DANFOSS POWER SOLUTIONS APS

Patent Trials and Appeals Board

Apr 9, 2021

2020005893 (P.T.A.B. Apr. 9, 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.
14/785,956 10/21/2015 Frede CALLESEN 6495-0712WOUS 9648
35301 7590 04/09/2021
McCormick, Paulding & Huber, PLLC
CityPlace II
185 Asylum Street
Hartford, CT 06103
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/09/2021 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):
cunningham@ip-lawyers.com
patentdocket@ip-lawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDE CALLESEN and DIRK WROBLEWSKI

Appeal 2020-005893
Application 14/785,956
Technology Center 3700
Before EDWARD A. BROWN, BRETT C. MARTIN, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, 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 9–11 and 21–31. See Appeal Br. 1.2
We have jurisdiction under 35 U.S.C. § 6(b).

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 Danfoss Power
Solutions ApS. Appeal Br. 2.
2 The Examiner’s rejection of claims 26, 27, and 32 under 35 U.S.C.
§ 112(b) for being indefinite (Final Act. 3) was withdrawn in the Answer
(Ans. 3). As a result, claim 32 does not stand rejected and is not subject to
our Appeal. See Final Act. 3–5.

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We REVERSE.
CLAIMED SUBJECT MATTER
The application is titled “A Control Arrangement of a Hydraulic
System and a Method for Controlling a Hydraulic System.” Spec. 1. Claims
9 and 21 are independent. Appeal Br. 14–18 (Claims App.). Claim 1,
reproduced below with emphases added to a limitation central to our
analysis, is illustrative of the claimed subject matter:
9. A method for controlling a hydraulic system
comprising a supply port arrangement having a high pressure
port and a low pressure port, a working port arrangement
connected to an actuator having two working ports, a first valve
arranged between said high pressure port and said working port
arrangement, and a second valve arranged between said low
pressure port and said working port arrangement, the method
comprising generating an input signal for said hydraulic system,
wherein a first flow demand for the first valve and a second flow
demand for the second valve are calculated separately to create
at least initially an unbalance between said first flow demand
and said second flow demand, each flow demand being a
quantity representing a flow to pass through the first valve or the
second valve respectively, wherein the unbalance between the
first flow demand and the second flow demand indicates that the
first flow demand and the second flow demand do not correspond
to a cylinder ratio of the actuator.
Id. at 14 (Claims App.) (emphases added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nielsen US 2005/0072954 A1 Apr. 7, 2005
Turner WO 96/27051 Sept. 6, 1996

REJECTIONS3
The following rejections are before us on appeal:
(1) Claims 9–11 and 21–31 stand rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Nielsen. Final Act. 3.
(2) Claims 9–11 and 21–31 stand rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Turner. Final Act. 4.
OPINION
A. Issue
The primary issue is whether Nielsen or Turner inherently discloses
calculating a first and second flow demand “to create” an “unbalance
between” the first and second flow demands. The Examiner and Appellant
disagree as to whether the cited art discloses this limitation (see, e.g., Ans. 8;
see also, e.g., Appeal Br. 7), and our Decision turns on the construction of
this phrase.

B. Claim Construction
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic

3 See supra n.2.

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Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of the
claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art). In general,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the [Appellant’s] [S]pecification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Independent claim 9 recites, in relevant part,
wherein a first flow demand for the first valve and a second flow
demand for the second valve are calculated separately to create
at least initially an unbalance between said first flow demand
and said second flow demand, each flow demand being a
quantity representing a flow to pass through the first valve or the
second valve respectively, wherein the unbalance between the
first flow demand and the second flow demand indicates that the
first flow demand and the second flow demand do not correspond
to a cylinder ratio of the actuator.
Appeal Br. 14 (Claims App.) (emphasis added). Importantly, the method
explicitly recites that the first and second flow demands “are calculated
separately to create . . . an unbalance” between the first and second flow
demands. Id. The ordinary understanding of this language does not simply
require that an “unbalance” exists, but that the first and second flow
demands are calculated “to create . . . an unbalance.” Id.

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The Specification describes control arrangements that are configured
to create an unbalance to advantageously avoid undesirable back-pressure in
the actuator. See Spec. ¶¶ 7, 15, 24, 25, 31, 33. Specifically, the
Specification describes, “The controller adjusts the first valve and the second
valve so that, for example, the demanded meter-out flow is slightly higher
than the demanded meter-in flow. This apparent unbalance avoids
[un]intended back-pressure in the actuator.” Id. ¶ 7. The Specification
further describes that the “meter-in flow” is controlled by controlling the
first valve position and the “meter-out flow” is controlled by controlling the
second valve position. See id. ¶¶ 24, 25. The Specification explains that an
unbalance is created by adjusting the spools of the valves in order to avoid
unintended back-pressure in the actuator. See id. ¶ 31.
Thus, a broad, but reasonable, interpretation of the claim language, as
it would be understood by one of ordinary skill in the art, taking into account
the Specification’s discussion of “creating an unbalance” (Morris, 127 F.3d
at 1054), makes clear that the claimed “unbalance” between the first and
second flow demands is created, not simply measured, after the first and
second flow demands are calculated. For example, the unbalance may be
created by a controller—after calculating the prior flow demands (which
may or may not be balanced)—by manipulating the positions of the first
valve and the second valve to ultimately create an “unbalance” between the
flow demands.

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C. Claims Anticipated by Nielsen
Claims 9–11 and 21–31 stand rejected as anticipated by Nielsen.
Final Act. 3.

1. Examiner’s Rejection
We reproduce Nielsen’s Figure 1, below:

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Figure 1 “is a schematic view of a hydraulic valve arrangement.” Nielsen
¶ 22. The Examiner finds that Nielsen discloses first spool valve 10 between
high pressure port P and a working port arrangement having working ports
A, B connected to actuator 4. Final Act. 3. The Examiner also finds that
Nielsen discloses second spool valve 18 arranged as claimed, “wherein each
of the first and second valve has means . . . for indicating an opening degree
(14, 22), connected to a controller (15).” Id. (citing Nielsen ¶ 28).
As to the following claim limitation, “wherein a first flow demand for the
first valve and a second flow demand for the second valve are calculated
separately to create at least initially an unbalance between said first flow
demand and said second flow demand,” the Examiner submits the following
explanation:
wherein the controller controls the first and second valves (under
a negative load) such that the ratio of a quantity the meter-out
flow to a quantity of the meter-in flow is greater than the cylinder
ratio (i.e. not corresponding to the cylinder ratio of claim 9), on
the basis of the signal (paragraph 53, where part of the fluid from
7 flows into 8 (via 27) and the surplus is discharged through the
second valve, so that the first valve is closed (meter-in flow is 0,
so ratio is infinity, which is larger than the cylinder ratio); and in
case of a positive load, the first valve determines the velocity of
the actuator and a back pressure is automatically adjusted to its
minimum level, in case of a negative load, the second valve
determines the velocity of an actuator and the first valve
determines an anti-cavitation pressure (e.g. paragraph 13).
Id. at 4.
In a subsequently-mailed Advisory Action, the Examiner further
explains, “Since Nielson [sic] and the instant application are doing the same
process, for essentially the same reason, it would appear that Nielson [sic]

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inherently also has an unbalance between calculated first and second flow
demands.” Advisory Action (dated January 8, 2020, “Adv. Act.”); see also
id. (“Note that an initial calculation of the meter-in and regenerative flows
would also result in an initial unbalance of the calculations.”); see also Ans.
9 (“all other loads and all other speeds would be at least initially unbalanced
[sic], inherently meeting the claimed limitation”).
In short, the Examiner finds that Nielsen is identical to Appellant’s
process and thus inherently discloses the claimed limitation, “to create at
least initially an unbalance.”

2. Analysis of Nielsen Rejection
Appellant argues that “the Examiner’s unsupported allegation that
Nielsen is ‘doing identical or at least comparable calculations’ is insufficient
to support a rejection based on the doctrine of inherency.” Reply Br. 2.
Appellant’s argument is persuasive.
As argued correctly by Appellant, “In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990); see also Reply Br. 3
(referencing MPEP § 2112(IV) (quoting the same)). We disagree with the
Examiner that Nielsen’s flow demands are necessarily unbalanced. Indeed,
we understand that the flow demands may be balanced.
Moreover, the Examiner’s interpretation of the claim limitation
seemingly ignores the term “to create,” thereby rendering it superfluous. See

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Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
2006) (“[C]laims are interpreted with an eye toward giving effect to all
terms in the claim.”); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render
phrases in claims superfluous); Merck & Co. v. Teva Pharms. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005) (rejecting a proposed claim construction
that would render claim terms superfluous).
Even if we assume that the Examiner is correct in that, in Nielsen, the
measured (or calculated) flow demands are different, or unbalanced, the
method of independent claim 9 requires the act of creating an unbalance
after, and in addition to, calculating the first flow demand and the second
flow demand. See supra Part B (Claim Construction). The claim does not
simply require an “unbalance” to exist, as the Examiner’s rejection implies.
See, e.g., Ans. 8 (“Nielsen and the instant application are doing identical or
at least comparable calculations of the first and second flow demands.
Therefore, inherently, the calculations of Nielsen would result in at least an
initial unbalance between the first and second flow demands.”). The
Examiner’s position that any difference between the first and second flow
demands satisfies the limitation ignores the term “to create.” See Ans. 9
(“Therefore, all other loads and all other speeds would be at least initially
unbalanced, inherently meeting the claimed limitation.”).
Because the Examiner fails to establish that Nielsen’s system
calculates the flow demands to create the unbalance, we do not sustain the
rejection of independent claim 9, or of its dependent claims 10 and 11.

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Turning to independent claim 21, that claim recites, “said controller
controls said first valve and said second valve such that the ratio of a
quantity the meter-out flow to a quantity of the meter-in flow is greater than
a cylinder ratio of said actuator.” Appeal Br. 16 (Claims App.) (emphasis
added).
In explaining how Nielsen satisfies claim 21, the Examiner withdrew
the initial basis that was presented in the Final Office Action and supplanted
it with a new one in the Answer. See Ans. 13; see also Reply Br. 4
(acknowledging the same in arguing, “[a]ppellant respectfully submits that
the alleged second ground of rejection identified by the Examiner is in fact a
new ground of rejection”). In the Answer, the Examiner submits the
following explanation:
There may be certain conditions of load and speed in the system
of Nielsen where the ratio of a quantity the meter-out flow to a
quantity of the meter-in flow is equal to the cylinder ratio; which
would mean that there are other conditions of load and speed
where the ratio of a quantity the meter-out flow to a quantity of
the meter-in flow is greater than a cylinder ratio of said actuator
(others may make it smaller, but those conditions aren't
important to these claims). Therefore, some conditions of load
and speed for the basic operation of Nielsen would meet the
limitations of claim 21.
Ans. 13.
In response to the Examiner’s rejection, Appellant submits that “the
Examiner’s second ground of rejection of independent claim 21 is based on
the theory of inherency similar to that asserted in the rejection of
independent claim 9.” Reply Br. 5.
Appellant’s argument is persuasive.

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The Examiner fails to cite anything in Nielsen to support a finding
that Nielsen discloses—under the second rejection theory—the relevant
limitation, reproduced above. See Ans. 13. Although we agree with the
Examiner that Nielsen discloses controller 15 that operates the position of
first valve 10 and second valve 18 (see Final Act. 3–4), the Examiner fails to
identify any disclosure within Nielsen to support a finding that the control of
these valves necessarily provides a “ratio of a quantity the meter-out flow to
a quantity of the meter-in flow is greater than a cylinder ratio of said
actuator,” as recited in claim 21. See Ans. 13; see also Appeal Br. 16
(Claims App.) (emphasis added). We agree with Appellant that the
Examiner relies on the same flawed inherency finding discussed above with
respect to claim 9. See Reply Br. 5 (“the Examiner’s second ground of
rejection of independent claim 21 is based on the theory of inherency similar
to that asserted in the rejection of independent claim 9”). We also agree
with Appellant that “the ratio of meter-out flow to meter-in flow in Nielsen
may be balanced,” or equal to, the cylinder ratio of the actuator (see id.), and
in such an instance, Nielsen does not inherently disclose the claimed
limitation. See Levy, 17 USPQ2d at 1464.
Accordingly, the Examiner fails to establish that Nielsen discloses a
controller that controls first and second valves “such that the ratio of a
quantity of the meter-out flow to a quantity of the meter-in flow is greater
than a cylinder ratio of [the] actuator,” and we do not sustain the rejection of
independent claim 21, or of its dependent claims 22–31.

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D. Claims Anticipated by Turner
Claims 9–11 and 21–31 stand rejected as anticipated by Turner. Final
Act. 4.
Turner’s control arrangement was cited in the Specification. Spec.
¶ 3. The Specification describes that “[t]he object underlying the invention
is to enhance the control of a hydraulic circuit.” Id. ¶ 4 (emphasis added).

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1. Examiner’s Rejection
The Examiner finds that Turner discloses the limitations of claims 9–
11 and 21–31 on pages 4 and 5 of the Final Office Action. We reproduce
Turner’s Figure 1, below:

Figure 1 “is a hydraulic circuit diagram of the assembly.” Turner, 5. In
addressing the claimed limitations, the Examiner finds that Nielsen discloses
first spool valve 2, actuator 7, second spool valve 3, and controller 55. Final
Act. 4–5.
The Examiner also cites to Turner’s Figure 4 (e.g., Ans. 10), which
we reproduce, below:

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Figure 4 “is a logic diagram illustrating control functions of the assembly.”
Turner, 5. In citing this Figure, the Examiner explains, “the flow chart of fig
4 would calculate the initial first flow demand in step 83, to generate a
desired speed, and the initial second flow demand in step 84, to set a

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nominal back pressure. One of ordinary skill in this art would recognize that
2 processes, following the same procedure would have the same results.”
Adv. Act.
In addressing claim 9’s limitation, “to create . . . an unbalance,” the
Examiner finds that “even though [Turner] doesn’t spell out the there [sic] is
an unbalance, the unbalance would exist due to the inherency of following
the exact same process.” Adv. Act. (emphasis added). In the Answer, the
Examiner submits, “[T]he reasons why Nielsen meets the claim limitations
apply to [Turner]. In addition, [Turner] has a further reason, due to the
nominal (minimal) back pressure.” Ans. 10. The Examiner further explains
that Turner “and the instant application are doing identical calculations of
the first and second flow demands and, inherently, the calculations of
[Turner] would result in at least an initial unbalance between the first and
second flow demands.” Id.
In addressing claim 21’s limitation that requires the controller to
control the first and second valves “such that the ratio of a quantity [of] the
meter-out flow to a quantity of the meter-in flow is greater than a cylinder
ratio of said actuator” (Appeal Br. 16 (Claims App.)), the Examiner finds
that:
To decrease this pressure to a minimal pressure, the meter-out
flow needs to be increased to allow more flow, thereby dropping
the pressure (to the minimal pressure). This increased meter-out
flow would cause the ratio of a quantity the meter-out flow to a
quantity of the meter-in flow to be greater than 1, and therefore
greater than the cylinder ratio. Since [Turner] teaches the back
pressure being a minimal pressure, it meets the above limitation.
Ans. 12.

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2. Analysis of Turner Rejection
In contesting the rejection, Appellant presents similar arguments as
those presented above with respect to Nielsen. See Appeal Br. 10–13.
Specifically, Appellant argues that the Examiner has failed to show that
Turner inherently discloses that an “unbalance” will be created, and explains
that “Turner’s calculated flow demands could be balanced.” See id. at 11.
Appellant’s arguments are persuasive.
The Examiner’s rejection is premised on the understanding that the
present application and Turner each describes the same process. See, e.g.,
Ans. 10 (“[Turner] and the instant application are doing identical
calculations”); see also, e.g., Final Act. 5 (“the controller controls the meter-
out flow and meter-in flows [] identical to the way the controller of the
instant application controls them”). The Examiner’s understanding,
however, is contrary to the stated position in the Specification, which seeks
to “enhance the control” of Turner’s hydraulic circuit. See Spec. ¶¶ 3, 4.
The Examiner fails to persuade us that that Turner’s process is
identical to the claimed process, thus meeting the claimed limitations. See
Final Act. 5 (“Based on the fact that the controller controls the meter-out
flow and meter-in flows, identical to the way the controller of the instant
application controls them, the ratio of a quantity the [sic] meter-out flow to a
quantity of the meter-in flow is greater than the cylinder ratio.”).
At the outset, we first point out that, in order “to have meaningful
review, we must be able to understand the examiner’s rejection.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211–12 (BPAI 2001). The initial burden lies
with the examiner, and this is established when the examiner “stat[es] the

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reasons for [its] rejection . . . together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132(a). “Section 132 is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (citations omitted).
In the instant case, even if Turner and the instant application are
similar in that they both have controllers, differential actuators, and two
spool valves for controlling meter-in flow and meter-out flow, the Examiner
fails to establish that the “first flow demand for the first valve and [the]
second flow demand for the second valve are calculated separately to create
at least initially an unbalance.” See Final Act. 4–5; see also Adv. Act.; see
also Appeal Br. 14 (Claims App.). Contrary to the Examiner’s assertion, we
are not persuaded that minimizing back pressure necessarily satisfies the
claimed limitations. See Ans. 11 (“[Turner] minimizing back pressure
would result in the claimed unbalance.”).
As to claim 9, we agree with Appellant that Turner’s flow demands
may be balanced (Appeal Br. 11), and in such an instance, the Examiner’s
inherency finding fails. See Levy, 17 USPQ2d at 1464.
Furthermore, the Examiner’s findings are premised on an
interpretation that ignores the term “to create.” See supra Part B (Claim
Construction). As explained above, claim 9 does not merely require an
“unbalance” to exist, but that the “unbalance” is created after calculating the
first and second flow demands. See id.

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As to claim 21, the Examiner’s explanation that decreasing minimal
pressure satisfies the entire limitation is based on numerous unsupported
assumptions. See Ans. 12. Specifically, the Examiner’s finding that
Turner’s method of minimizing back pressure would result in “increased
meter-out flow [that] would cause the ratio of a quantity the meter-out flow
to a quantity of the meter-in flow to be greater than 1, and therefore greater
than the cylinder ratio,” is without adequate citation to evidence, such as
Turner, and falls short of establishing that Turner inherently discloses the
limitation. See id.; see also Gambogi, 62 USPQ2d at 1211–12.
Upon our review of the Specification, we understand that the
“cylinder ratio” of a differential valve actuator is the “ratio between the
pressure areas A2 and A1” of the actuator. Spec. ¶ 30; see also id. ¶ 7; see
also id. Fig. 1. We further understand that this “cylinder ratio . . . is taken
into account for the calculation of the meter-out flow demand.” Id. ¶ 30.
The Examiner’s position that Turner’s minimizing back pressure meets the
limitation is not supportable. Ans. 12. The Examiner’s position relies on
numerous unsubstantiated assumptions regarding the operation of Turner’s
system. For instance, we are not persuaded that Turner’s method of
minimizing back pressure requires increasing the meter-out flow. See id.
(“To decrease this pressure to a minimal pressure, the meter-out flow needs
to be increased.”). Further, we are not persuaded that so long as the ratio of
the meter-out flow to meter-in flow is greater than one, it is also greater than
the cylinder ratio of the actuator. See id. (“This increased meter-out flow
would cause the ratio of a quantity of the meter-out flow to a quantity of the
meter-in flow to be greater than 1, and therefore greater than the cylinder

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ratio.”). The Examiner provides no evidence to support either of these
findings. See id.; see also Final Act. 4–5; see also Adv. Act.
To summarize, the Examiner fails to establish that Turner’s system
calculates the flow demands to create the unbalance, as recited in
independent claim 9, and fails to establish that Turner inherently discloses a
controller that controls first and second valves “such that the ratio of a
quantity of the meter-out flow to a quantity of the meter-in flow is greater
than a cylinder ratio of [the] actuator.” Appeal Br. 14, 16 (Claims App.).
As such, we do not sustain the rejection of independent claims 9 and 21, or
of their respective dependent claims 10, 11, and 22–31.

CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
9–11, 21–31 102 Nielsen 9–11, 21–31
9–11, 21–31 102 Turner 9–11, 21–31
Overall
Outcome
9–11, 21–31

REVERSED