Liebherr-Hydraulikbagger GmbH

Patent Trials and Appeals Board

Sep 18, 2020

2018007645 (P.T.A.B. Sep. 18, 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.
14/060,418 10/22/2013 Johannes Lang LSG13318 6664
145572 7590 09/18/2020
MCCOY RUSSELL LLP
806 SW BROADWAY
SUITE 600
PORTLAND, OR 97205-3335
EXAMINER
TEKA, ABIY
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANNES LANG and BERNHARD MEITINGER
____________

Appeal 2018-007645
Application 14/060,418
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–7 and 9–11, which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b). A hearing
was held on September 11, 2020.
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Applicant identifies Liebherr-Hydraulikbagger GmbH as
the real party in interest. Appeal Br. 3.
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Application 14/060,418

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STATEMENT OF THE CASE
Claimed Invention
Appellant’s “disclosure relates to an apparatus for
controlling/regulating the travel speed of a utility vehicle and a method for
same.” Spec. ¶ 2.
Apparatus claim 1 and method claim 7 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An apparatus for controlling/regulating a travel speed of a
utility vehicle comprising at least one drive motor, at least one
hydraulic pump, exactly one control slide valve, at least one
hydraulic travel motor, at least one further hydraulic drive as well
as at least one controller, wherein during a purely vehicle
traveling operation, the travel speed of the at least one hydraulic
travel motor is controlled/regulated via a speed of the drive motor
and a supply pressure of a pressure medium supplied to the at
least one hydraulic travel motor by the at least one hydraulic
pump is not restricted by the control slide valve, while the at least
one further hydraulic drive does not produce any drive power,
and wherein the supply pressure of the pressure medium supplied
to the at least one hydraulic travel motor by the at least one
hydraulic pump is restricted by the control slide valve only
during operation of one or more further consumers of the utility
vehicle.
Appeal Br. 32, Claims App.

Rejections
Claims 7 and 9–11 are rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.2

2 The statement of the rejection inadvertently includes canceled claim 8.
Final Act. 3.
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Application 14/060,418

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Claims 1–5 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Nishimura et al. (US 6,564,548 B2, iss. May 20, 2003) (“Nishimura”) and
Ohkura et al. (US 5,784,883, iss. July 28, 1998) (“Ohkura”).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nishimura, Ohkura, and Bacon et al. (US 2008/0264499 A1, pub. Oct. 30,
2008) (“Bacon”).
Claims 7 and 9–11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nishimura and Aoyagi et al. (US 5,488,787, iss. Feb. 6,
1996) (“Aoyagi”).3
OPINION
Written Description
In rejecting claims 7 and 9–11 under 35 U.S.C. § 112, first paragraph,
the Examiner finds the recitation “detecting whether one or more further
consumers are operated in addition to the at least one hydraulic travel
motor” of independent claim 7 lacks written description support. In
particular, the Examiner finds that
the specification remains silent in the device that is used to
detect the status of said actuators. The drawings also remains
[sic] silent in disclosing the requisite structure that is utilized
for the sensing of information as outlined in applicant’s claim 7.
Careful review of applicant’s specification discloses in par.
0031 that the controller may include a processor and memory,
the memory including non-transitory instructions stored therein
for adjusting various actuators in response to sensed value (Par.
0031). However, nowhere in the disclosure does it reveal the
specific device that is used and how it achieves the sensing of
the status of said actuators. Applicant’s claim language is broad
enough to include all and every mechanism, device or way of

3 The Examiner clarified the statement of rejection, which inadvertently
included Ohkura. Ans. 9.
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Application 14/060,418

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achieving “the detection” aspect of operation. To that effect,
applicant has not sufficiently demonstrated within the
disclosure that applicant was in possession of at least one
mechanism of achieving said “detection” aspect of the
invention as claimed at the time of filing of the instant
application.
Final Act. 3–4; see also Ans. 2–4.
Alleging error in the rejection, Appellant argues “that ‘detecting
whether further consumers are operated in addition to the at least one
hydraulic travel motor’ (i.e., the element in question minus the phrase ‘one
or more’) is recited in original claim 7.” Appeal Br. 11; Reply Br. 3–4.
Appellant also quotes from paragraph 15 of the Specification, which in
relevant part discloses: “wherein the method comprises at least one step in
which it is detected whether further consumers are operated in addition
to the at least one hydraulic travel motor” (Appeal Br. 12). Appellant
argues that a skilled artisan would have recognized that Appellant had
possession of the claimed subject matter. Id. In support of this argument,
Appellant relies on statements in co-inventor Bernhard Meitinger’s
Declaration, which disclose in part that
a person of ordinary skill in the art at the time of the invention
would have understood that a controller of a utility vehicle
comprising at least one hydraulic travel motor and further
consumers could receive a signal from sensors at each of the at
least one hydraulic travel motor and the further sensors at
consumers indicating its current operating state (e.g., operating
or not operating), and could thereby detect whether further
consumers are operated in addition to the hydraulic travel
motor.
Id. We are not persuaded by Appellant’s arguments.
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The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en banc). To satisfy the written description requirement, the specification
must describe the claimed invention in sufficient detail such that one skilled
in the art can reasonably conclude that the inventor had possession of the
claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63
(Fed. Cir. 1991). Specifically, the specification must describe the claimed
invention in a manner understandable to a person of ordinary skill in the art
and show that the inventor actually invented the claimed invention. Id. at
1562–63; Ariad, 598 F.3d at 1351.
“Although many original claims will satisfy the written description
requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also
Lizard Tech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed.
Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in
the original disclosure does not satisfy the written description requirement if
it fails to support the scope of the genus claimed. Ariad, 598 F.3d at
1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir.
2002) (holding that generic claim language appearing in ipsis verbis in the
original specification did not satisfy the written description requirement
because it failed to support the scope of the genus claimed); Fiers v. Revel,
984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that “only
similar language in the specification or original claims is necessary to satisfy
the written description requirement”).
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We agree with the Examiner that independent claim 7 recites aspects
that fail to comply with the written description requirement. Specifically,
because the claim language “detecting whether one or more further
consumers are operated in addition to the at least one hydraulic travel
motor” is a genus, and the Specification does not disclose sufficient species
to support the boundaries of the claimed genus, the recited functional claim
language does not have sufficient written description support to satisfy
35 U.S.C. § 112, first paragraph.
Appellant’s argument that the aforementioned functional claim
language has written description support in original claim 7 and paragraph
15 of the Specification is not dispositive because the disclosure literally
repeats the functional claim language in ipsis verbis. Ariad, 598 F.3d at
1350; Enzo Biochem, 323 F.3d at 968. The test for compliance with this
requirement is whether the application disclosure reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the application filing date (Ariad, 598 F.3d at 1351), not
whether a skilled artisan would understand the various way in which the
detecting function is performed. The problem of written description
compliance is especially acute with genus claims that use functional
language to define the boundaries of a claimed genus, even when such
claims are original claims and thus part of the original specification. Id. at
1349 (“[A]n adequate written description of a claimed genus requires more
than a generic statement of an invention’s boundaries.”). Compliance with
the written description requirement ensures that when an inventor claims a
genus by its function, the specification recites sufficient materials to
accomplish that function. Id. at 1352–53.
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We next determine whether the scope of the functional claim language
in claim 7 is a genus that covers all species for performing the claimed
function. Id. at 1349. Factors to consider include (a) whether the claim
itself recites limitations as to how the function is performed; and (b) whether
the Specification identifies a way of performing the claimed function, such
as a specific type of structure or an algorithm, that defines the scope of the
functional claim language, without importing limitations from the
Specification into the claim. Lizard Tech, 424 F.3d at 1346; In re Hayes
Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1534 (Fed.
Cir. 1992).
We find that claim 7 fails to recite any limitations as to how the
claimed function is performed. The preamble of the claim identifies various
components of an apparatus without identifying any of those components for
performing the claimed detecting function. The scope of the limitation
“detecting whether one or more further consumers are operated in addition
to the at least one hydraulic travel motor” covers all species for performing
the claimed function, and the Specification does not describe any species for
the claimed detecting. As the Examiner observes, the Specification does not
identify any mechanism for performing the claimed function. In other
words, the Specification does not sufficiently specify how the invention
achieves the claimed function. Because the Specification does not
disclose species sufficient to support a claim to the functionally defined
genus, claim 7 fails to meet the written description requirement of 35 U.S.C.
§ 112, first paragraph. Lizard Tech, 424 F.3d at 1346 (“[T]he description of
one method for creating a seamless DWT does not entitle the inventor . . . to
claim any and all means for achieving that objective.”); Ariad, 598 F.3d at
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1349 (“[T]he specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by showing that
the applicant has invented species sufficient to support a claim to the
functionally-defined genus.”).
Accordingly, we sustain the Examiner’s rejection of claims 7 and 9–
11 as failing to comply with the written description requirement.
Obviousness
Independent claim 1 requires, in part, “an apparatus for
controlling/regulating a travel speed of a utility vehicle comprising . . .
exactly one control slide valve.” Appeal Br. 32, Claims App. Independent
claim 7 also requires “an apparatus comprising . . . exactly one control slide
valve.” Id. at 33, Claims App.
In rejecting claim 1 as unpatentable over Nishimura and Ohkura, the
Examiner finds Nishimura’s apparatus shown in Figure 2 teaches the
claimed apparatus for controlling/regulating a travel speed of a utility
vehicle, including “exactly one control slide valve formed by valve (8)”
(Final Act. 4).
Appellant contends that the previous rejection cited valves 6, 7, and 8
of Nishimura as forming a control slide valve, but the Examiner “now
asserts that valve 8 alone shows the claimed exactly one control slide valve.”
Appeal Br. 23. Appellant argues the rejection errs because the Examiner
“has not established that a skilled artisan would interpret Nishimura as
having exactly one control slide valve 8, seeing as valves 6, 7, and 8 appear
to be identical.” Id.
In response to Appellant’s argument, the Examiner states that
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valve (8) is exactly one control slide valve that supplies fluid to
motor (5). The fact that there are other valves present within the
device of Nishi doesn’t negate the fact that valve (8) is exactly
one control slide valve that supplies fluid to motor (5) (see Fig
2 of Nishi). It appears Applicant is trying to claim “only one
valve” but instead claimed “exactly one valve.” As such, valve
(8) can be correctly be interpreted as exactly one valve that
supplies fluid to motor (5).

Ans. 7. We are persuaded of error.
Claim 1 is directed to “a utility vehicle comprising . . . exactly one
control slide valve.” Reply Br. 9. Claim 1 requires “exactly one control
slide valve” as part of its apparatus, whereas all the other components of the
apparatus are prefaced with “at least one.” See Appeal Br. 32, Claims App.
We agree with Appellant that one of ordinary skill in the art would interpret
“exactly one” as meaning “one and only one.” Reply Br. 9.
The Examiner’s interpretation of the claim language relies on an
unreasonable distinction between “only one valve” and “exactly one valve.”
See supra. The Examiner ostensibly contends that if the claim recited “only
one control slide valve,” Appellant’s argument as to Nishimura’s teaching of
multiple operating valves (6, 7, and 8) regulating the flow of hydraulic fluid
from the hydraulic pump to the traveling motor would be accurate. We find
the plain language of the claim, which is consistent with Appellant’s
drawing of the claim in Figure 2, supports Appellant’s interpretation that
apparatus claim 1 requires one and only one control slide valve regulating
the flow of hydraulic fluid from the hydraulic pump to the traveling motor.
Reply Br. 9. Because the Examiner’s finding in Nishimura relies on an
unreasonable interpretation of the term “exactly one” control slide, which is
inconsistent with Appellant’s Specification, we do not sustain the rejection
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of independent claim 1, and independent claim 7, the rejection of which
relies on the same deficient finding in Nishimura. See Final Act. 7. For the
same reasons, we do not sustain the rejections of claims 2–5 and 9–11,
which depend from claim 1 and claim 7, respectively. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”). We also do
not sustain the rejection of dependent claim 6, because the Examiner does
not rely on Bacon to remedy the above noted deficiency in Nishimura as to
claim 1.
CONCLUSION
The rejection of claims 7 and 9–11 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The rejections of claims 1–7 and 9–11 under 35 U.S.C. § 103(a) are
reversed.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9–11 112, ¶ 1 Written Description 7, 9–11
1–5 103(a) Nishimura, Ohkura 1–5
6 103(a) Nishimura, Ohkura,
Bacon
6
7, 9–11 103(a) Nishimura, Aoyagi 7, 9–11
Overall
Outcome
7, 9–11 1–6

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 IN PART