Ex Parte Wahler

Patent Trials and Appeals Board

Apr 2, 2019

14974161 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/974,161 12/18/2015
10800 7590 04/02/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Matthias Wahler
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.
2179-0353 1644
EXAMINER
TEKA,ABIY
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
04/02/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS WAHLER
Appeal2018-005030
Application 14/974,161
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1--4 and 6-15 as unpatentable under 35 U.S.C. § 103(a)
over Hiraku (US 2014/0283508 Al, pub. Sept. 25, 2014) and Goto
(US 8,555,918 B2, iss. Oct. 15, 2013). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Robert Bosch GmbH is the Applicant and real party in interest. Appeal
Br. 2.
Appeal2018-005030
Application 14/97 4, 161
THE INVENTION
Appellant's invention relates to a control device for an electro-
hydraulic drive. Spec. 1. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A drive control device for operating an electro-hydraulic
drive which has an electric motor with a variable rotational
speed, a hydraulic pump which is driven by the electric motor, a
hydraulic consumer with a movable element, and a
hydromechanical safety device which is configured to be able
to interrupt a flow of hydraulic fluid between the hydraulic
pump and the hydraulic consumer, comprising:
a controller configured to actuate the electric motor for
operation, and to interrupt the operation of the electric motor,
wherein the hydromechanical safety device includes at least
one directional switch valve configured and arranged to
interrupt the flow of hydraulic fluid between the hydraulic
pump and the hydraulic consumer,
wherein the drive control device is configured to actuate the
hydromechanical safety device in such a way that the flow of
hydraulic fluid between the hydraulic pump and the hydraulic
consumer is interrupted with the drive control device, and
a state monitoring system associated with each of said at
least one directional switch valve and configured to monitor a
state thereof and to provide a signal to the drive control device
indicative of said state.
OPINION
Claim 1
The Examiner finds that Hiraku discloses the invention substantially
as claimed except for a state monitoring system that provides a signal to the
drive control device, for which the Examiner relies on Goto. Final
Action 3--4. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify
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Hiraku with the teachings of Goto to provide the drive controller with a
valve state monitoring system and accompanying signal. Id. According to
the Examiner, a person of ordinary skill in the art would have done this to
achieve more precise actuation of the valve. Id.
Appellant argues that Hiraku does not disclose a "safety" device and
instead, Hiraku discloses that all of its valves control movement of the arm
and boom cylinders. Appeal Br. 7. In response, the Examiner states that
there is no structural or functional distinction between Appellant's claimed
device and Hiraku's valves. Ans. 2. According to the Examiner, both use
hydro-mechanical valves to supply or block fluid flow to and from an
actuator. Id.
The Examiner's position is the better one on this issue. It is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellant's Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Lintner, 458 F.2d 1013,
1016 (CCP A 1972). "A reference may be read for all that it teaches,
including uses beyond its primary purpose." In re Mouttet, 686 F.3d 1322,
1331 (Fed. Cir. 2012) ( citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418--421 (2007)). Here, the fact that Appellant's valves are used in a
"safety" device merely goes to the intended use of the invention. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("It is well settled that the
recitation of a new intended use for an old product does not a make a claim
to that old product patentable").
Next, Appellant and the Examiner engage in a vigorous debate over
whether Hiraku inherently discloses a valve state monitoring system.
Appeal Br. 8. Appellant asserts that the Examiner's rejection lacks a basis in
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Application 14/97 4, 161
fact and/or technical reasoning to support a determination that a valve state
monitoring is necessarily present in the prior art. Id. In response, the
Examiner states that Hiraku's controller inherently monitors the state of the
valves. Ans. 2-3.
We need not decide the inherency issue in order to decide this case.
The Examiner finds that Goto teaches a valve state monitoring system with a
sensor 30 that monitors the state of valve 10 and provides a signal to
controller 40. Final Action 4. This uncontested disclosure is sufficient for
the proposed combination to meet the disputed state monitoring limitation of
claim 1.
Finally, Appellant argues that there is no basis for modifying Hiraku
with Goto. Appeal Br. 11. Essentially, Appellant argues that, because
Hiraku discloses a system that functions satisfactorily, there would have
been no motivation to modify it by including a valve state monitoring
system. Id. at 11-12 ("Hiraku already includes a system for controlling
flow rate that is independent of the valves"). In response, the Examiner
states that adding Goto's sensor 30 provides verification for the controller as
to whether the valves are properly opened or closed. Ans. 6. According to
the Examiner, this provides more precise actuation. Id. at 7 (citing Goto,
col. 1, 11. 65---68). In reply, Appellant attempts to differentiate between a
"state" monitor as in the claimed invention and a position sensor as taught
by Goto. Reply Br. 6. "A person of skill in the art would see a position
sensor for a flow rate control valve and would not see simply a state
monitor." Id.
Appellant's arguments are not persuasive. Just because a prior art
product functions satisfactorily does not mean that a skilled artisan would
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Application 14/97 4, 161
not try to improve it. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) ( explaining that if a technique has been used to improve one device
and a person of ordinary skill in the art would recognize that it would
improve a similar device in the same way, using the technique is obvious
unless its actual application is beyond his or her skill). In that regard, a
reason to modify a prior art reference may be found explicitly or implicitly
in market forces; design incentives; the "interrelated teachings of multiple
patents"; "any need or problem known in the field of endeavor at the time of
invention and addressed by the patent"; and the background knowledge,
creativity, and common sense of the person of ordinary skill. Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009)
(quoting KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-21 (2007)).
"[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR, 550 U.S. at 418. An implicit motivation to combine exists
when the improvement is technology-independent and the combination of
references results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable,
or more efficient. Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id. Obviousness "does not require that the motivation be the best option,
only that it be a suitable option from which the prior art did not teach away."
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Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed.
Cir. 2014). Here, the Examiner finds that the proposed modification
achieves more precise actuation of a valve resulting in improved flow rate
control. Final Action 4. This is sufficient rationale to support the rejection.
In view of the foregoing, we sustain the Examiner's unpatentability
rejection of claim 1.
Claims 2, 3, 6, 7, and 15
These claims depend, directly or indirectly, from claim 1. Claims
App. Appellants do not argue for their separate patentability apart from
arguments presented with respect to claim 1, which we have previously
considered. Appeal Br. 7-13. We sustain the Examiner's rejection of
claims 2, 3, 6, 7, and 15. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to
separately argue claims).
Claim 4
Claim 4 is an independent claim. Claims App. Unlike claim 1,
claim 4 does not require a valve state monitoring system and accompanying
signal. Id. Appellant's traverse of claim 4 focuses on the actuation module
limitation. 2 Appeal Br. 15-16. The Examiner finds that the solenoid of
valves VIA and VIB constitute "actuation modules." Final Action 5.
Appellant argues that the solenoids are an integral part of valves VIA and
VIB which correspond to the claimed hydromechanical safety device3 and,
2 Claim 4 states "wherein the drive control device is configured to actuate at
least one actuation module which is in tum configured to actuate the
hydromechanical safety device " Claims App. claim 4 ( emphasis added).
3 Which is a valve. See Spec. 11, 11. 12-19, Fig. 1 (elements 150, 151).
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therefore, cannot be relied on to satisfy a separate limitation directed to an
"actuation module." Appeal Br. 15-16; Reply Br. 8.
Contrary to the position articulated by Appellant, we are not apprised
as to why it is unreasonable to regard the solenoids in valves VIA and VIB
as actuators and the remaining mechanical structure of such valves as
"hydromechanical safety devices." Therefore we sustain the rejection of
claim 4.
Claims 8 and 9
Claim 8 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Claim 9 depends from claim 1. Id. Appellants do
not argue for the separate patentability of claims 8 and 9. Appeal Br. 7-13.
We sustain the Examiner's rejection of claims 8 and 9. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 10
Claim 10 is an independent method claim that is substantially similar
in scope to claim 1. Claims App. Appellant argues that Hiraku fails to
disclose the sequence of steps recited in claim 10. Appeal Br. 13. In
response, the Examiner states that it is not necessary for Hiraku to explicitly
state the method steps recited in claim 10 if normal operation of Hiraku, as
illustrated in Figure 6 thereof, performs the method steps. Ans. 7; In re
King, 801 F.2d 1324, 1326-7 (Fed. Cir. 1986). The Examiner makes more
detailed findings regarding the method steps as illustrated by Figure 6 of
Hiraku in the Answer. Id. at 7-8. 4 Furthermore, the Examiner states that
4 For purposes of clarification, it understood that the "movable element" of
claim 10 is a piston that moves within a hydraulic cylinder. Fig. 1, Spec. 11,
11. 8-10.
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claim 10 does not require that the method steps be performed in any
particular sequence. Id. at 8. In reply, Appellant argues that claim 10 recites
steps of adjusting speed and interrupting the flow of hydraulic fluid. Reply
Br. 7. Appellant contends that Hiraku does not disclose such as "two
separate steps." Id.
The Examiner is correct in maintaining that, as a general rule, a
method claim is not limited to performance of the steps in the order recited,
unless the claim explicitly or implicitly requires a specific order. See
Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342--43
(Fed. Cir. 2001 ). Otherwise, Appellant's newly asserted "separate steps"
argument (Reply Br. 7), is not persuasive as it is not supported by the
express language of claim 10 or the evidentiary record before us. A person
of ordinary skill in the art would understand that stopping Appellant's
piston 145 ("adjusting the speed of the movable element to zero" - claim 10)
is a result that is accomplished by actions directed by the controller and, as
such, it is interrelated with operation of the electric motor and valves. The
method steps performed by Hiraku are no more or less "separate" than those
of the claimed invention.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of
claim 10.
Claim 11
Claim 11 depends from claim 10 and adds the limitation: "detecting
or monitoring the speed of the movable element with operating variables of
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the electric motor and/or of the movable element." Claims App. Appellant
argues that Hiraku does not disclose monitoring the speed of the movable
element. Appeal Br. 14.
In response, the Examiner states that claim 11 only requires detecting
or monitoring the speed of the movable element "with operating variables of
the movable element." Ans. 8. The Examiner directs our attention to
paragraph 44 of Hiraku as disclosing the controller monitoring cylinder
pressure via pressure sensors 17a and 17b. Id. The Examiner notes that the
literal claim language does not require a speed sensor for the movable
element. Id. at 9.
We find the Examiner's position on this issue persuasive and sustain
the rejection of claim 11.
Claims 12 and 13
Claim 12 depends from claim 10 and adds the limitations:
• in a first step adjusting the speed of the movable element to zero;
• in a second step interrupting the operation of the electric motor; and
• in a third step interrupting the flow of hydraulic fluid between the
hydraulic pump and the hydraulic consumer with the
hydromechanical safety device.
Claims App. Claim 13 depends from claim 12. Id. Appellant argues these
claims together. Appeal Br. 14--15. We select claim 12 as representative.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant argues that Hiraku foes not disclose the sequence of the
method steps. Appeal Br. 14--15.
In response, the Examiner states that Hiraku, during normal operation:
[I]n a first step adjust[s] the speed of the movable element (7a2)
to zero (when the operator of the excavator Hiraku wants the
moveable element (7a2) at a standstill as directed by levers
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( 1 Oa, 1 Ob)); in a second step interrupting the operation of the
electric motor (12a) (Fig 6, when the controller decides to stop
supply of fluid to the moveable element (7 a2) as directed via
levers ( 1 Oa, 1 Ob), and in a third step of interrupting the flow of
hydraulic fluid between the hydraulic pump (2a) and the
hydraulic consumer (7al) with the hydro-mechanical safety
device (VIA, VIB) (when the operator of the device decides to
stop operation, the valves VIA, VIB are closed).
Ans. 9--10.
In reply, Appellant characterizes the Examiner's Answer as nothing
more than a "possible scenario." Reply Br. 7. "Obviousness should not
hinge on the hindsight determination of how Hiraku could be operated to
meet the sequence of steps recited in claim 12." Id. at 8.
Appellant's arguments are not persuasive. It is well settled that a
prior art device can be used to support the rejection of method claims that
simply define what happens when the device is used in its normal and usual
operation. King, 801 F.2d at 1326. The Examiner's findings of fact are
based on the Examiner's understanding and interpretation of the normal
operation of Hiraku, not merely some speculative "possible scenario." As
persons of scientific competence in the fields in which they work, examiners
are responsible for making findings, informed by their scientific knowledge,
as to the meaning of prior art references to persons of ordinary skill in the art
and the motivation those references would provide to such persons. Absent
legal error or contrary factual evidence, those findings can establish a prima
facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).
The Examiner's findings are sufficient to shift the burden to Appellant to
come forward with evidence or argument supporting patentability. See In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (explaining that when a
prima facie case of obviousness is made, the burden shifts to the applicant to
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come forward with evidence and/or argument supporting patentability).
Here, Appellant's naked and unsupported contentions are not sufficient to
rebut the Examiner's position.
We sustain the Examiner's rejection of claim 12 and 13.
Claim 14
Claim 14 depends from claim 12 and, like claim 13, is not separately
argued. Claims App. Final Action 13-15. Claim 14 falls with claim 12 and
its rejection is hereby sustained.
DECISION
The decision of the Examiner to reject claims 1--4 and 6-15 affirmed.
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
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