Ex Parte Sauter et al

Patent Trial and Appeal BoardSep 18, 2018

13768609 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/768,609 02/15/2013 4743 7590 09/20/2018 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 FIRST NAMED INVENTOR Johannes Sauter 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. 30815/44054B 6230 EXAMINER APONTE, MIRA YDA ARLENE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANNES SAUTER and RICHARD BUERK 1 Appeal2017-006169 Application 13/768,609 Technology Center 3700 Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and TA WEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to a self- calibrating handpiece controller, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify the real party in interest as Kaltenback & Voigt GmbH. (Appeal Br. 3.) 1 Appeal2017-006169 Application 13/768,609 STATEMENT OF THE CASE The Specification states: Dental treatment centers have generally relied upon a controlled source of compressed air to drive air motor or turbine powered handpieces to affect treatment. ... More recently, electric drive handpieces including compact electric motors that provide driving torque to the tool have found favor owing to their flexibility in controlling both the speed of operation as well as the torque exerted by the tool. However, most existing dental treatment center installations are configured for pneumatic handpieces and pneumatic control thereof. Generally speaking, replacement of the entire treatment center to support electric drive handpieces is cost prohibitive. (Spec. ,r,r 3--4.) According to the Specification, the invention relates to "a system providing pneumatic control of an electric drive for a handpiece," which "operate[ s] by converting the compressed air previously used to drive the air motor or turbine into an electric control signal for driving an electric motor for operating the handpiece." (Id. ,r 5.) Claims 1-15 are on appeal. Claim 1 is illustrative and reproduced below: 1. A self-calibrating handpiece controller compnsmg: an air pressure sensor configured to measure air pressure from a source of compressed air; and a processor configured to determine a pneumatic- to-electric transfer function for controlling an associated electric handpiece responsive to the air pressure from the source of compressed air, the pneumatic-to-electric transfer function being determined based at least upon a value of the air pressure measured by the air pressure sensor during usage of the associated electric handpiece, the processor being further configured to automatically update the pneumatic-to-electric transfer function based on a measured maximum air pressure from the source of compressed air. 2 Appeal2017-006169 Application 13/768,609 (Appeal Br. A-1 (Claims App.).) The Examiner rejects claims 1, 2, and 5-12 under 35 U.S.C. Â§ I03(a) as being unpatentable over Beck2 and Abuzeid. 3 (Final Act. 2.) The Examiner rejects claims 3 and 4 under 35 U.S.C. Â§ I03(a) as being unpatentable over Beck, Abuzeid, and Beier. 4 (Id. at 6.) The Examiner rejects claims 13-15 under 35 U.S.C. Â§ I03(a) as being unpatentable over Beck, Abuzeid, and Culp. 5 (Id. at 7.) DISCUSSION Issue The same issue is dispositive for all of the rejections on appeal. We therefore discuss them together. The Examiner finds that Beck discloses all of the elements of independent claims 1 and 9, except that Beck does not disclose "that the processor can be configured to automatically update the pneumatic-to-electric transfer function based on measured maximum air pressure from the source of compressed air or when it will self-calibrate." (Final Act. 4.) However, the Examiner finds that Abuzeid teaches an intelligent control system designed to optimize[] the performance of the equipment by using a pressure sensor self- calibration using a [programmable logic controller (PLC)] to take pressure readings from a volume of gas between the internal and external environments, and calibrates the system taking into account the differential in pressure calculated at initial startup and at time interval. 2 Beck, US 8,348,666 B2, issued Jan. 8, 2013 ("Beck"). 3 Abuzeid et al., US 6,473,668 B2, issued Oct. 29, 2002 ("Abuzeid"). 4 Beier et al., US 2004/0209223 Al, published Oct. 21, 2004 ("Beier"). 5 Culp et al., US 5,689,159, issued Nov. 18, 1997 ("Culp"). 3 Appeal2017-006169 Application 13/768,609 (Id. at 5.) The Examiner concludes that it would have been obvious to a skilled artisan to modify Beck's handpiece controller to incorporate Abuzeid's self-calibrating system, "in order to simplify operation of the control system and to reduce the startup times as compared to conventional monitoring and control systems." (Id.) Appellants contend that the cited prior art fails to suggest all of the elements of the claims. (Appeal Br. 8, 11.) The issue with respect to these rejections is whether a preponderance of evidence supports the Examiner's conclusion that independent claims 1 and 9 are obvious over the combination of Beck and Abuzeid. Analysis We agree with Appellants that the Examiner has not established a prima facie case that independent claims 1 and 9 would be obvious over the combination of Beck and Abuzeid. In particular, we find that the Examiner has not adequately set forth a reason explaining why a skilled artisan would have, with a reasonable expectation of success, incorporated Abuzeid's calibration system in Beck's system relating to dental handpieces. As discussed above, the Examiner concludes that it would be obvious to a skilled person to incorporate Abuzeid's self-calibrating system into Beck's handpiece controller. (Final Act. 5.) We find, however, that the Examiner has not sufficiently articulated a reason why a skilled artisan would have combined the disclosures from Beck and Abuzeid or had a reasonable expectation of success in doing so, given that Beck and Abuzeid relate to the very different technical fields of, respectively, dental handpieces and "minienvironments in which semiconductor wafers may be processed." (Beck 1 :6-10; Abuzeid 1 :8-9.) While the Examiner states in conclusory fashion that such combination would be obvious "in order to simplify 4 Appeal2017-006169 Application 13/768,609 operation of the control system and to reduce the startup times as compared to conventional monitoring and control systems" (Final Act. 5), "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we reverse the rejection of claims 1 and 9 as obvious over Beck and Abuzeid. We also reverse the rejections of claims 2-8 and 10-15, which all depend from claim 1 or claim 9, for the same reasons. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious."). SUMMARY For the reasons above, we reverse the Examiner's decision rejecting claims 1-15. REVERSED 5