David Luce et al.Download PDFPatent Trials and Appeals BoardMar 18, 20212020004312 (P.T.A.B. Mar. 18, 2021) Copy Citation 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. 15/185,541 06/17/2016 David K. Luce ADM4-61195-US-NP 6134 44639 7590 03/18/2021 CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER RUFO, RYAN C ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID K. LUCE, CRYSTAL A. PARROTT, and STEPHEN L. WIEDMANN Appeal 2020-004312 Application 15/185,541 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and BENJAMIN D. M. WOOD, Administrative Patent Judges. WOOD, 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 1–9 and 11–13. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Baker Hughes Inc. Appeal Br. 1. Appeal 2020-004312 Application 15/185,541 2 CLAIMED SUBJECT MATTER The claims are directed to a tail stock for a long vertically suspended workpiece that will experience heat expansion. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A tailstock assembly for supporting and processing a workpiece along a vertical rotary axis comprising: a base member; a housing having a wall including a first end, and a second end, an outer surface, and an inner surface defining a central passage extending between the first and second ends defining a longitudinal axis, the second end being coupled to the base member; a workpiece support extending through the central passage, the workpiece support including a first end, a second end and an intermediate portion extending therebetween; a rotating member rotatably connected to the workpiece support; a thermal processing device positioned proximate to the rotating member, the thermal processing device including one of a sintering device and a thermal spray processing device; a linear bearing coupled to the base member in the central passage, the linear bearing slideably receiving the first end of the workpiece support; and a displacement sensor assembly including a stationary portion mounted relative to one of the base member and the housing, and a moveable portion mounted to the first end of the workpiece support, wherein, during use the displacement sensor measures an amount of movement of the workpiece support relative to the base member, the processing device being shifted relative to the workpiece support an amount corresponding to the amount of movement of the workpiece support. Appeal 2020-004312 Application 15/185,541 3 REFERENCES Name Reference Date Fisher US 1,700,837 Feb. 5, 1929 Schnelle US 1,993,809 Mar. 12, 1935 Rost US 2,704,006 Mar. 15, 1955 Lee US 5,575,041 Nov. 19, 1996 Sherman US 2003/0012678 A1 Jan. 16, 2003 Robinson US 2006/0037444 A1 Feb. 23, 2006 Gao US 2009/0151433 A1 June 18, 2009 Gerinte FR 2201639 April 26, 1974 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–9, 11–13 112(a) Written Description 1–9, 11–13 112(b) Indefiniteness 1–5 103 Lee, Gao, Gerinte, Sherman 6, 8 103 Lee, Gao, Gerinte, Sherman, Fisher 6, 8, 9 103 Lee, Gao, Gerinte, Sherman, Schnelle 6, 7, 11 103 Lee, Gao, Gerinte, Sherman, Rost 12 103 Lee, Gao, Gerinte, Sherman, Fisher, Robinson OPINION Claims 1–9 and 11–13: Rejected for Failing to Comply with Written-Description Requirement Claim 1 The Examiner finds, inter alia, that the preamble “[a] tailstock assembly for . . . processing a workpiece,” and the limitation “the thermal processing device including one of a sintering device and a thermal spray processing device,” are unsupported by the Specification. Final Act. 6, paras. 9, 10. Appellant does not respond to these findings in the Appeal Appeal 2020-004312 Application 15/185,541 4 Brief.2 Consequently, Appellant has waived any argument of error, and we summarily sustain the rejection of claim 1, and claims 2–9 and 11–13, which depend from claim 1, under 35 U.S.C. § 112(a), first paragraph. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002) (Board did not err in sustaining a rejection under 35 U.S.C. § 112 ¶ 2 when the Examiner refused to enter an Amendment filed with Appeal Brief and applicant failed to contest the rejection as to the non-amended claims on appeal); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or , more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection”); Manual of Patent Examining Procedure § 1205.02 (9th ed., Rev. 10, June 2020) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Claim 5 Claim 5 depends from claim 2, which depends from claim 1. Appeal Br. 17 (Claims App.). Claim 2 adds the limitation “a rotating member mount coupled to the second end of the workpiece support.” Id. Claim 5 additionally recites “a shield member moveably mounted at the second end of the housing about the rotating assembly mount, the shield member 2 Appellant challenges these findings for the first time in the Reply Brief, but does not explain or show good cause why it had not done so earlier in the Appeal Brief. Reply Br. 2. Accordingly, Appellant’s responses to these findings will not be considered. 37 C.F.R. § 41.41(b)(2). Appeal 2020-004312 Application 15/185,541 5 including a first end portion, a second end portion, and an intermediate portion extending therebetween.” Id. The Examiner rejects claim 5 under 35 U.S.C. § 112(a) because “[t]he recitation that the shield member mounted at the second end of the housing is . . . not supported by the specification at the time of filing.” Final Act. 7. Appellant does not respond to this rejection in the Appeal Brief.3 Therefore, it is summarily affirmed. Claims 1–9 and 11–13: Rejected as Indefinite Claim 1 The Examiner interprets the terms “thermal processing device,” “sintering device,” and “thermal spray processing device” as means-plus- function claim limitations under 35 U.S.C. § 112(f). Final Act. 4–5. According to the Examiner, each of these terms “uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.” Id. The Examiner thus interprets each of these terms “to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.” Id. at 5. The Examiner determines, however, that “the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.” Id. at 7. The Examiner also determines that “[t]he disclosure of the [thermal] processing device ‘could take the form of a sintering 3 Appellant’s response to this rejection in the Reply Brief, without explaining why it could not have been raised earlier, will not be considered. 37 C.F.R. § 41.41(b)(2). Appeal 2020-004312 Application 15/185,541 6 processing device and/or a thermal processing device’ does not set forth corresponding structure for what constitutes a sintering processing device and/or a thermal processing device.” Id. The Examiner thus rejects claim 1 as indefinite. Id. Appellant disputes that these terms should be interpreted as means- plus-function claim limitations under 35 U.S.C. § 112(f), asserting that they “should be given their plain and ordinary meaning.” Appeal Br. 6. Appellant further argues that the “Examiner has not presented any support for his position that the terms are unclear.” Id. at 8. Appellant also contends that the Specification “provides specific examples” of types of “thermal processing devices.” Id.; see Spec. ¶ 10 (stating that “processing device 13,” depicted in Figure 3, “could take the form of a sintering processing device and/or a thermal spray processing device”). According to Appellant, “one of ordinary skill in the art would clearly understand the structure associated with a sintering processing device and a thermal spray processing device,” because “sintering processing devices and thermal spray devices are ubiquitous in the art,” and “a simple google search for each of the above terms returns more than 5 million hits.” Id. at 8–9. We are not persuaded of Examiner error. First, we are not persuaded that the Examiner erred in construing these terms under § 112(f). A limitation is properly construed under § 112(f) if it: (A) uses the term “means” or a term used as a substitute for “means” that is a “generic placeholder” for performing the claimed function; (B) the term “means” or the generic placeholder is modified by functional language; and (C) the term “means” or the generic placeholder is not modified by sufficient structure to perform the claimed function. MPEP § 2181. Here, each of the terms uses Appeal 2020-004312 Application 15/185,541 7 the term “device,” which has been recognized as a generic placeholder term because it generally does not connote specific structure. Mass. Inst. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); MPEP § 2181. Further, each term couples the generic placeholder with functional language: “thermal processing,” “sintering,” and “thermal spray processing.” Finally, none of the terms modifies the generic placeholder with sufficient structure to perform the claimed functions. A claim is indefinite if a person of ordinary skill in the art cannot translate the claim terms into meaningfully precise claim scope. Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). Although applicants are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. Id. at 1253. In this case, we cannot determine what structure is required to achieve “thermal processing,” “sintering,” and “thermal spray processing” within the context of the claimed invention. Moreover, Appellant recognizes that “more than 5 million” possibilities exit for each of the claimed “thermal processing,” “sintering,” and “thermal spray processing” structures. Thus, the Examiner correctly construed these terms under § 112(f). Appellant’s assertion that the Examiner has not supported a determination that the terms are “unclear” does not respond to the substance of this aspect of the Examiner’s rejection. The Examiner did not determine that these terms were unclear per se, but rather that the Specification did not disclose specific structure that performed the claimed functions recited in the terms. Final Act. 7. Rejection under 35 U.S.C. § 112(b) is appropriate under such circumstances. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008). Appeal 2020-004312 Application 15/185,541 8 Appellant contends that the Specification’s disclosure of “specific examples” of thermal processing devices—e.g., a sintering processing device and a thermal spray processing device—constitutes sufficient disclosure of structure for the term “thermal processing device,” because “one of ordinary skill in the art would clearly understand the structure associated with” these devices. Appeal Br. 8–9. Appellant does not, however, support this contention with evidence or persuasive argument. Accordingly, we give the contention little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In sum, we are not persuaded that the Examiner erred in construing the above terms under § 112(f), and we are also not persuaded that the Examiner erred in finding that the Specification does not disclose specific structure that performed the claimed functions. Thus, we affirm the Examiner’s indefiniteness rejection of claim 1, as well as claims 2–9 and 11–13, which depend therefrom. Claim 2 The Examiner also rejects claim 2 as indefinite because it recites “[t]he tailstock according to claim 1” in the preamble, but claim 1 recites “[a] tailstock assembly” (not just a tailstock). Final Act. 9. The Examiner states that “it is unclear to what tailstock is being referenced in claim 2.” Id. Appellant does not address this rejection in the Appeal Brief, but acknowledges in the Reply Brief that claim 2 contains a “typographical error[].” Reply Br. 3. Because Appellant does not contest this additional indefiniteness rejection of claim 2, it is summarily affirmed. Appeal 2020-004312 Application 15/185,541 9 Claim 5 The Examiner rejects claim 5 because “[t]here is insufficient antecedent basis” for the limitation “the rotating assembly mount.” Final Act. 9. Appellant does not address this rejection in the Appeal Brief, but, as with claim 2, acknowledges in the Reply Brief that claim 5 contains a typographical error. Reply Br. 3. Because Appellant does not contest this additional indefiniteness rejection of claim 5, it is summarily affirmed. Claims 1–5: Rejected as Unpatentable over Lee, Gao, Gerinte, and Sherman The Examiner finds, inter alia, that Lee discloses a tailstock with the claimed base member, housing, and workpiece support. Final Act. 10 (citing Lee, 2:23–25, Figs. 1–3). The Examiner also finds that Lee discloses a “displacement assembly” comprising a “dog and switch,” which, “upon movement of the workpiece support to a trigger position, sends a stop signal if the workpiece support travels a specified amount.” Id. (citing Lee, 3:59– 61). The Examiner notes that “the dog and switch may, as an alternative, be replaced by a sensor.” Id. The Examiner acknowledges that Lee “does not explicitly disclose a displacement sensor capable of measuring an amount of movement of the workpiece support relative to the base” (id.), and therefore relies on Gao’s teaching of “displacement sensor (7) for controlling/correcting the position of the device.” Id. at 11 (citing Gao ¶¶ 17, 40); see Gao, Fig. 1 (depicting displacement sensor 7 as part of processing apparatus 1). According to the Examiner, “displacement sensor (7) measures (during use) an amount of movement between a fixed Appeal 2020-004312 Application 15/185,541 10 feature and a relatively movable (relative to the fixed feature) feature.” Id. (citing Gao ¶ 40). The Examiner determines that: [I]t would have been obvious to a person having ordinary skill in the art to provide the tailstock, in lieu of the dog and switch arrangement, disclosed in Lee with a displacement sensor as taught by Gao in order to apply a known technique to a known device yielding the predictable result of providing a sensor to measure the displacement amount of the tip (30) (via the workpiece support) relative to the fixed portion (i.e., the base) and/or in order to provide for the ability to change the stop measurement distance due to the ability of the displacement sensor to measure distance infinitely. Id. Appellant responds that none of the references, alone or in combination, teaches “shift[ing] a processing device based on movement of a workpiece support due to thermal expansion of a workpiece.” Appeal Br. 10. Appellant also disputes that Lee’s dog 36 and switch 44 “constitutes a displacement sensor similar to that of the present invention.” Id. at 11. Further, while Appellant acknowledges that “Gao describes a displacement sensor 7 for detecting movement of a tool relative to a casing body,” Appellant asserts that “Gao describes detecting vibration of an actuator 3, not movement of a tool holder resulting from thermal expansion of a workpiece.” Id. Appellant is of the view that even if Gao is interpreted to measure displacement, “the Examiner has not provided any rational[e] that would support why one of ordinary skill would want to, or would find any advantage in, monitoring the displacement of the live center of Lee, let alone measuring an amount of displacement.” Id. In the Answer, the Examiner responds that “[t]he claimed invention at issue is an apparatus claim,” and Appeal 2020-004312 Application 15/185,541 11 “[t]he modified device reads upon the claimed features and is capable of performing the claimed functions.” Ans. 24 We determine not to sustain this rejection. First, we are not persuaded that the proposed combination would teach or suggest “the processing device being shifted relative to the workpiece support an amount corresponding to the amount of movement of the workpiece support.” The Examiner contends in the Answer that the modified device “is capable” of performing this function (Ans. 24), but does not support this contention with evidence or persuasive reasoning. Second, we are not persuaded that Lee’s teaching of a sensor being used in place of dog 36 and switch 44 would have suggested to one of ordinary skill in the art to look to Gao’s displacement sensor. Lee states that “[a]s an alternative, a photoelectric switch or sensor may equally be used in place of the proximity switch 44 and the dog 36.” Lee, 3:62–64. We read this passage as referring to a photoelectric sensor that performs the same function as dog 36/switch 44: stopping electric motor 48 when body 14 has advanced a certain distance. The Examiner has not clearly explained why this passage would have suggested to one of ordinary skill in the art to look to Gao’s displacement sensor 7, which measures microscopic vibrations of tool 2. Gao ¶ 40, Fig. 1. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of independent claim 1, as well as dependent claims 2–5, as unpatentable over Lee, Gao, Gerinte, and Sherman. Remaining Rejections The Examiner’s rejections of claims 6–9, 11, and 12 rely on the rejection of independent claim 1 over Lee, Gao, Gerinte, and Sherman, Appeal 2020-004312 Application 15/185,541 12 which we determined not to sustain. Final Act. 13–16. Accordingly, we likewise do not sustain the Examiner’s rejection of claims 6 and 8 as unpatentable over Lee, Gao, Gerinte, Sherman, and Fisher; claims 6, 8, and 9 over Lee, Gao, Gerinte, Sherman, and Schnelle; claims 6, 7, and 11 over Lee, Gao, Gerinte, Sherman, and Rost; and claim 12 over Lee, Gao, Gerinte, Sherman, Fisher, and Robinson. CONCLUSION The Examiner’s rejections are decided as follows: DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11–13 112(a) Written Description 1–9, 11–13 1–9, 11–13 112(b) Indefiniteness 1–9, 11–13 1–5 103 Lee, Gao, Gerinte, Sherman 1–5 6, 8 103 Lee, Gao, Gerinte, Sherman, Fisher 6, 8 6, 8, 9 103 Lee, Gao, Gerinte, Sherman, Schnelle 6, 8, 9 6, 7, 11 103 Lee, Gao, Gerinte, Sherman, Rost 6, 7, 11 12 103 Lee, Gao, Gerinte, Sherman, Fisher, Robinson 12 Overall Outcome 1–9, 11–13 Appeal 2020-004312 Application 15/185,541 13 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation