14427359 - (D) (P.T.A.B. Aug. 11, 2020)

GRUNDFOS HOLDING A/S

Patent Trials and Appeals BoardAug 11, 2020

14427359 - (D) (P.T.A.B. Aug. 11, 2020)

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. 14/427,359 03/11/2015 Martin Byskov Skafsgaard 75062 4022 23872 7590 08/11/2020 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER HANSEN, KENNETH J ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 08/11/2020 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 MARTIN BYSKOV SKAFSGAARD and BENT DØSSING ____________ Appeal 2020-000954 Application 14/427,359 Technology Center 3700 ____________ Before ANTON W. FETTING, AMEE A. SHAH, and RACHEL H. TOWNSEND, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 1–18, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and ENTER a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “Grundfos Holding A/S.” Appeal Br. 1. Appeal 2020-000954 Application 14/427,359 2 CLAIMED SUBJECT MATTER The Appellant’s invention relates to a method for controlling a circulation pump in an installation with at least two circulation circuits, with which the circulation pump is integrated by way of a switch-over valve into the one or the other circulation circuits depending on the switched position, wherein the pump is activated differently depending on the switched position of the switch-over valve, as well as to a circulation pump assembly with a speed-controllable electric motor, with a centrifugal pump driven by this and with a control for the speed control of the motor. Spec. ¶ 2. Claims 1, 11, and 16 are the independent claims. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for controlling a circulation pump in an installation with at least two circulation circuits, with which the circulation pump is integrated by way of a switch-over valve into one or another of the circulation circuits depending on a switched position, the method comprising the steps of: operating the pump in a first mode depending on the switched position of the switch-over valve; detecting a switch-over procedure of the switch-over valve based on at least one of a pressure course in the pump, a flow rate course in the pump and an electrical variable which is dependent thereon of the motor driving the pump; and operating the pump in a second mode upon detecting the switch-over procedure. Appeal Br. 39 (Claims App.) (emphasis added). Appeal 2020-000954 Application 14/427,359 3 REJECTIONS Claims 1–18 stand rejected under AIA 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 8 and 11–18 stand rejected under AIA 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. OPINION Written Description Independent claim 1 requires the emphasized feature above, which includes “detecting a switch-over procedure of the switch-over valve based on at least one of a pressure course in the pump, a flow rate course in the pump and an electrical variable which is dependent thereon of the motor driving the pump.” Appeal Br. 39 (Claims App.). Claims 11 and 16 each contains a similar feature (although claim 16 requires only a flow rate course). See id. at 41, 43. The Examiner finds that there is inadequate support in the Specification to describe the limitation regarding detecting “in a manner that would reasonably convey the Applicant had possession of the claimed invention.” Final Act. 5. Specifically, the Examiner finds that “there is no materially supporting algorithm, relationships or set of procedural steps described nor are there any measuring or sensing electrical hardware components disclosed for performing this detection.” Id.; see also Ans. 16–17. The Examiner further finds that, although the specification sets forth operational examples including detecting the switch-over[,] . . . there are no details disclosed for how the detecting is materially implemented or, in other words, which component determines the pressure or flow rate courses and associated electrical variables and how that data specifically is used to operate the pump or motor. Appeal 2020-000954 Application 14/427,359 4 Final Act 6; see also Ans. 12–13. The Appellant contends that the Specification contains adequate support and directs attention to paragraphs 7–19 and 31–38 of the Specification. See Appeal Br. 8–9, 19–21, 24–27; Reply Br. 2–7. The Appellant’s argument is persuasive. A specification must “contain a written description of the invention.” 35 U.S.C. § 112 ¶ 1 (2006). The test for the sufficiency of the written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description requirement is not met if the specification merely describes a “desired result.” Id. at 1349. “Whether a patent claim is supported by an adequate written description is a question of fact.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1297 (Fed. Cir. 2014) (citing Ariad, 598 F.3d at 1355). Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015). Here, the Specification provides that the detecting of a switch-over procedure comprises a comparison of a pressure course, flow course, or electrical variable to a predefined characteristic value. See, e.g., Spec. ¶ 13 (discussing that for the switch-over procedure determination, “the pressure course or flow rate course or the course of electrical variable of the motor . . . is compared to predefined characteristic values, in order to detect [the switching procedure] with a high accuracy,” the predefined values being “determined by way of measuring in the installation itself and subsequent storage or however prescribed on the part of the factory, as is useful for example with a correspondingly designed heating circulation pump for the Appeal 2020-000954 Application 14/427,359 5 above described switch-over valves”); ¶ 35 (describing how operations resulting in a “steep drop of the flow rate with a constant power of the pump serves as a characteristic criterion for the switch-over procedure” and a “sudden flow rate increase with a constant power is recognized by the control as a switch-over procedure”). The Examiner’s reasoning that “measuring or sensing electrical hardware components” (Final Act. 5; see also Ans. 12) would be needed to perform this comparison is not adequately supported where, as here, the Specification provides that the data analysis can be performed by a control comparing data, and the claims do not recite measuring or sensing. The Examiner’s reasoning that the Specification, including the claims, must specify how “the pressure or flow rate courses and associated electrical variables” (Final Act. 6) are determined and sensed (see Ans. 12) is not adequately supported where, as here, the claims merely recite the detecting of a switch-over procedure using obtained data. The Examiner does not dispute the Appellant’s contentions that the “basic concept of measuring flow rate is known” (Appeal Br. 9) and “[a] person skilled in the art knows how to detect pressure and/ or flow rate in a hydraulic circuit” (id. at 10). Thus, based on the record before us, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112(a)/first paragraph of independent claims 1, 11, and 16, and of dependent claims 2–10, 12–15, 17, and 18. We also do not sustain the rejection of dependent claims 2 and 5–8 for limitations that the Examiner found “similarly lacking in adequate support as set forth in the rejection of the limitations above” under the same ground of rejection. Final Act. 6–7; see also Ans. 17–23. We also do not sustain the rejection of dependent claim 13 “because the disclosure is silent as to describing a Appeal 2020-000954 Application 14/427,359 6 material algorithm, set of relationships or procedural steps for implementing the recited functions” (Final Act. 7) for the reasons discussed above, i.e., because the Specification provides support for performing a comparison of data. Indefiniteness Claim 8 The Examiner determines that the limitation of claim 8 that “a switch- over is carried out automatically in the control given a determining of a switched position which is different from a predetermined switched position in the control” (Appeal Br. 41 (Claims App.)) “is vague and indefinite since a predetermined switched position has not been recited in the claims nor defined in specification as understood” (Final Act. 8). We agree with the Appellant that “[a] person of ordinary skill in the art would understand that the term ‘predetermined switching position’ refers to a switching position that is determined beforehand or in advance. There is nothing indefinite about the use of the phrase ‘a predetermined switched position’.” Appeal Br. 29; see also IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1119 (Fed. Cir. 2011) (holding that the term “predetermined event” is not indefinite because the plain and ordinary meaning is “defined in advance”). Thus, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112(b)/second paragraph of claim 8. Claims 11 and 16 The Examiner determines that the limitations of claims 11 and 16 regarding the control are “indefinite 35 U.S.C. 112(f), sixth paragraph limitation[s] because the specification does not provide adequate support for Appeal 2020-000954 Application 14/427,359 7 the recited control functions.” Final Act. 8–9; see also id. at 10. Specifically, the Examiner finds that “[t]he originally filed specification lacks adequate disclosure of material, structure or acts such as an algorithm, set of relationships or procedural steps described nor are there any control processor, measuring or sensing hardware electronics disclosed for implementing these control functions.” Id. at 9. Claim 11 recites “[a] circulation pump assembly comprising: . . . a control for the speed control of the motor, wherein the control takes the steps of: operating . . . ; detecting . . . ; and operating . . . .” Appeal Br. 41–42 (Claims App.). Claim 16 recites the limitation of “a frequency controller comprising control and regulation electronics, wherein a control is integrated in the control and regulation electronics, the control being configured to: operate . . . ; detect . . . ; and operate . . . .” Id. at 43. The first step in determining whether a claim limitation invokes 35 U.S.C. § 112(f)/sixth paragraph is to “establish the meaning of each claim term consistent with the specification as it would be interpreted by one of ordinary skill in the art, including identifying and construing functional claim limitations.” Manual of Patent Examining and Procedure (“MPEP”) § 2181(I) (June 2020, R-10.2019). “If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes 35 U.S.C. 112(f)[/sixth paragraph].” Id. Here, claims 11 and 16 recite “a control” for the steps of operating and detecting or configured to operate and detect. Because, as further discussed below under the section regarding the new ground of rejection, we are unable to understand to what the term “control” refers, we are thus not able to ascertain whether or not it is a substitute term acting as a placeholder for the Appeal 2020-000954 Application 14/427,359 8 term “means” or “step” (id.) such that 35 U.S.C. § 112(f)/sixth paragraph would be invoked. Because the Examiner’s rejection relies on the invocation of 35 U.S.C. § 112(f)/sixth paragraph and we are not able to determine whether that interpretation is correct, we do not sustain the Examiner’s rejection under 35 U.S.C. 112(b)/second paragraph of independent claims 11 and 16 and their dependent claims 12–15, 17, and 18. Claim 13 The Examiner determines that the limitation of claim 13 of “‘the control for the detection of the switch-over procedure’ is indefinite for lacking sufficient antecedent basis in the claims.” Final Act. 9. The Appellant contends “the lack of antecedent basis of the terms ‘the control for the detection of the switch-over procedure’ do not prevent a person of ordinary skill in the art from understanding the scope of the features claimed.” Appeal Br. 33. Claim 13 depends from claim 11 and recites the limitation of “the control for the detection of the switch-over procedure forms part of control and regulation electronics of the speed controller, implemented into the control and regulation electronics with regard to software.” Appeal Br. 42 (Claims App.). We do not understand the Examiner’s reasoning why the control for the detection is indefinite, and find the Appellant’s argument persuasive that one of ordinary skill in the art would understand “the control for the detection” as recited in claim 13 to further limit “the control [that] takes the steps of: . . . detecting” as recited in independent claim 11. Thus, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112(b)/second paragraph of claim 13. Appeal 2020-000954 Application 14/427,359 9 Claim 15 The Examiner determines that the limitation of claim 15 reciting “‘to carry out an automatic adaptation of a regulating curve to the installation’ is vague and indefinite for not positively reciting the nature of the adaptation in terms of control functions or specific parameters rendering interpretation of the scope of the claim unclear.” Final Act. 10. Specifically, the Examiner determines that the limitation is indefinite “due to the nebulous meaning of automatic adaption [sic] and how that would be implemented with respect to a regulating curve in the instant invention.” Ans. 22. The Appellant contends “[c]laim 15 clearly sets forth that an installation is controlled based on a regulating curve. There is nothing indefinite about claim 15.” Appeal Br. 33–34. Claim 15 depends from claim 11 and recites the limitation of “wherein control and regulation electronics are provided, which are configured to carry out an automatic adaptation of a regulating curve to the installation.” Appeal Br. 42 (Claims App.). It is not clear what comprises “carry[ing] out an automatic adaptation of a regulating curve to the installation,” i.e., whether it is the curve that is being adapted or the installation. It is further not clear how the curve is adapted to the installation. The Appellant’s contention that one of ordinary skill in the art would understand this to mean “an installation is controlled based on a regulating curve” (id. at 33) is unsupported attorney argument. The Appellant does not direct attention to, and we do not find, where the Specification discusses that the installation is controlled based on a regulating curve. At best, the Specification provides for “control and regulation electronics which carry out an automatic adaptation of the closed- Appeal 2020-000954 Application 14/427,359 10 loop control curve to the installation, as is known for example from DE 195 25 887 C2” such that the pump assembly “automatically adapts to the installation, thus adapts the pump with the driving motor as best as possible to the stationary conditions.” Spec. ¶ 19. There is no discussion that clarifies whether the regulation curve or installation is adapted and what that adaptation looks like. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 112(b)/ second paragraph of claim 15. Claims 17 and 18 The Examiner determines that the recitation of “the electronic control unit” in claims 17 and 18 “is indefinite for lacking sufficient antecedent basis in the claims.” Final Act. 10. The Appellant contends “the lack of antecedent basis for ‘the electronic control unit’ does not prevent a person of ordinary skill in the art from understanding the scope of the features claimed.” Appeal Br. 37. Claims 17 and 18 each depends from claim 16, which recites “a frequency controller comprising control and regulation electronics, wherein a control is integrated in the control and regulation electronics, the control being configured to:” operate and detect. Appeal Br. 43 (Claims App.). We find unpersuasive the Appellant’s argument that “[a] person of ordinary skill in the art would understand that the electronic control unit recited in claim[s] 17 [and 18] refers to the control previously recited in claim 16.” Appeal Br. 37–38. Rather, we determine that one of ordinary skill in the art would not understand whether the recited “electronic control unit” refers to the frequency controller comprising control and regulation electronics, the Appeal 2020-000954 Application 14/427,359 11 control integrated in the control and regulation electronics, the control and regulation electronics, or a separate, different unit. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 112(b)/second paragraph of claims 17 and 18. NEW GROUND OF REJECTION We reject independent claims 11 and 16, and thus also their dependent claims 12–15, 17, and 18, under 35 U.S.C. § 112(b)/second paragraph as failing to set forth the subject matter which the inventor or a joint inventor regards as their invention. Independent claim 11 recites “[a] circulation pump assembly comprising: . . . a control for the speed control of the motor, wherein the control takes the steps of: operating . . . ; detecting . . . ; and operating . . . .” Appeal Br. 41–42 (Claims App.). The word “control” and its surrounding words indicate that the control of claim 11 is software with instructions. However, claim 13 that depends from claim 11 recites “the control for the detection of the switch-over procedure forms part of control and regulation electronics of the speed controller, implemented into the control and regulation electronics with regard to software.” Id. at 42. Here, the word “control” and its surrounding words indicate that the control can be hardware that implements software. We are unable to discern whether the control of claim 11 refers to software comprising instructions, hardware performing the steps, or some combination of both. Similarly, independent claim 16 recites “[a] circulation pump assembly comprising: . . . a frequency controller comprising control and regulation electronics, wherein a control is integrated in the control and regulation electronics, the control being configured to: operate . . . ; detect Appeal 2020-000954 Application 14/427,359 12 . . . ; and operate . . . .” Id. at 42–43. Dependent claims 17 and 18 recite “the electronic control unit” that compares or monitors data. Here, the word “control” and its surrounding words indicate hardware, but can be software (to compare), or a combination of both. The Specification provides no illumination. The Specification discusses “a control for the speed control of the motor” (Spec. ¶ 16), that “it is advantageous if this control for the detection of the switch-over procedure is part of the control and regulation electronics of the speed controller, and preferably integrated into this with regard to software” (id. ¶ 17) such that “[t]he method according to the invention may then be incorporated into existing circulation pumps by way of a simple software update” (id.), that “[p]referably, a frequency converter is applied as a speed controller” (id.), and for a “centrifugal pump 1 controlled by frequency converter” (id. ¶ 29). As such, it is not clear whether the control is only hardware (i.e., some generic electronic component able to accept and implement software and software updates for a pump), only software (i.e., the instructions themselves), or a combination of both. One of ordinary skill in the art would not understand to what “control” refers, i.e., its meaning, structure, or something lacking of structure as recited in each of the claims. Because we cannot ascertain what comprises the element of “a control” as used in the claims, the metes and bounds of the apparatus claims are unclear, thus, the claims are indefinite. See In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it contains words or phrases whose meaning is unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining Appeal 2020-000954 Application 14/427,359 13 that the USPTO considers a claim indefinite when it “contains words or phrases whose meaning is unclear”). As discussed above, with regard to the rejection of claims 11 and 16 under 35 U.S.C. § 112(b)/second paragraph, we cannot determine whether 35 U.S.C. 112(f)/sixth paragraph is invoked. Our analysis here is based on not invoking 35 U.S.C. § 112(f)/sixth paragraph. However, we can understand a scenario whereby § 112(f)/sixth paragraph is invoked, because the term “control” could be a generic placeholder for the term “means” or “step” for the recited functions of operating and detecting. We note that the Examiner takes this position (Final Act. 2–3; Ans. 20–21, 23), and the Appellant does not rebut the Examiner’s statement. Because we do not understand to what the term “control” refers, we do not determine whether it does or does not invoke 35 U.S.C. 112(f)/sixth paragraph. CONCLUSION The Examiner’s decision to reject claims 1–18 under 35 U.S.C. § 112, first paragraph is not sustained. The Examiner’s decision to reject claims 8, 11–14, and 16 under 35 U.S.C. § 112(a)/second paragraph is not sustained. The Examiner’s decision to reject claims 15, 17, and 18 under 35 U.S.C. § 112(b)/second paragraph is sustained. We enter a NEW GROUND OF REJECTION of claims 11–18 under 35 U.S.C. § 112(b)/second paragraph as indefinite. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2020-000954 Application 14/427,359 14 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–18 112 Written Description 1–18 8, 11–18 112 Indefiniteness 15, 17, 18 8, 11–14, 16 11–18 Overall Outcome 15, 17, 18 1–14, 16 11–18 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)