Ex Parte Abel et al

Patent Trial and Appeal BoardSep 21, 2017

12797405 (P.T.A.B. Sep. 21, 2017)

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. 12/797,405 06/09/2010 Peter Abel LSG06319CON 4709 145572 7590 09/22/2017 MCCOY RUSSELL LLP 806 SW BROADWAY SUITE 600 PORTLAND, OR 97205-3335 EXAMINER MUSTAFA, IMRAN K ART UNIT PAPER NUMBER 3663 MAIL DATE DELIVERY MODE 09/22/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER ABEL and HELMUT SPAETH ____________ Appeal 2015-003826 Application 12/797,405 Technology Center 3600 ____________ Before JOHN C. KERINS, EDWARD A. BROWN, and TIMOTHY J. GOODSON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Peter Abel and Helmut Spaeth (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s non-final rejection of claims 1–11, 13–15, and 17–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Appeal 2015-003826 Application 12/797,405 2 THE INVENTION Appellants’ invention is directed to a method and system for determining the admissible load capacity of a crane. Independent claims 1 and 3 are illustrative: 1. A method for determining the admissible load capacity of a crane, in which the load capacity is determined in dependence on at least one first and one second parameter, the method comprising: a first step in which the load capacity is determined for a value of the first parameter with different values of the second parameter by calculation or by interpolation or extrapolation on the basis of known values of the load capacity with specific values of the first parameter; and a second step in which a determination of the load capacity for a value of the second parameter is performed on the basis of values of the load capacity determined in the first step for different values of the second parameter by calculation or by interpolation or extrapolation, wherein the first and second parameters are parameters which influence the admissible load capacity of the crane, wherein the first and second steps are performed by a unit of the crane to determine the admissible load capacity of the crane, and wherein the admissible load capacity of the crane is a load capacity that is safe in operation, wherein the parameter values are detected by a sensor, and when a parameter value exceeds a limit, another parameter value which provides a lower load capacity is used in determining the admissible load capacity, instead of the parameter value detected by the sensor. Appeal 2015-003826 Application 12/797,405 3 3. A method for determining the admissible load capacity of a crane, comprising: determining the load capacity in dependence on at least one first and one second parameter and where the determination of the load capacity is performed by calculation by a connection described by formulae between the load capacity and the parameters, wherein the first and second parameters are parameters which influence the admissible load capacity of the crane, wherein the determination of the load capacity is performed by a unit of the crane, wherein the admissible load capacity of the crane is a load capacity that is safe in operation, wherein values of the parameters are detected by a sensor, and when a parameter value exceeds a limit, another parameter value which provides a lower load capacity is used in determining the admissible load capacity, instead of the parameter value detected by the sensor. THE REJECTION The Examiner has rejected claims 1–11, 13–15, and 17–20 under 35 U.S.C. § 103 as being unpatentable over Yoshimatsu (US 6,170,681 B1, issued Jan. 9, 2001) in view of Sanchez (US 3,638,211, issued Jan. 25, 1972), and Choi (KR 20030045483A, published June 11, 2003). ANALYSIS Claims 1, 2, 4–11, and 17–20 As pointed out by Appellants at page 4 of the Reply Brief, a prior decision of the Board dated November 18, 2014 (hereafter “Decision”), in Appeal No. 2012-008285 (hereafter “the -8285 Appeal”), addressed issues Appeal 2015-003826 Application 12/797,405 4 common to some issues presented in the instant appeal. In the -8285 Appeal, the Examiner had rejected claims including the limitations in independent claims 1, 13, and 14 now on appeal requiring the first and second steps for determining admissible load capacity be performed,1 as being unpatentable over Yoshimatsu and Sanchez. Decision 2–3. As also noted by Appellants, the reasoning employed in rejecting the claims is nearly identical in both cases.2 Appellants’ Reply Brief includes the following excerpt from the Decision in the -8285 Appeal, which applies to the rejection of claims 1, 13, and 14 here: We thus view the proper obviousness analysis to be whether a person of ordinary skill in the art, when considering the teachings of Yoshimatsu and Sanchez, would have found it obvious to design a system that would allow operation of a crane in circumstances in which values for two different parameters affecting load capacity would have to be determined by calculation, interpolation, or extrapolation.3 Sanchez notes that its system, which is specifically designed to require determination of the value of only one parameter (boom angle) prior to finding maximum stress (admissible load capacity), 1 Claim 14 requires an identical third step for determining admissible load capacity, in addition to the first and second steps. 2 Appellants are correct in pointing out that the Examiner’s additional reliance on Choi in rejecting the claims in the instant appeal pertains to limitations different from the first and second steps for determining admissible load capacity. Reply Br. 3. Accordingly, the Examiner does not rely on Choi in any manner that would cause us to arrive at a different outcome from the -8285 Appeal. 3 We note, in this regard, that while the prosecution of the application has focused on whether the prior art renders obvious a method employing two interpolation steps, claim 1 allows, for example, for the possibility of employing two calculation steps, as well as performing one step as a calculation and the other step as an interpolation or extrapolation. Appeal 2015-003826 Application 12/797,405 5 results in “control and process circuitry [that is] greatly simplified” while still providing information “quickly to the alarm device.” Sanchez, col. 5, ll. 50–55. For its part, Yoshimatsu discloses that, when it comes to actually controlling a crane, the shorter time required to make the necessary calculation using interpolatory calculation is preferred over the longer time required to perform the calculation using the functional expression approach. Yoshimatsu, col. 9, ll. 8–13. Given that speed in providing the needed results is of importance in both references, the preponderance of the evidence does not support a conclusion that it would have been obvious to perform the method in Yoshimatsu with first and second successive interpolation steps, as the Examiner maintains. Reply Br. 4 (quoting Decision 7–8). Accordingly, the rejection of claims 1, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Yoshimatsu in view of Sanchez and Choi is not sustained. Claims 2, 4–11, 15, and 17–20 depend from one of these independent claims, and therefore the rejection of those claims as being unpatentable over Yoshimatsu, Sanchez, and Choi is also not sustained. Claim 3 Independent claim 3 does not include first and second steps of determining an admissible load capacity, reciting only “determining a load capacity . . . where the determination of the load capacity is performed by calculation by a connection described by formulae between the load capacity and the parameters.” Appeal Br., Claims Appendix. As such, the deficiency noted above in the Examiner’s application of Yoshimatsu and Sanchez to the claims discussed above is not at issue for claim 3. The rejection of claim 3, however, fails for a different reason. The Examiner relies on Choi as teaching the claimed “values of the parameters Appeal 2015-003826 Application 12/797,405 6 [used in the load capacity calculation] are detected by a sensor.” Non-Final Act. 5–6. Appellants argue that the sensed parameters in Choi are not used for calculating an admissible load capacity of a crane, but instead are used to calculate the pulling load currently experienced by the crane boom, and the current load value is compared to a rated load (comparable to Appellants’ admissible load capacity) that is determined in some other manner. Appeal Br. 17–18. The Examiner appears to agree with Appellants’ interpretation, stating that, “Choi teaches comparing the current load to a rated load [admissible load].” Ans. 5. The Examiner does not point to any portion of Choi describing how the rated or admissible load for the Choi crane is determined, and does not explain how, in combining Choi with Yoshimatsu and Sanchez, the sensed parameters used to determine the current, existing, pulling load in Choi might be used in some way in determining an admissible or rated load. Accordingly, the rejection of claim 3 as being unpatentable over Yoshimatsu, Sanchez, and Choi, is not sustained. Claim 13—NEW GROUND OF REJECTION—35 U.S.C. §112, ¶2 Independent claim 13 recites that, “values of the first and second parameters are arbitrary freely selectable values within a range,” and further that “the values of the parameters are detected by a sensor, and when a parameter value exceeds a limit, another parameter value which provides a lower load capacity is used in determining the admissible load capacity, instead of the parameter value detected by the sensor.” Appeal Br., Claims Appendix. Appeal 2015-003826 Application 12/797,405 7 It is unclear in that claim how values of the first and second parameters can both be “arbitrary freely selectable within a range,” and, at the same time, be values that are “detected by a sensor.” The former implies that a person or part of the crane system “selects” values of interest, whereas the latter implies that values are determined by a sensor without any “selection” taking place. Further, if the parameter values are selectable only within a particular range, as recited in claim 13, it would appear that the “limit” recited in claim 13 would be the upper or lower limit of that range. Claim 13, however, does not make clear how a value would be selected within that range, and also, at the same time, fall outside the upper or lower limit of the range. Alternatively, if the recited parameter limit or limits are not coextensive with the upper and/or lower limits of the recited range, but are somehow within the recited range, the rejection of the selected or detected value in favor of some other value correlating to a lower load capacity required by claim 13 appears to be in conflict with the recitation in the claim that the values employed are truly arbitrarily and freely selectable within the prescribed range. In other words, if values within the recited range can be overridden by some limit imposed within the range, then those values within the range that exceed the limit are not arbitrarily and freely selectable for use in the first and/or second recited step of the method. For the foregoing reasons, claim 13 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as Appellants’ invention. This is a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2015-003826 Application 12/797,405 8 DECISION The decision of the Examiner to reject claims 1–11, 13–15, and 17–20 under 35 U.S.C. § 103(a) is REVERSED. Claim 13 is rejected, in a NEW GROUND OF REJECTION under 35 U.S.C. § 112, second paragraph, as being indefinite. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2015-003826 Application 12/797,405 9 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b)