Ex Parte Perry et al

Patent Trial and Appeal BoardJun 23, 2017

12067368 (P.T.A.B. Jun. 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. 12/067,368 09/17/2008 Kevin Philippe Daniel Perry FRYHP0161US 1209 23908 7590 06/27/2017 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER NGUYEN, HUNG D ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 06/27/2017 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): ipdocket @ rennerotto. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN PHILIPPE DANIEL PERRY and THEUNIS JOHANNES VERMEULEN Appeal 2015-000234 Application 12/067,3 681 Technology Center 3700 Before MICHAEL L. HOELTER, JASON W. MELVIN, and BRENT M. DOUGAL, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from the Examiner’s Final Rejection of claims 1—4, 6—16, and 18—22. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Advanced Mineral Recovery Technologies LTD. as the real party in interest. Appeal Br. 2. Appeal 2015-000234 Application 12/067,368 BACKGROUND The claims are directed to a control system for an arc furnace. Claim 1, reproduced below, is illustrative: 1. A control system for controlling a vertical position of at least one electrode of an arc furnace, where the arc furnace comprises a furnace transformer having a primary, input side and a secondary, output side which is electrically connected to the at least one electrode, the control system comprising: at least one current-measuring device for measuring a current as drawn by the arc furnace; a voltage-measuring device for measuring a voltage as applied across the arc furnace; and a control unit for dynamically determining a setpoint for the vertical position of the at least one electrode based on the measured values of current and voltage, and providing an actuating output for driving a lifting arrangement to adjust the vertical position of the at least one electrode so as to follow the dynamically-determined setpoint, wherein the control unit comprises a processor for running a control algorithm for dynamically determining a rate factor r, where r = x2/k, with x being a deviation in a setpoint value and k being a constant, and providing the actuating output based on the dynamically-determined rate factor r. 2 Appeal 2015-000234 Application 12/067,368 REJECTIONS Appellants seek review of the final rejection of claims 1—4, 6—16, and 18—22 under 35 U.S.C. § 103(a) as unpatentable over Staib (U.S. Pat. No. 5,406,581, iss. Apr. 11, 1995). DISCUSSION The Examiner finds that Staib substantially discloses the structure of claim 1, but “does not disclose a rate factor, where r=x2/k, with x being a deviation in a setpoint value and k being a system-dependent constant, providing the actuating output based on the dynamically-determined rate factor r.” Final Act. 3. The Examiner concludes that the missing element “would have been obvious to one of ordinary skill in the art at the time of the invention ... for the purpose of accurately control [ling] the position of the electrode since the particular parameters are recognized as result- effective variable[s], i.e. variable[s] which achieve the recognized result of rate factor r=x2/k, with x being a deviation in a setpoint value and k being a system-dependent constant, are known to be varied to achieve optimization through routine experimentation.” Id. (citing In re Antonie, 559 F.2d 618 (CCPA 1977)). Appellants recognize that the Examiner appears to rely on the concepts in MPEP § 2144.05(11) regarding the obviousness of ranges, and argue that “this section is inapplicable here as these claims do not involve a range, optimal or otherwise.” Appeal Br. 9. We agree with Appellants. The rejection asserts that the element beyond Staib’s teaching— controlling the actuator with the rate factor depending on setpoint deviation squared, divided by a system constant—would have been obvious as a 3 Appeal 2015-000234 Application 12/067,368 matter of optimization. Final Act. 3; Ans. 4—5. But the case law the Examiner relies upon relates to optimizing a value, not determining a relationship. See Antonie, 559 F.2d at 620 (“[T]he discovery of an optimum value of a variable in a known process is normally obvious”). And the limits of that doctrine show why it could not apply here: a rejection based on optimization of a variable must include a showing that the parameter optimized is a result-effective variable. Id. That limit makes logical sense because otherwise the scope for “optimization” would be unworkably large. The Examiner’s rejection here would expand the doctrine to encompass searching for a relationship, not searching for the value of a result-effective variable. Stated otherwise, merely recognizing that control strategy is an important consideration does not render obvious all control strategies. Accordingly, we do not sustain the rejection of claim 1, of claims 2—4, or 6—12, which depend (directly or indirectly) from claim 1, of independent claim 13, which contains the same limitation, or of claims 14—16 or 18—22, which depend (directly or indirectly) from claim 13. DECISION For the above reasons, the Examiner’s rejection of claims 1—4, 6—16, and 18—22 is reversed. REVERSED 4