Ex Parte Bresie

Patent Trial and Appeal Board

Oct 25, 2012

11674600 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DON BRESIE
____________

Appeal 2010-010437
Application 11/674,600
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010437
Application 11/674,600

2
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 - 22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant seeks review of the Examiner’s rejection of claims 1-15 and
17-22 under 35 U.S.C. § 103(a) as unpatentable over Franchet et al. (US
6,796,120 B2, iss. Sep. 28, 2004) and Hewett (US 5,329,767, iss. Jul. 19,
1994) (Ans. 3-6); and the Examiner’s rejection of claim 16 under 35 U.S.C.
§ 103(a) as unpatentable over Franchet, Hewett, and Meyer (US 4,144,980,
iss. Mar. 20, 1979) (Ans. 4-6).
The claimed subject matter relates to an actuator configured for four-
quadrant operation. Appellant argues claims 1-15 and 17-22 as a group.
App. Br. 4-6. Independent claim 1 is selected as the representative claim,
and claims 2-15 and 17-22 will stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2009). Claim 1 is reproduced below with the disputed
limitations emphasized:
Claim 1: An actuator comprising:
a reversible hydraulic pump configured to produce
variable hydraulic pressure;
a hydraulic cylinder assembly comprising:
a cylinder bore; and
a piston positioned within the cylinder bore, the
piston being axially movable relative to the cylinder bore,
and the piston having a rod-end side and a cylinder-end
side;
a hydraulic circuit hydraulically coupling the reversible
hydraulic pump to the hydraulic cylinder assembly;
wherein:
the actuator is configured for four-quadrant
operation, whereby the actuator can produce force in
Appeal 2010-010437
Application 11/674,600

3
support of and in resistance to each of two directions of
axial motion; and
actuated axial motion of the piston relative to the
cylinder bore is accomplished without the use of check
valves, pressure regulating valves, or actively controlled
valves.

ANALYSIS
Claims 1-15 and 17-22
The Examiner finds that Franchet discloses an actuator having a
variable-torque back-drivable/reversible electric motor (3a,b), a hydraulic
transducer (4a,b) coupled to the motor and having first and second ports, a
hydraulic cylinder assembly (12, 14, 16), a first flow conduit (18)
hydraulically coupling the first port of the hydraulic transducer to the rod-
end side of the piston, a second flow conduit (18) hydraulically coupling the
second port of the hydraulic transducer to the cylinder-end side of the piston,
a hydraulic accumulator (50), and a servo amplifier (8a,b) electrically
coupled to the electric motor (3a,b), wherein actuated axial motion of the
piston relative to the cylinder bore is accomplished without the use of
valves. Ans. 3. The electric motor (3a,b), hydraulic transducer (4a,b),
hydraulic cylinder assembly (12, 14, 16), hydraulic accumulator (50), and
first and second flow conduits (18) are structurally integrated as a modular
unit having an outer surface. Id. Actuated axial motion of the piston (12)
relative to the cylinder bore (16) requires no hydraulic communication with
any component external to the modular unit. Id. The hydraulic accumulator
(50) has a fixed volume, and is at least partially filled with a compressible
gas held at a pressure greater than or equal to ambient pressure. Ans. 3-4
(citing Franchet, col. 4, ll. 6-16). The actuator is capable of use in a land
Appeal 2010-010437
Application 11/674,600

4
vehicle. Ans. 4. The Examiner admits that Franchet does not explicitly
teach the actuator being configured for four-quadrant operation, or the pump
being back drivable in two directions. Id.
The Examiner finds, however, that Hewett discloses an actuator
having a reversible hydraulic pump (30), a hydraulic cylinder assembly (12),
and a hydraulic circuit coupling the pump and cylinder assembly, wherein
the actuator is configured for four-quadrant operation, and the pump is back
drivable in two directions. Id. The Examiner concludes that “[i]t would
have been obvious to one having ordinary skill in the art at the time the
invention was made to configure the actuator for four-quadrant operation,
and have the pump be back drivable in two directions as taught by Hewett
for the purpose of driving and positioning a load.” Id.
Appellant argues that obviousness of claims 1-15 and 17-22 was not
established because the Examiner failed to provide a logical explanation for
combining Franchet and Hewett. App. Br. 4. Appellant explains that the
Examiner’s rationale for combining Franchet and Hewett failed because it
was premised on Franchet’s actuator not being able to drive and position a
load, the premise being incorrect. Id. While Franchet indeed discloses an
actuator that can drive and position a load, we disagree that the Examiner’s
basis for modifying Franchet’s actuator for four-quadrant operation was
necessarily premised on Franchet being incapable of driving and positioning
a load. Indeed, the Examiner explains in greater detail that:
Four-quadrant operation allows for the actuator to both drive a
load and resist external force applied to the load in both
directions of linear travel. Driving and positioning a load
requires that the load be positioned with a predictable degree of
accuracy and responsiveness for the given application.
Franchet et al[.] discloses an actuator for driving and
Appeal 2010-010437
Application 11/674,600

5
positioning a load, but does not explicitly teach that the actuator
is configured for four-quadrant operation, thus one of ordinary
skill in the art would be encouraged to look to Hewett for
details concerning a driving configuration. Hewett also
discloses an actuator for driving and positioning a load and
explicitly teaches that the actuator has a driving configuration
configured for four-quadrant operation (Column 2, Lines 10-
31), with the benefits of improved control of piston movement
(Column 1, Lines 14-19) in both directions of travel, as well as
improved system responsiveness and efficiency (Column 3,
Lines 13-39), thus leading to improvements in driving and
positioning a load.

Ans. 5-6. We agree with the Examiner that Hewett teaches using its back-
drivable pump to create an actuator capable of four-quadrant operation, and
that four-quadrant operation provides improved control of piston movement
and improves system responsiveness and efficiency. The Examiner’s stated
reason, e.g., improved control of piston movement and improved system
responsiveness and efficiency, is rational and sufficient to support the
conclusion of obviousness. For an obvious analysis, there need only be an
articulated reasoning with rational underpinnings to support a motivation to
combine teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007).
Appellant argues additional bases for reversing the obviousness
rejection. Appellant first contends that operation of Hewett’s actuator
involves check and circulation valves, while Franchet does not disclose such
valves, and that one of ordinary skill in the art reading Franchet would be
discouraged from following the approach taken in Hewett. App. Br. 5.
Appellant further refers to this discouragement as “teaching away” from the
following recitation of claim 1: “actuated axial motion of the piston relative
Appeal 2010-010437
Application 11/674,600

6
to the cylinder bore is accomplished without the use of check valves,
pressure regulating valves, or actively controlled valves.” Id. (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). The Examiner does not address
this allegation in the Examiner’s Answer; however, Appellant has not
explained why placement of Hewett’s back-drivable pump into Franchet’s
actuator would require use of check or circulation valves in Franchet,
particularly given that Franchet utilizes a variable-torque motor that is stated
in Appellant’s specification to obviate the need for valves. Spec. 16, ll. 16-
22.
Appellant also alleges that combining Hewett’s valve-operated
actuator technology with Franchet’s valveless technology would change the
principle of operation of Franchet, and would therefore not be obvious.
App. Br. 6 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)). Appellant
merely states that the principle of operation of Franchet will change without
providing sufficient guidance as to why it does. The argument is therefore
unpersuasive. Appellant’s argument is also unpersuasive in that it is based
upon a mischaracterization of the rejection. Contrary to Appellant’s
assertion, the modification of Franchet in view of Hewett retains Franchet’s
features, and simply configures the actuator for four-quadrant operation, as
taught by Hewett. Ans. 5-6.
We sustain the rejection of claims 1-15 and 17-22 under § 103(a) as
being unpatentable over Franchet and Hewett.
Claim 16
Appellant does not advance any argument suggesting that claim 16
might be patentable over Franchet, Hewett, and Meyer if claim 1 is
unpatentable over Franchet and Hewett. We therefore sustain the rejection
Appeal 2010-010437
Application 11/674,600

7
of claim 16 under § 103(a) as unpatentable over Franchet, Hewett, and
Meyer.
DECISION
We AFFIRM the Examiner’s rejection of claims 1-15 and 17-22 under
§ 103(a) as being unpatentable over Franchet and Hewett.
We AFFIRM the Examiner’s rejection of claim 16 under § 103(a) as
being unpatentable over Franchet, Hewett, and Meyer.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc