Schulz, Frank et al.

Patent Trials and Appeals Board

Dec 16, 2019

13261913 - (D) (P.T.A.B. Dec. 16, 2019)

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.
13/261,913 05/30/2014 Frank Schulz 61553 5149
513 7590 12/16/2019
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
LOPEZ, FRANK D
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SCHULZ and PETER BRUCK
Appeal 2019-003003
Application 13/261,913
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8–23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
According to Appellant, “[t]he invention relates to a hydraulic hybrid
system for rotary applications, having an actuator in the form of a motor
pump unit, which is coupled with a rotary-operating device, for example a

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “HYDAC
FLUIDTECHNIK GMBH.” Appeal Br. 1.
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traction drive.” Spec. 1. Independent claim 8, reproduced below, is
illustrative of the claimed subject matter:
8. A hydraulic hybrid system for rotary applications,
comprising:
a motor pump unit;
a rotary-operating device being coupled to said motor
pump unit, being a consumer of hydraulic energy in a first
operating state and being a producer of hydraulic energy in a
second operating state;
an adjustable hydropneumatic piston accumulator being
connected in fluid communication with said motor pump unit,
being chargeable by said motor pump unit for energy storage in
the second operating state and being discharged for energy
release to said motor pump unit in the first operating state, said
piston accumulator having a plurality of separate pressure
chambers adjacent to active surfaces of different sizes on a fluid
side of an accumulator piston in said piston accumulator, said
piston accumulator having a gas side and having two of said
active surfaces inside said accumulator piston in a stepped
configuration; and
an adjustment assembly connecting a selected one of said
pressure chambers or a plurality of selected ones of said pressure
chambers of said piston accumulator to said motor pump unit or
to said rotary-operating device depending on prevailing pressure
levels on said piston accumulator, and motor pump unit and said
rotary-operating device.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 8–15, 22, and 23 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
II. Claims 16–21 under 35 U.S.C. § 102(b) as anticipated by
Beachley et al. (US 5,971,027, issued Oct. 26, 1999)
(“Beachley”); and
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III. Claims 8–15, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Beachley and Roethler et al. (US 7,100,723
B2, issued Sept. 5, 2006) (“Roethler”).
ANALYSIS
Rejection I—Written description rejection of claims 8–15, 22, and 23
The Examiner rejects independent claim 8 as failing to comply with
the written description requirement, for three reasons. Final Act. 5. The
first reason, according to the Examiner, appears to be based on claim 8’s
recitation of “a rotary-operating device . . . being a consumer of hydraulic
energy in a first operating state and being a producer of hydraulic energy in
a second operating state.” Appeal Br., Claims App. (emphases added).
According to the Examiner, claim 8 lacks written-description support
because “the [claimed] motor pump unit . . . would appear to be the
consumer and producer of hydraulic fluid, not the rotary-operating device.”
Final Act. 5 (emphases added).
Appellant argues that the Examiner errs because claim 8 recites that
“the rotary-operating device . . ., not the motor pump unit . . .[,] is the
consumer and producer of hydraulic energy, not fluid.” Appeal Br. 4. This
is consistent with Appellant’s Specification describing that “the rotary-
operating device[] consumes or produces energy that is converted to
hydraulic energy via . . . pump 91[,] such that the rotary-operating device is
alternatively at least an indirect energy consumer and producer of hydraulic
energy.” Id.
Thus, at least because claim 8 does not recite that the rotary-operating
device consumes hydraulic fluid, the Examiner does not support adequately
that the claim lacks written-description support.
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According to the Examiner, the second reason that independent
claim 8 lacks written-description support (Final Act. 5) relates to the claim’s
recitation of “an adjustment assembly connecting . . . said piston
accumulator to said motor pump unit or to said rotary-operating device”
(Appeal Br., Claims App. (emphases added)). Specifically, the Examiner
finds that “there is nothing in the disclosure that indicates the adjustment
assembly connects the accumulator to the rotary-operating device; . . . [the
adjustment assembly] only connects the accumulator to the motor pump
unit.” Final Act. 5; see Fig. 3.
Appellant argues that the “mechanical connection between . . . motor
pump unit 91 and . . . rotary-operating device 94 provides the connection
[from adjustment assembly 51] to the rotary-operating device.” Appeal
Br. 5; see also Reply Br. 2–3 (“The claim language is not limited to a
‘direct’ connection and reads on a ‘direct’ or ‘indirect’ connection to either
of the motor pump unit or the rotary-operating device. These connections to
the motor pump unit and the rotary-operating device are different since they
are respectively direct and indirect.”).
We agree with the Examiner that the above claim recitation lacks
written-description support. Appellant’s written description does not
describe the invention such that the claim recitation of “an adjustment
assembly connecting a . . . pressure chamber[] or . . . pressure chambers of
said piston accumulator to said motor pump unit or to said rotary-operating
device” (Appeal Br., Claims App. (emphases added)) is understood to
encompasses a connection from the piston accumulator to the rotary-
operating device through both of the adjustment assembly and the motor
pump.
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Thus, based on the foregoing, the Examiner adequately supports that
claim 8 lacks written-description support. Therefore, we sustain claim 8’s
written-description rejection, and sustain the rejection of claims 9–15, 22,
and 23 that depend from claim 18.
According to the Examiner, the third reason that claim 8 lacks written-
description support (Final Act. 5) relates to the claim’s recitation of
“connecting . . . said piston accumulator to said motor pump unit or to said
rotary-operating device depending on prevailing pressure levels on said
piston accumulator, and motor pump unit and said rotary-operating device”
(Appeal Br., Claims App. (emphasis added)). In particular, the Examiner
finds that “there is nothing [described in Appellant’s Specification] sensing
the pressure in the rotary-operating device (94), to be able to control the
adjustment assembly.” Final Act. 5.
According to Appellant, the Examiner errs because “the allegedly
missing sensing of the pressure in the rotary-operating device is provided via
the motor pump unit by the shaft connecting them.” Appeal Br. 5. We
agree with Appellant.
We construe the claim language differently than the Examiner does,
such that the pressure levels arise from two locations, not three.
Specifically, one location from which pressure is determined is the “piston
accumulator,” and the other is the “motor pump unit and . . . rotary-operating
device.” In that second location, the pressure of the two components
together is measured in the hydraulic pressure of the motor pump, because
the rotary-operating device affects the forces, and thus pressures, in the
motor pump. In addition, although the rotary-operating device may be
hydraulic (Spec. 7), the rotary-operating device is not limited to a hydraulic
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device. A traction device, for example, or mechanical transmission, may not
have any fluid pressure to sense. Thus, based on the foregoing, the
Examiner does not support adequately that this recitation of claim 8 lacks
written-description support.

Rejection II—Anticipation of claims 16–21
As set forth above, independent claim 16 recites
an accumulator piston axially movable in said accumulator
housing along said longitudinal axis and separating said internal
chamber of said accumulator housing into a fluid side and a gas
side, said accumulator piston having two active piston surfaces
of different sizes inside said accumulator piston in a stepped
configuration.
Appeal Br., Claims App. (emphasis added). The Examiner finds that
Beachley discloses the claimed two active piston surfaces inside an
accumulator piston in a stepped configuration, because Beachley teaches
two “axially stepped” piston surfaces that “are interior to the piston,” at
column 9, lines 51–54, 58–59, and 63–67, and column 10, lines 4–7. Final
Act. 6–7; Answer 13.
Appellant argues that Beachley does not disclose “an accumulator
piston having a plurality of the active surfaces inside the accumulator piston
in a stepped configuration.” Appeal Br. 7–8. Appellant further argues that
in Beachley, “Figures 4–7 and 10 . . . only have its active surfaces on the
outside of its accumulator piston,” and that in Beachley’s Figure 8, the
“active surfaces inside the accumulator piston . . . are only coplanar.” Id.
at 8.
The Examiner, however, determines that because Beachley discloses
that Figure 8’s configuration could be modified so that voids 178 could be
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pressure chambers within the piston, and that because the surfaces of
voids 178 are “axially spaced” with “active surface (166, 168) of the inner
chambers (172, 174),” this meets the claim language. Answer 10–13. The
Examiner also determines that because Beachley discloses that surfaces
could be “stepped,” as in accumulator systems 50, 90, 100, 120, 150
and 200, “pressure chambers 172, 174, 176 could also be stepped.”
Answer 13.
As set forth above, claim 16 expressly recites an “accumulator piston
having two active piston surfaces of different sizes inside said accumulator
piston in a stepped configuration.” Appeal Br., Claims App. Thus, each of
the two active piston surfaces are inside the piston, and stepped with regard
to each other. Therefore, the Examiner is incorrect that the surfaces in
Beachley’s Figure 8, when modified so that inside chambers 178 are
pressure chambers, are stepped with regard to the surfaces of chambers 172,
174, and 176, consistent with the above-discussed recitation of claim 16.
See Final Act. 6–7. This is because only the surfaces of chamber 178 are
“inside” the piston, and these surfaces are stepped with regard to surfaces
172, 174, and 176 that are outside the piston. Accordingly, this
configuration would not disclose piston surfaces that are both inside a piston
and in a stepped configuration with each other, as claimed.
The Examiner also interprets Beachley as disclosing that various non-
stepped piston surfaces may be stepped, and, based on this interpretation,
determines that Beachley discloses the claimed stepped configuration, as
discussed above. Answer 13 (citing Beachley col. 9, ll. 62–67). The cited
portion of Beachley describes stepped configurations of piston surfaces, but
references accumulator systems 50, 90, 100, 120, 150, and 200. Those
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systems are shown in Beachley’s Figures 4–10, but the stepped surfaces
shown are all outside the piston, not inside, as claimed.
The Examiner has thus failed to support adequately that Beachley
discloses a piston accumulator system with piston surfaces that are both
inside the piston and axially-spaced in a stepped configuration with each
other, as recited in claim 16. Therefore, we do not sustain the Examiner’s
anticipation rejection of claim 16, and of claims 17–21 that depend from
claim 16.

Rejection III—Obviousness rejection of claims 8–15, 22, and 23
As set forth above, independent claim 8 recites, in relevant part,
an adjustable hydropneumatic piston accumulator being
connected in fluid communication with said motor pump unit,
being chargeable by said motor pump unit for energy storage in
the second operating state and being discharged for energy
release to said motor pump unit in the first operating state, said
piston accumulator having a plurality of separate pressure
chambers adjacent to active surfaces of different sizes on a fluid
side of an accumulator piston in said piston accumulator, said
piston accumulator having a gas side and having two of said
active surfaces inside said accumulator piston in a stepped
configuration.
Appeal Br., Claims App. (emphases added).
The Examiner’s obviousness rejection of claim 8 relies on Beachley to
disclose the claimed piston accumulator having two active surfaces inside
the accumulator piston in a stepped configuration. Final Act. 7. Thus, for
reasons substantially similar to those discussed above with respect to
independent claim 16, the Examiner does not support adequately that
Beachley discloses the claimed configuration.
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Further, to the extent that the Examiner’s statements may be
understood as determining that an obvious modification of Beachley would
result in the claimed stepped configuration, the Examiner does not provide
any teaching, suggestion, or motivation, or rational reason, for modifying
Beachley. See Answer 13.
Thus, based on the foregoing, we do not sustain the Examiner’s
obviousness rejection of independent claim 8. We also do not sustain the
obviousness rejection of claims 9–15, 22, and 23 that depend from claim 8.
CONCLUSION
We AFFIRM the Examiner’s written-description rejection of
claims 8–15, 22, and 23.
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 8–23.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–15, 22,
23
112, first
paragraph
Written description 8–15, 22,
23

16–21 102(b) Beachley 16–21
8–15, 22,
23
103(a) Beachley, Roethler 8–15, 22,
23
Overall Outcome 8–15, 22,
23
16–21
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