KILGER, Michael

Patent Trials and Appeals BoardDec 11, 2019

14649617 - (D) (P.T.A.B. Dec. 11, 2019)

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. 14/649,617 06/04/2015 Michael KILGER 063351/462748 5665 826 7590 12/11/2019 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER MUSLEH, MOHAMAD A ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 12/11/2019 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL KILGER Appeal 2019-000608 Application 14/649,617 Technology Center 2800 BEFORE BRADLEY R. GARRIS, LILAN REN, and MICHAEL G. MCMANUS, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 5 and 7. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “AUDI AG, the assignee of the [] patent application.” Appeal Br. 2. Appeal 2019-000608 Application 14/649,617 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus. Claim 1, reproduced below, is illustrative: 1. An actuator configured to convert an electronic signal into mechanical motion with a breakaway function for rectifying a malfunction, wherein an increased electric voltage is provided to the actuator in response to the breakaway function being activated, wherein the actuator comprises a translationally movable piston and a position sensor configured to detect the position of the piston and to generate a sensor signal, wherein the actuator further comprises a control unit configured to evaluate the sensor signal to detect a malfunction and to increase the voltage supplied to the actuator in response to actuation of the breakaway function upon detection of the malfunction. Appeal Br. 13 (Claims Appendix). REFERENCES The prior art references relied upon by the Examiner are: Kurth US 6,321,781 B1 Nov. 27, 2001 Marignetti US 2011/0025235 A1 Feb. 3, 2011 REJECTION The Examiner rejects claims 1, 4, 5, and 7 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Marignetti and Kurth. Final 2–3. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Appeal 2019-000608 Application 14/649,617 3 Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. In rejecting claim 1, the Examiner finds that Marignetti teaches all but the recited “position sensor configured to detect the position of the piston and to generate a sensor signal” for which Kurth is cited. Final Act. 3. Appellant does not dispute Kurth’s teachings (Appeal Br. 11) but argues that Marignetti does not teach or suggest “an actuator configured to convert an electronic signal into mechanical motion with a breakaway function for rectifying a malfunction, where an increased electric voltage is provided to the actuator in response to the breakaway function being activated” because it “does not consider a situation in which the actuator encounters a malfunction (e.g., becomes stuck or jammed), where an increased voltage may help the actuator overcome the malfunction.” Appeal Br. 9. Appellant, however, acknowledges the Examiner’s finding that the Specification describes an apparatus similar to that of Marignetti. More specifically, Appellant acknowledges that Marignetti describes that “the increased amplitude of VM is used to overcome the static friction of the actuator when the actuator begins initial movement from a stopped or static position.” Id. at 10. Appellant also does not respond to or dispute the Examiner’s finding that the Specification similarly describes that “raising the supply voltage of the actuator temporarily results in increasing the force or the torque exerted, Appeal 2019-000608 Application 14/649,617 4 whereby the jamming is slackened. Because of the increased force or the increased torque, the occurring frictional forces which have prevented the actuating adjustment can be overcome in most cases.” Compare Ans. 4 (citing “paragraph 12 of the PGPUB US 2015/0298625 A1” which is the published version of the Specification), with Reply Br. 2–3. Appellant’s argument that the “static friction experienced during a stop/start function in Marignetti cannot be interpreted to be a ‘malfunction’ that is detected as recited in independent Claim 1” (Appeal Br. 10) is unelaborated and does not explain why the recited “malfunction” should exclude the prior art scenario. We are not persuaded by such a conclusory statement. Appellant also argues that the Examiner erred by failing to “provide any indication of how Marignetti might be modified with Kurth in order to arrive at the features of the claims, much less how the ‘malfunction’ of Kurth may correlate or be used to modify Marignetti.” Appeal Br. 11. From the outset, it is long established that “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, the Examiner cites Kurth for the teaching of the recited “position sensor”. Final Act. 3 (finding that Kurth discloses a sensor for the malfunction of an electromagnetically actuated valve and that a skilled artisan would combine the teachings “in order to deal properly with a malfunction and then to work normally”). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant’s argument does not identify reversible error in the Examiner’s findings that a skilled artisan, based on the prior art actuator and prior art Appeal 2019-000608 Application 14/649,617 5 sensor for an actuated valve, would combine the teachings to arrive at the apparatus recited in claim 1. See id. at 417 (“If a person of ordinary skill can implement a predictable variation [of a known work], § 103 likely bars its patentability.”). We have considered the remaining arguments raised by Appellant but because they are not directed to an appealable matter, we decline to consider them. More specifically, we decline to consider Appellant’s arguments that the Final Action improperly includes a new ground of rejection and is incomplete.2 See Appeal Br. 7–8; see also 37 CFR 1.181. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary, Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 7 pre-AIA 35 U.S.C. § 103(a) Marignetti and Kurth 1, 4, 5, 7 Overall Outcome 1, 4, 5, 7 2 We note, however, that the Final Action includes an analysis of all pending claims as well as a “Response to Arguments.” Final Act. 2–4. Appeal 2019-000608 Application 14/649,617 6 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED