BELIMO HOLDING AGDownload PDFPatent Trials and Appeals BoardDec 22, 20212021001139 (P.T.A.B. Dec. 22, 2021) Copy Citation 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. 15/749,550 02/01/2018 Marc THUILLARD Q237934 2680 23373 7590 12/22/2021 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER CARRASQUILLO, JORGE L ART UNIT PAPER NUMBER 2846 NOTIFICATION DATE DELIVERY MODE 12/22/2021 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC THUILLARD, STEFAN MISCHLER, and FRANK LEHNERT Appeal 2021-001139 Application 15/749,550 Technology Center 2800 Before JEFFREY T. SMITH, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as BELIMO HOLDING AG. (Appeal Br. 3.) Appeal 2021-001139 Application 15/749,550 2 CLAIMED SUBJECT MATTER The claims are related to an actuator and a method of operating the actuator wherein the actuator comprises an electric motor for moving an actuated part to an actuated position, and a controller connected to the electric motor and configured to detect motor rotations. (Spec. 1.). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An actuator (1) comprising an electric motor for moving an actuated part (2) to an actuated position, and a controller (10) connected to the electric motor (11) and configured to detect motor rotations, wherein the controller (10) is further configured to determine the actuated position by counting the motor rotations detected while the motor (11) is operating at or above a threshold indicative of a load torque, and by not counting motor rotations detected while the motor (11) is operating below said threshold. (Appeal Br. 24, Claims App.) REJECTIONS I. Claims 1, 9, 12, and 202 are rejected under 35 U.S.C. § 102 (a)(1) as anticipated by Sasaki (US 2017/0015348 A1, published Jan. 19, 2017). II. Claims 2, 10, 11, 13, 21, and 223 are rejected under 35 U.S.C. § 103 as obvious over the combination of Sasaki and Watanabe (US 5,059,879, issued Oct. 22, 1991). 2 The statement of the rejection does not list claims 9 and 20, however the body of the rejection addresses these claims. (Final Act. 3.) We consider the omission of claims 9 and 20 from the statement of the rejection to be harmless error. 3 The statement of the rejection does not list claims 10, 11, 21, and 22, however the body of the rejection addresses these claims. Final Act. 4. We Appeal 2021-001139 Application 15/749,550 3 III. Claims 3–7 and 14–184 are rejected under 35 U.S.C. § 103 as obvious over the combination of Sasaki, Watanabe, and Masaki (US 2012/0050675 A1, published Mar. 1, 2012). IV. Claims 8 and 19 are rejected under 35 U.S.C. § 103 as obvious over the combination of Sasaki and Eliuk (US 2006/0259195 A1, Nov. 16, 2006). OPINION After review of the respective positions the Appellant provides in the Appeal Brief and Reply Brief and the Examiner provides in the Final Office Action and the Answer, we reverse the Examiner’s anticipation rejection of claims 1, 9, 12, and 20 under 35 U.S.C. § 102 (a)(1) and the obviousness rejections of claims 2–8, 10, 11, 13–19, 21, and 22 under 35 U.S.C. § 103 for essentially the reasons Appellant presents. We add the following for emphasis. The dispositive issue on appeal is: Did the Examiner reversibly err in determining that Sasaki describes an actuator in which a controller determines an actuated position of an actuated part by counting motor rotations while the motor is operating at or above a threshold indicative of a load torque, and by not counting the motor rotations while the motor is operating below the threshold as required by consider the omission of claims 10, 11, 21, and 22 from the statement of the rejection to be harmless error. 4 The statement of the rejection does not list claims 5–7 and 16–18, however the body of the rejection addresses these claims. Final Act. 3. We consider the omission of claims 5–7 and 16–18 from the statement of the rejection to be harmless error. Appeal 2021-001139 Application 15/749,550 4 independent claim 1? After review of the respective positions provided by Appellant and the Examiner, we answer these questions in the affirmative. We limit our discussion to Rejection I and independent claim 1 with the understanding that our analysis also applies to independent claim 12.5 The Examiner finds that Sasaki teaches an actuator in which a controller determines an actuated position of an actuated part based on motor rotations. The Examiner specifically states: SASAKI shows an actuator (i.e. Fig. 1) comprising an electric motor (3) for moving an actuated part (i.e. power steering) to an actuated position (i.e. position θ), and a controller (6) connected to the electric motor (3) and configured to detect motor rotations (by means of 35), wherein the controller (103) is further configured to determine the actuated position by counting the motor rotations detected while the motor (3) is operating at or above a threshold indicative of a load torque (i.e. by means of torque sensor 5 which is a resolver), and by not counting motor rotations detected while the motor is operating below said threshold (i.e. pars. [0051], [0139], [0148], and Figures 5, 7-13, wherein an increment of abnormality counter is performed by means of a change in the number of rotation of a predetermined value or larger, and is hold or not. For example, the system makes time count for lapse of the predetermined time period and, upon judging that the condition of detection of the abnormality is resolved before the lapse of the predetermined time period, resets the time count, or restart the time count). (Final Act 2–3.) 5 The additional prior art references in Rejections II–IV were cited only to address limitations of the rejected dependent claims 2–8, 10, 11, 13–19, 21, and 22 . Appeal 2021-001139 Application 15/749,550 5 Appellant argues the Examiner has not identified teachings in Sasaki that describes a controller configured to determine the actuated position by counting motor rotations detected while the motor is operating at or above a threshold indicative of a load torque, and not by counting motor rotations detected while the motor is operating below a threshold as required by the claimed invention. (Appeal Br. 7–12.) Appellant has identified reversible error in the Examiner’s finding of anticipation. The Examiner has not identified teachings in Sasaki that described the determination of the actuated position of a part utilizing motor rotations occurring within specific threshold requirements as required by independent claim 1. The Examiner has not directed us to evidence that the step S3a, Retrieve Motor Position Detection Signal, is determined based upon motor rotation. (Sasaki ¶¶ 33, 43, Fig 5.) The Examiner further explains that Sasaki anticipates the claimed subject matter because, utilizing the broadest reasonable interpretation concept, the claims do not specify a counting element. (Ans. 4–5.) The Examiner specifically states: [G]iving the broadest reasonable interpretation in commensurate with the disclosure, the limitation involving a counting action of the rotations does not preclude the examiner or the person skilled in then art to interpret the phrase “counting” as when to execute a rotation detection and when to not execute said rotation detection. In other words, apparatus claim 1, or method claim 12, neither explicitly claims a counting element such as a counter, a clock or a timer, but rather the broad meaning of using the load feedback (torque or current) to determine when the motor rotation will be counted or not. (Ans. 4.) Appeal 2021-001139 Application 15/749,550 6 The added reasoning presented by the Examiner does not address the claim language presented. Contrary to the Examiner’s position, the claim explicitly requires a controller performs counting of motor rotations when the motor is operating above a threshold indicating a load torque, and does not count the motor rotations when the motor is operating below the threshold. For the foregoing reasons and those Appellant presents, we do not sustain the Examiner’s anticipation rejection of claim 1, 9, 12, and 20. We likewise reverse the obviousness rejections of claims 2–8, 10, 11, and 13–19, 21, and 22. The Examiner relies upon additional references in combination with Sasaki to reject these dependent claims. However, the Examiner does not rely upon the additionally cited references to address the limitations of independent claims 1 and 12 as we discuss above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 9, 12, 20 102(a)(1) Sasaki 1, 9, 12, 20 2, 10, 11, 13, 21, 22 103 Sasaki, Watanabe 2, 10, 11, 13, 21, 22 3–7, 14–18 103 Sasaki, Watanabe, Masaki 3–7, 14–18 8, 19 103 Sasaki, Eliuk 8, 19 Overall Outcome 1–22 REVERSED Copy with citationCopy as parenthetical citation