Ex Parte Boren

Board of Patent Appeals and Interferences

Apr 30, 2009

10836357 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN G. BOREN
____________

Appeal 2009-1065
Application 10/836,357
Technology Center 2800
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Decided:1 April 30, 2009
____________

Before JOHN A. JEFFERY, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1065
Application 10/836,357

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 3-5 and 15-17. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant invented a system, method and controller for controlling an
AC motor. The system includes a motor controller connected to an AC
power source, an output contactor, and a bypass contactor. The controller
detects the occurrence of a fault condition and determines if the condition is
either a restricted or non-restricted fault. The system, method, and controller
provide an automatic bypass that opens the output contactor and closes the
bypass contactor only upon the occurrence of a non-restricted fault so as to
avoid motor damage.2 Independent claim 15 is reproduced below:
15. A system for controlling an AC motor comprising:
a motor controller comprising a motor control device and
means for identifying an occurring fault and determining if said
occurring fault is either a non-restricted fault or a restricted fault;

an output contactor connected between said motor control
device and said motor, said output contactor closed in the absence of
any occurring fault; and

a bypass contactor connected to said motor control device and
connected also between a source of AC power and said AC motor,
said bypass contactor open in the absence of any occurring fault;

said motor controller first opening said output contactor upon
said fault identifying means determining the occurrence of either a

2 See generally Spec. 2:29-3:16 and 6:1-8:11.
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non-restricted fault or a restricted fault and then closing said bypass
contactor only when said fault identifying means determine the
occurrence of a non-restricted fault.

The Examiner relies upon the following as evidence in support of the
rejection:
Tikkanen US 6,316,896 B1 Nov. 13, 2001
Shepeck US 2002/0079862 A1 June 27, 2002
Wielebski US 6,522,944 B2 Feb. 18, 2003

1. Claims 3 and 15-17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Tikkanen (Ans. 3-6).
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tikkanen and Shepeck (Ans. 7).
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tikkanen and Wielebski (Ans. 7-8).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments, which Appellant could have made but did not make
in the Briefs, have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

3 Throughout this opinion, we refer to: (1) the most recent Appeal Brief filed
May 9, 2007; (2) the Examiner’s Answer mailed December 13, 2007; and
(3) the Reply Brief filed February 13, 2008.
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ANTICIPATION REJECTION
We first turn to the rejection of claims 3 and 15-17 under 35 U.S.C.
§ 102(b) as being anticipated by Tikkanen. The Examiner finds that
Tikkanen discloses all the recited elements in independent claims 15-17
(Ans. 4-6). Specifically, the Examiner finds that Tikkanen’s controller 18 in
the hand or auto mode teaches a “means for identifying an occurring fault
and determining if said occurring fault is either a non-restricted fault or a
restricted fault” (Ans. 4, 5, and 9-13). Appellant argues that Tikkanen fails
to disclose the recited means (App. Br. 5). Appellant contends the closing of
the bypass contactor at state 5 in Tikkanen is not controlled automatically by
a controller and only closes when the HAND button is depressed (App. Br.
6-7). From this assertion, Appellant additionally argues that Tikkanen’s
controller 18 does not close the bypass contactor only when the fault
identifying means determines the occurrence of a non-restricted fault (App.
Br. 7).

ISSUES
The following issues have been raised in the present appeal:
(1) Under § 102, has Appellant shown that the Examiner erred in
finding that Tikkanen discloses a motor controller that includes a “means for
identifying an occurring fault and determining if said occurring fault is either
a non-restricted fault of a restricted fault” such that the controller closes the
bypass contactor only when the fault identifying means determines the
occurrence of a non-restricted fault in rejecting claim 15?
(2) Under § 102, has Appellant shown that the Examiner erred in
finding that Tikkanen discloses a method for controlling an AC motor that
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includes the steps of “determining the occurrence of either a non-restricted
fault or a restricted fault” and “closing said bypass contractor only upon the
determination of a non-restricted fault” in rejecting claim 16?
(3) Under § 102, has Appellant shown that the Examiner erred in
finding that Tikkanen discloses a controller that includes a “means for
determining the occurrence of a fault” and a “means for identifying said
determined fault occurrence either as a non-restricted fault of a restricted
fault” such that a means for “causing said motor to be connected to said
source of AC power through a bypass contactor only when said identified
occurring fault is a non-restricted fault” in rejecting claim 17?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Appellant’s Disclosure
1. The disclosure shows and describes a Variable Frequency Drive
(VFD) program residing in the motor controller 12 or another
controlling device (e.g., computer or Programmable Logic Controller
(PLC)). This VFD program identifies a fault condition and
determines whether the fault is a non-restricted or restricted fault
(Spec. 5:31-36 and 6:19-7:8; Figs. 1-2).
2. The Specification describes a restricted fault condition to include: a
ground fault on the motor leads, incoming power phase loss, motor
cable phase loss, motor overtemperature, motor bearing
overtemperature, gearbox overtemperature, overcurrent, motor stall,
underload, vibration switch, and undervoltage. (Spec. 2:29-3:7).
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3. The Specification describes non-restricted fault conditions to be
“faults that are not threatening to the motor, fusing, automatic bypass
hardware such as the contactors, or the mechanical system that is
being controlled such as a fan or pump.” (Spec. 3:10-14).

Tikkanen
4. Tikkanen discloses an AC motor bypass that includes a man machine
interface 10. The interface 10 includes a keypad 12 with buttons (i.e.,
DRIVE 12a, BYPASS 12b, RESET 12c, AUTO 12d, OFF 12e, and
HAND 12ƒ) connected to a control board 16 that has a μ-controller
18. (Tikkanen, col. 1, ll. 5-7 and col. 2, ll. 3-18; Fig. 1).
5. Tikkanen discloses the μ-controller 18 controls the signals used to
open and close the drive and bypass contactors depending on how and
if the motor is to be driven. The controller 18 contains code that
simulates a state machine 30 or 40 and determines the operating
condition of the contactors. (Tikkanen, col. 2, ll. 18-22, 46-48, 56,
and 57 and col. 4, ll. 26 and 27).
6. The controller 18 detects unacceptable conditions in the AC source
(e.g., overvoltage, undervoltage, or a possible malfunction in the
inverter) and enters the RESTART TRIAL or state 2. If the detected
condition lasts longer than a predetermined period, the controller
opens the output contactor and enters STOP DELAY or state 3.
(Tikkanen, col. 3, ll. 4-17; Figs. 2-3).
7. Once the motor stops at state 3, the controller enters BYPASS
DELAY or state 4 for a period of time to ensure the motor is fully
demagnetized and then goes to BYPASS or state 5. The bypass
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contactor is initially open when entering stage 5. (Tikkanen, col. 3, ll.
45-47 and 51-58; Fig. 2).
8. Tikkanen’s bypass contactor has two active operating modes. The
modes include: (1) an automatic mode when the AUTO 12d button is
pressed and the μ-controller 18 controls the operation of the motor,
and (2) a hand mode when the HAND 12ƒ button is pressed and the
user controls motor operation. (Tikkanen, col. 2, ll. 24-29 and col. 5,
ll. 2-6 and 15-17; Figs. 1 and 3).
9. Tikkanen’s bypass contactor is closed in the auto mode after the
controller 18 receives signals associated with the contactor’s closure.
(Tikkanen, col. 3, ll. 54-58).
10. Tikkanen discusses the OFF state opens the bypass contactor under
certain events, including a fault condition in the motor. (Tikkanen,
col. 4, ll. 52-64; Fig. 3).
11. Tikkanen discloses an inverter malfunction is a known condition in
which the bypass contactor closes and connects to the motor
(Tikkanen, col. 1, ll. 16-24).
12. Tikkanen discloses that an authorized person sends a signal to the
controller 18 to close the bypass contactor and run all the AC motors
in a HVAC system at full speed in an emergency situation using a
master operating panel. (Tikkanen, col. 3, ll. 32-42).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
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631 (Fed. Cir. 1987). “If the prior art reference does not expressly set forth
a particular element of the claim, that reference still may anticipate if that
element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Id. (quoting Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)) (internal
quotation marks and citations omitted).
When a claim uses “means for” language, there is a presumption that
the claim invokes 35 U.S.C. § 112, ¶ 6. Biomedino L.L.C. v. Waters Techs.
Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Means-plus-function limitations
must be construed by “look[ing] to the specification and interpret[ing] that
language in light of the corresponding, structure, material, or acts described
therein, and equivalents thereof, to the extent the specification provides such
disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994)
(en banc).

ANALYSIS
Claim 15 recites “a motor controller comprising a . . . means for
identifying an occurring fault and determining if said occurring fault is either
a non-restricted fault or a restricted fault.” As a preliminary matter, we note
that neither Appellant nor the Examiner indicates whether the “means for”
language found in claim 15 invokes 35 U.S.C. § 112, ¶ 6. When a claim
uses “means for” language, there is a presumption that the claim invokes
35 U.S.C. § 112, ¶ 6. Biomedino, 490 F.3d at 950. As such, we find that
claim 15 invokes 35 U.S.C. § 112, ¶ 6, and the above-quoted limitation shall
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be construed to cover the corresponding structure described in the
Specification and its equivalents. Donaldson, 16 F.3d at 1193. The
Specification describes a program residing in a motor controller 12, a
computer, or a PLC can be used to identify a fault condition and to
determine whether the fault is a non-restricted or restricted fault (FF 1).
Thus, the corresponding structure that performs the functions of the means-
plus-function limitations in claim 15 includes a program residing in a
controller, including a computer or PLC, and its equivalents.
Tikkanen discloses a μ-controller or motor controller 18 with code
that determines the operating condition of the drive and bypass contactors
(FF 5). The controller 18 detects unacceptable conditions in the AC source
(e.g., overvoltage, undervoltage, or a possible malfunction in the inverter)
and enters RESTART TRIAL or state 2 (FF 6). Undervoltage is one
example of a restricted fault (FF 2). On the other hand and as the Examiner
found (Ans. 8-9), a possible inverter failure is an example of a non-restricted
fault, since the Specification does not list this condition as a restricted fault
(FF 2). Additionally, Tikkanen further discloses an inverter malfunction is a
known condition in which the bypass contactor closes and, as such, connects
to the motor without threatening the motor or bypass hardware. (See FF 3
and 11). The controller 18, thus, identifies both restricted and non-restricted
faults. Also, if the detected condition lasts longer than a predetermined
period, the controller 18 opens the output contactor and enters STOP
DELAY or state 3 (FF 5-6). Therefore, Tikkanen discloses a means for
identifying a fault condition (e.g., controller 18 with code) that opens an
output contactor upon the fault identifying means determining the
occurrence of a fault.
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Once the motor stops at state 3 after detecting a fault, the controller 18
eventually enters BYPASS or state 5 (FF 7). However, at state 5, the bypass
contactor remains open and is closed only after the controller 18 receives a
signal to close the bypass contactor (FF 7-8). This may occur in one of two
modes (FF 8). In the first or hand mode, the HAND button 12ƒ is pressed
by the user (FF 4 and 8). For example, an authorized person presses the
HAND button 12ƒ on the master operating panel that sends a signal to the
controller 18 to close the bypass contactor and run all the AC motors in a
HVAC system at full speed in an emergency situation. (See FF 4 and 12).
In this hand mode, the user, not the controller 18, makes the determination
when to close the bypass contactor. Moreover, the Examiner’s interpretation
that Tikkanen’s controller “senses” a fault condition based on the user
pressing the HAND button 12ƒ and, therefore, determines whether a fault is
non-restricted or restricted (Ans. 10) is strained. The controller merely
responds to the user’s decision and does not meet “a motor controller
comprising a . . . means for identifying an occurring fault and determining if
said occurring fault is either a non-restricted fault or a restricted fault” as
recited in claim 15.
Additionally, Tikkanen does not provide any other examples of when
the user would press button 12ƒ. As such, we must speculate as to the
conditions when the user presses the HAND button 12ƒ that closes the
bypass contactor. Moreover, the user may mistakenly press the HAND
button 12ƒ during a restricted fault condition. Thus, Tikkanen does not
necessarily disclose that, even if the user identifies a fault, the user
determines if it is either a non-restricted or restricted fault.
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Tikkanen also discloses a second bypass mode. In the auto mode, the
controller 18 controls the motor operation once the AUTO button 12d is
pressed (FF 8). As the Examiner acknowledges (Ans. 10-11), the discussion
of the auto mode is brief. At best, Tikkanen discloses the bypass contactor
is closed only after the controller 18 receives signals associated with the
contactor’s closure (FF 9). Tikkanen is silent as to when the signals are sent
and whether the signals are associated with fault conditions. (See id.) As
discussed previously, in the context of the prior art, Tikkanen discloses that
the bypass contactor closes when the inverter fails (FF 11). However, this
closure of the bypass contactor is not discussed in the context of the auto
mode. Thus, even if it is probable or possible that this would be a condition
in which the controller 18 receives signals to close the bypass contactor in
the auto mode, we are constrained in finding that Tikkanen does not
necessarily disclose a controller with code or an equivalent that closes the
bypass contactor in only a non-restricted fault condition. See Robertson, 169
F.3d at 745.
Moreover, Tikkanen’s discussion of the OFF state when the bypass
contactor is open during a motor fault (FF 10) does not establish when the
bypass contactor in the auto mode will necessarily be closed. The mere fact
that the controller 18 will likely not close the bypass contactor, if a fault
condition occurs in the motor, is not sufficient to establish a claim limitation
is necessarily or inherently present in Tikkanen. See Robertson, 169 F.3d at
745. Thus, again, we are constrained to find that Tikkanen fails to disclose
the controller necessarily includes a means for identifying a fault and
determining if the occurring fault is non-restricted or restricted such that the
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controller closes the bypass contactor only when the fault is a non-restricted
fault as required by claim 15.
Claim 3 depends from claim 15, and we are likewise persuaded by
Appellant’s arguments for the reasons discussed above in connection with
claim 15. Also, since independent claim 17 includes commensurate means-
plus-function limitations of a “means for identifying said determined fault
occurrence either as a non-restricted fault or a restricted fault” and “means
for . . . causing said motor to be connected to said source of AC power
through a bypass contactor only when said identified occurring fault is a
non-restrictive fault,” we are also persuaded by Appellant’s argument with
respect to claim 17.
Lastly, the scope of claim 16 differs from claims 15 and 17. First,
claim 16 is a method claim. Second, claim 16 does not recite a means-for or
step-for limitation. Third, claim 16 recites “determining the occurrence of
either a non-restricted fault or a restricted fault” and not determining if the
fault occurrence is either a non-restricted or restricted fault. While this
claim presents a closer question, claim 16 nevertheless recites the step of
“opening said output contactor and then closing said bypass contactor only
upon the determination of a non-restricted fault.” As discussed above,
Tikkanen does not disclose that the controller 18 implements the recited
functionality in either the auto mode or the hand mode, nor does the user
necessarily close the bypass contactor only upon the determination of a non-
restricted fault.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claims 3 and 15-17 under 35 U.S.C. § 102 as being anticipated by
Tikkanen.
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OBVIOUSNESS REJECTIONS
Rejection Over Tikkanen and Shepeck
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being
obvious over Tikkanen and Shepeck (Ans. 7). Appellant argues: (1) that
claim 4 is not taught by Tikkanen for the reasons set forth regarding claim
15, and (2) Shepeck does not cure the purported deficiency (App. Br. 8).
We are persuaded for the reasons discussed above in connection with claim
15 and agree that Shepeck does not cure the deficiencies of Tikkanen.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claim 4 under 35 U.S.C. § 103.

Rejection Over Tikkanen and Shepeck
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over Tikkanen and Wielebski (Ans. 7-8). Appellant argues: (1) that
claim 5 is not taught by Tikkanen for the reasons set forth regarding claim
15, and (2) Wielebski does not cure the purported deficiency (App. Br. 8-9).
We are persuaded for the reasons discussed above in connection with claim
15 and agree that Wielebski does not cure the deficiencies of Tikkanen.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claim 5 under 35 U.S.C. § 103.

CONCLUSIONS
(1) Under § 102, Appellant has shown that the Examiner erred in
finding that Tikkanen discloses a motor controller that includes a “means for
identifying an occurring fault and determining if said occurring fault is either
a non-restricted fault of a restricted fault” such that the controller closes the
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bypass contactor only when said fault identifying means determines the
occurrence of a non-restricted fault in rejecting claims 3 and 15.
(2) Under § 102, Appellant has shown that the Examiner erred in
finding that Tikkanen discloses a method for controlling an AC motor that
includes the steps of “determining the occurrence of either a non-restricted
fault or a restricted fault” and “closing said bypass contractor only upon the
determination of a non-restricted fault” in rejecting claim 16.
(3) Under § 102, Appellant has shown that the Examiner erred in
finding that Tikkanen discloses a controller that includes a “means for
determining the occurrence of a fault” and a “means for identifying said
determined fault occurrence either as a non-restricted fault of a restricted
fault” such that a means for “causing said motor to be connected to said
source of AC power through a bypass contactor only when said identified
occurring fault is a non-restricted fault” in rejecting claim 17.
(4) For the reasons discussed above in connection with claim 15 and
because Shepeck does not cure the deficiencies of Tikkanen, we are
persuaded the Examiner erred in rejecting claim 4 under 35 U.S.C. § 103(a)
as being obvious over Tikkanen and Shepeck.
(5) For the reasons discussed above in connection with claim 15 and
because Wielebski does not cure the deficiencies of Tikkanen, we are
persuaded the Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a)
as being obvious over Tikkanen and Wielebski.

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DECISION
The decision of the Examiner to reject claims 3-5 and 15-17 is
reversed.

REVERSED

pgc

Michael M. Rickin, Esq.
AAB Inc.
Legal Department- 4U6
29801 Euclid Avenue
Wickliffe, OH 44092-2530
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