Ex Parte Lingk

Patent Trial and Appeal Board

Jan 10, 2017

13126699 (P.T.A.B. Jan. 10, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
56/497 5032
EXAMINER
CASEY, LIAM R
ART UNIT PAPER NUMBER
2863
MAIL DATE DELIVERY MODE
13/126,699 04/28/2011
7590757
BGL
P.O. BOX 10395
CHICAGO, IL 60610
Christoph Lingk
01/11/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH LINGK
Appeal 2015-007156
Application 13/126,699
Technology Center 2800
Before TERRY J. OWENS, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of:
1. claims 16—21, 26—31, and 36 as unpatentable over Fry2 in view of
Williams3;
1 In this decision we reference the Specification filed Apr. 28, 2011
(“Spec.”), the Final Office Action mailed Sept. 29, 2014 (“Final Act.”), the
Appeal Brief filed Feb. 19, 2015 (“App. Br.”), the Examiner’s Answer
mailed June 22, 2015 (“Ans.”), and the Reply Brief filed July 23, 2015
(“Reply Br.”).
2 Fry, US 5,173,693, issued Dec. 22, 1992 (“Fry”).
3 Williams et al., US 2004/0173735 Al, published Sept. 9, 2004
(“Williams”).
Appeal 2015-007156
Application 13/126,699
2. claims 22—25, 32—35, and 37 as unpatentable over Fry and
Williams in further view of Gordon4;
3. claim 38 as unpatentable over Fry, Williams, and Gordon in further
view of Hafle5;
4. claims 39 and 40 as unpatentable over Fry and Williams in further
view of Rogers.6
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant claims absolute angle coding and an absolute angle
measuring device for use in determining the absolute position of a body. See
claims 16 and 26; Spec. 1^1,2.
A copy of the independent claims (16 and 26), taken from the Claims
Appendix of the Appeal Brief, is illustrative and set forth below (bracketed
numbering added):
16. An absolute angle coding comprising:
a number Na of first code sequences disposed in
succession within 360°, wherein each of said number Na of first
code sequences comprises first code elements that as a group
define a first length and each of said first code elements defines
a first angle sector;
a number Nb of second code sequences disposed in
succession within 360°, wherein each of said number Nb of
second code sequences comprises second code elements that as
a group define a second length and each of said second code
elements defines a second angle sector, wherein said number
4 Gordon, US 5,457,371, issued Oct. 10, 1995 (“Gordon”).
5 Hafle et al., US 4,628,298, issued Dec. 9, 1986 (“Hafle”).
6 Rogers, US 4,524,347, issued June 18, 1985 (“Rogers”).
2
Appeal 2015-007156
Application 13/126,699
Na of first code sequences and said number Nb of second code
sequences in combination absolutely unambiguously encode
said 360°, wherein:
Na is greater than or equal to 2;
Nb is greater than or equal to 2 and Na is not equal to Nb;
said first length is not equal to said second length;
said first angle sector has a size that is identical to a size
of said second angle sector; and
wherein each of said number Na of first code sequences
and each of said number Nb of second code sequences are
disposed in one common track, in that a part of said number Na
of first code sequences and a part of said number Nb of second
code sequences are disposed in alternation, wherein when said
number Na of first code sequences and said number Nb of
second code sequences are scanned position values regarding an
absolute position will be generated.
26. An absolute angle measuring device, comprising:
[1] an angle coding comprising:
a number Na of first code sequences disposed in
succession within 360°, wherein each of said number Na
of first code sequences comprises first code elements that
as a group define a first length and each of said first code
elements defines a first angle sector;
a number Nb of second code sequences disposed in
succession within 360°, wherein each of said number Nb
of second code sequences comprises second code
elements that as a group define a second length and each
of said second code elements defines a second angle
sector, wherein said number Na of first code sequences
and said number Nb of second code sequences in
combination absolutely unambiguously encode said 360°,
wherein:
Na is greater than or equal to 2;
Nb is greater than or equal to 2 and Na is not equal
to Nb;
3
Appeal 2015-007156
Application 13/126,699
said first length is not equal to said second length;
said first angle sector has a size that is identical to
a size of said second angle sector; and
wherein each of said number Na of first code
sequences and each of said number Nb of second code
sequences are disposed in one common track, in that a
part of said number Na of first code sequences and a part
of said number Nb of second code sequences are
disposed in alternation; and
[2] a detector array for scanning said number Na of first
code sequences and said number Nb of second code sequences
and for generating code words; and
[3] a decoding device for decoding said code words and
for generating position values regarding an absolute position.
App. Br. 24, 26—27 (Claims Appendix).
Independent Claims 16 and 26
Regarding claim 16, the Examiner finds that Fry discloses absolute
position coding that includes first and second repeated fragments or code
sequences where first and second code elements define a sector
corresponding to the physical resolution of the encoder. Final Act. 2—3
(citing Fry Fig. 1, 1:15—17, 2:40—65). The Examiner also finds that Fry
discloses sequence lengths that suggest sequences of various lengths
disposed a number of times in succession in accordance with those sequence
lengths. Id. The Examiner additionally finds that Fry discloses that the
sequences are scanned by a reading (optical) head and an absolute position is
generated. Id. at 4 (citing Fry 3:23—37, 4:35—37).
The Examiner finds that “both linear and rotary encoders are well
known in the art of absolute position encoding and both are known to
employ similar technology.” Id. at 4. The Examiner further finds that it
4
Appeal 2015-007156
Application 13/126,699
would have been within the level of creativity of a skilled artisan to
“dispos[e] the sequence of Fry over 360° such that the angular position
coding would become an absolute angle coding that unambiguously encodes
said 360°” in view of Williams’ disclosure “that a repeating pattern for a
position encoder may be equivalent to a circular encoder that wraps around
at the point of repetition.” Id. (citing Williams 129). The Examiner also
finds that it would have been obvious to modify the coding of Fry by
disposing the first and second sequence over 360° of a circular encoder and
define first and second angle sectors in order to “be applied to devices, such
as knobs and steering wheels, where the desired position information is an
angle of orientation of the device.” Id. at 5. Because each sequence over
360° would define an angle sector proportional to the length of that
sequence, the first angle sector would be equal to the second angle sector
where the lengths of the sequences are equal. Id. at 4—5.
Regarding independent claim 26, which is directed to an absolute
angle measuring device and requires (1) “a detector array for scanning [the
first and second code sequences] and for generating code words” and (2) “a
decoding device for decoding said code words and for generating position
values regarding an absolute position” in addition to the absolute angle
coding of claim 16, the Examiner finds that Fry discloses an absolute
position measuring device (Fig. 3), position coding (Fig. 1) as discussed
above with respect to claim 16, a detector array (Fig. 5, item 44; 4:33—63),
and a decoder device (Fig. 3, item 26; Fig. 6; 5:17—63; 3:23—37). Id. at 6—7.
For the reasons discussed above with respect to claim 16, the Examiner finds
that it would have been obvious to dispose the sequence of Fry over 360°
5
Appeal 2015-007156
Application 13/126,699
such that the angular position coding would become an absolute angle
coding in view of Williams. Id. at 7—8 (citing Williams 129).
In contesting the combination of Fry and Williams, Appellant argues
that “Fry discloses a linear length encoder for measuring a linear position on
a table 16.” App. Br. 10 (citing Fry Figs. 1-3,4:20-32). Appellant also
argues that Williams “discloses only a single sequence with the length 2N
over 360°” and is “silent as to equivalence to an absolute position circular
encoder.” Id. at 10—11. In order to place Fry’s linear encoder in the form of
a circle to operate as a rotary encoder, Appellant contends that “[tjhere are
many issues that would need to be resolved” such as “adjoining bits of Fry”
that are said to be “attached to one another in such a way that they would
prevent the linear encoder from being placed in the shape of a circle” and
“the processing would need to take into account when multiple rotations of
the encoder occur.” Id. at 12. Appellant characterizes these considerations
as “extensive alterations” that “show that there would be sufficient
unpredictability to dissuade one of ordinary skill to alter Fry’s linear encoder
to be in the form of a circle and employ the altered encoder as an absolute
position rotary encoder.” Id.
The Examiner responds that “Appellant has not specifically pointed
out what difficulty the person of ordinary skill would be expected to find in
attaching elements so that they would be disposed in a circular fashion.”
Ans. 3. The Examiner acknowledges that “some minor adjustment would
need to be made to the connection of elements, but contends that the manner
of connection would be within the grasp of ordinary skill.” Id. The
Examiner notes that there is no detailed description in the Specification of
attaching elements so that they are disposed in a circular manner as
6
Appeal 2015-007156
Application 13/126,699
additional support for the level of ordinary skill in constructing a rotary
encoder. Id. The Examiner further finds that taking account of the number
of full revolutions necessary to determine absolute position is only a
modification for a multi-turn encoder that is not required by the claims. Id.
The Examiner also responds that having two sequences over 360° and
identical sizes of the angle sectors of the sequences as required by the claims
“are both consequences of the one modification of disposing the interleaved
sequence of Fry in the form of a circular encoder.” Id.; see id. at 4 (citing
Fry 3:4—7 regarding the resolution of Fry being one bit per physical
resolution so that the code elements of each fragment of Fry are of equal size
and would define angle sectors of equal size when disposed in a circular
fashion).
In the Reply Brief, Appellant argues that (1) “the Examiner has not
presented any specifics as to how Fry’s sequence is to be altered to be
arranged in a circle,” (2) “there are a huge number of other possibilities for
the Examiner’s proposal, such as the bits not being connected to one
another, the spacing between bits not being uniform, and the bits being at
different orientations than those shown in [Appellant’s] schematic drawing,”
(3) “one of ordinary skill would not want to go to the trouble of adding
structure so as to make [Fry’s] bits Al—A3 and Bl—B3 stable in their
orientation,” (4) “there [are] no finite number of predictable variations
regarding the Examiner’s proposed alteration of Fry and so the proposed
alteration is not obvious,” (5) “enablement [of Appellant’s Specification] is
not the issue here [— the] issue is whether one of ordinary skill would have
a clear reason to alter Fry’s sequence to be circular in view of the teachings
of Williams et al.,” and (6) “it would take undue experimentation for one of
7
Appeal 2015-007156
Application 13/126,699
ordinary skill to take into account multiple rotations of the proposed
alteration shown at page 3 of [the] Reply Brief.” Reply Br. 2—5.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). Appellant’s
arguments are not persuasive of reversible error by the Examiner.
The record contains a preponderance of evidence that each of the
argued claim 16 and claim 26 elements and their attendant functions were
known in the prior art. The Examiner’s finding that Williams evidences
“both linear and rotary encoders are well known in the art of absolute
position encoding and both are known to employ similar technology” (Final
Act. 4) is not disputed by Appellant. Nor does Appellant dispute the
Examiner’s finding that a skilled artisan “would have been motivated to
dispose the sequences over 360° so that the unambiguous absolute coding of
Fry could be applied to devices, such as knobs and steering wheels, where
the desired position information is an angle of orientation of the device” {id.
at 5). Appellant also does not dispute the Examiner’s finding that the
combined art meets the claim limitations regarding two sequences over 360°
and sizes of the angle sectors because “both [are] consequences of the one
modification of disposing the interleaved sequence of Fry in the form of a
circular encoder” (Ans. 3). Moreover, is it undisputed that “Appellant has
not claimed a multi-turn encoder” {id.). See Reply Br. 4 (“claims 16 and 26
do not explicitly claim a multi-turn encoder”). Therefore, the Examiner’s
8
Appeal 2015-007156
Application 13/126,699
obviousness rejection is supported by the established legal principle that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results”
(KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
Appellant’s arguments concerning unpredictability, undue
experimentation, and a multitude of possibilities for modifying Fry’s linear
encoder to be a circular encoder are insufficient to rebut the Examiner’s
rejections because they are not supported by evidence. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Based on this record, we are not persuaded that the Examiner erred in
rejecting claims 16 and 26 over the combination of Fry and Williams.
Appellant does not present separate arguments for claims 17—21, 27—
31, and 36 (App. Br. 13), therefore we sustain the rejection of these claims
for the same reasons discussed above with respect to claims 16 and 26.
37C.F.R. §41.37(c)(l)(iv).
Dependent Claims 22—25, 32—35, and 37
The Examiner finds dependent claims 22—25, 32—35, and 37 obvious
over the combination of Fry and Williams in further view of Gordon for the
reasons stated in the Final Action and in the Answer. Final Act. 9—15; Ans.
4—8. Regarding claim 22, the Examiner finds that Gordon evidences “[i]t is
common in the art to encode a binary number of angular positions” and that
“Gordon teaches that a common number of states per revolution is 216,
which fills up a 16-bit accumulator.” Final Act. 10 (citing Gordon 3:10—14).
The Examiner further finds that a skilled artisan “would have been
9
Appeal 2015-007156
Application 13/126,699
motivated to dispose fewer code elements than [Fry’s] maximal sequence of
2 * KGV (La, Lb) elements to maximize the usage of the accumulator such
as the 16-bit accumulator of Gordon.” Id. (where KGV (La, Lb) is the least
common multiple of LA and LB, wherein LA is the first length and LB is the
second length).
Appellant argues Gordon does not cure the deficiencies of Fry and
Williams discussed above in connection with claims 16 and 26. App. Br. 14,
17—18, 19, 20, 21. Appellant further argues that Gordon teaches binary
encoders are generally complex and also to use binary states when simple
and inexpensive binary encoders are used. Id. at 15. According to
Appellant, “[s]ince there is no teaching in either Fry or Williams et al. to use
a simple and inexpensive binary encoder, there is no reason given in Gordon
to use binary states in Fry’s system.” Id. Appellant also contends that the
number M2 of code elements required by claim 22 has not been shown by
the Examiner because such a modification of Fry would result in
“downgrades in the operation of Fry.” Id. at 16. Specifically, Appellant
contends that such a modification of Fry “would lead to a significant
reduction of code elements and thus would lead to a significant reduction in
resolution” {id. at 15—16) and reduced compatibility with other processing
structures {id. at 16). Appellant asserts that the Examiner’s combination of
Gordon with Fry and Williams “ignor[es] the more desirable scenario of
choosing a sufficiently sized accumulator to store all of the maximum code
elements taught by Fry so that increased resolution would result.” Id. at 16.
Appellant further argues that Fry desires entire sequences, not partial
sequences, be used {id. at 16—17) and that “Gordon employs a completely
different principle of absolute position measurement than that disclosed in
10
Appeal 2015-007156
Application 13/126,699
Fry” because Gordon “does not use any code sequences within 360°” {id. at
17).
The Examiner responds by agreeing with Appellant that reducing the
number of elements to less than twice the least common multiple will lead to
a reduction in resolution, but the integer power of two number of elements
taught by Gordon is a necessary modification to Fry’s interleaved sequence
as modified by Williams to “maximize usage of the accumulator” taught by
Gordon. Ans. 4—5; Final Act. 10 (citing Gordon 3:10-14). Regarding Fry
using the entire sequences, the Examiner responds that
[t]he motivation behind Fry’s invention is not to create a high
resolution device itself, but rather to save on storage space
necessary to determine absolute position when reading the track
of such a high-resolution device, so reducing the number of
elements to less than twice the least common multiple does not
act counter to the aims of Fry.
Ans. 5. The Examiner finds that “[t]he fact that the A fragments precess
relative to the B fragments has not changed and can still be used to generate
position based on the same kind of arithmetic operations.” Id. at 6. The
Examiner further responds that “Fry does not specifically teach against
modifying the interleaved sequence such that one iteration of a sequence
fragment is a partial sequence.” Id. Regarding the specifics of Gordon’s
system, the Examiner responds “[t]he teaching of Gordon relied upon for
rejection applies to standard devices used in the field of absolute position
encoding” rather than any particular accumulator or principle of
measurement from Gordon. Id. The Examiner further states that the
motivation of conforming to the standard, i.e., the common practice in the
art of filling an accumulator which means both the number of states and the
use of the accumulator as standard operations of storage in the art, is the
11
Appeal 2015-007156
Application 13/126,699
reason for combining Gordon with Fry and Williams. Id. at 6—7. The
Examiner also notes that no evidence is provided by Appellant to support the
argument that reducing the number of coded elements would reduce
compatibility with other processing structures. Id. at 8.
In the Reply Brief, Appellant does not dispute that the purpose for
Fry’s interleaved sequence is to save on storage space. Appellant notes that
Fry is silent as to reducing resolution. Reply Br. 6. Appellant argues that
the combination with Gordon constitutes improper hindsight because “[i]t
certainly would be against the spirit of [measuring an absolute position as
accurately as possible] to alter Fry to reduce the accuracy of its measured
absolute position.” Id. (emphasis omitted).
As an initial matter, we are not persuaded by Appellant’s argument
that Gordon does not cure the deficiencies of Fry and Williams for the
reasons discussed above in connection with claims 16 and 26. Appellant’s
argument that the combination would reduce the resolution of Fry’s
invention to accommodate an integer power of two number of elements
consistent with the number of states taught by Gordon also is not persuasive
of error by the Examiner. The Examiner’s reasons for combining the art are
supported by the record. Final Act. 9—10 (citing Gordon 3:10-14); Ans. 4—
7. The Examiner finds that “the modification [of Fry as modified by
Williams] only requires that one of the sequences should be cut off early to
impose a number of elements equal to a power of two” and that Fry’s A
fragments relative to the B fragments “has not changed and can still be used
to generate position based on the same kind of arithmetic operations.” Ans.
6. Based on this record, the combination of Fry and Williams with the
general teachings of Gordon does not destroy the advantages of the
12
Appeal 2015-007156
Application 13/126,699
interleaved sequence of Fry. Therefore, we are not persuaded by Appellant
that the combination constitutes improper hindsight because the benefit of
resolution achieved by Fry’s interleaved sequence would be reduced with
the added benefit of maximizing usage of an accumulator common in the art
as taught by Gordon. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (a
reference may be said to teach away when a person of ordinary skill would
be discouraged from following the path set out in the reference); Winner Int 7
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullity its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
Appellant’s additional arguments based on the particulars of Gordon’s
position encoder (App. Br. 17, 18) and Fry not disclosing a partial sequence
(id. at 18, 21) are not persuasive because “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”).
Appellant does not present separate substantive arguments for claims
23—25, 32—35, and 37 (App. Br. 17—22), therefore we sustain the rejection of
13
Appeal 2015-007156
Application 13/126,699
these claims for the same reasons discussed above with respect to claims 16,
22, and 26. 37 C.F.R. § 41.37(c)(l)(iv).
Dependent Claim 38
Regarding the rejection of dependent claim 38 (Final Act. 15—16; Ans.
8), Appellant contends that Hafle does not cure the asserted deficiencies of
the combination of Fry, Williams, and Gordon (i.e., (1) first and second code
sequences, (2) first and second angle sectors having identical sizes, and (3) a
partial sequence). App. Br. 22—23. Appellant’s argument is not persuasive
because Hafle is not relied upon by the Examiner for these claim limitations.
The Examiner’s finding that these limitations are disclosed or suggested by
the combination of Fry, Williams, and Gordon is supported by the record as
discussed above in connection with independent claims 16 and 26 and
dependent claim 22.
Dependent Claims 39 and 40
Regarding the rejection of dependent claims 39 and 40 (Final Act. 16—
17; Ans. 9), Appellant essentially contends that Rogers does not cure the
asserted deficiencies of the combination of Fry and Williams (i.e., (1) first
and second code sequences and (2) first and second sectors having identical
sizes). App. Br. 23. Appellant’s argument is not persuasive because Rogers
is not relied upon by the Examiner for these claim limitations. The
Examiner’s finding that these limitations are disclosed by the combination of
Fry and Williams is supported by the record as discussed above in
connection with independent claims 16 and 26.
In sum, the decision of the Examiner is affirmed.
14
Appeal 2015-007156
Application 13/126,699
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
15