Ex Parte BECK et al

Patent Trial and Appeal Board

Aug 23, 2017

13451871 (P.T.A.B. Aug. 23, 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.
13/451,871 04/20/2012 David BECK 2012P00152US 9052
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
08/25/2017 EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
ipr@skf.com
mark.ussai@skf.com
bry an. peckj ian @ skf. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BECK, NATHAN DONOVAN,
and ERIC KRAS SINGER
Appeal 2016-004309
Application 13/451,871
Technology Center 3600
Before ALLEN R. MACDONALD, KARA L. SZPONDOWSKI, and
SHARON FENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—12 and 14—22. Claim 13 has been
withdrawn. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal 2016-004309
Application 13/451,871
STATEMENT OF THE CASE
Appellants’ invention is directed to a lubrication system with a
controller that can be configured through firmware to selectively control
multiple types of lubrication systems. Spec. 11. Claim 1, reproduced
below, is exemplary of the claimed subject matter:
1. A lubrication system for lubricating bearings, the
lubrication system comprising:
at least one lubrication pump for pumping lubricant to the
bearings, and at least one metering valve for distributing the
pumped lubricant throughout the lubrication system to the
bearings, and
a lubrication controller in communication with the at
least one lubrication pump and the at least one metering valve
for controlling the lubrication system and having firmware
configured to provide a sequence of instructions to perform
specified tasks and hardware that carries out the sequence of
instructions to perform the specified tasks, and wherein
in an unconfigured and unconnected state, the lubrication
controller is configurable by reprogramming the firmware to
selectively control at least one of a series progressive
lubrication system, a dual line lubrication system and a single
line parallel lubrication system.
REJECTIONS
Claims 1—12 and 14—21 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention.
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Application 13/451,871
Claims 1, 5, 8—11, 15—17, 20, and 21 stand rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Meuer et al. (US 4,967,881; issued Nov. 6,
1990) (“Meuer”)1 or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as
obvious over Meuer and Gauger et al. (US 2011/0279261 Al) (published
Nov. 17, 2011) (“Gauger”).2
Claims 2 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Meuer, Gauger, and Lakomiak et al. (US
2010/0147627 Al; published June 17, 2010) (“Lakomiak”).
Claims 3, 4, 6, and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Meuer, Gauger, and Otten et al. (US 5,228,469;
issued July 20, 1993) (“Otten”).
Claims 12 and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Meuer, Gauger, and Pax (US 5,495,917; issued
Mar. 5, 1996).
Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Meuer, Gauger, and Gregory et al. (US 5,125,480; issued
Apr. 4, 1995) (“Gregory”).
Claim 22 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
1 Because we affirm the Examiner’s 35 U.S.C. § 103(a) rejections of claims
1, 5, 8—11, 15—17, 20, and 21, we decline to reach the merits of the § 102(b)
rejection over the prior art. See, e.g., In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (not reaching rejections based on obviousness when claims
already rejected as anticipated). The Examiner’s 35 U.S.C. § 102(b)
rejection of these claims is not discussed further herein.
2 We agree with Appellants that the 35 U.S.C. § 103(a) rejection is based on
Meuer combined with Gauger, rather than Gauger alone, and determine that
the Examiner’s omission of reference to Meuer in the rejection heading is
harmless error. See App. Br. 8—9; Non-Final Act. 3, 7.
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Application 13/451,871
unpatentable over Meuer, Gauger, and Mori et al. (US 5,482,138; issued Jan.
9, 1996) (“Mori”).
ANALYSIS
Indefiniteness Rejections
Issue 1: Did the Examiner err in concluding the recitation of
“unconfigured and unconnected state” renders claim 1 indefinite?
The Examiner concludes “unconfigured and unconnected state” is
“unclear. Is this the state prior to the complete build of the lubrication
system? Is the system claimed as being configured and unconnected at all
times? Is this the end product?” Non-Final Act. 2. The Examiner states this
conditional language “raises the question of what structure is being claimed.
Is the claimed invention of the lubrication system unconfigured and
unconnected?” Ans. 4.
Appellants argue the claim includes a “lubrication controller that has
not yet been configured and is thus in an ‘unconfigured’ state” and “the
claimed lubrication controller is not connected to the computer that will
configure the controller as described.” App. Br. 4, citing Spec. 1 55.
Appellants further argue “Applicant is NOT claiming a system that is
‘configured and unconnected at all times’” and “there is no legal
requirement that only an end product be claimed.” App. Br. 4.
In determining whether a claim satisfies the 35 U.S.C. § 112, second
paragraph, we determine “whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification.” Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir.
2011) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
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Application 13/451,871
1565, 1576 (Fed. Cir. 1986). In our view, those skilled in the art would have
understood the scope of “unconfigured and unconnected state” as read in
light of the Specification. See, e.g. Spec. ®jj 39 (describing an “on-board USB
port 170 that allows a user to simply reflash the firmware 112 by inserting a
portable drive 175); Spec, f 40 (describing programming and reconfiguring
the firmware in the controller); Spec. If 47 (describing connection to a
computer), Figs.I, 2. Therefore, we do not sustain the rejection of
independent claim 1 as being indefinite. For the same reasons, we also do
not sustain the indefiniteness rejections of claims 2—12 and 14-21.3
Obviousness Rejections
Issue 2: Did the Examiner err in combining Meuer and Gauger?
Appellants argue “Gauger is non-analogous art.” App. Br. 10.
According to Appellants, “[t]he present claims are directed to a lubrication
system for lubricating bearings. Gauger is directed to a warning system for
reducing collisions between vehicles and things,” and therefore, “Gauger is
not in the same field of endeavor as the claimed invention.” Id.', see Reply
Br. 3. In addition, Appellants argue “Gauger is not in a field of endeavor
that is reasonably related to any problem faced by the inventors of the
present application.” App. Br. 11. Appellants argue “[pjersons attempting
to improve lubrication controllers would have no reason to consider art in
the field of warning systems for reducing vehicle collisions.” Id.
We are not persuaded by Appellants’ arguments. “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
3 We note independent claim 21 does not recite the “unconfigured and
unconnected state” language as recited in independent claim 1.
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of endeavor, regardless of the particular problem addressed by the inventor
and, (2) if the reference is not within the field of the inventor's endeavor,
whether the reference is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). In order for a reference to be “reasonably pertinent” to the problem,
it must “logically . . . have commended itself to an inventor’s attention in
considering his [or her] problem.” In re Icon Health and Fitness, Inc., 496
F.3d 1374, 1379-80 (Fed. Cir. 2007) (citation omitted); see also KSRIni’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“When 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.”).
Appellants’ arguments address the first test, specifically, the field of
endeavor. However, the Examiner relies on the second test, stating “Gauger
was used to teach that it is known at the time the invention was made that a
microprocessor in a control device does contain a firmware, which is
reasonably pertinent to the particular problem with which the Appellant was
concerned.” Ans. 9. Indeed, Appellants discuss in the Specification that
“the real value of the present invention is in the flexibility of the lubrication
controller 110. The flexibility of the lubrication controller 110 lies in the
firmware 112 that can alternatively be selected, and the hardware 114 that
comes standard with the controller.” Spec. ^fl[ 40, 65; see also Spec. 1 5.
Appellants, therefore, do not provide persuasive arguments rebutting the
Examiner’s findings.
Appellants further argue, “even if Gauger were analogous art, it does
not contain any teaching that would lead a person of ordinary skill in the art
to modify Meuer to arrive at the invention of claim 1.” App. Br. 10.
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Appellants state “[a] microprocessing having firmware is disclosed in
Gauger, but the present applicants did not invent firmware and are not
claiming firmware per se . . . [t]he mere fact that firmware exists does not
make it obvious to modify Meuer’s conventional system in a manner that
results in the invention of claim 1Id. at 11. Appellants argue “the
statement ‘to provide instructions and operate the computer system having
the microprocessor’ is essentially meaningless and is not a reason for a
person of ordinary skill in the art to modify Meuer’s lubrication system as
required by KSRId. Appellants contend “Meuer’s microprocessor is
presumably already capable of ‘operating a computer system’ without
modification.” Id.
We are not persuaded. In determining obviousness, “the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
While the Examiner must establish that “there was an apparent reason to
combine the known elements in the fashion claimed,” KSR Int 7 Co. v.
Teleflex, 550 U.S. 398, 418 (2007), the apparent reason to combine
references need not come from the references themselves. See DyStar
Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir.
2006). As Appellants admit, Gauger teaches a microprocessor with
programmable firmware. In this case, the Examiner provides articulated
reasoning with rational underpinnings to combine the references, consistent
with the guidelines in KSR and Appellants’ arguments fails to persuasively
explain any error in that reasoning. Nor have Appellants provided evidence
that combining the teachings in Meuer and Gauger was “uniquely
challenging or difficult for one of ordinary skill in the art,” or that such a
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combination “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1 under 35 U.S.C. § 103(a). For the same reasons, we are not
persuaded the Examiner erred in rejecting claims 5, 8—11, 15—17, 20, and 21,
for which Appellants present substantially the same arguments (see App. Br.
11—12), under 35 U.S.C. § 103(a). Appellants do not separately argue
dependent claims 2-4, 6, 7, 12, 14, 18, and 19 (see App. Br. 12—13), so we
therefore sustain the Examiner’s 35 U.S.C. § 103(a) rejections of those
claims for the same reasons.
Issue 3: Did the Examiner err in finding the combination of Meuer,
Gauger, and Mori teaches or suggests “the first system is different than the
second system,” as recited in dependent claim 22?
The Examiner finds “Mori shows a controller controlling first system
in parallel in fig. 1 and second system in series in fig. 12; this is indicative
that the firmware in the controller of Mori, and as disclosed by Meuer, could
be reprogrammed to accommodate for the differing systems.” Non-Final
Act. 13 ; see Ans. 10.
Appellants argue “Figure 1 of Mori shows Mori’s alleged invention,
while Figure 12 of Mori is ‘. . . a diagram showing the related art (column 7,
line 55).” App. Br. 13. According to Appellants, “[njothing in the record
suggests that the controller in Mori’s disclosed system (Figure 1) can [be]
modified to control prior art lubrication systems (Figure 12) or vice versa.”
Id.
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We are persuaded by Appellants’ arguments that the Examiner has not
sufficiently shown the combination of Meuer, Gauger, and Mori, teaches or
suggests the disputed limitation. Accordingly, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of dependent claim 22.
DECISION
The Examiner’s 35 U.S.C. § 112 rejection of claims 1—12 and 14—21
is reversed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—12 and 14—
21 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claim 22 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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