an actuator system, respectively.
Id. 20, 22.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Weinstock US 3,362,215 Jan. 9, 1968
Weiss US 5,694,808 Dec. 9, 1997
Muller US 2002/0193924 A1 Dec. 19, 2002
Imanishi US 2003/0146845 A1 Aug. 7, 2003
Beuth US 2008/0060509 A1 Mar. 13, 2008

REJECTIONS
1. Claims 1, 2, and 5–7 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Weinstock, Weis, Beuth, and
Imanishi. Non-Final Act. 3–9.
2. Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Weinstock, Weis, Beuth, Imanishi, and Muller.
Non-Final Act. 9–10.
Appeal 2020-004785
Application 14/847,756

4
3. Claims 9, 11–15, 17, 18, and 20 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Muller, Beuth,
Imanishi, and Weis. Non-Final Act. 10–21.

OPINION
Rejection 1
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 11. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Weinstock, Weis, Beuth, and
Imanishi, the Examiner found Weinstock discloses an actuator system
including a piston-cylinder arrangement, piston and shaft seals, a control
system, and pressure sensors, where one pressure sensor is coupled to a first
flow path. Non-Final Act. 3–4. The Examiner found that because
Weinstock discloses driving pressure is monitored during movement of the
piston by the sensor, it would be operable to measure sufficient pressure data
during the movement of the piston to generate a pressure versus time curve.
Id. 4. The Examiner found Weinstock discloses a control system, which
would be operable to compare the generated pressure versus time curve to a
known standard pressure versus time curve stored in the control system to
determine the condition of the piston seal and the shaft seal of the piston-
cylinder arrangement. Id. The Examiner found Weinstock itself does not
explicitly disclose the pressure versus time curve is compared to a known
Appeal 2020-004785
Application 14/847,756

5
standard pressure versus time curve, but because Weinstock measures a time
history of leakage based on pressure measurements and comparing one set of
data to another, the system is capable of comparing the generated pressure
versus time curve to a known standard. Id.
The Examiner further found Weis discloses pressure sensors are used
to generate pressure versus time curves and comparing them to known
standard pressure versus time curves to access defects in hydraulic pump
systems including leaking seals. See id. 5, citing Weis, col. 2, ll. 20–34, 43–
53. The Examiner determined it would have been obvious to have used the
comparison of Weis with the pressure versus time curves of Weinstock to
determine the magnitude of any discrepancies and aid in diagnosing defects
in the system. Id.
The Examiner found Weinstock does not disclose the control system
includes a microprocessor and a memory device. Id. 5. The Examiner
found Weis discloses a microprocessor with memory, and determined one of
ordinary skill in the art would have been motivated to use a microprocessor
with memory to track data collected by the device of Weinstock in order to
allow recording and comparing data quickly and automatically. Id.

Appellant’s Arguments
Appellant argues that Weinstock discloses pressure transducers that
measure and record variations of pressure with the travel of a piston, which
is not the same as measuring pressure versus time. Appeal Br. 8–9.
Appellant argues that Weinstock uses recorded pressures to determine if
actuant gas is leaking out of the actuator, which does not inform one of
ordinary skill in the art about the condition of the seal. Id. 9. Appellant
Appeal 2020-004785
Application 14/847,756

6
argues also that Weinstock measures pressure over time on the low pressure
side of the piston and not the high pressure side, and Weinstock is silent as
to a pressure sensor that is operable to measure pressure data during
movement to generate a pressure versus time curve on the high pressure
side. Id. As a result, Appellant argues Weinstock does not determine the
condition of both a piston seal and a shaft seal. Id. Appellant argues the
Examiner has improperly relied on inherency to account for differences
between what is disclosed in Weinstock and what is claimed. Id. 10.
Appellant contends also that modifying Weinstock in view of Weis would
improperly change the principle of operation of Weinstock. Id. 10–11.
Appellant argues one of ordinary skill in the art would not have modified
Weinstock with the control system of Weiss, because such a modification
would have been unnecessary to achieve Weinstock’s objective of detecting
a leak in a seal test specimen, and would complicate Weinstock’s system.
Id. 11.

Issue
Did the Examiner err in concluding that Weinstock and Weis would
have rendered obvious an actuator system including a control system
configured to determine the condition of the piston seal and shaft seal of the
piston-cylinder arrangement as a result of comparing pressure versus time
curves to a known standard pressure versus time curve as recited in claim 1?

Discussion
We are not persuaded by Appellant’s arguments. In particular, we
agree with the Examiner, that measuring variations in pressure with the
Appeal 2020-004785
Application 14/847,756

7
travel of the piston as disclosed in Weinstock would necessarily require
measuring pressure over a period of time. Ans. 4. Weinstock discloses a
piezo-electric pressure transducer 28 “to measure and record the variations
of pressure with travel.” Weinstock, col. 2, ll. 53–55. Thus, each pressure
measurement taken would occur as time elapses while the piston is traveling
such that each pressure measurement occurring as the piston travels is later
in time. As a result, the pressure transducer on the high pressure side of the
actuator system in Weinstock is capable of measuring pressure versus time.
We are not persuaded by Appellant’s argument that although
Weinstock discloses recording pressure to determine if actuant gas is leaking
out of the actuator, such does not inform the ordinary skilled artisan about
the condition of the seals. Throughout its disclosure, Weinstock discusses
testing the effectiveness of the seals and seal configurations by measuring
pressure. Weinstock, col. 1, ll. 26–30, col. 2, ll. 18–20, 33–38, 53–63.
Although Appellant argues that there is a difference between determining a
“condition” of a seal at a certain point in its life, and determining the
appropriateness of the seal as a design choice for a particular device (Reply
Br. 5), the claims do not recite such requirements for determining a
condition of a seal. Thus, like the Examiner, we do not discern a difference
between a “condition” of a seal as recited in claim 1, and the disclosure in
Weinstock of determining whether gas is leaking from a seal. In addition,
Appellant’s arguments fail to consider the entirety of the Examiner’s
rejection, which as discussed above, relies also on Weis for the comparison
of pressure versus time curves to known standards to assess system defects
including leaking seals.
Appeal 2020-004785
Application 14/847,756

8
As to Appellant’s argument that Weinstock does not teach a control
system that is operable to compare a generated pressure versus time curve to
determine a condition of a piston seal and a shaft seal, we are not persuaded
largely for the same reasons discussed above with respect to Appellant’s
argument that Weinstock only discloses monitoring pressure versus time
from the low pressure side. Further, Appellant’s arguments do not consider
the combination of Weinstock and Weis relied on by the Examiner with
respect to claim 1.
In this regard, we do not agree with Appellant that the Examiner
disregarded aspects of the system recited in claim 1. Appeal Br. 9; Reply
Br. 3–4. Rather, the Examiner accounted for all the capabilities required in
claim 1 in combining Weinstock and Weis. As discussed above, Weinstock
discloses obtaining pressure measurements during travel of the piston, which
provides support for the Examiner’s position that the pressure sensors are
capable of recording pressure readings at time intervals. Thus, Appellant’s
arguments that the Examiner has not provided any basis in fact or technical
reasoning for the position as to the inherent capabilities of the pressure
sensor are not persuasive. In addition, as discussed above, the Examiner
relied on Weis for the position that it would have been obvious to one of
ordinary skill in the art to have generated pressure versus time curves and to
compare them to known pressure versus time curves in order to determine
whether the piston seal and shaft seal are leaking, as using pressure versus
time is a known method for such a purpose. See Weis, col. 2, ll. 13–33.
Similarly, Appellant’s arguments that one of ordinary skill in the art
would not have modified Weinstock with Weis because it would change the
principle of operation of Weinstock are not persuasive. Appellant’s
Appeal 2020-004785
Application 14/847,756

9
arguments with respect to measuring pressure and piston travel have been
addressed above. As to Appellant’s argument that Weis tests its systems
“dry,” Appellant does not sufficiently explain why this disclosure in Weis
would improperly change the principle of operation of Weinstock. Weis
provides evidence that monitoring pressure versus time is a known technique
for determining the existence of leaks in actuator systems. Appellant does
not provide a sufficient explanation as to why applying the technique of
Weis to the system of Weinstock would be anything more than applying a
known alternative technique to a known system. KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”).
We are not persuaded by Appellant’s argument that the addition of
Weis’s control system is unnecessary to the objective system of Weinstock.
Appeal Br. 11. As discussed above, the Examiner’s rationale relies on
Weis’s disclosure of a control system having a microprocessor and a
memory, in order to enable storing and comparing pressure versus time data,
which is a known alternative for determining whether there are defects, such
as leaking seals, in such systems. Further, Appellant’s arguments that
replacing Weinstock’s leakage pressure transducers would complicate
Weinstock’s system (Appeal Br. 11) are not persuasive as the Examiner does
not propose such a combination. See Ans. 7.
As a result, we affirm the Examiner’s rejection of claim 1.

Appeal 2020-004785
Application 14/847,756

10
Rejection 2
Claims 3 and 4 depend from claim 1 and further recite that the control
system is operable to predict a failure of a piston seal and a shaft seal,
respectively. Appeal Br. 18–19. The Examiner found Muller discloses
comparing measured pressure versus time curves to known standards in
piston cylinder arrangements in order to predict failure in the piston seal.
Non-Final Act. 9, citing Muller ¶¶ 1, 8, 17, 27. The Examiner determined it
would have been obvious to have applied Muller’s technique to predict
failure in the piston seals of Weinstock. Id. 9–10. For claim 4, the
Examiner determined it would have been obvious to have used Muller’s
techniques to predict failure in the shaft seals in Weinstock as well, because
it would allow the determination of time prior to impending component
failure. Id. 10.
Appellant contends the Examiner’s additional reliance on Muller for
disclosing failure prediction would improperly change the principle of
operation of Weinstock, and is unnecessary as the pressure transducer of
Weinstock already accomplishes the same task. Appeal Br. 12.
We are not persuaded for the reasons expressed by the Examiner in
the Answer. Ans. 7. In particular, incorporating the techniques of Muller
would provide a more in-depth or sophisticated data analysis and better
failure protection. Id.
Accordingly, we affirm the Examiner’s rejection of claims 3 and 4.

Rejection 3
Appellant presents separate arguments with respect to the claims 9,
17, and 18 subject to this rejection. See Appeal Br. 13–17. We select claim
Appeal 2020-004785
Application 14/847,756

11
9 as representative for disposition of this rejection, addressing claims 17 and
18 to the extent necessary. 37 C.F.R. § 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
In rejecting claim 9 as unpatentable over Muller, Beuth, Imanishi, and
Weis, the Examiner found Muller discloses an actuator system including
cylinder, piston, control system including a microprocessor and memory
device, and a pressure sensor in fluid communication with a first side of the
cylinder and operable to measure pressure data during movement of the
piston. Non-Final Act. 10–11. The Examiner found Muller discloses the
control system is configured to compare the measured pressure data to
known pressure data and determine the condition of the system, where the
known pressure data is generated during one or more initial operating cycles
of the piston within the cylinder and is stored in the memory device. Id. 11.
However, the Examiner also found Muller does not disclose that the
known/stored pressure data is generated during one or more initial operating
cycles of the piston as recited in claim 9. Id.
The Examiner determined one of ordinary skill in the art would have
understood that because pressure data is compared to previous pressure data,
when the deice is first activated, the only previous pressure data available for
comparison would be the one or more initial operating cycles as recited in
claim 9. Id. 11–12. Therefore, the Examiner determined it would have been
obvious to use the initial operating cycles in Muller for pressure data
comparison. Id. 12.
The Examiner found Muller does not explicitly disclose pressure
versus time curves are compared to a previous measurements. Id. 13.
Appeal 2020-004785
Application 14/847,756

12
The Examiner further found Weis discloses pressure sensors are used
to generate pressure versus time curves and comparing them to known
standard pressure versus time curves. Id., citing Weis, col. 2, ll. 20–34. The
Examiner determined it would have been obvious to have used the pressure
versus time curves of Weis as the processed data of Muller (¶¶ 26, 27) that is
compared to previously taken data to determine the magnitude of the
discrepancy and aid in diagnosing defects in the system. Id.
The Examiner found Muller does not disclose much detail on the
valves that are used to actuate the cylinders. Id. 12. The Examiner found
Beuth discloses a three-way valve that regulates movement of a piston, and
as such, it would have been obvious to have used the three-way valve of
Beuth on the device of Muller, because it is a simple substitution of a known
element with predictable results, as an obvious engineering choice. Id.

Appellant’s Arguments
Appellant argues that Muller discloses comparing pressure data to lab
data, which does not support the Examiner’s position that such is the same
as comparing a measured pressure versus time to known pressure versus
time curve data. Appeal Br. 13. As such, Appellant argues one of ordinary
skill in the art would not understand from Muller that pressure versus time
data from initial operation of the piston within the cylinder would be used as
the baseline for pressure versus timed data that is measured later in the life
cycle. Id.
Appellant contends that one of ordinary skill in the art would not look
to Weis to modify Muller, because Muller discloses monitoring pressure at
points in time during operation, which is contrary to the disclosure of Weis.
Appeal 2020-004785
Application 14/847,756

13
Id. 14. Appellant argues also that Muller’s system already includes pressure
measurements for determining the performance of the piston, such that there
is insufficient rationale for including pressure versus time measurements,
where Weis only discloses such measurements on the low pressure side of
the piston. Id.
Appellant argues also that one of ordinary skill in the art would not
have modified Muller to include a three-way valve in Beuth, because neither
reference supports the contention that the valve controlling piston would be
modified to be a three-way valve. Id. 13–14. Appellant argues Muller
discloses hydraulic valves and Beuth discloses electrically-actuated control
valves such that implementing Beuth’s valves in Muller’s system would
improperly change the principle of operation of Muller’s hydraulic system.
Id. 14.
Issue
Did the Examiner err in determining that the actuator system recited
in claim 9 would have been obvious in view of the prior art of record?

Discussion
We are not persuaded by Appellant’s arguments. As to Appellant’s
argument that Muller only compares pressure data to lab data, Muller
discloses pressure readings begin with start-up or periodically for
continuously running equipment and output from sensors may be recorded at
established time intervals, which can be stored for subsequent processing or
downloaded to determine wear. Muller ¶¶ 30, 31. Weis discloses measured
pressures can be used to draw conclusions with respect to operability and
defects of a device, such as defective seals, where pressures are recorded and
Appeal 2020-004785
Application 14/847,756

14
analyzed. Weis col. 2, ll. 19–22, 52–53. Weis discloses that initially
process measured values may be used for comparison. Id. col. 2, ll. 24–27.
Although Weis discloses two pressure values obtained at different points in
time are sufficient for testing (Weis, col. 2, ll. 43–45), such a teaching does
not exclude the use of more pressure versus time values in the form of a
curve as argued by Appellant. See Reply Br. 5.
Further, we are not persuaded by Appellant’s arguments that because
Weiss teaches a system for monitoring a system when “dry” whereas
Muller’s system monitors pressure at points during operation, one of
ordinary skill in the art would not have modified Muller in view of Weis.
Appeal Br. 14. Similar to the discussion above with respect to the
combination of Weinstock and Weis, Weis provides evidence that
monitoring pressure versus time is a known technique for determining the
existence of leaks in actuator systems such that applying the technique of
Weis to the system of Muller is nothing more than applying a known
alternative technique to a known system.
As to Appellant’s position that Muller’s disclosure of drift in pressure
over time (¶ 27), would not be a measure of the condition of the seal, Muller
discloses “[p]ressure losses or fluctuations indicate one or more of . . .
leaking seals.” Id. Thus, Muller discloses pressure versus time
measurements are used to determine the condition of a seal. As such, even
assuming Appellant is correct that Muller’s disclosure of “[d]rift in pressure
over time is a measure of overall system deterioration” (Appeal Br. 13;
Muller ¶ 27) is not a disclosure of the condition of the seals, Muller
discloses using pressure over time to determine whether seals are leaking.
Appeal 2020-004785
Application 14/847,756

15
Moreover, and with additional reference to Appellant’s argument that
adding the control system of Weis to Muller would have been unnecessary
with respect to claim 17 (Appeal Br. 15), we agree with the Examiner that
the additional data analysis provided by Weis’s disclosure as discussed
above is not redundant, but would provide additional data analysis for
determining the status of the system. Ans. 11.
We are also not persuaded by Appellant’s argument that substituting
the three way valve of Beuth into Muller’s hydraulic system would
improperly change the principle of operation in Muller’s system, simply by
making it reliant on electrical actuation. As the Examiner further explains in
the Answer, any valve system can be implemented with conduit and basic
on-off valves, and a three-way valve is more compact. Ans. 9. Appellant
does not respond to the Examiner’s position, nor does Appellant sufficiently
explain why a switch from hydraulic to electrical actuation would constitute
an improper change to the principle of operation. In this regard, Muller
discloses electronic signals are used in conjunction with its system. Muller
¶¶ 18, 26. Thus, Appellant’s arguments are not persuasive.

Appeal 2020-004785
Application 14/847,756

16
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–7 103(a) Weinstock, Weis,
Beuth, Imanishi
1, 2, 5–7
3, 4 103(a) Weinstock, Weis,
Beuth, Imanishi,
Muller
3, 4
9, 11–15,
17, 18, 20
103(a) Muller, Beuth,
Imanishi, Weis
9, 11–15,
17, 18, 20

Overall
Outcome
1–7, 9, 11–
15, 17, 18,
20

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