Ex Parte Porma et al

Board of Patent Appeals and Interferences

Sep 20, 2011

10564522 (B.P.A.I. Sep. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/564,522 06/22/2006 Mikko Porma 0837-0193PUS1 3457
77032 7590 09/21/2011
Joe McKinney Muncy
4000 Legato Raod, Suite 310
Fairfax, VA 22033
EXAMINER
BRAHAN, THOMAS J
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
09/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MIKKO PORMA and KIMMO HYTONEN
________________

Appeal 2009-014780
Application 10/564,522
Technology Center 3600
________________

Before ROBERT A. CLARKE, CHARLES N. GREENHUT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014780
Application No. 10/564,522

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1-5. The real party in interest is KCI KONECRANES
PLC. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Claimed Subject Matter
The claimed subject matter is directed to a method of controlling a
crane to prevent the undesired swinging of a load fastened to the crane.
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A method for controlling a crane, the method comprising giving
velocity requests as control sequences from a crane control system to
crane drives and reading and storing the velocity requests (Vref) in a
control system, whereby
each velocity request (Vref) is compared with the previous
velocity request and, if the velocity request is changed, an acceleration
sequence for the corresponding velocity change is formed and stored,
after which,
summing the velocity changes defined by the stored
acceleration sequences after a particular time interval and adding the
obtained sum (dV) to the previous velocity request to achieve a new
velocity request (Vref2), which is set as a new control and velocity
request for the crane drives, and
performing some of the velocity changes defined by summed
acceleration sequences at a definition time of each selected sequence
on each control step and performing the rest of them as delayed,
reading and summing the stored sequence parts to be performed
as delayed on a plurality of program rounds.

Reference Relied on by the Examiner
Hytonen US 5,529,193 Jun. 25, 1996

Appeal 2009-014780
Application No. 10/564,522

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The Rejections on Appeal
1. Claims 1-5 are rejected under 35 U.S.C. § 112, second paragraph as
being indefinite (Ans. 2).
2. Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hytonen (Ans. 4).

ISSUE
Do claims 1-5 fail to particularly point out and distinctly claim the
subject matter which Appellants regard as their invention?

ANALYSIS
The rejection under 35 U.S.C. § 112, second paragraph
The Examiner’s Answer lists multiple instances in each of the five
claims on appeal wherein Appellants failed to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention
(Ans. 2-4). Some of the issues cited by the Examiner pertain to a lack of
antecedent basis in the claim (Ans. 3-4, 8). Others are cited because the
claimed step “is not understood,” “the overall sentence structure is
awkward,” it is “unclear as to what is being claimed,” the claim fails to
indicate what “is being further limited,” the claim is “grammatically
incorrect,” there is apparent redundancy, a claim limitation “is not fully
defined,” etc. (Ans. 3-4).
In the first office action mailed Oct. 10, 2007, the Examiner listed
multiple reasons for rejecting all the claims under 35 U.S.C. § 112, second
paragraph. Appellants subsequently amended the claims and requested
reconsideration of the amended application (Amendment mailed March 10,
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Application No. 10/564,522

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2008, p. 4). The Examiner repeated many of the same rejections in the
Final Office Action mailed June 13, 2008 with an explanation why the
previous claim amendments are not acceptable and also presented more
reasons for rejection under 35 U.S.C. § 112, second paragraph due to the
amendments made. Appellants filed this appeal and did not amend the
claims further to put them in better form for appeal (“An amendment
presenting rejected claims in better form for consideration on appeal may be
admitted” (37 C.F.R. § 1.116(b)(2)). All the claims are presently rejected by
the Examiner under 35 U.S.C. § 112, second paragraph for reasons also set
forth in the Final Office Action.
In the Appeal Brief, Appellants do not fully address the Examiner’s
position. Rather, Appellants address only some of the stated issues of
indefiniteness (Br. 7-8). For example, the Examiner rejected claim 1
because the claim phrase “the stored sequence parts” in line 14 lacks
antecedent basis (Ans. 3b). The Examiner states that this term “is not
introduced into or found in claim 1 in any manner” and that “Appellant’s
brief is silent with respect to the basis for this terminology” (Ans. 5).
Appellants do not address this matter other than to state that “the scope of
claim 1 would be clear to a hypothetical person possessing the ordinary level
of skill in the pertinent art” (Br. 7).
Regarding claim 2, the Examiner addresses the limitation “said
control step” and questions what it is and how it has a time aspect (Ans. 3c).
Appellants again do not address this limitation other than to state that “the
scope of claim 2 would be clear to a hypothetical person possessing the
ordinary level of skill in the pertinent art” (Br. 8). Appellants further do not
address all of the rejections of claim 4 or any of the rejections of claims 3
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Application No. 10/564,522

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and 5 as set forth in paragraphs d, e, f, g, h or i in the Examiner’s Answer
(Br. 8, Ans. 3-4). Instead, Appellants state that these claims “would be clear
to a hypothetical person possessing the ordinary level of skill in the pertinent
art” (Br. 8).
We are not persuaded by Appellants contention that claims 1-5 would
be clear to one of ordinary skill in the art because, as the Examiner pointed
out, the claims contain ambiguities, incomplete phrases, terms lacking
antecedent basis and terms which cannot be correlated to the Specification or
understood by one of ordinary skill in the art. Appellants have not pointed
out the supposed errors in the Examiner’s position. Based on the record
presented, we sustain the Examiner’s rejection of claim 1-5 under 35 U.S.C.
§ 112, second paragraph for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention.

The rejection under 35 U.S.C. § 103(a)
Before a decision based on 35 U.S.C. § 103(a) can be made, “it is
essential to know what the claims do in fact cover” (In re Steele, 305 F.2d
859, 862 (CCPA 1962)). In Steele, the court stated that their “analysis of the
claims indicates that considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims were made by the
examiner and the board” and that “we do not think a rejection under 35
U.S.C. § 103 should be based on such speculations and assumptions” (Id.).
The court continued stating that their
“study of the lengthy record of the Patent Office prosecution
provides ample support for our conclusion that substantial
confusion exists in the record at all levels of the prosecution as
to the proper interpretation to be given to the appealed claims.
We believe that this confusion arose and has continued because
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the claims do not particularly point out and distinctly claim the
invention as required by 35 U.S.C. § 112”
(Id. at 863).
Following this example, we are unable to render a decision on the
merits of the Examiner’s obviousness rejection as any such decision would
be based on speculations and assumptions as to the meaning of the claim
terms employed. “If no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become obvious-the
claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). We therefore must reverse, pro forma, the Examiner’s rejection under
35 U.S.C. § 103.
We note, however, that the Examiner treated claims 1-4 as
“mathematical expressions of scientific principles” which the Examiner
stated are “a familiar part of the prior art” (Ans. 4). Accordingly, the
Examiner deemed that “such algorithms are considered as known prior art”
and rejected them under 35 U.S.C. § 103 (Ans. 41). The Examiner’s analysis
stems from a misinterpretation of Parker v. Flook. The cited portion of
Parker v. Flook refers to “merely the mathematical algorithm” in contrast to
“the process itself.” These cases are concerned with whether a claim
employing a mathematical expression can be inventive under § 101 and are
not directed to claims containing an algorithm being prior art under § 103.
Moreover, under § 103, it is the claim as a whole, including whether a
recitation directed to an algorithm is known in the prior art, that is evaluated.
See Application of Prater, 415 F.2d 1393, 1405 (CCPA 1969).

1 Citing Mackay Radio and Telegraph Co. v. Radio Corporation of America,
306 U.S. 86 (1939); Parker v. Flook, 437 U.S. 584 (1978) and Gotschalk v.
Benson, 409 U.S. 67 (1972).
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In fact, Congress recently enacted an exception for evaluating an
invention under §§ 102 and 103, stating that tax strategies, whether known
or unknown, are now deemed insufficient to differentiate a claimed
invention from the prior art. Section 14 of the recently enacted America
Invents Act states:
For purposes of evaluating an invention under section 102 or
103 of title 35, United States Code, any strategy for reducing,
avoiding, or deferring tax liability, whether known or unknown
at the time of the invention or application for patent, shall be
deemed insufficient to differentiate a claimed invention from
the prior art.
We also note that Appellants’ contention rebutting the Examiner’s
rejection under § 103 is lacking. Appellants simply state “This is not
obvious nor disclosed by Hytonen” (Br. 9). Unsupported conclusory
statements are entitled to little probative value (see In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974)).
Nevertheless, we need not reach the merits of the Examiner’s
obviousness rejection of claims 1-4 in view of Hytonen because we have
instead reached a decision concerning the indefiniteness of Claims 1-5. As
stated above, it is essential to first know what the claims cover, and as we
are not successful in that endeavor, we consider the claims to be indefinite
under 35 U.S.C. § 112, second paragraph and do not extend our analysis
further.

CONCLUSION OF LAW
Claims 1-5 fail to particularly point out and distinctly claim the
subject matter which Appellants regard as their invention.
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Application No. 10/564,522

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The merits of the Examiner’s rejection under 35 U.S.C. § 103(a) have
not been reached.

DECISION
The rejection of claims 1-5 under 35 U.S.C. § 112, second paragraph
as being indefinite is affirmed.
The rejection of claims 1-5 under 35 U.S.C. § 103(a) as being
unpatentable over Hytonen is reversed, pro forma. It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter and does not reflect on the adequacy of the
prior art evidence applied in support of the rejections.
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

MP