Fluidmatics, LLC

Patent Trials and Appeals Board

Feb 2, 2021

2020003211 (P.T.A.B. Feb. 2, 2021)

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.
14/996,322 01/15/2016 Nickolas Bernheart Nesland SR. 07234-P0001B 9956
151971 7590 02/02/2021
Forge IP, PLLC
1077 Bridgeport Ave
Suite 301
Shelton, CT 06484
EXAMINER
WILLIAMS, JAMEL E
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
patent@forge-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NICKOLAS BERNHEART NESLAND, SR.
and MARK ALLEN CONOVER

______________________

Appeal 2020-003211
Application 14/996,322
Technology Center 2800
____________________

Before ST. JOHN COURTENAY, III, ERIC S. FRAHM, and
BETH Z. SHAW, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–14, 21, and 22, which constitute all pending claims on appeal.1

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies Fluidmatics, LLC, as the real party in interest. Appeal Br. 2.
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Application 14/996,322

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Claims 15–20 have been canceled. See Appeal Br. 20. An oral hearing was
conducted on January 26, 2021.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed and claimed invention concerns detecting and
monitoring of contaminants in hydraulic and lubricating fluids used in
various types of hydraulic control systems, machines, and motors. Because
contaminants in hydraulic and lubricating fluids in hydraulic control
systems, machines, and motors degrade these fluids and cause system
failures and inefficiencies, Appellant recognizes that “it is desirable and
often necessary to regularly test hydraulic and lubricating fluid for particle
contamination.” See Spec. 1:9–20. Accordingly, Appellant’s disclosed
invention, entitled “Hydraulic and Lubricating Fluid Contamination Sensor
System” (Title), “is a method and apparatus for maintaining the rate of flow
of hydraulic or lubricating fluid through a particle contamination sensor or
monitor at an acceptable level.” Spec. 2:27–29, Figs. 2, 4–5. This is done
by “maintaining the rate of flow at an acceptable level” to “improve[] the
accuracy of information produced by the contamination by the
contamination sensor or monitor.” Spec. 2:29–31.

2 Appellant was represented at the oral hearing by Todd M. Oberdick,
USPTO Registration No. 44,268.
Appeal 2020-003211
Application 14/996,322

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Appellant claims a fluid contamination monitor system (independent
claim 1) and a method of determining particle contamination of a fluid
(independent claim 8), which are illustrative of the claimed subject matter:

1. A fluid contamination monitor system comprising:
a variable speed pump that receives fluid whose particle
contamination is to be monitored and supplies the fluid to a
contamination monitor at a controllable rate of flow;
a contamination monitor that receives the fluid whose
particle contamination is to be monitored from said variable
speed pump, said contamination monitor generating
information regarding the rate of flow of the fluid received from
the variable speed pump and displaying information regarding
the particle contamination of the fluid; and
a controller that controls the operation of the variable
speed pump so as to keep the rate of flow at a target level.

Appeal Br. 17, Claims Appendix (emphases added).
8. A method of determining the particle contamination of a
fluid, comprising the steps of:
controlling the rate of flow of the fluid whose particle
contamination is to be monitored such that the rate of flow is at
a target level; and
monitoring the flow of fluid whose rate is controlled and
producing information regarding the particle contamination of
the fluid.

Appeal Br. 18–19, Claims Appendix (emphases added).

REJECTION
The Examiner made the following rejection:
Claims 1–14, 21, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Rasor (US 2014/0233605 A1; published Aug. 21,
Appeal 2020-003211
Application 14/996,322

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2014) and Juhasz (US 6,619,112 B2; issued Sept. 16, 2003). Final Act. 3–6;
see also Ans. 3–4.
ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5–
16), Reply Brief (Reply Br. 2–10),3 and Oral Hearing, the following
principal issue is presented on appeal:
Did the Examiner err in rejecting claims 1–14, 21, and 22 under
35 U.S.C. § 103 as being unpatentable over the combination of Rasor and
Juhasz, because there is not proper motivation to combine Rasor and Juhasz?

ANALYSIS
We have reviewed the Examiner’s rejection (see Final Act. 3–6) in
light of Appellant’s arguments that the Examiner has erred, as well as the
Examiner’s response to Appellant’s arguments in the Appeal Brief. Appeal
Br. 5–16; see also Reply Br. 2–10; Ans. 3–4; and generally Oral Hearing.
Appellant’s contentions that the Examiner has not provided a sufficient
motivation to combine Rasor and Juhasz are persuasive. We provide the
following explanation for emphasis. See Appeal Br. 11, 13–14; see also
Reply Br. 2–3, 5–6.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (citations
omitted); see also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d

3 Appellant argues claims 2–14, 21, and 22 on the same basis as claims 1
and 8. See Appeal Br. 5–16; see also Reply Br. 2–10.
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Application 14/996,322

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1309, 1322 (Fed. Cir. 2016) (Stating that, as an administrative agency, the
PTAB “must articulate logical and rational reasons for [its] decisions.”)
(citations omitted).
“If all elements of a claim are found in the prior art, as is the case here,
the factfinder must further consider the factual questions of whether a person
of ordinary skill in the art would be motivated to combine those references.”
Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015); see also
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. at 418; see also Metalcraft
of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367 (2017) (Fed. Cir.
2017) (“Without any explanation as to . . . why the references would be
combined to arrive at the claimed invention, we are left with only hindsight
bias that KSR warns against. [W]e cannot allow hindsight bias to be the
thread that stitches together prior art patches into something that is the
claimed invention.”).
Here, the Examiner has provided a motivation stemming directly from
Appellant’s application, namely, to modify Rasor with Juhasz’s variable
speed pump and/or method of monitoring and controlling fluid flow rate at a
target level in order “to address parameters of the system changing over
time, without having to keep replacing the speed pump of Rasor.” Ans. 4.
In this light, we are persuaded by Appellant’s arguments that the Examiner
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employed impermissible hindsight and used knowledge gleaned only from
the present application that was not within the level of ordinary skill at the
time the claimed invention was made. See Appeal Br. 13–14; see also Reply
Br. 5–6; and In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Based on the foregoing, we find that the Examiner has not properly
established articulated reasoning with a rational underpinning to support the
legal conclusion of obviousness for claims 1 and 8, resulting in a failure to
establish a prima facie of obviousness. Thus, Appellant has overcome the
Examiner’s prima facie case of obviousness with respect to independent
claims 1 and 8. As a result, Appellant has shown the Examiner erred in
rejecting claims 1–14, 21, and 22 under 35 U.S.C. § 103 as being
unpatentable over the combination of Rasor and Juhasz.

DECISION
For the reasons explained above, we do not sustain the rejection of
claims 1–14, 21, and 22 under 35 U.S.C. § 103 as being unpatentable over
the combination of Rasor and Juhasz.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–14, 21,
22
103 Rasor, Juhasz 1–14, 21,
22

REVERSED