David Luce et al.

Patent Trials and Appeals Board

Mar 18, 2021

2020004312 (P.T.A.B. Mar. 18, 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.
15/185,541 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.
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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.
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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
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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).
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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).
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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
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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).
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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.
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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
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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
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“[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,
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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

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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