CONTINENTAL TEVES AG & CO. OHG

Patent Trials and Appeals Board

Nov 13, 2020

14895299 - (D) (P.T.A.B. Nov. 13, 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.
14/895,299 12/02/2015 Uwe Bach 1700P13140WOUS 8042
23122 7590 11/13/2020
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
BOWES, STEPHEN M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UWE BACH, JENS HOFFMANN,
NICLAS GÖRRISSEN, WOLFGANG RITTER,
AHMED SEFO, and HOLGER VON HAYN

Appeal 2020-002602
Application 14/895,299
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
CARL M. DEFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–7, which are the sole claims pending
in this application.1 See Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).

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
“Continental Teves AG & Co. oHG.” Appeal Br. 2.
Appeal 2020-002602
Application 14/895,299

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We REVERSE the Examiner’s rejection of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an electrically actuated drum
brake, in particular electromotively actuated drum brake module, with
improved cable pull actuator arrangement for motor vehicles.” Spec. 1:13–
15. Apparatus claim 1 is the sole independent claim, is illustrative of the
claims on appeal, and is reproduced below.
1. An electromotively actuated drum brake module with a
cable pull actuator arrangement for motor vehicles, comprising:
an electromechanical cable pull actuator which is
arranged on an outer side of an anchor plate and which serves
for driving a rotation-translation converter for converting a
rotational drive input rotary movement into a translational
actuation movement of brake pads, which brake pads are
arranged on an inner side of the anchor plate in an interior of a
brake drum, such that said brake pads can perform an actuation
movement in the direction of the brake drum; and
an adapter arranged between the cable pull actuator and
the anchor plate,
wherein the adapter comprises a single sheet of material
provided in unipartite form and being formed into a frame
having multiple planar walls which are arranged at an angle and
obliquely with respect to one another, the frame defining a
cavity, the frame having, on one side, at least one planar
fastening flange for accommodating the cable pull actuator, the
frame being fixable at another side to the anchor plate, with the
multiple planar walls extending between the fastening flange
and the anchor plate.
EVIDENCE
Name Reference Date
Bach, et al. (“Bach”) WO 2012 104392 A2 Aug. 9, 2012
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Application 14/895,299

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REJECTION
Claims 1–7 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Bach.
ANALYSIS
Independent claim 1 recites an adapter that “comprises a single sheet
of material.” The Examiner finds that Bach’s adapter meets this limitation
and provides an annotation of Figure 1a of Bach for support. See Final
Act. 3–4. Appellant disagrees with this assessment and notes that for an
anticipation rejection, “each and every element” must be found “either
expressly or inherently described” in a single reference. Appeal Br. 4
(citation omitted). Appellant contends that “[i]nasmuch as the Examiner
does not cite to any written description in Bach for the features of the
adaptor of claim 1, it is assumed that the Examiner relies entirely on FIG. 1a
of Bach as disclosing the claimed adaptor.” Id. The Examiner does not
disagree, and states, “[t]he one-piece, non-cage-like body of Bach et al reads
on the limitation of ‘sheet’ as much as the invention does” and that “[t]he
limitation ‘sheet’ carries relatively little weight as the inventive adapter is a
cup-shaped body and not planar.” Ans. 3.
We disagree with these statements by the Examiner because Bach is
silent as to the construction material used in making the adapter, regardless
of its shape, and none of Bach’s drawings provide any clear guidance that
the adaptor “comprises a single sheet of material.” Further, we are
instructed that “claims are interpreted with an eye toward giving effect to all
terms in the claim.” Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006). See also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
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Application 14/895,299

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1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases
in claims superfluous). Thus, the Examiner providing “little weight” to the
claim term “sheet” runs counter to this guidance from our reviewing court.
Appellant further contends that a cross-sectional view of Bach’s
adapter “precludes the possibility of adapter 10 being formed from a single
sheet of material” because “Bach shows an adapter 10 that has a varying
thickness as well as a cylindrical through-hole, both of which are
inconsistent with formation from a single sheet of material.” Appeal Br. 6
(referencing Bach Figure 2a). The Examiner replies stating that Bach’s
adapter “could be made by starting with a large, thick sheet of material . . .
and carving away material to arrive at the claimed one-piece structure
formed from a single sheet.” Ans. 4. Such a hypothetical on the part of the
Examiner (i.e., “could be made”) is not conducive to a finding of either an
overtly express or a necessarily inherent disclosure.2
The Examiner also contends that “[e]ven if the claimed invention
were a product by process claim, it lacks features that distinguish it from the
prior art.” Ans. 6. As understood, the Examiner finds that Appellant’s
“single sheet” adapter is not distinguishable over Bach’s adapter. However,
the Examiner does not elaborate as to why this single-sheet limitation is
indistinguishable, and especially when Bach itself is silent on the point.
Furthermore, although this claimed feature “could be” possible in Bach
(Ans. 4), we are instructed that “probabilities or possibilities” are not enough

2 “To establish inherency, the extrinsic evidence ‘must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation
omitted).
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Application 14/895,299

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to find that the prior art inherently discloses something not explicitly
present. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
Accordingly, and based on the record presented, we do not sustain the
Examiner’s rejection of claims 1–7 as being anticipated by Bach.
CONCLUSION
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 102(a)(1) Bach 1–7
Overall
Outcome
1–7

REVERSED