Ex Parte MinersDownload PDFPatent Trial and Appeal BoardApr 17, 201813132030 (P.T.A.B. Apr. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/132,030 05/31/2011 20350 7590 04/19/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Allan Graeme Miners 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. 73079-807413 1378 EXAMINER COLLINS, DANIELS. ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 04/19/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLAN GRAEME MINERS Appeal2017-004464 Application 13/132,030 Technology Center 3700 Before MICHAEL L. HOELTER, LISA M. GUIJT, and JEFFREY A. STEPHENS, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's decision1 rejecting claims 6-13, 16-18, 21, and 22. 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER Claims 6, 21, and 22 are the independent claims on appeal. Claim 6, 1 Appeal is taken from the Final Office Action dated February 1, 2016. 2 The Examiner's indication in the Office Action Summary of the Final Office Action that these claims are allowed is a typographical error. Final Act. 1. Appeal2017-004464 Application 13/132,030 reproduced below, is illustrative of the claimed subject matter on appeal. 6. An actuator assembly, comprising: a linear actuator comprising an elongate housing having an elongate axis and having a working end and an indicator end, the linear actuator further comprising: a piston arranged for linear travel through the housing, the piston comprising a shaft having a hollow interior, wherein the shaft extends out of the working end of the housing and is movable linearly along the elongate axis; a twisted bar having a piston end and a connector end, wherein the piston end is stored within the hollow interior of the shaft, with the twisted bar extending through a plurality of bearings and an aperture defined by the piston such that linear motion of the piston rotates the twisted bar, wherein the twisted bar comprises a rectangular body having a length, a width and a thickness, wherein the width is larger than the thickness, the twisted bar twisting around a longitudinal axis of the twisted bar; and an external connector coupled with the connector end of the twisted bar so that linear movement of the piston causes rotation of the external connector; an accessory unit with a rotary input shaft that provides a position indicating output responsive to a rotary position of the shaft; and a bracket operably coupled to the indicator end of the housing to support the accessory unit in a fixed position relative to the housing, to allow the shaft of the accessory unit to couple with the external connector such that movement of the piston causes rotation of the external connector that rotates the input shaft of the accessory, to thereby generate the position indicating output of the accessory unit indicating a position of the piston relative to the working end of the housing. 2 Appeal2017-004464 Application 13/132,030 THE REJECTIONS I. Claims 6-13, 17, 18, 21, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Muller (US 2006/0207421 Al; published Sept. 21, 2006), Appellant's Admitted Prior Art (Spec. i-fi-13-5, Figs. 1-2)), Tikkanen (US 2005/0000350 Al; published Jan. 6, 2005), and Cederquist (US 1,511,049; issued Oct. 7, 1924). II. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Muller, Appellant's Admitted Prior Art, Tikkanen, Cederquist, and Geraci (US 4,089,229; issued May 16, 1978). OPINION Rejection I Appellant argues claims 6, 8-13, 18, 21, and 22 as a group and presents separate arguments for each of dependent claims 7 and 17 discussed infra. See Appeal Br. 13-15. We select claim 6 as representative and address Appellant's arguments regarding claims 7 and 17 separately. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 8-13, 18, 21, and 22 stand or fall with claim 6. Independent claim 6 Regarding independent claim 6, the Examiner finds, inter alia, that Muller generally discloses the claimed actuator assembly, including a twisted bar (i.e., spindle 5) within a hollow piston 2, such that linear motion of the piston rotates the twisted bar, and also an external connector (i.e., rotary disk 7) coupled to the twisted bar and piston, such that linear 3 Appeal2017-004464 Application 13/132,030 movement of the piston causes rotation of the external connector. Final Act. 5 (citing Muller i-f 23, Figs. 1-7). The Examiner determines, however, that Muller fails to disclose that "the twisted bar comprises a rectangular body having a length, a width, a thickness, wherein the width is larger than the thickness" or that the twisted bar extends through bearings, as claimed. Id. The Examiner also determines that Muller fails to disclose the claimed accessory unit and bracket. Id. The Examiner relies on Tikkanen for disclosing a twisted bar (i.e., twisted slide 38) with the claimed dimensions, "which rotates via an opening in the piston." Final Act. 7 (citing Tikkanen, Fig. 1 ). The Examiner reasons that it would have been obvious to replace the twisted bar of Muller with Tikkanen's rectangular twisted bar because "it is a simple substitution of components providing the identical functionality," namely, "a response of rotational position on the external connector." Id.; see also Ans. 3 ("it would have been obvious ... to obtain predictable results by simply substituting the threaded bar actuation means [of Muller] with that of the twisted ... actuation means ... [of] Tikkanen"). The Examiner further determines that one skilled in the art "would realize that modifying M[u]ller with Tikkanen would provide the benefit of only allowing the rotational movement to be one cycle allowing for more precise rotational responses." Final Act. 7-8; see, e.g., Tikkanen i-f 42 (disclosing that the invented cylinder is compact with a stroke that is precisely controlled). The Examiner relies on Cederquist for disclosing a twisted bar extending through bearings 20. Final Act. 8 (citing Cederquist 2:80-84, Fig. 4 Appeal2017-004464 Application 13/132,030 3). The Examiner reasons that it would have been obvious to further modify Muller to incorporate Cederquist's teachings, by positioning bearings in the aperture of the piston "for more accurate translation of movement from the piston to the twisted bar as a result of the reduced friction between the parts." Id. The Examiner relies on the Specification 3, as Admitted Prior Art, for disclosing that (i) the claimed accessory unit is known to be a "[ s ]tandard rotary switch box or similar device" with a rotary input device, or "[ s ]tandard connection shaft," for providing a position indicating output responsive to a rotary position of the shaft (Final Act. 6 (citing Spec. i-fi-13--4))); and (ii) the claimed bracket is a "[s]tandard mounting bracket" to support the unit (id. (citing Spec. i123)); see also Ans. 4 (citing Spec. i18 (noting that "the actuator control accessories use 'a common standard mounting pattern"'); see also Ans. 5 (citing Spec. i-f 10 (noting that Appellant refers to the bracket as "' ... a standard off the shelf item"'), Fig. 2). The Examiner reasons that it would have been obvious to modify M[ii]ller to incorporate the teachings of . . . [Appellant's] Admitted Prior [A]rt by attaching the accessory unit to the end of the actuator by using a bracket attached to the indicator end of the housing because in doing so the accessory unit allows the rotational output of the external connector to be indicated to a controller, thereby giving the user a better sense of . . . [the piston's] position . . . or providing the benefit of automated control. Furthermore, attaching the accessory unit to the actuator allows the actuator to be used not only for its linear 3 We refer to the Specification dated May 5, 2014, including the drawings. 5 Appeal2017-004464 Application 13/132,030 functions but also for its rotational functions as suggested by M[u]ller (i.e.[,] actuating switches, valve control). Also providing a bracket allows for the accessory [unit] to be firmly mounted to the actuator preventing any potential slipping between the coupling. Final Act. 6-7. Appellant argues that the Examiner has improperly relied on hindsight, because the Examiner has not provided reasons for modifying Muller, in view of Tikkanen, Cederquist, and the Appellant's Admitted Prior Art. Appeal Br. 13-14 (citing Jn re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) for the proposition that "[ o ]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention"); see also Reply Br. 3. We disagree; rather, the Examiner has provided, with respect to each proposed modification, support from the prior art references or admissions made in the Specification, as set forth supra. Appellant also argues that modifying Muller as proposed by the Examiner is not a simple substitution, because replacing Muller's spindle 5 with Tikkanen's twisted slide 38 "would be unable to translate linear motion of the piston rod 3 into rotational motion without additional modifications," for example, the addition of bearings. Appeal Br. 14. Appellant submits that the Examiner's proposed modification requires "a substantial redesign" of Muller, including "changing the piston rod design, incorporating bearings, and designing an appropriate connection between the twisted slide 3 8 and the rotary disk 7." Id.; see also Reply Br. 2._ We are not persuaded by 6 Appeal2017-004464 Application 13/132,030 Appellant's argument. Substituting Muller's spindle 5 with a twisted bar 38, as taught in Tikkanen, would still allow the linear movement of Muller's piston rod 3 to be translated into rotary motion to drive rotary disk 7. For example, rather than the linear motion of Muller's piston rod 3 causing spindle 5 to rotate by the internal screw thread 4a,, the linear motion of Muller's piston rod 3 would cause a twisted bar (as taught in Tikkanen) to rotate via passing the helical configuration of the bar through the opening in piston rod3. Thus, the Examiner's reasoning is grounded in the principle of simple substitution. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result"). Moreover, Appellant has not presented persuasive argument or evidence that the addition of bearings (at the opening of Muller's piston), as disclosed by Cederquist, to address friction, as further proposed by the Examiner, represents a substantial redesign of Muller's actuator. Rather, we agree with the Examiner that "[t]he bearings do not alter the functionality [of Muller's actuator, as modified by Tikkanen,] but work to improve the efficiency of the system," by "provid[ing] support for the bar [and] preventing misalignment and also reduc[ing] the frictional wearing between the components created by the translation of motion." Ans. 4. We also are not persuaded that designing an appropriate connection between a twisted slide and Muller's rotary disk 7 would involve a substantial redesign of Muller's actuator, as opposed to a modification within the knowledge of one 7 Appeal2017-004464 Application 13/132,030 of ordinary skill in the art. Appellant further argues that "the Examiner's rational[e] appears to be conclusory" because Muller "already discloses the ability to precisely control rotational responses of the actuator with a locking piston 29 that engages the rotary disk." Appeal Br. 15 (citing Muller i-fi-136-42; Fig. 6). We are not persuaded by Appellant's argument because as discussed supra, the Examiner provides support for reasoning that the proposed modification of Muller's slide for a twisted bar as disclosed in Tikkanen is a simple substitution of one element for another known in the field to yield a predictable result. Appellant also argues that "none of the references disclose a bracket," as claimed, and that the Specification, and in particular Figure 2, is not Admitted Prior Art. Appeal Br. 15. 4 Appellant submits that Figure 2 of the Specification merely "demonstrates the feasibility of attaching a standard rotary accessory to a rotary actuator," but does not admit that such use of a standard bracket is known. Id. Claim 6 recites, as disclosed supra, in relevant part, "a bracket operably coupled to the indicator end of the housing to support the accessory unit in a fixed position relative to the housing." The Specification discloses that "FIG. 2 shows the simplicity of matching the two rotary devices pictured in FIG. 1" (i.e., an actuator at the indicator end of the housing and 4 Appellant refers to original Figure lB,which corresponds to Figure 2 in the replacement drawings submitted May 5, 2014. 8 Appeal2017-004464 Application 13/132,030 an accessory unit) and that "[e]ven the mounting bracket which joins the two is a standard off the shelf item." Spec. i-f 10; see also id. i-f 53. Figure 2 of the Specification is reproduced below. !"""___,,,. .. ··. ··-~·1 ) ::';>h\r<1:io•6 <:ii R~A:o•"f'" • , 0. --·~-·o;;···"<"Q""" • •. I ; ...... , •• v ... ~ ~ 't ~ i ~l~(:""~C:~=-t===~ ~1:::~~'1~~~l ·~'-~·. -~ , .~.· .. · ~: I · ~'I "' .,._.,,;d-os r• 1'\Gl~n '"'l;;l ~;~,~~~:;l·l~r' I lc:~~·b+,~~~==:) ! ~· ,/·br·:\:,:<:::d "'=c:;~:;,,:)r,.- ·······yr·'······-r'l~J .. l ... J.L ~~~)~} <>-n · ·' ~ ~ ~ ~ ~ f:-----00- c-.1.c tt_.i:~'l t-nr m ~ i ~ ~ ~t ~ .............. ·.·.·.·.·.·.·.· ... -t-~~::_4'. .. -.•.•.•.•.• ......... J ............. •.•.•.•.•.•.•.• ... &. ....................... ~.:.~~~ .. .................. " 'l! ' R.r.} t(~-~ .. y ~i~~. tut) -~·or:-.. .s:ld~ ~lt~~w l 1_· ~-•:-:-:-:-.-.-.. :-.•:-:-:-:-.--~ .... :-,.....:-.-~~-.:-,...._..:-_-.. - FlG. 2 ASSh'MBLED ROT'ARY ACTUATOR ANTI ACCESSORY Figure 2 of the Specification depicts a rotary actuator attached to a "Standard Rotary accessory" by a "Standard mounting bracket." See also Spec. ,-r 25. As set forth supra, the Examiner relies on Appellant's Specification for admitting that it is known to use a standard bracket to join a standard rotary actuator and a standard rotary switchbox. See, e.g., Spec. i-fi-1 3-10, Figs. 1, 2. With reference to Figure 2, the Specification states "FIG. 2 shows the simplicity of matching the two rotary devices pictured in FIG. 1" and that "[ e ]ven the mounting bracket which joins the two is a standard off the 9 Appeal2017-004464 Application 13/132,030 shelf item." Spec. i-f 10. Appellant argues, however, that although Figure 2 depicts one way of using a standard bracket, Figure 2 is not an admission that such a bracket is known to connect two standard rotary devices, as set forth supra. However, the Specification also expressly discloses that "[t]he valve assembly [as depicted in Figure 9] is identical to [Figure 8], the positioner however attaches to the invention with just a standard bracket and four screws, as used in a standard rotary actuator assembly as shown in [Figure 2]." Id. i-f 53. Thus, a preponderance of evidence supports the Examiner's determination that Figure 2 depicts a known use for a standard mounting bracket, namely, for joining standard rotary-to-rotary devices, and is thus, admitted prior art. Muller discloses that the rotation from rotary disk 7 at the indicator end of Muller's housing can be "utilized for various purposes in connection with a fluid cylinder." Muller ,-r 24; see also Muller ,-r 10 (generally recognizing that "[t]he conversion of the axial motion of the cylinder to a rotary motion enables this rotary motion to be exploited so as to perform a great variety of functions"). Thus, we are not apprised of error in the Examiner's finding that it is known to use brackets to attach (and therefore, support in a fixed position) a standard accessory unit to the indicator end of a linear actuator. Accordingly, we sustain the Examiner's rejection of independent claim 6, and claims 8-13, 18, 21, and 22 fall therewith. Dependent claim 7 Dependent claim 7, which depends from independent claim 6, recites, 10 Appeal2017-004464 Application 13/132,030 in relevant part, "wherein the external connector and input shaft are arranged for tongue and groove type connection in an axial direction." Appeal Br. 8 (Claims App.). The Examiner finds that Muller's Figure 6 depicts "[an] external connector containing a radial groove," and also determines that Figures 1 and 2 of the Specification depict the claimed tongue and groove type connection as Admitted Prior Art. Final Act. 8-9. The Examiner reasons that it would have been obvious to use such a coupling between a standard accessory unit and Muller's connection disk 7, because "such a coupling means is standardized in the industry for accessory devices ... to provide effective transmission means." Id. at 9. The Examiner also determines that "the modifications suggested to M[u]ller would not change its function at all but allow it to be attached to other sensors and accessory . " A 5 umts. ns .. Appellant argues that the Examiner's rationale is "based on hindsight" and that the Examiner's modification "would not work without a substantial redesign of M[u]ller." Appeal Br. 16. In support, Appellant submits that by coupling Muller's locking piston 29 to locking disk 7, "there would be no rotational movement transmission to the accessory unit because the locking piston 29 does not rotate." Id. Muller's Figure 6 is reproduced below. 11 Appeal2017-004464 Application 13/132,030 Figure 6 of Muller depicts a rotary disk 7 (i.e., an external connector, as claimed) and an input shaft of a locking piston 29 (i.e., similar to an input shaft of an accessory unit, as claimed) arranged for tongue and groove type connection in an axial direction, as claimed. Figure 1 of the Specification is reproduced below. r.-,-.-----.-........... -.--. -:----; s ·to"'°':{,{•':._\~-' d R-1...: tQ~ :-· y I : ~·~tTch k.H.1:...: c::-- :: ~ -:=dv~~leo,v d~vf·:. .. ~.· ,.o,ccEs:'.:rn~Y "----·r·rr"----··~;·te>nde;rd ::: .... :tr:,, LlJ:4 ~~:~rt U"i~~~.~~;~','~;~"' ! I-.· _,...µ,~ --·--·-·.·.·-·-·--------·--·-·-·-·-·-·-·----------'-"-----·-·.·.·------·-·.·.·-·-·-·-----·'-"-"--"-"------·-·.·-·.·-·-·-·-·-·--·-·.·-·-·-·-·-----'""""'""'"'""-____________________________ ....... -.--------------------·--·""""'·--------.-.-.-.-.-.-.-.-.-... -.-.-...... -.-.-..... -.-.-.-.-.-.-.---.-......... -.-.-.-.-.-.-........ ....-.-.-.•. -. FIG. 1 COMMON MOUNTJNG DIMENSTONS 12 Appeal2017-004464 Application 13/132,030 Figure 1 of the Specification depicts a tongue and groove type connection between a standard accessory unit and the connection end of a rotary actuator, disclosing that such structures have standard dimensions. We are not persuaded by Appellant's argument. The Examiner relies on the embodiment depicted in Muller's Figure 6 as merely showing that tongue and groove like connections are known between Muller's rotary disk 7 (i.e., external connector) and the input shaft of another component-here, a locking piston. Moreover, we are not apprised of error in the Examiner's finding that such a connection is well known, in view of Figure 1 of the Specification. 5 As set forth supra, the Examiner relies on Appellant's Specification, as Admitted Prior Art, for disclosing that the claimed accessory units are also known, a finding which is not disputed by Appellant. Thus, the Examiner's rationale for modifying Muller's actuator, as depicted in Figure 1, as modified by Appellant's Admitted Prior Art to include an accessory unit, to also include a tongue and groove type connection between the accessory unit and Muller's rotary disk 7 (i.e., external connector) has rational underpinning and factual support; i.e., the Examiner did not improperly rely on hindsight bias. Additionally, Appellant has not provided persuasive argument or evidence that the Examiner's 5 Figure 1 shows the "most common" mounting dimensions. Spec. ,-r 8 ("[T]he manufacturers of actuator control accessories design them for rotary actuators and all manufacturers today make to a common standard of mounting pattern to allow different manufacturer's devices to be used on other manufacturer's actuators."). 13 Appeal2017-004464 Application 13/132,030 proposed modifications involve a substantial redesign of Muller's actuator. Accordingly, we sustain the Examiner's rejection of claim 7. Dependent claim 17 Dependent claim 17, which depends from independent claim 6, recites, in relevant part, "wherein the accessory unit comprises a rotary switchbox, and a positioner or indicator to provide that indicates [sic] the linear position of the piston." Appeal Br. 8 (Claims App.). The Examiner finds that Muller may be further modified to meet the limitations of claim 17, because the Specification, as Admitted Prior Art, discloses that it is known to use a rotary switchbox having a positioner. Final Act. 10 (citing Spec. ,-r 4, Fig. 2). Appellant argues that the Examiner's rationale is "based on hindsight bias and would not work." Appeal Br. 16. Appellant also argues that the Specification "does not disclose an accessory unit that combines a rotary switch box with a positioner or indicator," as claimed. Id. Notably, we cannot find written description support in the Specification for combining a rotary switch box with a positioner or indicator into a single accessory unit. See, e.g., Spec. i-f 46 ("FIG. 7 shows the invention with a standard rotary positioner mounted," explaining that "[a]s the linear to rotary conversion is done interlay, a standard rotary positioner or switch box bolts directly on to the top of the actuator exactly as it would to a standard rotary actuator as shown in FIG. 2 ... " (emphasis added)); see also id. at Fig. 7 ("Rotary positioner or switchbox" (emphasis added)); see also claims 1--4 as originally filed. 14 Appeal2017-004464 Application 13/132,030 Notwithstanding, we are not apprised of error in the Examiner's finding that rotary switchboxes or indicators are well known in the art for use as accessory units for linear actuators, and we further determine that modifying Muller to incorporate an accessory unit with these combined functions (i.e., a rotary switchbox and indicator) would be within the general knowledge of someone skilled in the art, in view of Muller's teachings that the resulting rotation of rotary disk 7 can be utilized for various purposes, as set forth supra. In other words, we understand the Examiner's position to be that the inclusion of a combined switchbox and indicator accessory unit into Muller's actuator merely constitutes combining prior art elements according to known methods to yield predictable results. See KSR, 550 U.S. at 401. Accordingly, we sustain the Examiner's rejection of claim 17. Rejection II Appellant argues that "Geraci is unable to correct the deficiencies of M[u]ller, Appellant's ... [A]dmitted [P]rior [A]rt, Tikkanen, and Cederquist," as applied to independent claim 6, in Rejection I supra. Appeal Br. 17. However, because we do not agree that there are deficiencies in the prior art as applied by the Examiner to claim 6, as set forth supra, we sustain the Examiner's rejection of claim 16. DECISION The Examiner's rejections of claims 6-13, 16-18, 21, and 22 are affirmed. 15 Appeal2017-004464 Application 13/132,030 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 16 Copy with citationCopy as parenthetical citation