Ex Parte Boyle et al

Patent Trial and Appeal Board

Feb 7, 2013

11877168 (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID BOYLE, MICHAEL HOLMES, and
MALCOLM WILLIAMS
__________

Appeal 2011-006696
Application 11/877,168
Technology Center 3700
__________

Before LORA M. GREEN, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a portable
ventilator apparatus. The Examiner has rejected the claims as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-006696
Application 11/877,168

2
STATEMENT OF THE CASE
Claims 36-69 are on appeal. Claim 36 is representative of the subject
matter on appeal and reads as follows (emphasis added):
36. A portable ventilator apparatus comprising:
a compressor disposed within the portable ventilator;
a brushless direct current (BLOC) motor, said
compressor driven by said BLOC motor;
a plurality of sensors disposed within the portable
ventilator that provide a plurality of analog signals, said
plurality of analog signals representative of an angular position
of said BLOC motor;
a computation circuit disposed within the portable
ventilator and in communication within the plurality of sensors
configured to compute said angular position of said BLOC
motor from said plurality of analog signals; and
a speed control servo disposed within the portable
ventilator and in communication with said BLOC motor for
driving an angular speed of the BLOC motor to a command
speed provided to said computation circuit.

Claims 50 and 63, the other independent claims, are also directed to a
portable ventilator apparatus comprising a plurality of analog signals
representative of an angular position of the BLOC motor.

The claims stand rejected as follows:
1

1
The Examiner‟s Answer contains several new grounds of rejection that
differ with the grounds of rejection set forth in the Final Office Action in
that the new grounds further rely on the disclosure of Stammer et al., US
4,847,555. We believe that the Examiner‟s intention was to supplement the
rejections set forth in the Final Office Action with Stammer and designated
each rejection as new grounds in order to allow Appellants the opportunity
to respond to this new evidence. We thus address these rejections in the
Appeal 2011-006696
Application 11/877,168

3
I. Claims 36, 37, 40-42, 49-51, 54-56, and 63 under 35 U.S.C.
§ 102(b) as being anticipated by Surjadi
2
as evidenced by
Stammer.
3
As Appellants have not argued the claims separately ,
we focus our analysis on claim 36 and claims 37, 40-42, 49-51, 54-
56, and 63 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(vii).
II. Claims 38 and 52 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Surjadi and Walter
4
as evidence by
Stammer.
III. Claims 39, 43-45, 47, 48, 53, 57-59, 61, and 62 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Surjadi and
Marx
5
as evidence by Stammer.
IV. Claims 64-69 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Surjadi, Marx and Brown
6
as evidence by
Stammer.
V. Claims 46 and 60 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Surjadi and Kidd
7
as evidence by
Stammer.

form presented in the Examiner‟s Answer and acknowledged in the Reply
Brief.
2
Surjadi et al., US 6,237,592 B1, issued May 29, 2001.
3
Stammer et al., US 4,847,555, issued Jul. 11, 1989.
4
Walter et al., US 6,907,373 B2, issued Jun. 14, 2005.
5
Marx et al., US 6,479,987 B1, issued Nov. 12, 2002.
6
Brown, US 4,656,553, issued Apr. 7, 1987.
7
Kidd, US 6,979,181 B1, issued Dec. 27, 2005.
Appeal 2011-006696
Application 11/877,168

4
Claims 36, 50, and 63 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 12,
and 36 of US 7,607,437 B2, issued Oct. 27, 2009 (Final Rej. 8). The
Examiner has also provisionally rejected claims 36, 42, 46, 49, 50, 56, 60,
and 63 under the judicially-created doctrine of obviousness-type double
patenting as being unpatentable over various groups of claims 36, 39, 42, 45,
and 49 of copending Application No. 11/877,117 (id.). Appellants have not
traversed the merits of these rejections. We therefore summarily affirm each
rejection. See MANUAL OF PATENT EXAMINING PROCEDURE
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant‟s brief, that ground of rejection will be summarily sustained
by the Board.”).
I.
Issue
The Examiner rejects claims 36, 37, 40-42, 49-51, 54-56, and 63
under 35 U.S.C. § 102(b) as being anticipated by Surjadi as evidenced by
Stammer. The Examiner finds that “Surjadi discloses the use of Hall-effect
sensors” (Ans. 7), but “is silent to the detailed operation of Hall Effect
sensors to provide angular position and speed” (id. at 6). The Examiner
relies on the disclosure of Stammer for evidence on the “the operation of
Hall Effect sensors.” (Id.) The Examiner finds that
Stammer discloses Hall Effect sensors to be position indicators
utilized on a brushless DC motor for control of electrical
communication. (Column 3, Lines 42-44). Additionally,
Stammer discloses the signals from the Hall effect sensors are
combined by a processor utilizing a circuit in order to generate
a speed dependent frequency signal representative of the
Appeal 2011-006696
Application 11/877,168

5
position of the Hall effect sensor‟s and the operational speed of
the brushless DC motor (Column 3, Lines 51-61).
(Id.)
Appellants contend that, “[i]n Figure 3 [of Stammer], Hall effect
sensors 8, 9, and 10 are utilized, evidently, as direct digital inputs to logic
circuitry in the form of nand gates and invertors. Absent other description in
Stammer, it thus appears that Hall effect sensor 8, 9, and 10 supply digital
outputs.” (Reply Br. 4.)
The issue presented is:
Does the evidence of record support the Examiner‟s findings that
Surjadi, as evidence by Stammer, disclose an apparatus comprising a
plurality of sensors configured to compute the angular position of a BLOC
motor as required by claim 36?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses that “the speed of the BLOC motor,
and hence the air flow rate, may be precisely controlled using the outputs of
analog Hall effect sensors to calculate angular position and speed for a speed
control servo” (Specification 12, ¶ 43).
FF2. Surjadi discloses that “[t]he motor 18 speed is controlled by the
motor controller 23 which effects changes in motor speed by means of a
control signal on control line 24 provided to the motor power supply 20”
(Surjadi col. 5, ll. 9-12), and that “[t]he output signal from the [Hall-effect
(speed)] sensors 42 is passed on a control line 32 to a motor activity detector
50, and the signal representing the measured pressure appears on another
Appeal 2011-006696
Application 11/877,168

6
control line 26 to be passed to a pressure activity detector 52” (id. at col. 6,
ll. 8-12; see also, id. at col. 6, ll. 1-2).
FF3. Surjadi discloses
a flow generator for the supply of breathable gas comprising an
electric motor driving a turbine, control circuitry, a pressure
transducer to sense delivery pressure at or remote from said
flow generator and whose electrical output is connected to said
control circuitry, and sensing means connected to said control
circuitry, and wherein said control circuitry is operable to
determine from said sensing means whether the electric motor
or the turbine are operating

(id. at col. 3, ll. 16-24) (emphasis added).
FF4. Surjadi discloses that “[t]he electric motor operation sensing
means can be Hall-effect sensors integral of, or mounted to the electric
motor” (id. at col. 3, ll. 56-57).
FF5. Stammer discloses that
Hall-effect sensors, are used as position indicators by brushless
DC motors for the control of the electronic commutation. The
sensors … are arranged within the range of the signal generator
disk or commutation diaphragm 6 so that, by combining the
signals thereof, information as to the angular position of the
rotor is generated.

(Stammer col. 3, ll. 42-48.)
Principles of Law
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).
The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic of the prior art. In re Best, 562
Appeal 2011-006696
Application 11/877,168

7
F.2d 1252, 1254–55 (CCPA 1977) (“Whether the rejection is based on
„inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness‟ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO‟s inability to manufacture products or to
obtain and compare prior art products.”); see also Crown Operations Int'l,
Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner
meets this “burden of production by „adequately explaining the
shortcomings it perceives so that the applicant is properly notified and able
to respond.‟” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof
then shifts to the applicant “to prove that the subject matter shown to be in
the prior art does not possess the characteristic relied on.” Best, 562 F.2d at
1255 (“Where … the claimed and prior art products are identical or
substantially identical, … the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product.”); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
Analysis
We are not persuaded by Appellants‟ arguments that, “Surjadi‟s
sensors measure speed, not angular position” (App. Br. 12). Surjadi
discloses the use of Hall-effect sensors (FF3-FF4), which have the capability
of determining angular position (FF5). The Examiner presented a sound
rationale for believing that the claimed portable ventilator apparatus is the
Appeal 2011-006696
Application 11/877,168

8
same or substantially the same as devices disclosed in Surjadi. Having done
so, Appellants have the burden of showing that they are not. Best, 562 F.2d
at 1254–55.
Appellants have not met this burden. Appellants merely argue that,
based on the disclosure of Stammer, Hall-effect sensors supply digital
outputs (Reply Br. 4). This is insufficient because the argument does not
address the use of Hall-effect sensors as described by Surjadi. As such,
Appellants have not demonstrated that the Hall-effect sensors disclosed in
Surjadi are not capable of being configured to compute angular position of a
BLOC motor from a plurality of analog signals, as required by claim 36, or
that the configuration of the Hall-effect sensors disclosed in Surjadi is
different from the configuration of the Hall-effect sensors disclosed in the
Specification (see e.g., FF1).
We are also not persuaded by Appellants‟ arguments that “Surjadi
fails to disclose a „a speed control servo disposed within the portable
ventilator and in communication with said BL[O]C motor for driving said
angular speed of the BL[O]C motor to a command speed provided to said
computation circuit‟” (App. Br. 12). Surjadi discloses that the Hall-effect
(speed) sensors are used to control the speed of the motor (FF2).
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner‟s findings that Surjadi anticipates claim 36. Claims 37, 40-42, 49-
51, 54-56, and 63 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-006696
Application 11/877,168

9
II.
The same issues are dispositive of each obviousness rejection on
appeal. First, each of the rejections for obviousness relies on the Examiner‟s
finding that Surjadi, as evidence by Stammer, identically discloses the
apparatus of claim 36. “It is well settled that „anticipation is the epitome of
obviousness.‟” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly,
Surjadi also renders claim 36 obvious. Claims 37-69 fall with claim 36. 37
C.F.R. § 41.37(c)(1)(vii).
Second, Appellants further argue that the additionally cited references,
Walter, Marx, Brown and Kidd, “significantly change[] the principal mode
of operation of Surjadi” (App. Br. 13-20). We are note persuaded. “A
change in the basic principles” refers to change that is fundamental in scope
to the scientific or technical principles under which the invention is designed
to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested
combination of references would require a substantial reconstruction and
redesign of the elements shown in [the primary reference] as well as a
change in the basic principles under which the [primary reference]
construction was designed to operate.”). It cannot be said that “change in the
basic principles” occurs by all modifications of a prior art device which
changes the manner in which the device operates. Otherwise, even nominal
modification to a prior art device could be considered a “change in the basic
principles,” thereby eliminating the need for obviousness analysis under 35
U.S.C. § 103.
Appeal 2011-006696
Application 11/877,168

10
Here, Appellants fail to provide an adequate rationale explaining how
the teachings of Walter, Marx, Brown and Kidd, as relied on by the
Examiner, would fundamentally change the basic principle under which the
device of Surjadi is designed to operate.
SUMMARY
We affirm all rejections on appeal.

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).

AFFIRMED

cdc