BELIMO HOLDING AG

Patent Trials and Appeals Board

Dec 22, 2021

2021001139 (P.T.A.B. Dec. 22, 2021)

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.
15/749,550 02/01/2018 Marc THUILLARD Q237934 2680
23373 7590 12/22/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
CARRASQUILLO, JORGE L
ART UNIT PAPER NUMBER
2846
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC THUILLARD, STEFAN MISCHLER, and
FRANK LEHNERT
Appeal 2021-001139
Application 15/749,550
Technology Center 2800
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and JENNIFER R.
GUPTA, Administrative Patent Judges.
SMITH, 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 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 BELIMO
HOLDING AG. (Appeal Br. 3.)
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Application 15/749,550

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CLAIMED SUBJECT MATTER
The claims are related to an actuator and a method of operating the
actuator wherein the actuator comprises an electric motor for moving an
actuated part to an actuated position, and a controller connected to the
electric motor and configured to detect motor rotations. (Spec. 1.). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An actuator (1) comprising
an electric motor for moving an actuated part (2) to an actuated
position, and
a controller (10) connected to the electric motor (11) and
configured to detect motor rotations,
wherein the controller (10) is further configured to
determine the actuated position by counting the motor rotations
detected while the motor (11) is operating at or above a
threshold indicative of a load torque, and by not counting motor
rotations detected while the motor (11) is operating below said
threshold.
(Appeal Br. 24, Claims App.)
REJECTIONS
I. Claims 1, 9, 12, and 202 are rejected under 35 U.S.C. § 102 (a)(1)
as anticipated by Sasaki (US 2017/0015348 A1, published Jan. 19, 2017).
II. Claims 2, 10, 11, 13, 21, and 223 are rejected under 35 U.S.C.
§ 103 as obvious over the combination of Sasaki and Watanabe (US
5,059,879, issued Oct. 22, 1991).

2 The statement of the rejection does not list claims 9 and 20, however the
body of the rejection addresses these claims. (Final Act. 3.) We consider the
omission of claims 9 and 20 from the statement of the rejection to be
harmless error.
3 The statement of the rejection does not list claims 10, 11, 21, and 22,
however the body of the rejection addresses these claims. Final Act. 4. We
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III. Claims 3–7 and 14–184 are rejected under 35 U.S.C. § 103 as
obvious over the combination of Sasaki, Watanabe, and Masaki (US
2012/0050675 A1, published Mar. 1, 2012).
IV. Claims 8 and 19 are rejected under 35 U.S.C. § 103 as obvious
over the combination of Sasaki and Eliuk (US 2006/0259195 A1, Nov. 16,
2006).

OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief and Reply Brief and the Examiner provides in the Final Office
Action and the Answer, we reverse the Examiner’s anticipation rejection of
claims 1, 9, 12, and 20 under 35 U.S.C. § 102 (a)(1) and the obviousness
rejections of claims 2–8, 10, 11, 13–19, 21, and 22 under 35 U.S.C. § 103
for essentially the reasons Appellant presents. We add the following for
emphasis.
The dispositive issue on appeal is:
Did the Examiner reversibly err in determining that Sasaki describes
an actuator in which a controller determines an actuated position of an
actuated part by counting motor rotations while the motor is operating at or
above a threshold indicative of a load torque, and by not counting the motor
rotations while the motor is operating below the threshold as required by

consider the omission of claims 10, 11, 21, and 22 from the statement of the
rejection to be harmless error.
4 The statement of the rejection does not list claims 5–7 and 16–18, however
the body of the rejection addresses these claims. Final Act. 3. We consider
the omission of claims 5–7 and 16–18 from the statement of the rejection to
be harmless error.
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independent claim 1?
After review of the respective positions provided by Appellant and the
Examiner, we answer these questions in the affirmative. We limit our
discussion to Rejection I and independent claim 1 with the understanding
that our analysis also applies to independent claim 12.5
The Examiner finds that Sasaki teaches an actuator in which a
controller determines an actuated position of an actuated part based on motor
rotations. The Examiner specifically states:
SASAKI shows an actuator (i.e. Fig. 1) comprising an electric
motor (3) for moving an actuated part (i.e. power steering) to an
actuated position (i.e. position θ), and a controller (6) connected
to the electric motor (3) and configured to detect motor
rotations (by means of 35), wherein the controller (103) is
further configured to determine the actuated position by
counting the motor rotations detected while the motor (3) is
operating at or above a threshold indicative of a load torque (i.e.
by means of torque sensor 5 which is a resolver), and by not
counting motor rotations detected while the motor is operating
below said threshold (i.e. pars. [0051], [0139], [0148], and
Figures 5, 7-13, wherein an increment of abnormality counter is
performed by means of a change in the number of rotation of a
predetermined value or larger, and is hold or not. For example,
the system makes time count for lapse of the predetermined
time period and, upon judging that the condition of detection of
the abnormality is resolved before the lapse of the
predetermined time period, resets the time count, or restart the
time count).
(Final Act 2–3.)

5 The additional prior art references in Rejections II–IV were cited only to
address limitations of the rejected dependent claims 2–8, 10, 11, 13–19, 21,
and 22 .

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Appellant argues the Examiner has not identified teachings in Sasaki
that describes a controller configured to determine the actuated position by
counting motor rotations detected while the motor is operating at or above a
threshold indicative of a load torque, and not by counting motor rotations
detected while the motor is operating below a threshold as required by the
claimed invention. (Appeal Br. 7–12.)
Appellant has identified reversible error in the Examiner’s finding of
anticipation. The Examiner has not identified teachings in Sasaki that
described the determination of the actuated position of a part utilizing motor
rotations occurring within specific threshold requirements as required by
independent claim 1. The Examiner has not directed us to evidence that the
step S3a, Retrieve Motor Position Detection Signal, is determined based
upon motor rotation. (Sasaki ¶¶ 33, 43, Fig 5.)
The Examiner further explains that Sasaki anticipates the claimed
subject matter because, utilizing the broadest reasonable interpretation
concept, the claims do not specify a counting element. (Ans. 4–5.) The
Examiner specifically states:
[G]iving the broadest reasonable interpretation in
commensurate with the disclosure, the limitation involving a
counting action of the rotations does not preclude the examiner
or the person skilled in then art to interpret the phrase
“counting” as when to execute a rotation detection and when to
not execute said rotation detection. In other words, apparatus
claim 1, or method claim 12, neither explicitly claims a
counting element such as a counter, a clock or a timer, but
rather the broad meaning of using the load feedback (torque or
current) to determine when the motor rotation will be counted
or not.
(Ans. 4.)

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The added reasoning presented by the Examiner does not address the
claim language presented. Contrary to the Examiner’s position, the claim
explicitly requires a controller performs counting of motor rotations when
the motor is operating above a threshold indicating a load torque, and does
not count the motor rotations when the motor is operating below the
threshold.
For the foregoing reasons and those Appellant presents, we do not
sustain the Examiner’s anticipation rejection of claim 1, 9, 12, and 20. We
likewise reverse the obviousness rejections of claims 2–8, 10, 11, and 13–19,
21, and 22. The Examiner relies upon additional references in combination
with Sasaki to reject these dependent claims. However, the Examiner does
not rely upon the additionally cited references to address the limitations of
independent claims 1 and 12 as we discuss above.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 9, 12, 20 102(a)(1) Sasaki 1, 9, 12, 20
2, 10, 11,
13, 21, 22
103 Sasaki, Watanabe 2, 10, 11,
13, 21, 22
3–7, 14–18 103 Sasaki, Watanabe,
Masaki
3–7, 14–18
8, 19 103 Sasaki, Eliuk 8, 19
Overall
Outcome
1–22
REVERSED