Ex Parte Kikaganeshwala et al

Patent Trial and Appeal BoardMar 16, 2018

12511367 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/511,367 0712912009 28524 7590 03/20/2018 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Yagnesh Kikaganeshwala 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008Pl4377 USOl 3646 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 03/20/2018 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): ipdadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte Y AGNESH KIKAGANESHW ALA and WILLIAM FINLEY Appeal2017-006026 Application 12/511,3671 Technology Center 3700 Before: BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and PAUL J. KORNICZKY, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Siemens Industry, Inc., as the real party in interest. App. Br. 1. Appeal2017-006026 Application 12/511,367 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 11, 12, 14, 15, 18, 19, 23, and 24. Claims 1-10 have been withdrawn, and claims 13, 16, 17, and 20-22 have been canceled. App. Br. 4. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE and enter A NEW GROUND OF REJECTION under 37 C.F.R. Â§ 41.50(b). THE INVENTION The claims are directed to an apparatus for correcting slow roll in a rotatable shaft by heating and quenching. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. An apparatus for correcting slow roll in a rotatable shaft, comprising: a lathe for rotatably supporting the shaft compnsmg a sensmg area; a heating element for heating the sensing area of the shaft to a predetermined temperature to change electrical properties of the sensing area of the shaft, the sensing area of the shaft being maintained at the predetermined temperature for a predetermined amount of time, and the shaft being rotated on the lathe while the sensing area of the shaft is being heated; a first cooling line for providing liquid coolant to non-sensing areas adjacent the sensing area of the shaft, wherein the first cooling line provides liquid coolant to the non-sensing areas while the heating element is heating the sensing area such that only the sensing area is heated by the heating element; and a second cooling line for providing liquid coolant to the sensing area of the shaft such that the sensing area of the shaft is quenched with the coolant 2 Appeal2017-006026 Application 12/511,367 immediately after the sensing area of the shaft is maintained at the predetermined temperature for the predetermined amount of time, wherein the liquid coolant is directly applied to the sensing area of the shaft, and wherein the shaft continues to rotate on the lathe while the sensing area of the shaft is being quenched with the liquid coolant. Lenk Baumgartinger DeBlock Mistry REFERENCES us 4,304,975 us 4,629,867 US 6,741,074 B2 US 2006/0288788 Al Dec. 8, 1981 Dec. 16, 1986 May 25, 2004 Dec. 28, 2006 REJECTIONS Claims 11, 14, 15, 18, 19, and 24 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Mistry, Lenk, and Baumgartinger. Final Act. 2-5. Claims 12 and 23 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Mistry, Lenk, Baumgartinger, and DeBlock. Id. at 5-6. ANALYSIS NEW GROUND OF REJECTION UNDER 37 C.F.R. Â§ 41.50(b) 35 U.S. c. Â§ 102(b) We enter a new ground of rejection for claims 11, 14, 15, 18, 19, and 24 under 35 U.S.C. Â§ 102(b) as anticipated by Mistry. Claim 11 Mistry teaches an apparatus for correcting slow roll in a rotatable shaft (Mistry ,-i 11) comprising: ( 1) a lathe for rotatably supporting the shaft (id. at Fig. 2 (shaft holding device 2100), ,-i 171); (2) the shaft comprising a sensing area (id. ,-i,-i 11, 176); (3) a heating element for heating the sensing area to a predetermined temperature (id. at Fig. 2 (heating element 2350, 3 Appeal2017-006026 Application 12/511,367 energy source 2300, regulator 2650), iii! 177 and 180-182); (4) the shaft rotating during heat treatment (id. iii! 171-173); (5) a first cooling line for providing liquid coolant to non-sensing areas adjacent the sensing area of the shaft, wherein the first cooling line provides liquid coolant to the non- sensing areas while the heating element is heating the sensing area such that only the sensing area is heated by the heating element (id. at Fig. 2 (either collar 2425 or collar 2450 and its associated supply line), iJ 183); and ( 6) a second cooling line (Fig. 2 (either collar 2425 or collar 2450 and its associated supply line), iJ 183). Appellants argue that "nowhere does Mistry teach or suggest that his collars 2425 and 24[50] ... provide liquid coolant to a sens[ing] area on the shaft (2200) that is heated via his heating element (2350) to a predetermined temperature for a predetermined amount of time." App. Br. 6. However, the requirement to provide coolant to the sensing area is a functional limitation, and it is not necessary for a prior-art reference to expressly disclose a functional limitation in an apparatus claim if the function is an inherent characteristic of the prior art. As our reviewing court has stated: [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the [Appellant] to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting Jn re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Further, a functional limitation is an inherent characteristic of a prior-art structure if the structure is capable of performing the function (e.g., because of similarity in structure 4 Appeal2017-006026 Application 12/511,367 or shape). See id. at 1479 (upholding the Board's anticipation ruling based on the Board's finding that "the scaled-up version [of the oil-can top] of figure 5 of Harz would be capable of performing all of the functions recited in Schreiber' s claim l "). Here, either collar 2425 or 2450 is capable of cooling the shaft sensing area after it has been heated. Specifically, the collars "can be releasably attached" to the shaft (Mistry ,-i 183), and, as the Examiner states, "can be releasably attached to shaft 2200 at any point." Ans. 8; see also Mistry ,-i 183 (stating that, in certain embodiments, collars 2425, 2450 can be single piece collars adapted to "slidably mount on shaft 2200"). Thus, either collar can be moved to the sensing area to quench the sensing area after it has been heat treated. Appellants do not provide any evidence to the contrary. Schreiber, 128 F.3d at 1478. "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." Id. at 1477. Because Mistry discloses every limitation of claim 11, either explicitly or inherently, we reject claim 11under35 U.S.C. Â§ 102(b) as anticipated by Mistry. Claims 14 and 15 Claims 14 and 15 depend from claim 11. App. Br. 9 (Claims App.). We adopt the Examiner's findings that Mistry teaches the additional limitations of these claims. Final Act. 4-5 (citing Mistry ,-i,-il86-188, 207, and Fig. 3). Accordingly, we find that Mistry anticipates claims 14 and 15. Claim 18 Independent claim 18 is similar to claim 11 except that it does not recite a second cooling line; instead, it recites a first cooling line that is 5 Appeal2017-006026 Application 12/511,367 adapted to quench the sensing area of the shaft after heating and further adapted to cool non-sensing areas while the sensing area is heated. App. Br. 10 (Claims App.). For the reasons set forth above, collars 2425 and/or 2450 correspond to the claimed first cooling line. Therefore, we find that Mistry anticipates claim 18. Claims 19 and 24 Claims 19 and 24 depend from claim 18. App. Br. 10 (Claims App.). We adopt the Examiner's findings that Mistry teaches the additional limitations of these claims. Final Act. 5 (citing Mistry ,-i,-i 180, 183). Accordingly, we find that Mistry anticipates claims 19 and 24. ORIGINAL REJECTIONS UNDER 35 U.S.C. Â§ 103(a) The Examiner rejects claims 11, 14, 15, 18, 19, and 24 under 35 U.S.C. Â§ 103(a) as unpatentable over Mistry, Lenk, and Baumgartinger; and rejects claims 12 and 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Mistry, Lenk, Baumgartinger, and DeBlock. Final Act. 3-6. In doing so, the Examiner asserts, inter alia, that Mistry fails to teach "a means for quenching the sensing area of the shaft with coolant immediately after said predetermined amount of time," and "a first cooling line and a second cooling line."2 Id. at 3--4. The Examiner therefore relies on Lenk and Baumgartinger to teach these limitations, and asserts that one of ordinary skill in the art would have had a reason to combine Mistry with Lenk and Baumgartinger. Id. 2 Neither claim 11 nor claim 18 recites a "means" for quenching the sensing area of "the shaft with coolant immediately after said predetermined amount of time." Rather, claim 11 requires the "second cooling line" to perform this function, and claim 18 requires the "first cooling line" to do so. App. Br. 9- 10 (Claims App.). 6 Appeal2017-006026 Application 12/511,367 In response, Appellants contend that Lenk and Baumgartinger are not analogous art, and that one of ordinary skill in the art would not have had a reason to combine Mistry with Lenk or Baumgartinger. App. Br. 6. Notably, the Examiner does not respond to these contentions. Instead, the Examiner asserts that Mistry teaches an apparatus that has all of the claimed structural limitations and that is "capable" of performing the "function" of providing coolant to the shaft sensing area after it has been heated. Ans. 8. While we agree with these assertions (which form the basis of the new anticipation rejection discussed above), we note that they are inconsistent with the premise underlying the Examiner's rejections: that Mistry does not teach all of the claimed structural limitations. Nevertheless, we agree with Appellants that the Examiner has not established an adequate reason to combine Mistry with Lenk or Baumgartinger. Simply put, because Mistry already discloses collars that provide localized cooling to the shaft, the Examiner does not adequately explain why one of ordinary skill in the art would have seen any benefit in modifying the collars in accordance with Lenk and Baumgartinger. For this reason, we do not sustain the Examiner's rejections of claims 11, 14, 15, 18, 19, and 24 as unpatentable over Mistry, Lenk, and Baumgartinger, and claims 12 and 23 as unpatentable over Mistry, Lenk, Baumgartinger, and DeBlock. 3 DECISION For the above reasons, we reverse the Examiner's rejections of claims 11, 12, 14, 15, 19, 23, and 24 under 35 U.S.C. Â§ 103(a), and enter a new 3 The Examiner may wish to consider whether a rejection of claims 12 and 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Mistry and DeBlock is appropriate. 7 Appeal2017-006026 Application 12/511,367 ground of rejection for claims 11, 14, 15, 18, 19, and 24 under 35 U.S.C. Â§ 102(b). FINALITY OF DECISION This decision contains a new ground of rejection under 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, "must exercise one of the following two options with respect to the new grounds 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 .... (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record." No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a). See 37 C.F.R. Â§ l.136(a)(l )(iv). REVERSED 37 C.F.R. Â§ 41.50(b) 8