Ex Parte Boerner et alDownload PDFPatent Trial and Appeal BoardDec 10, 201512361555 (P.T.A.B. Dec. 10, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/361,555 0112912009 95683 7590 12/14/2015 Ley dig, Voit & Mayer, Ltd, (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 FIRST NAMED INVENTOR Gunter Boerner 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. 810768 8503 EXAMINER MANCHO, RONNIE M ART UNIT PAPER NUMBER 3664 NOTIFICATION DATE DELIVERY MODE 12/14/2015 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): chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUNTER BOERNER and DIETMAR EICKMEYER Appeal2013-005947 Application 12/361,555 Technology Center 3600 Before ANNETTE R. REIMERS, TIMOTHY J. GOODSON, and LEE L. STEPINA, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants Gunter Boemer and Dietmar Eickmeyer appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-6 and 8-10. Appeal Br. 2-3. An oral hearing was conducted on December 1, 2015. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method for restarting a robot having an atomizer apparatus for automatic coating, using predetermined nominal Appeal2013-005947 Application 12/361,555 atomizer parameters, of a workpiece moveable by a feed device after an interruption of a nominal movement of the atomizer apparatus at a nominal velocity along a nominal movement path relative to the workpiece, the method comprising: storing an interruption point of the atomizer apparatus; moving the atomizer apparatus to a restarting point located on the nominal movement path before the interruption point; accelerating the atomizer apparatus along the nominal movement path using a predetermined velocity function between the restarting point and a transfer point located on the nominal movement path after the interruption point; switching the atomizer apparatus on again between the restarting point and the transfer point; adjusting the nominal atomizer parameters at least once between the restarting point and the transfer point using a respective current velocity of the atomizer apparatus, the respective current velocity being different from the nominal velocity; and moving the atomizer apparatus at the nominal velocity after the transfer point using the nominal atomizer parameters which existed prior to the adjusting step. GROUNDS OF REJECTION I. Claims 1---6 and 8-10 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4. 1 II. Claims 1-6 and 8-10 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Id. at 5. III. Claims 1---6 and 8-10 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 5---6. 2 1 Citations to the Final Action refer to the Office Action dated April 12, 2012. 2 Appeal2013-005947 Application 12/361,555 Written Description Rejection OPINION The Examiner finds that the "accelerating" and "adjusting" steps, as well as the final "moving" step, of claim 1 constitute new matter. See Final Act. 4; see also Ans. 8-11 (withdrawing rejection as to other limitations in claim 1 ). Appellants cite specific paragraphs in the Specification and explain how those paragraphs support the subject matter of these steps. See Appeal Br. 6-8 (citing Spec. i-fi-f 11, 38, 44, 46, 49, Fig. 1). We agree with Appellants that the description of the three steps in the Specification is adequate to comply with the written description requirement. See Purdue 2 The Final Action also includes an anticipation rejection (see Final Act. 6- 9), but the Examiner subsequently withdrew that rejection. Ans. 3. In addition, the Final Action includes objections to the drawings and other portions of the Specification. See Final i~\:..ct. 2-3. i~\1ppellants argue that these objections are improper. See Appeal Br. 3---6; Reply Br. 2. However, as the Examiner points out (Ans. 7), such objections are petitionable, not appealable. See MPEP § 1002.02(c)(3}-(4); see also id. § 1201 ("The line of demarcation between appealable matters for the Board and petitionable matters for the Director ... should be carefully observed."). Appellants argue that the objections "are intertwined with the Examiner's rejections of the claims as containing new matter" and are therefore appealable. Reply Br. 2 (citing MPEP § 608.04(c)). The cited section of the MPEP provides that "[ w ]here the new matter is confined to amendments to the specification, review of the examiner's requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one." MPEP § 608.04(c). Appellants have not persuasively explained how the Examiner's objections to the Specification and drawings involve new matter being introduced into or affecting the claims. We therefore do not address the Examiner's objections to the Specification, including the drawings. 3 Appeal2013-005947 Application 12/361,555 Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000) ("In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue."). Thus, we do not sustain the Examiner's written description rejection. Enablement Rejection The Examiner determines that claim 1 does not comply with the enablement requirement because it recites a method for restarting a robot having an atomizer apparatus for automatic coating, but "[ t ]here is no executable computer program or processor to support 'automatic coating."' Final Act. 5. Additionally, the Examiner determines that "[i]t is not clear what all is meant by or encompassed by the claimed 'nominal atomizer apparatus."' Id. With respect to the first point, Appellants point to the description in the Specification of robots with an atomizer apparatus used for industrial painting applications, the movements of which are pre-programmed to allow for automated coating. Appeal Br. 8 (citing Spec. i-fi-12-5). Appellants further argue that "automatic coating" is recited in the preamble of claim 1, and that the steps recited after the preamble need not be performed automatically by a processing program. Id. With respect to the second point, Appellants correctly note that claim 1 does not include the phrase "nominal atomizer apparatus."3 Id. 3 The Response to Argument section of the Answer suggests that the rejection is based on the Examiner's determination that the word "nominal" renders claim terms using that word unclear. See Ans. 12. We agree with 4 Appeal2013-005947 Application 12/361,555 "When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application." In re Wright, 999 F .2d 1557, 1561---62 (Fed. Cir. 1993). Here, the Examiner failed to carry that burden. The rejection does not articulate why the disclosure provides insufficient information to enable a skilled artisan to make and use the invention without undue experimentation. For example, it is unclear why the disclosure of an actual, executable computer program for automatic coating is necessary for a skilled artisan to perform the method of claim 1. In addition, the enablement rejection contains no analysis of the Wands factors. 4 See Final Act. 5; see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). For these reasons, we do not sustain the enablement rejection. Indefiniteness Rejection The Examiner determines that claim 1 is indefinite for the following reasons: (1) with respect to the "storing" step, it is not clear where the storing takes place; (2) the meaning of an "interruption" is unclear; (3) it is not clear whether the "storing," "moving," "accelerating," "switching," and "adjusting" steps are performed by a computer or a human; (4) with respect Appellants that the Specification makes clear that "nominal" as used in claim 1 (e.g., nominal movement) means planned or preset (e.g., planned or preset movement). See Appeal Br. 8-9; Reply Br. 2-3. 4 We note that in the Response to Argument section of the Answer, the Examiner refers to the Wands factors, but does not provide a meaningful analysis of them. See Ans. 12 ("[A]ll the prongs of the WANDS factors are not met."). 5 Appeal2013-005947 Application 12/361,555 to the limitation "switching the atomizer apparatus on again," the claim does not recite switching on or turning off the atomizer on a first time; and (5) with respect to the recitation in the preamble of "restarting a robot," the claim body does not disclose or suggest restarting a robot. See Final Act. 5- 6. None of these reasons support a rejection for indefiniteness. Regarding the first and third reasons, we agree with Appellants that the claim need not specify the storage location or whether a computer performs the steps for the claim to comply with the definiteness requirement. See Appeal Br. 9-10; see also In re Gardner, 427 F.2d 786, 788 (CCPA 1970) ("Breadth is not indefiniteness."). Regarding the second reason, Appellants have demonstrated that the Specification sufficiently explains that an interruption is a situation "in which the movement of the atomizer apparatus is switched off, the atomizer apparatus is shut off ... and the feed device is also stopped." See id. at 9 (citing Spec. i-f 6). Regarding the fourth reason, we agree with Appellants that it is clear from both the Specification and the claim itself that the reason the atomizer apparatus is being switched on "again" is because it was turned off as a result of the interruption. See id. at 10. Finally, the fifth reason is perplexing, because each of the steps in claim 1 is part of a method of restarting a robot with an atomizer apparatus after an interruption. Accordingly, we do not sustain the indefiniteness rejection. 6 Appeal2013-005947 Application 12/361,555 DECISION We REVERSE the Examiner's rejection of claims 1-6 and 8-10 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We REVERSE the Examiner's rejection of claims 1-6 and 8-10 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. We REVERSE the Examiner's rejection of claims 1---6 and 8-10 under 35 U.S.C. § 112, second paragraph, as being indefinite. REVERSED Ssc 7 Copy with citationCopy as parenthetical citation