Ex Parte Binder

Patent Trials and Appeals Board

Jun 20, 2019

13918462 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/918,462 06/14/2013
23446 7590 06/24/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Albert Binder
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
26691US01
(PAT04975USNP)
1032
EXAMINER
FRY,PATRICKB
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT BINDER
Appeal2018-006029
Application 13/918,462
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert Binder ("Appellant") 1 seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-8 and 10-23.2 We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Hilti Aktiengesellschaft as the real party in
interest. (App. Br. 2).
2 Claim 9 is canceled.
Appeal2018-006029
Application 13/918,462
THE INVENTION
Claim 1 is illustrative, and is reproduced below:
1. A control method implemented by a controller of a machine
tool, the control method comprising:
activating a magnetic drive to accelerate a striker of the
machine tool along a movement axis in a direction that is toward
an air spring and that is opposite an impact direction until a
kinetic energy of the striker is sufficient to achieve a selected
compression of the air spring;
in response to the machine tool determining that the
kinetic energy of the striker is sufficient to achieve the selected
compression of the air spring, deactivating the magnetic drive to
permit the kinetic energy of the striker to continue movement of
the striker opposite the impact direction; and
in response to the striker achieving the selected
compression of the air spring, activating the magnetic drive to
accelerate the striker in the impact direction with the aid of the
selected compression of the air spring.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-3 and 5 are rejected under 35 U.S.C. § 103 as unpatentable
over Yiu (US 6,854,530 Bl, iss. Feb. 15, 2005) and Schaer et al. (US
2008/0202783 Al, pub. Aug. 28, 2008) ("Schaer").
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Yiu,
Schaer, and Llewellyn (US 7,503,400 B2, Mar. 17, 2009).
3. Claims 6-8 are rejected under 35 U.S.C. § 103 as unpatentable over
Yiu, Schaer, and John et al. (US 7,926,584 B2, iss. Apr. 19, 2011) ("John").
4. Claims 10-13 are rejected under 35 U.S.C. § 103 as unpatentable over
Yiu, Schaer, John, and Chase Jr. (US 3,022,450, iss. Feb. 20, 1962)
("Chase").
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Application 13/918,462
5. Claims 1, 22, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Ondeck (US 3,054,464, iss. Sept. 18, 1962), Yiu, and
Schaer.
6. Claims 14 and 17-20 are rejected under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, and Chase.
7. Claims 15, 16, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, Chase, and John.
ISSUES
Did the Examiner err in rejecting claims 1-3 and 5 under 35 U.S.C.
§ 103 as unpatentable over Yiu and Schaer; claim 4 under 35 U.S.C. § 103
as unpatentable over Yiu, Schaer, and Llewellyn; claims 6-8 under 35
U.S.C. § 103 as unpatentable over Yiu, Schaer, and John; claims 10-13
under 35 U.S.C. § 103 as unpatentable over Yiu, Schaer, John, and Chase;
claims 1, 22, and 23 under 35 U.S.C. § 103 as unpatentable over Ondeck,
Yiu, and Schaer; claims 14 and 17-20 under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, and Chase; and claims 15, 16, and
21 under 35 U.S.C. § 103 as unpatentable over Ondeck, Yiu, Schaer, Chase,
and John?
ANALYSIS
The rejection of claims 1-3 and 5 under 35 U.S.C. § 103 as unpatentable
over Yiu and Schaer.
The Appellant argues these claims as a group. See App. Br. 13-19.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 3, and 5 stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
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Application 13/918,462
As to claim 1, the Examiner's position is that Yiu discloses all that is
claimed but for the limitation that the spring is an air spring, for which
Schaer is relied upon. Final Act. 3--4.
The Appellant argues that Yiu does not disclose the claim 1 limitation
of "in response to the machine tool determining that the kinetic energy of the
striker is sufficient to achieve the selected compression of the air spring,
deactivating the magnetic drive to permit the kinetic energy of the striker to
continue movement of the striker opposite the impact direction." App. Br.
13-17.
As to the argued limitation, the Examiner finds that Yiu's controller
determines the amount of time that the solenoid is energized to actuate
plunger core 21 and "the time between tO and t 1 is [the] amount of time
needed for the plunger core to obtain the sufficient kinetic energy" (Final
Act. 25). According to the Examiner:
In Column 5 lines 11-15, Yiu discloses when the plunger
core (21) is in the middle portion at time t 1, the plunger core
(21) has a moment of inertia to move away from the middle
portion towards the other end (23), and move or force against
the spring member (14 ). This implies that the plunger core has
sufficient kinetic energy to cause the plunger core to force
against the spring member. This also implies the time between
tO and tl for the solenoid (20) to energize the plunger core (21)
is the needed amount of time for the plunger core to have
sufficient kinetic energy to cause the plunger core to force
against the spring member. Therefore, the microprocessor unit
(31) is interpreted to determine that the kinetic energy of the
striker is sufficient to achieve the selected compression of the
spring based [ on the] amount of time passing.
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Application 13/918,462
Id. at 22-23. In other words, the Examiner finds that the argued limitation
reads on the temporal determination of a duration of solenoid energization
made by Yiu's controller.
The Appellant argues, throughout the briefs, that Yiu does not
disclose sensors for sensing characteristics of the solenoid 20 or plunger
core 21. See, e.g., App. Br. 14 ("Yiu fails to explicitly set forth (i) any
circuitry for sensing characteristics of the solenoid 20 and/or the plunger
core 21, or (ii) that the MPU 31 adjusts the sinous driving signal 41, 43
based on such sensed characteristics"); Id. at 15 ("the MPU 31 generates the
sinous driving signal without sensing aspects of the plunger core 21 "); Id.
at 16 ("Yiu provides no circuitry or teaching with respect to how such
sensing may be accomplished"); Id. at 18 ("Yiu is silent as to sensing the
plunger core 21 and/or other operational parameters ... "); Reply Br. 3 ("the
lack of sensors in the Yiu percussion tool means that the Yiu percussion tool
lacks the ability to make the claimed determination"). Yet, claim 1 does not
require any "sensing," "sensors," "circuitry for sensing," or "sensed
characteristics," and the Appellant's argument is unpersuasive of Examiner
error at least because it is not commensurate with the scope of the claim.
And the Appellant has not persuasively explained how the argued limitation
of claim 1 excludes the temporal determination of a duration of solenoid
energization made by Yiu's controller.
As shown in Figure 5 of Yiu, time tO corresponds to plunger core 21
being at an initial position 51. From time tO until time tl, a positive voltage
signal ( 44 or 41) is supplied by actuating device 3 5, controlled by MPU 31,
to "energize or to actuate the solenoid 20 to force or to move or to draw the
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Application 13/918,462
plunger core 21 along the oscillation axis 50" in an upward direction as
shown in Figure 5. Yiu col. 4, 11. 62---66. Time tl corresponds to plunger
core 21 reaching a position 52 in the middle of solenoid 20 and driving
signal 44 is switched off ( or sinuous driving signal 41 enters a negative
signal portion 45). Column 5 lines 5-15 of Yiu is reproduced below.
When the plunger core 21 is moved to the middle portion
of the solenoid 20 at position "52", the TRIAC 37 may be
stopped or turned off or switched off automatically, such that
no actuating signals will be sent to the solenoid 20 at this
moment, and such that the solenoid 20 will be switched off or
disabled at this moment.
At this time, the plunger core 21 has a tendency or has a
moment of inertia to move away from the middle portion of the
solenoid 20, and to move toward the other end 23 of the
solenoid 20, and to move or force against the spring member
14. It is preferable that the spring member 14 is arranged to
allow the plunger core 21 to move outwardly beyond the other
end 23 of the solenoid 20, as shown in the position indicated by
"53".
A person of ordinary skill in the art reviewing the disclosure of Yiu would
understand that energizing solenoid 20 (between time tO and tl) imparts
kinetic energy to plunger 21, and that the longer that solenoid 20 is
energized, the more kinetic energy is imparted to plunger core 21, and that
said kinetic energy of plunger core 21 is used to compress spring 14.
Therefore, we agree with the Examiner that Yiu's controller determining the
amount of time that solenoid is energized meets the claimed "determining
that the kinetic energy of the striker is sufficient to achieve the selected
compression of the air spring."
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Application 13/918,462
The Appellant argues that "claim 1 requires 'determining that the
kinetic energy of the striker is sufficient to achieve the selected compression
of the air spring' not just that the spring is compressed by the plunger
core 21." App. Br. 18 (emphasis original). See also, Reply Br. 3 ("the
record provides no evidentiary proof that someone chose an amount of
compression for the spring member 14."). Responding to the Appellant's
argument in the Answer, the Examiner finds that"[ w ]hen assembling the
tool, a selected amount of compression is chosen and the amount of time the
plunger core is energized upwards is interpreted to be a sufficient amount of
time to achieve the selected amount of compression." Ans. 5. We agree
with the Examiner that Yiu' s controller achieves a selected compression of
spring member 14. Specifically, the selected compression of Yiu's spring
member 14 is an amount of compression that "[allows] the plunger core 21
to move outwardly beyond the other end 23 of the solenoid 20." Yiu col. 5,
11. 15-16.
The Appellant further argues that, in Yiu's percussion tool, "[t]he
momentum of the plunger core 21 comprises in part the acceleration
imparted by the solenoid 20 and in part an initial momentum of the plunger
core 21 after a stroke." App. Br. 18. According to the Appellant, the initial
momentum depends on the properties of a material struck by shank 25
during operation of the tool. The Appellant contends that "[ d]ue to such
differences in materials, the resulting kick-back on the shank 25 may differ
significantly between strokes resulting in significantly different initial
momentums from one stroke to the next" (id.) and "Yiu does not address
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Application 13/918,462
such differences in initial momentums" (Id. at 18-19). See also Reply
Br. 4---6.
The Appellant's argument regarding "initial momentum," "kick-
back," and "bounce back" fails at the outset because it is not commensurate
with the scope of claim 1. For example, claim 1 does not require any impact
of the striker on any object or material, any resulting initial momentum of
the striker, or any compensation for kick-back. Indeed, claim 1
encompasses operating a machine tool without impacting anything at all.
Claim 1 also does not require any compensation for "different initial
momentums from one stroke to the next" or addressing "differences in initial
momentums" in any way.
The Appellant's arguments having been fully considered and found,
for the foregoing reasons, unpersuasive as to error in the rejection, the
rejection as to claim 1 is sustained. For the same reasons, the rejection of
claims 2, 3, and 5, which fall with claim 1, is also sustained.
The re} ection of claim 4 under 3 5 U.S. C. § 103 as unpatentable over Yiu,
Schaer, and Llewellyn.
The Appellant does not separately argue the rejection of dependent
claim 4 apart from the arguments presented for independent claim 1. See
App. Br. 19. Therefore, we sustain the rejection of claim 4 for the reasons
discussed above regarding independent claim 1.
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Application 13/918,462
The rejection of claims 6---8 under 35 U.S. C. § 103 as unpatentable over Yiu,
Schaer, and John.
Each of claims 6-8 requires that "determining the achievable
compression" ( of claim 5) further comprises determining the achievable
compression of the air spring as a function of a specific measurement.
The Examiner finds that Yiu discloses "determining the achievable
compression" of claim 5 (Final Act. 5), and relies on John as disclosing the
various measurements of claims 6-8 (Id. at 7-8).
The Appellant argues that "John is silent with respect to using such
sensors to determine the achievable compression of an air spring." App.
Br. 20.
The Appellant's argument does not address the Examiner's rejection.
The Examiner relies on Yiu- not John - as disclosing determining an
achievable compression of a spring. That John alone does not disclose every
limitation of claims 6-8 is not persuasive of error in the rejection which is
based on the combination of Yiu, Schaer, and John. Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425 (CCPA 1981).
In effect, the Appellant addresses the teachings of the references
individually, failing to address the Examiner's reasoning that one of ordinary
skill in the art would have been led by the combination of the references to
the claimed arrangement. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) ("As our precedents make clear, however, the analysis need not
seek out precise teachings directed to the specific subject matter of the
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Application 13/918,462
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ."). In KSR, the
Supreme Court reaffirmed that a "functional approach" to the obviousness
analysis is proper and that a "combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. at 416. The operative question in this "functional
approach" is "whether the improvement is more than the predictable use of
prior art elements according to their established functions." Id. at 417.
Furthermore, "when a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." Id. (citation omitted). Here, the claimed combination is the result
of using certain types of sensors disclosed in John in the percussion tool of
Yiu to sense the properties of the tool that each sensor is designed to sense.
Each element performs the same function as it had been known to perform.
The record does not show evidence that said modification yields a result that
one would not expect from such an arrangement.
The Appellant's argument does not address whether the Examiner's
proposed modification is more than the predictable use of prior art elements
according to their established functions. Accordingly, we find that the
Examiner has established a prima facie showing of obviousness, which the
Appellant has not overcome.
The Appellant's arguments having been fully considered and found,
for the foregoing reasons, unpersuasive as to error in the rejection, the
rejection as to claims 6-8 is sustained.
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Appeal2018-006029
Application 13/918,462
The rejection of claims 10---13 under 35 U.S. C. § 103 as unpatentable over
Yiu, Schaer, John, and Chase.
The Appellant does not separately argue the rejection of dependent
claims 10-13 apart from the arguments presented for independent claim 1.
See App. Br. 21. Therefore, we sustain the rejection of claims 10-13 for the
reasons discussed above regarding independent claim 1.
The rejection of claims 1, 22, and 23 under 35 U.S.C. § 103 as unpatentable
over Ondeck, Yiu, and Schaer.
The rejection of claim 1 as unpatentable over Ondeck, Yiu, and
Schaer is cumulative of the rejection of claim 1 discussed above. For that
reason, we do not reach the rejection of claim 1 as unpatentable over
Ondeck, Yiu, and Schaer.
The Appellant does not separately argue the rejection of dependent
claims 22 and 23 apart from the arguments presented for independent
claim 1. See App. Br. 22. Therefore, we sustain the rejection of claims 22
and 23 for the reasons discussed above regarding independent claim 1.
The rejection of claims 14 and 17-20 under 35 U.S. C. § 103 as unpatentable
over Ondeck, Yiu, Schaer, and Chase.
The Appellant relies upon the same arguments made to traverse the
rejection of claim 1 to traverse the rejection of claims 14 and 17. See App.
Br. 22-23. For the same reasons discussed above with regard to claim 1, we
find the Appellant's argument unpersuasive. Accordingly, we find that the
Appellant has not overcome the rejection of claims 14 and 1 7.
The Appellant does not separately argue the rejection of dependent
claims 18-20 apart from the arguments presented for independent claim 17.
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Application 13/918,462
See id. at 23. Therefore, we sustain the rejection of claims 18-20 for the
reasons discussed above regarding independent claim 17.
The rejection of claims 15, 16, and 21 under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, Chase, and John.
The Appellant does not separately argue the rejection of dependent
claim 15 apart from the arguments presented for independent claim 14. See
App. Br. 24. Therefore, we sustain the rejection of claim 15 for the reasons
discussed above regarding independent claim 14.
The Appellant relies upon the same arguments made to traverse the
rejection of claims 6-8 to traverse the rejection of claims 16 and 21. See id.
at 24. For the same reasons discussed above with regard to claims 6-8, we
find the Appellant's argument unpersuasive. Accordingly, we find that the
Appellant has not overcome the rejection of claims 16 and 21.
CONCLUSIONS
The rejection of claims 1-3 and 5 under 35 U.S.C. § 103 as
unpatentable over Yiu and Schaer is sustained.
The rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over
Yiu, Schaer, and Llewellyn is sustained.
The rejection of claims 6-8 under 35 U.S.C. § 103 as unpatentable
over Yiu, Schaer, and John is sustained.
The rejection of claims 10-13 under 35 U.S.C. § 103 as unpatentable
over Yiu, Schaer, John, and Chase is sustained.
The rejection of claim 1 under 35 U.S.C. § 103 as unpatentable over
Ondeck, Yiu, and Schaer is not reached.
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Application 13/918,462
The rejection of claims 22, and 23 under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, and Schaer is sustained.
The rejection of claims 14 and 17-20 under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, and Chase is sustained.
The rejection of claims 15, 16, and 21 under 35 U.S.C. § 103 as
unpatentable over Ondeck, Yiu, Schaer, Chase, and John is sustained.
DECISION
The decision of the Examiner to reject claims 1-8 and 10-23 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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