Mark Spickard et al.

Patent Trials and Appeals Board

Nov 3, 2020

15228097 - (D) (P.T.A.B. Nov. 3, 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.
15/228,097 08/04/2016 Mark A. Spickard 510907 7738
53609 7590 11/03/2020
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK A. SPICKARD and BRIAN K. LAWVER

Appeal 2020-001142
Application 15/228,097
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1 and 3–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Woodward, Inc., as the sole real party in interest.
Appeal Br. 2.
Appeal 2020-001142
Application 15/228,097

2
STATEMENT OF THE CASE
The Specification
The Specification “pertains to actuators, and more particularly to
sensorless actuators.” Spec. ¶1.
The Claims
Claims 1 and 3–20 are rejected. Final Act. 1. Claim 2 is allowed. Id.
No other claims are pending. Id. Claim 1, is the sole independent claim on
appeal. It is representative and reproduced below.
1. A stepper motor driven actuator system comprising:
a stepper motor;
a cam;
a gearbox system, the gearbox system operatively
connecting the stepper motor to the cam such that the cam rotates
in response to stepping of the stepper motor;
a valve having a control piston located therein, the control
piston configured to translate in response to rotation of the cam;
and a rotary actuator, the rotary actuator fluidly connected to the
valve, the rotary actuator configured to rotate the cam in response
to translation of the control piston.
Appeal Br. Claims App. 1.
The Examiner’s Rejections
The following rejections are before us:
1. claims 1 and 3–19, under 35 U.S.C. § 102(a)(1), as anticipated
by Spickard2 (Final Act. 5); and
2. claim 20, under 35 U.S.C. § 103, as unpatentable over Spickard
and Nomura3 (id.).

2 US 7,963,185 B2, issued June 21, 2011 (“Spickard”).
3 US 2005/0166752 A1, published Aug. 4, 2005 (“Nomura”).
Appeal 2020-001142
Application 15/228,097

3
DISCUSSION
Rejection 1—Anticipation
Appellant argues the rejection of all claims together. Appeal Br. 5–7.
We choose claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejected claim 1 as anticipated by Spickard. Final
Act. 5 (citing Spickard, Abstract and Figs. 2, 6, and 7). Spickard is assigned
to Woodward, Inc., the real party in interest in the instant appeal. Spickard,
at [73]. Of particular significance here is claim 1’s recitation of a “rotary
actuator fluidly connected to the valve.” Appeal Br. Claims App. 1. The
Examiner found this feature taught by Spickard’s rack and pinion actuator
comprising ring gear 106, rack 108, and actuator piston 130. Final Act. 5.
Appellant argues that “Spickard discloses a linear actuator (rack 108)
fluidly connected to the valve.” Appeal Br. 5. It is true that Spickard’s
rack 108 does move linearly, along with actuator piston 130. However, as
mentioned above, the Examiner also relies on Spickard’s ring gear 106,
which does rotate. See Final Act. 5 (“Spickard discloses . . . a rotary
actuator (106/108/130 is a rack and pinion rotary actuator that imparts rotary
motion to the ring 106 via linear reciprocation of the actuator).”); see also
Spickard 3:63–65 (“The rack 108 provides direct actuator position feedback
to the ring gear 106, causing the ring gear 106 to rotate.”). Yet Appellant
argues that Spickard’s ring gear cannot properly be considered a rotary
actuator, or even part of a rotary actuator.
In that regard, Appellant first argues that Spickard’s ring gear is not
“fluidly connected to the valve,” as recited in claim 1. See, e.g., Reply Br. 6
(“The only actuator of Spickard that is fluidly connected to the valve is a
linear actuator piston (130).”). The false premise of Appellant’s argument is
Appeal 2020-001142
Application 15/228,097

4
that we must consider Spickard’s rack separately from the ring gear that it
rotates. Although the rack and ring gear may be distinct components,
together they form a rack and pinion actuator. And Appellant’s own
Specification explicitly identifies “rack-and-pinion” actuators as “rotary
actuators [that] are suitable” for Appellant’s claimed invention. Spec. ¶33
(“A variety of rotary actuators 106 are suitable for use in the present stepper
motor driven actuator system 10, including single- and double- vane, rack-
and-pinion, spiral shaft, chain-and-sprocket, helical spline, enclosed piston
crank, Scotch yoke, etc.”); see also Appeal Br. Claims App. 4 (Claim 18:
“The stepper motor driven actuator system of claim 1, wherein the rotary
actuator is of a type selected from the group consisting of single- and
double- vane, rack-and-pinion, spiral shaft, chain-and-sprocket, helical
spline, enclosed piston crank, and Scotch yoke.” (emphasis added)).
Clearly, rack and pinion actuators, which translate linear motion to rotational
motion or vice versa, constitute rotary actuators for purposes of claim 1.
Appellant further argues that, for a rack and pinion actuator to meet
the claim, the pinion (here, ring gear 106) must be the component that is
fluidly connected to the valve. See Appeal Br. 6 (“If Spickard disclosed the
pinion of a rack-and-pinion rotary actuator fluidly connected to the valve,
then perhaps it would meet the limitation of the claim, but Spickard does not
disclose such [a] configuration.”). Appellant’s argument is not persuasive of
Examiner error because, again, it is premised on considering the rack and
pinion as separate actuators only. But Spickard’s rack and ring gear are not
mere separate actuators. Together they form a rack and pinion actuator,
which the Specification concedes is both a “rotary actuator” and “suitable”
for the claimed invention. Spec. ¶33. And the rack and pinion actuator they
Appeal 2020-001142
Application 15/228,097

5
form is “fluidly connected to the valve” as recited in the claim by virtue of
fluid contacting the rack’s actuator piston 130.4
Appellant also argues that Spickard’s ring gear “is part of the
planetary gear system 104 that connects the stepper motor 100 to the
cam 102, not part of the linear actuator of the rack/piston 108/130 that is
fluidly connected to the valve.” Appeal Br. 5. But Spickard’s ring gear is
mechanically linked, not only to planet gears 114, but also to rack 108.
The rack 108 provides direct actuator position feedback to the
ring gear 106, causing the ring gear 106 to rotate. The ring gear
rotation causes the planet gears 114 and planet frame 116 to
rotate back to their original position, thereby rotating the cam and
translating the control piston 122 to the mechanical null position
(i.e., the center position).
Spickard 3:63–4:2. The mechanical linkage between rack 108 and ring
gear 106 forms a rack and pinion actuator. That the ring gear is a portion of
planetary gear system 104 does not disqualify it from serving as a portion of
the rotary actuator.
None of Appellant’s arguments apprises us of error in the Examiner’s
rejection of claim 1 as anticipated by Spickard. Accordingly, we affirm that
rejection, as well as that of claims 3–19, which fall therewith. 37 C.F.R.
§ 41.37(c)(1)(iv).

4 In the Reply Brief, Appellant belatedly argues that “Spickard does not
teach a rack and pinion” because the ring gear 106 cannot be considered a
“‘pinion’ by any definition since it is the largest gear of the planetary gear
system.” Reply Br. 5. This argument is untimely. See 37 C.F.R.
§ 41.41(b)(2). In any event, it is not supported by any cited evidence.
Appeal 2020-001142
Application 15/228,097

6
Rejection 2—Obviousness
Appellant does not argue the patentability of claim 20 beyond its
arguments in support of claim 1 (see Appeal Br. 8), which we have already
considered above but which do not apprise us of error. Thus, for similar
reasons, we affirm the rejection of claim 20 as unpatentable over Spickard
and Nomura.

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–19 102(a)(1) Spickard 1, 3–19
20 103 Spickard, Nomura 20
Overall
Outcome
1, 3–20

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