Ex Parte LUDWIG

Patent Trials and Appeals BoardMar 26, 2019

12899551 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/899,551 10/07/2010 Lester F. LUDWIG 110564 7590 03/28/2019 PCHS/NRI 525 B Street Suite 2200 San Diego, CA 92101 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. 120109-018UT1 6028 EXAMINER HICKS, ANGELISA ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): docketing@procopio.com miku.mehta@procopio.com lester.ludwig@sbcglobal.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LESTER F. LUDWIG Appeal2018-004420 Application 12/899,551 1 Technology Center 3700 Before STEFAN STAICOVICI, EDWARD A. BROWN, and BRANDON J. WARNER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lester F. Ludwig (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action (dated Feb. 3, 2017, hereinafter "Final Act.") rejecting claims 1, 3, and 7-20. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 Lester Ludwig, NRI R&D PATENT LICENSING, LLC, and PBLM ADVT LLC are the real parties in interest as indicated in Appellant's Appeal Brief (filed Dec. 1, 2017, hereinafter "Appeal Br."). Appeal Br. 2. 2 Claims 2 and 4 are withdrawn and claims 5 and 6 are canceled. See Appeal Br. 39 (Claims App.). Appeal2018-004420 Application 12/899,551 We AFFIRM. SUMMARY OF DECISION INVENTION Appellant's invention "relates to rotary valves." Spec. para. 2. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed invention and reads as follows (with editing for clarification): 1. A substitute rotating member system for extending the adjustment range and flow control precision of the flow of materials in . . . an existing rotary stopcock valve, the system compnsmg: a rotating member disposed in and in contact with an internal surface of a hollow valve body comprising at least one input port and one output port; the rotating member comprising two elongated openings located on the outer surface of the rotating member and having their longer dimensions aligned on a circumference of the rotating member and positioned so that they are diagonally opposite of each other on the circumference; a passageway through the rotating member connecting the two elongated openings thereby permitting a flow through the rotating member; and a stepper motor comprising a rotational drive shaft, the rotational drive shaft rotationally coupled to the rotational input of a planetary gearing arrangement, and the rotating member rotationally coupled to the rotational output of the planetary gearing arrangement arranged so as to be centered with respect to the rotational drive shaft, the stepper motor further configured to: control flow precision of flow of materials through the passageway comprised by the rotating member, wherein the an angular position of the rotating member is adjusted by the stepper motor to position the two elongated openings of the rotating member within a first 2 Appeal2018-004420 Application 12/899,551 range of angular positions overlapping, at least in part, the two ports, and within a second range of angular positions such that the two elongated opening do not overlap the two ports, control the planetary gearing arrangement to coaxially align the planetary gearing arrangement with the rotating member, and wherein in response to the rotating member positioned within the first range of angular positions, materials can flow between the input port and the output port,and in response to the rotating member positioned within the second range of angular positions, the materials are prevented from flowing between the ports. REJECTIONS I. The Examiner rejects claims 1, 3, and 7-20 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. 3 II. The Examiner rejects claims 1, 3, and 7-20 under 35 U.S.C. Â§ I03(a) as being unpatentable over Ludwig (US 2008/0069739 Al, pub. Mar. 20, 2008), Whang (US 2003/0205685 Al, pub. Nov. 6, 2003), and Hoffmann (US 6,255,751 Bl, iss. July 3, 2001). III. The Examiner rejects claims 1, 3, 8, 10-12, 14--16, 18, and 20 under 35 U.S.C. Â§ I03(a) as being unpatentable over Gardos (US 6,050,450, iss. Apr. 18, 2000), Levitt (US 2,206,816, iss. July 2, 1940), and Palmero (US 2004/0095037 Al, pub. May 20, 2004). 3 As claim 2 has been withdrawn, we view the Examiner's inclusion of claim 2 in the heading of this rejection as a typographical error. See Final Act. 5. 3 Appeal2018-004420 Application 12/899,551 ANALYSIS Rejection I The Examiner finds that "[t]he word 'substitution' has not been discussed within the Specification." Final Act. 5. Appellant argues that "there is no in haec verba requirement for claim language support in the specification." Appeal Br. 9 (citing MPEP Â§ 2163). Pointing to various portions of the Specification, Appellant contends that "[ c ]laim limitations are sufficiently supported with express, implicit, or inherent disclosure." Id. at 9-10 (citing Spec. paras. 5-11, 70, 89, 90, 157- 160, 180-184). In response, the Examiner takes the position that "the language in the preamble of claims 1 and 11 state [ s] ' [a] substitute rotating member system' which implies the substitution of more than just the elongated passageway," and, thus, "is not sufficiently described in the specification." Examiner Answer (dated Jan. 23, 2018, hereinafter "Ans.") 13. We agree with Appellant that "claimed subject matter need not be described in haec verba in the specification in order for the specification to satisfy the description requirement." In re Smith, 481 F.2d 910,914 (CCPA 1973). The factual inquiry we apply is whether the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Here, the Specification describes converting a conventional laboratory glassware stopcock system by modifying the passageway of the stopcock and/or providing motorized rotation to the stopcock. See Spec. paras. 69, 60, 90, 4 Appeal2018-004420 Application 12/899,551 and 157. Hence, by converting an existing laboratory glassware stopcock system, the system constitutes "[a] substitute rotating[] system," as called for by each of independent claims 1 and 11. For example, with respect to providing motorized rotation to the stopcock, Appellant's Specification explicitly states that such modifications "are designed to work with existing laboratory glassware without modification to that glassware," such that substitution of the rotating member system would accomplish the conversion of the existing system. Spec. para. 157 ( emphasis added). In conclusion, we agree with Appellant that "the Specification ... reasonably convey[ s] to one skilled in the relevant art that disclosed improvements are compatible with existing systems to improve flow control precision." Appeal Br. 9. Accordingly, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 112, first paragraph, of claims 1, 3, and 7-20, as failing to comply with the written description requirement. Re} ection II Appellant presents essentially identical arguments with respect to the rejection of independent claims 1 and 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Ludwig, Whang, and Hoffmann. See Appeal Br. 11-29. As such, the following analysis applies equally to claims 1 and 11 rejected over the combined teachings of Ludwig, Whang, and Hoffmann. The Examiner finds that Ludwig discloses, inter alia, rotating member 3526 disposed within hollow valve body 3520 having input and output ports 3528, 3529, and a stepper motor. Final Act. 6-7 (citing Ludwig, para. 494); see also Ludwig, Figs. 35c, 35d. The Examiner finds that "Ludwig does not 5 Appeal2018-004420 Application 12/899,551 disclose elongated openings or a planetary gear." Final Act. 6. Nonetheless, the Examiner finds that Whang discloses a rotating member 24 having two elongated openings, 38, 52, and 38, 54, located on the outer surface. Id ( citing Whang, Fig. 4). Thus, the Examiner determines that It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the openings of Ludwig['s passageway 3527] with elongated openings [38, 52 and 38, 54] as taught by Whang in order to determine with precision the amount of fluid flow through the opemngs. Id. ( citing Whang, para. 9). The Examiner further finds that Hoffmann discloses a unitary servo motor and planetary gear arrangement. Id. at 7. Thus, the Examiner concludes that It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the actuation means in which includes the large gear of Ludwig with a stepper motor with planetary gears as taught by Hoffmann in order to reduce the size of the motor to accommodate space limitations, while maintaining a high torque. Id (citing Hoffmann, col. 5, 1. 62---col. 6, 1. 13). After providing a background of the invention, reciting the limitations of claims 1 and 11, and referencing applicable case law (see Appeal Br. 11- 17), Appellant argues that Whang does not "disclose[] or suggest[] motorized control of the rotating member within the ranges of angular positions" (id. at 22, 23) and "Hoffman is not directed to precision flow control systems" and does not disclose a stepper motor with a planetary gear arrangement "coaxially aligned" with the rotating member (id. at 18, 19). 6 Appeal2018-004420 Application 12/899,551 Thus, according to Appellant, the combined teachings of Ludwig, Whang, and Hoffmann fail to disclose a stepper motor configured (1) to "control flow precision of flow of materials through the passageway" and (2) to "control the planetary gearing arrangement to coaxially align the planetary gearing arrangement with the rotating member" within a range of angular positions, as called for by claim 1. See id. at 17-20; see also Reply Brief (filed Mar. 23, 2018, hereinafter "Reply Br.") 4--5. We are not persuaded by Appellant's first argument because Appellant cannot show nonobviousness by attacking Ludwig, Whang, and Hoffmann individually when the rejection as articulated by the Examiner is based on a combination of Ludwig, Whang, and Hoffmann. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, Ludwig discloses valve 3520, 3526 having input and output ports 3528, 3529 and including, inter alia, rotating member 3526 with passageway 3527 disposed within hollow valve body 3520. See Ludwig, paras. 494--496, Figs. 35c-f. Ludwig further discloses stepper motor 3530 having rotational shaft 3566 coupled coaxially to stopcock valve handle 3525 to control its rotation angle, and, thus, open and close valve 3520, 3526. See id. As such, Ludwig already discloses (1) a stepper motor configured to control the flow of fluid through valve 3520, 3526 by controlling the rotation angle (angular position) of stopcock valve handle 3525 and (2) rotational shaft 3566 centered and coaxially aligned with stopcock valve handle 3525. Hence, as handle 3525 is an extension of and is symmetric about rotating member 3526 (see id., Fig. 35d), a skilled artisan would readily appreciate that rotational shaft 3566 is likewise centered and coaxially aligned with rotating 7 Appeal2018-004420 Application 12/899,551 member 3526. After all, "a person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). Stated differently, Ludwig's stepper motor 3530 is configured to control fluid flow through passageway 3527 within a range of angular portions and its rotational shaft 3566 is centered and coaxially aligned with rotating member 3526. Accordingly, a person of ordinary skill in the art would have readily recognized that replacing Ludwig's stepper motor 3530 with Hoffmann's unitary stepper motor and planetary gear arrangement 50 would predictably result in a stepper motor configured to control fluid flow through the passageway of Ludwig's valve within a range of angular portions and have Hoffman's planetary gear arrangement 51 centered and coaxially aligned with Ludwig's rotating member 3526. 4 The fact that some judgment and mechanical skill may be required to couple Ludwig's rotating member 3526 to Hoffman's planetary gear arrangement 51 in order to arrive at the recited combination does not necessarily mean that such combination constitutes a nonobvious invention so long as such skill is within the ordinary level in the art. See Graham v. John Deere Co. of Kansas City, 383 US 1, 10-12 (1966) (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). Furthermore, the Examiner's modification to replace Ludwig's stepper motor 3530 with Hoffmann's unitary stepper motor and planetary gear arrangement 50 is an improvement to Ludwig's system to add a 4 We note that Hoffmann's drive shaft 101 is centered and coaxially aligned with motor rotational shaft 117 that is coupled to sun gear 116 of planetary gear arrangement 51. See Hoffmann, Fig. 4. 8 Appeal2018-004420 Application 12/899,551 planetary gear arrangement in the same way as taught by Hoffmann to lead to a predictable result, namely, "to accommodate space limitations, while maintaining a high torque," and the modification is well within the skill of a person having ordinary skill in this art. KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). Appellant does not persuasively show error in the Examiner's findings or reasoning. We also do not agree with Appellant's position that the combined teachings of Ludwig, Whang, and Hoffmann fail to disclose (1) a stepper motor configured to control a planetary gear arrangement and (2) a rotating member within first and second angular positions, as called for by claim 1. See Appeal Br. 20-24; see also Reply Br. 6. According to Appellant, Whang's first set 38, 54 and second set 38, 52 of openings do not constitute "elongated opening[ s] permitting a flow through the rotating member" as Whang discloses "a valve for a hydraulic break system." Appeal Br. 21 (citing Whang, para. 22, Figs. 3A-3C); see also id. at 29; Reply Br. 7. As discussed supra, the combined teachings of Ludwig and Hoffmann disclose a stepper motor configured to control fluid flow through passageway 3527 of Ludwig's valve by controlling the rotation angle of rotating member 3526 within a range of angular positions, and have the planetary gear arrangement 51 of Hoffman's unitary stepper motor and planetary gear arrangement 50 coupled to and coaxially aligned with rotating member 3526. See also Ludwig, paras. 494--496. We, thus, agree with the 9 Appeal2018-004420 Application 12/899,551 Examiner that when further modifying Ludwig's passageway 3527, as modified by Hoffmann, to include Whang's elongated openings, 38, 52 and 38, 54, the unitary stepper motor and planetary gear of Hoffmann rotates Ludwig's rotating member 3526 to adjust its angular position, such that Whang's elongated openings, 38, 52 and 38, 54 "are in the various degrees of being open, 0-100% ... where this 0-100% is the range." Ans. 15-16. We further agree with the Examiner that, because Whang's grooves 52, 54 "are openings within the surface of an element," Whang's "opening 38 in addition to elements 52 and 54" constitute the claimed "elongated openings." Id. at 17. Furthermore, we appreciate Appellant's concern that "Whang is not directed to precision flow control systems ... in a laboratory automation system." Appeal Br. 23. However, "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Here, the Examiner's further modification of Ludwig's passageway 3527, as modified by Hoffmann, with Whang's elongated openings, 38, 52, and 38, 54 is an improvement to the system of Ludwig and Hoffman to provide Whang's "elongated openings" in the same way as taught by Whang to yield a predictable result, namely, "to determine with precision the amount of fluid flow through the openings," 10 Appeal2018-004420 Application 12/899,551 and the modification is well within the skill of a person having ordinary skill in this art. KSR, 550 U.S. at 417. Appellant does not persuasively show error in the Examiner's findings and reasoning to combine the teachings of Ludwig, Whang, and Hoffmann. Appellant also argues that the Examiner "fails to provide support for the conclusion that the stepper motor in Hoffmann, the planetary gears in Hoffmann, and the rotating member in Whang are controllable based on Ludwig to adjust the components within the ranges of angular positions." Appeal Br. 25. Appellant contends that adding Hoffmann's planetary gear arrangement to Ludwig's system, as modified by Whang, changes the control scheme of Ludwig, and, thus, the Examiner's rejection "fails to provide support or concrete evidence for control [limitations] ... as required by ... claim [1 ]." Id. at 26; see also Reply Br. 5---6. We are not persuaded by Appellant's argument because the Examiner's modification to replace Ludwig's stepper motor 3530, as modified by Whang, with Hoffmann's unitary stepper motor and planetary gear arrangement 50 takes into account adding Hoffmann's planetary gear arrangement 51 to Ludwig's system. As discussed supra, Ludwig's stepper motor 3530 is already configured to control fluid flow through passageway 3527 within a range of angular portions and its rotational shaft 3566 is centered and coaxially aligned with rotating member 3526. See Ludwig, paras. 494--496, Figs. 35c-f. As an artisan must be presumed to know something about the art apart from what the references expressly disclose, we agree with the Examiner that "[a] stepper motor, is by definition ... precise" (see Ans. 15). See In re Jacoby, 309 F.2d 513,516 (CCPA 1962). 11 Appeal2018-004420 Application 12/899,551 We appreciate Appellant's concern that not every "stepper motor is universally capable of controlling any imaginable and unimaginable combination of gears with components to provide every theoretical level of precise control." Reply Br. 5. However, because Ludwig discloses using a stepper motor to control fluid flow through passageway 3527 within a range of rotational angles of rotating member 3526, and Hoffmann discloses a unitary stepper motor and planetary gear arrangement, a skilled artisan would know to choose an appropriate stepper motor based on the teachings of Ludwig and Hoffman. We must attribute skill to the hypothetical person described in 35 U.S.C. Â§ 103(a). In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Accordingly, replacing Ludwig's stepper motor 3530 with Hoffmann's unitary stepper motor and planetary gear arrangement 50 would result in a stepper motor configured to precisely control fluid flow through the passageway of Ludwig's valve within a range of angular portions (rotational angles) and have the planetary gear arrangement centered and coaxially aligned with rotating member 3526. Finally, we do not agree with Appellant that the Examiner's reasoning to combine the teachings of Ludwig, Whang, and Hoffmann is based on impermissible hindsight. See Appeal Br. 27-29. The Examiner has provided a reason with rational underpinning to modify the valve of Ludwig, with the elongated openings of Whang and Hoffmann's unitary stepper motor and planetary gear arrangement 50, namely, "to determine with precision the amount of fluid flow through the openings," and "to accommodate space limitations, while maintaining a high torque," respectively. See Final Act. 6-7; Kahn, 441 F.3d at 998 ("[R]ejections on 12 Appeal2018-004420 Application 12/899,551 obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") ( cited with approval in KSR, 550 U.S. at 418). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) claims 1, 3, and 7-20 as unpatentable over Ludwig, Whang, and Hoffmann. Rejection III The Examiner finds that Gardos discloses, inter alia, rotating member 11 and motor 10/17 having a rotational drive shaft, "but does not disclose the rotating member disposed in and in contact with an internal surface of a hollow body" or "the motor as being a stepper motor." Final Act. 11. Nonetheless, the Examiner finds that Levitt discloses rotating member 11, having a passageway 19 between two elongated openings 19a/b, 20a/b located on the outer surface of rotating member 11, and disposed in and in contact with internal surface of hollow body 10 having input and output ports 16/20/21. Id. at 11-12 (citing Levitt, p. 1, col. 1, 1. 42---col. 2, 1. 5, Fig. 2). The Examiner further finds that Palermo discloses stepper motor 10 having rotational shaft 30 coupled to the rotational input of a planetary gearing arrangement. Id. at 12 (citing Palermo, paras. 2, 4, 16, 17, and 28, Fig. 5). Thus, the Examiner determines that It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the rotating member of Gardos with a rotating member, disposed in and in contact with an internal surface of a hollow valve body as taught by Levitt in order to have the capability of changing the flow into and out of the system. 13 Appeal2018-004420 Application 12/899,551 Id. at 12. The Examiner further concludes that it would have been obvious to a skilled artisan "to modify the motor [ 1 OJ of Gardos with a stepper motor as taught by Palermo in order to increase efficiency of the motor and reduce size." Id. at 13. According to the Examiner, the angular position of Levitt's rotating member 11 is adjusted by Palermo's stepper motor 10 to position Levitt's openings 19a/b, 20ab such that they either overlap or do not overlap input/output ports of Gardos (that correspond to Levitt's ports 16/20/21). Id (citing Gardos, Fig. 3); see also Levitt Fig. 2. Thus, the Examiner explains that Palermo's stepper motor 10, which has replaced motor 10 of Gardos (that controls three-way valve 11) is "configured [to] control flow precision ... of flow of materials through the passageway ... [ ofJ the rotating member [ of Levitt, 11]." Final Act. 13, Ans. 16. Appellant argues that the Examiner's reasoning for combining the teachings of Gardos, Levitt, and Palermo is based on impermissible hindsight. See Appeal Br. 34--35. According to Appellant, the Examiner's modification of Gardos to include Levitt's conventional stopcock and Palermo's stepper motor 10 switches fluid control from Gardos' control of plunger 7 to control of Levitt's rotating member 11 using Palermo's motor 10 that has replaced motor 10 of Gardos. Id. at 32. We agree with Appellant that the Examiner fails to articulate an adequate reason, with rational underpinnings, why, in the absence of hindsight gleaned improperly from Appellant's underlying disclosure, a person having ordinary skill in the art would have modified Gardos to include Levitt's stopcock and Palermo's stepper motor 10 to arrive at the subject matter of any of independent claims 1 and 11. See St. Jude Med., 14 Appeal2018-004420 Application 12/899,551 Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (reminding us that "we must guard against 'hindsight bias' and 'ex post reasoning"' in making obviousness determinations ( quoting KSR, 550 U.S. at 421 )). In this case, the reason proffered by the Examiner to modify the teachings of Gardos to include Levitt's stop cock 11, i.e., "to have the capability of changing the flow into and out of the system," appears to already be adequately performed by three-way rotating valve 11 of Gardos as it fills, purges, or dispenses fluid. See Gardos, col. 3, 11. 40-4 7, Fig. 3. Furthermore, with respect to the Examiner's modification of Gardos' motor 10 with Palermo's stepper motor 10, Gardos already precisely controls dispensing fluid by controlling motion of plunger 7 entering syringe barrel 9 via motor 4 and microprocessor 14. See id. col. 3, 11. 21-28. The Examiner has not provided any findings that Gardos recognized a problem with controlling the precision flow of fluid into and out of its dispensing device. Without a sufficient articulated rationale based on rational underpinnings for modifying the reference as proposed, the Examiner's rejection appears to be the result of hindsight reconstruction. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. Â§ 103(a) claims 1, 3, 8, 10-12, 14--16, 18, and 20 as unpatentable over Gardos, Levitt, and Palmero. SUMMARY The Examiner's decision to reject claims 1, 3, and 7-20 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement is reversed. 15 Appeal2018-004420 Application 12/899,551 The Examiner's decision to reject claims 1, 3, and 7-20 under 35 U.S.C. Â§ 103 as unpatentable over Ludwig, Whang, and Hoffmann is affirmed. The Examiner's decision to reject claims 1, 3, 8, 10-12, 14--16, 18, and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Gardos, Levitt, and Palmero is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 16