Ex Parte Contratto et al

Patent Trial and Appeal Board

May 26, 2016

12318250 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/318,250 12/23/2008 Michael S. Contratto
58982 7590 05/31/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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.
08350.0069-00000 9610
EXAMINER
ALSOMIRI, MAID! A
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
regional-desk@finnegan.com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAELS. CONTRATTO and WILLIAM T. LARKINS
Appeal2014-004460
Application 12/318,250
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael S. Contratto and William T. Larkins (Appellants)1 seek
review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject
claims 1-20 under 35 U.S.C. § 102(b) as anticipated by St. Clair (US
2004/0124049 Al, published July 1, 2004). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Active Shock, Inc. and Caterpillar Inc. as the real
parties in interest. Br. 4.
Appeal2014-004460
Application 12/318,250
BACKGROUND
The disclosed subject matter "is directed to a vibration control system,
and more particularly, a vibration control system with virtual end stops."
Spec. i-f 1. Claims 1, 8, and 14 are independent. Claim 1 is reproduced
below, with emphasis added:
1. A component vibration control system,
compnsmg:
a first physical end stop;
a second physical end stop;
a damper assembly;
a position sensor configured to determine a
component position; and
a processor in communication with the
position sensor and the damper assembly, the
processor configured to:
set a first virtual end stop position;
regulate damping of the damper
assembly as the component moves toward the
first virtual end stop position;
determine a first distance between the
component position and a set position when
the component has moved toward the first
virtual end stop position; and
determine a second virtual end stop
position as a function of the first distance.
DISCUSSION
Independent claims 1 and 14 each recite a processor configured to
"regulate damping of the damper assembly as the component moves toward
the first virtual end stop position." Br. 22, 25 (Claims App.) (emphasis
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Appeal2014-004460
Application 12/318,250
added). Independent claim 8 recites a method that includes the step of
"regulating damping as the component moves toward the first virtual end
stop position." Id. at 24 (emphasis added). In rejecting the independent
claims as anticipated by St. Clair, the Examiner does not appear to cite any
disclosure in St. Clair to address the limitations at issue. See Final Act. 2, 4,
6 (dated June 20, 2012).
Citing page 2 of an Advisory Action dated September 25, 2012,
Appellants state that the Examiner identifies first (upper) control limit 76
and second (lower) control limit 78 in St. Clair as the "first virtual end stop
position" and "second virtual end stop position" recited in the independent
claims. Br. 10. Appellants argue that St. Clair does not satisfy the
limitations at issue, however, because St. Clair "only regulates damping
after control limits 76 and 78 are passed by a component, rather than as the
component moves towards control limits 76 or 78." Id. at 11 (claims 1 and
14) (additional emphasis provided); id. at 17-18 (relying on prior argument
for claim 8).
In response, the Examiner cites "at least i-fi-10012-16[,] 33, 46, 47,
claim 18, figs. 6, 7 and related text" in St. Clair. Ans. 2. The Examiner also
quotes portions of paragraph 13, stating "damping device is operating
between an upper end stop control limit and a lower end stop control
limit. ... sensor system senses that the damping device has passed either the
upper end stop control limit or the lower end stop control limit." Id.
We agree with Appellants that the record here does not support the
Examiner's finding that St. Clair expressly or inherently discloses the
limitations at issue. As noted by Appellants (Br. 11 ), St. Clair, instead,
teaches changing (i.e., regulating) the damping level of disclosed damping
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Appeal2014-004460
Application 12/318,250
device 50 after a component passes either control limits 76 or 78. See St.
Clair i-f 32 ("A first (upper) control limit 76 and a second (lower) control
limit 78 define the positions along the travel distance 74 at which a simple
sensor is set to trip, changing the damping level by applying a predetermined
function that generally increases the steady state current to the damping
device 50.")2, quoted, in part, at Br. 11; see also St. Clair i-f 34 ("The control
system 88 receives a signal 92 from the sensor system when an end stop
limit control limit 76, 78 is tripped, and determines and generates an end
stop function."), cited at Br. 11.
We have considered the paragraphs, claim, and figures listed by the
Examiner (Ans. 2), but do not find in them disclosures that, without
modification, support the Examiner's position. 3 As an initial matter, we note
that the Examiner has not identified any specific passages relied upon
(except in paragraph 13) to address the limitations at issue. As to paragraph
13, the passage excerpted by the Examiner (Ans. 2) provides, in full:
In another embodiment, the first state may be executed
when the sensor system senses that the damping device is
operating between an upper end stop control limit and a lower
end stop control limit. The second state may be executed when
the sensor system senses that the damping device has passed
2 For quotations from St. Clair, we omit emphasis of reference
numerals.
3 In fact, certain paragraphs relied on by the Examiner provide clear
support for Appellants' positions. See, e.g., St. Clair i-f 4 7 ("When the
suspension is outside of the end stop control limits 76, 78, the level of
damping applied to the suspension is increased pursuant to the logic of the
control function/algorithm. FIG. 7 shows that when an end stop trigger
point 7 6, 78 is tripped, the control signal supplied to the damping device 50,
in the form of an end stop control pulse, is rapidly increased (ramped-up)
172 in order to prevent an end stop collision.").
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Appeal2014-004460
Application 12/318,250
either the upper end stop control limit or the lower end stop
control limit.
St. Clair i-f 13.
Here, the Examiner omits the disclosed distinction between the "first
state" and the "second state." Ans. 2. When viewed in context, this
disclosure 13 supports Appellants' position rather than the Examiner's
position because the "second state"-in which the damping level changes-
occurs after "the damping device has passed either the upper end stop
control limit or the lower end stop control limit." St. Clair i-f 13 (emphasis
added); see also id. i-f 12 (discussing the "first steady state function" and
"second steady state function").
For these reasons, we do not sustain the rejection of independent
claims 1, 8, and 14, and also do not sustain the rejection of dependent claims
2-7, 9-13, and 15-20.
DECISION
We REVERSE the decision to reject claims 1-20.
REVERSED
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