Ex Parte Vogl et al

Patent Trial and Appeal Board

Sep 18, 2018

13682803 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/682,803 11/21/2012
10800 7590 09/18/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Karl-Heinz Vogl
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.
2179-0153 4580
EXAMINER
QUANDT, MICHAEL M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/18/2018 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 KARL-HEINZ VOGL and MICHAEL SCHUETTE
Appeal2017-009562
Application 13/682,803 1
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Karl-Heinz Vogl and Michael Schuette (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 2,
5, 6, and 8-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Real party in interest Robert Bosch Gmbh.
Appeal2017-009562
Application 13/682,803
CLAIMED SUBJECT MATTER
Appellants' invention relates to a hydraulic travel drive with a closed
hydraulic circuit and to a method for the regenerative operation of such a
travel drive. Spec. p.1, 11. 7-8.
Claims 1 and 5 are independent. Claim 1 is illustrative and is
reproduced below:
1. A hydraulic travel drive, comprising:
a primary hydraulic machine;
a secondary hydraulic machine connected to the primary
hydraulic machine in a closed hydraulic circuit via a first
working line and a second working line;
a first accumulator connectable via a first valve to the first
working line and via a second valve to the second working line;
a second accumulator connectable via a third valve to the
first working line and via a fourth valve to the second working
line, wherein each of the first, second, third, and fourth valves is
a switching valve;
an electronic control unit operably connected to the first,
second, third, and fourth valves and configured to operate the
switching valves between an open position and a closed position,
and to receive a detected first pivot angle and first rotational
speed of the primary hydraulic machine and a detected second
pivot angle and second rotational speed of the secondary
hydraulic machine; and
a pressure sensor arrangement configured to detect a first
inlet and a first outlet pressure of the primary hydraulic machine,
a second inlet and a second outlet pressure of the secondary
hydraulic machine, a first accumulator pressure of the first
accumulator, and a second accumulator pressure of the second
accumulator, the pressure sensor arrangement being operably
connected to the electronic control unit and configured to transfer
the first and second inlet pressures, the first and second outlet
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pressures, the first and second accumulator pressures to the
electronic control unit.
THE REJECTIONS
The Examiner has rejected:
(i) Claim 10 under 35 U.S.C. § 112(a), or pre-AIA § 112, first
paragraph, as failing to comply with the enablement requirement;
(ii) Claims 1, 2, 5, 6, and 8-12 under 35 U.S.C. § 112(a), orpre-AIA
§ 112, first paragraph, as failing to comply with the written description
requirement;
(iii) Claims 1, 2, 5, 6, and 8-12 under 35 U.S.C. § 112(b), or pre-AIA
§ 112, second paragraph, as being indefinite; and
(iv) Claims 1 and 2 under 35 U.S.C. § I03(a) as being unpatentable
over Mueller (US 2008/0250781 Al, published Oct. 16, 2008) in view of
Gray (US 2008/0093152 Al, published Apr. 24, 2008).
The Examiner indicates that the following rejections have been
withdrawn:
(l)Claim 1 under 35 U.S.C. § 112(a), orpre-AIA §112, first
paragraph, as failing to comply with the written description
requirement, with respect to the limitation "a detected first pivot
angle" appearing at line 12 of the claim;
(2) Claim 1 under 35 U.S.C. § 112(b ), or pre-AIA § 112, first
paragraph, as being indefinite, with respect to the limitation "a
detected first pivot angle" appearing at line 12 of the claim;
(3)Claims 5, 6, 8, 9, and 11 under 35 U.S.C. § I02(b) as being
anticipated by Mueller; and
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(4)Claim 12 under 35 U.S.C. § I03(a) as being unpatentable over
Mueller in view of Gray.
See Ans. 2-3.
The Final Action includes objections based on alleged missing
features from the drawings, alleged deficiencies in the drawings, and
allegedly failing to provide proper antecedent basis for claimed subject
matter in the original specification, and an informality with respect to claim
7. Final Act. 13-18. A Decision on a Petition seeking review of these
objections was rendered on Sept. 12, 2016. Although in the Petition
Decision, the Petition was granted-in-part with respect to some of these
objections, it also states that
In the instant application, the objection to the drawings for failing
to show 1) the switching valves are pilot controlled non return
valves, 2) a detected second pivot angle, 3) first rotational speed
... second rotational speed and the objections to the specification
for lack of antecedent basis in the original specification for 1) a
detected first pivot angle, 2) a detected second pivot angle, 3)
claim 5 and, 4) claim 10 are related to the same issues as the 3 5
USC 112 1st and/or 2nd paragraph rejections. Because there has
been both a rejection and formal requirement, the issue becomes
appealable and should not be decided by petition. Therefore, the
relief requested by petitioner with regard to the above stated
objections cannot be granted by petition and will be determined
by the Patent Trial and Appeal Board.
Dec. 3. To the extent that the Petition Decision leaves open certain issues
concerning the drawing and objections to the Specification, and indicated
that those issues are ripe for appeal, Appellants do not present arguments
directed to these matters. Appellants are thus deemed to have waived any
arguments that could have been made with respect thereto.
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ANALYSIS
Claim 10 - Enablement
The Examiner determines that the language of claim 10 does not
appear in the Specification. Final Act. 18. The Examiner finds that the
Specification does not provide direction or a working example showing how
the invention of claim 10 is achieved. Id. at 18-19. More specifically, the
Examiner finds that the Specification does not show how "various pieces of
information are detected" and that "[i]t is not clear if all [ ofJ these factors are
considered together, one at a time and independent from one another, or if
they are all necessary." Id. at 19; see also Ans. 4.
Appellants contend that it is not required to recite that which is well-
known to one of ordinary skill in the art, nor is it required that the exact
language of claim 10 be present in the Specification. Appeal Br. 9, 13.
Appellants contend that each of the limitations recited in claim 10 is either
well-known to an ordinary artisan or is disclosed in the Specification. Id. at
10-13 (citing Spec. p. 1, 11. 7-8, 10-13; p. 3, 11. 18-19, p. 13, claim 3; p. 15,
claim 10; p. 4, 11. 1-3; p. 9, 11. 1--4; p. 6, 11. 15-18); see also Reply Br. 2-7.
Appellants also maintain that the Examiner has not demonstrated that undue
experimentation would be required in order for the person of ordinary skill
in the art to make or use the invention set forth in claim 10. Reply Br. 3.
Appellants have the better position here. As to the Examiner's
misgivings regarding whether the claimed factors are considered together,
one at a time and/or independent from one another, or if they are all
necessary, the scope of claim 10 requires at least that all of the factors be
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considered in some fashion in making the braking mode/ acceleration mode
determination. Appeal Br., Claims Appendix. The Examiner has not
adequately shown that undue experimentation would have been required of
the person of ordinary skill in the art in determining how to process the
information regarding the claimed factors in arriving at a recognition as to
which mode the travel drive is in. The direction provided by the
Specification is to take into account the respective rotational speeds and the
respective inlet and outlet pressures of the hydraulic machines. Spec. 6: 15-
18. The Examiner has also not established how these various pieces of
information are detected would not be known to the person of ordinary skill
in the art, and/ or that undue experimentation would be required to discover
how to detect the claimed parameters.
For these reasons, we do not sustain the rejection of claim 10 under
35 U.S.C. § 112(a) or pre-AIA § 112, first paragraph, as failing to comply
with the enablement requirement.
Claims 1, 2, 5, 6, and 8-12 - Written Description
The Examiner determines that the claims fail to comply with the
written description requirement. Final Act. 19. With respect to the claimed
limitations, the Examiner questions how the following are detected or
ascertained because the Specification and drawings do not convey how the
following limitations are detected, ascertained, or determined: (1) "a first
rotational speed of the primary hydraulic machine;" (2) "a detected second
pivot angle;" (3) "a second rotational speed of the secondary hydraulic
machine;" ( 4) "determining, with an electronic control unit, whether the
travel drive is in a braking mode or an acceleration mode;" (5) "when the
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travel drive is determined to be in the braking mode;" ( 6) "upon determining
that the accumulator is filled;" (7) "when the travel drive is determined to be
in the acceleration mode;" (8) "a first inlet pressure;" (9) "a first outlet
pressure;" (10) "a second rotational speed;" (11) "a second inlet pressure;"
and (12) "a second outlet pressure." Id. at 20-22; see also Ans. 9-19. The
Examiner also questions the metes and bounds of the terms "braking mode"
and "acceleration mode" because the Specification does not define "mode."
Final Act. 20, 22.
Appellants contend that the Examiner has applied the wrong legal
standards in the analysis of the written description requirement and that
every limitation of the claims is adequately supported in the Specification
for purposes of the written description requirement. Appeal Br. 14.
We agree. As Appellants point out, the written description
requirement is satisfied when the disclosure of the application reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date. Id. ( citing Ariad
Pharmaceuticals v. Eli Lilly, 598 F.3d 1336, 1351 (Fed. Cir. 2010). The
Examiner does not take the position that the above-noted claim limitations
are not disclosed, but rather appears to believe that additional detail is
required as to how the various parameters are obtained and/or processed.
The Examiner's issues with respect to these limitations are potentially
relevant to the enablement requirement, but not the written description
requirement.
The Examiner's questioning of the metes and bounds of the terms
"braking mode" and "acceleration mode," also misses the mark. The
breadth of any particular claim language is not relevant to whether the
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application reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter.
For these reasons, we do not sustain the rejection of claims 1, 2, 5, 6,
and 8-12 under 35 U.S.C. § 112(a) or pre-AIA § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1, 2, 5, 6, and 8-12 - Indefiniteness
The Examiner finds that these claims are indefinite as being
incomplete, in that they omit essential elements. Final Act. 23. The
Examiner again questions how certain claimed values are detected or
ascertained, and essentially how certain claimed features are determined by
the claimed system. Id. at 23-28; see also Ans. 19-28. The Examiner also
questions the metes and bounds of the terms "braking mode" and
"acceleration mode" because the Specification does not define "mode."
Final Act. 24--25, 27.
Appellants contest the Examiner's determination of indefiniteness.
Appeal Br. 24. More particularly, Appellants contend that the Examiner
misapplies the law relating to omission of essential elements, and all
limitations of the rejected claims are clear and definite. Id. at 24--33.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014).
We agree with Appellants that the recitations at issue are sufficiently
clear, and that the Examiner's determination of indefiniteness for the claims
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is unreasonable. Questions as to how the claimed limitations are ascertained
or how certain claimed features are determined by the claimed system are
relevant to the enablement inquiry, not to whether a claim "contains words
or phrases whose meaning is unclear," such that the metes and bounds of a
claim are not clear.
Moreover, as Appellants note, a claim is indefinite for omission of
essential elements only when the claim fails to interrelate essential elements
of the invention that are specifically identified by Appellants in the
Specification as being essential to the invention. Appeal Br. 24 ( citing
MPEP § 2172.01; In re Venezia, 530 F.2d 956 (CCPA 1976); In re Collier,
397 F.2d 1003 (CCPA 1968)). The Examiner fails to point to any disclosure
in the Specification which identifies features that are essential to the claimed
invention, but are not recited in the claims.
Further, we note that the Examiner's concern with respect to the term
"mode" relates to the breadth of the claim, and is not a consideration of the
possible indefiniteness of the claims. See SmithKline Beecham Corp. v.
Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (breadth is not
indefiniteness).
Accordingly, the rejection of claims 1, 2, 5, 6, and 8-12 as being
indefinite is not sustained.
Claims 1 and 2 - Obviousness
The Examiner finds that Mueller discloses a hydraulic travel drive
having all of the claimed limitations except explicitly disclosing that a first
pivot angle and a second pivot angle are detected. Final Act. 32-33; see
also Mueller Fig. 1. The Examiner finds that Mueller discloses a primary
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machine (hydraulic pump 3) and a secondary hydraulic machine (hydraulic
engine 7) in which pivot angles are controlled by a first adjusting device 11
and a second adjusting device 12. Id. at 33 (citing Mueller ,r 30). The
Examiner relies on Gray as disclosing detecting a pivot angle by a position
sensor 156. Id. ( citing Gray ,r,r 25, 27, 53, 57, 71 ); see also Gray Fig. 1. The
Examiner explains that Gray discloses measuring a pivot angle of a
hydraulic machine for feedback because "[ c ]orrecting the commanded
displacement with respect to the actual displacement would help reduce
errors in the positioning of the swashplate" and "[b ]y being able to correct
the actual displacement of the swashplate versus the commanded
displacement of the swashplate[,] the control of the swashplate will be more
accurate." Id. at 10-11 (citing Gray Fig. 1; ,r,r 53, 57); see also Ans. 29--30.
The Examiner concludes that it would have been obvious to modify the
hydraulic travel drive of Mueller "by adding a swashplate sensor arranged as
taught by Gray in order to provide feedback to the controller about the actual
displacement of the swashplate" because "[t]he controller can then correct
the positioning based on the difference between the actual and the
commanded positions." Final Act. 33.
Appellants contend that the Examiner mischaracterizes the Mueller
reference and fails to provide a clear articulation of the reasons for
obviousness. Appeal Br. 41. Appellants argue that the adjusting devices of
Mueller are configured to set the actual delivery volume, which is the same
as the commanded delivery volume and that there is no difference between
the two. Id. at 42. As such, Appellants contend that since the adjusting
devices already set the delivery volume and swashplate position, there would
be no reason for one of ordinary skill in the art to modify the hydraulic travel
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drive of Mueller to sense the pivot angle. Id. Appellants argue that adding
the swashplate sensor of Gray to the hydraulic travel drive of Mueller would
serve no additional purpose, provide no advantage, and would in fact be
entirely superfluous, and that one of ordinary skill in the art would not have
been motivated to modify Mueller to include the superfluous swashplate
sensor. Id. at 42--43; see also Reply Br. 13-14. Appellants further argue
that just because a sensor is well-known does not mean that it would have
been obvious to use it to detect a pivot angle in a hydraulic travel drive as
claimed. Reply Br. 13-14.
The Examiner's reason to modify Mueller's hydraulic travel drive to
include a swashplate pivot angle sensor as taught by Gray, i.e., to provide
feedback by "[ c ]orrecting the commanded displacement with respect to the
actual displacement [to] help reduce errors in the positioning of the
swashplate," is supported by rational underpinnings. Notwithstanding
Appellants' contention that the adjusting devices of Mueller are configured
to set the actual delivery volume, which is the same as the commanded
delivery volume and that there is no difference between the two, that
contention presumes that any command sent by the controller would be
carried out accurately at all times such that there is no need to determine
whether a commanded displacement is correctly carried out. Gray evidences
that this presumption is unfounded, in that Gray finds it useful to determine
whether an actual motor displacement matches up with a commanded motor
displacement, suggesting that the two will not always coincide. Gray 6,
para. 53.
For these reasons, we sustain the rejection of claim 1 as being
unpatentable over Mueller and Gray. Appellants contend that claim 2 is
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allowable for the reasons discussed for claim 1. Appeal Br. 43. We thus
sustain the rejection of claim 2 as being unpatentable over Mueller and Gray
for the reasons supra.
DECISION
The rejection of claim 10 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement, is reversed.
The rejection of claims 1, 2, 5, 6, and 8-12 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is reversed.
The rejection of claims 1, 2, 5, 6, and 8-12 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is reversed.
The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Mueller and Gray, is affirmed.
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-IN-PART
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