Ex Parte Ekman et al

Patent Trial and Appeal Board

Nov 27, 2013

11906426 (P.T.A.B. Nov. 27, 2013)

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.
11/906,426 10/02/2007 Fredrik Ekman BGEE 200111US01 7952
27885 7590 11/27/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/27/2013 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 FREDRIK EKMAN and PATRIK STOLTZ
____________

Appeal 2011-010703
Application 11/906,426
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/906,426

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3-10, 12, 14, 16, 18, 20-25, 27, and 42-49 under
35 U.S.C. § 102(b) as anticipated by Wallis (US 4,292,869, iss. Oct. 6,
1981).1,2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 42 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A punch stripper adapted to be fastened to a punch retainer
of a press tool comprising a punch stripper piston, an outer
sleeve that is connected to said punch retainer, an inner sleeve
and a gas pressure chamber, said outer sleeve fully encircling at
least a portion of said inner sleeve and said punch stripper
piston, said punch stripper piston encircling at least a portion of
said inner sleeve, said gas pressure chamber designed to spring-
load said punch stripper piston, said gas pressure chamber at
least partially defined by a gap between said inner sleeve and
said outer sleeve, said punch stripper piston having a
displaceable portion that is axially displaceable in said gap, said
punch stripper piston including an axial hole that enables a
punch to axially move therethrough and to at least partially
retract therein, said punch stripper piston including a piston
chamber to telescopically receive at least a portion of said inner
sleeve when said punch stripper piston axially moves in said
gas pressure chamber, said inner sleeve including an axial
opening and an axial chamber that is axially aligned with said
axial hole in said punch stripper piston, a portion of said punch

1 Although the Examiner has rejected claim 2 (Ans. 3, 4), claim 2 is a
cancelled claim. App. Br. 2, 17. See also Amendment filed July 21, 2010,
p. 4. Thus, we have removed claim 2 from the ground of rejection.
2 For the rejection of claims 20-25 and 48, the Examiner includes Stoll (US
5,796,008, iss. Aug. 18, 1998) as extrinsic evidence. See Ans. 6-7.
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partially positioned in said axial chamber of said inner sleeve
and a portion of said punch extending through said axial
opening of said inner sleeve, a cross-sectional area of said gas
pressure chamber being non-constant along an axial length of
said gas pressure chamber, said gas pressure chamber including
a guide portion and a chamber portion that [sic, is] fluidly
connected together, said guide portion is designed to enable
said displaceable portion of said puncher stripper to move
therein, said chamber portion axially separated from said guide
portion, said chamber portion having a larger cross-sectional
area than said guide portion and positioned axially above said
guide portion, substantially the whole gas pressure chamber is
located between said inner sleeve and said outer sleeve.

PETITIONABLE MATTERS
The Appellants seek review of the Examiner’s objection to: the
drawings; the Specification; and the Examiner’s decision to withdraw claims
11, 13, 15, 17, 19, and 26 from consideration. App. Br. 8-11; see also Reply
Br. 1-2. However, these matters are reviewable by petition under 37 C.F.R.
§ 1.181 (see Manual of Patent Examining Procedure (MPEP) §§ 1002 and
1201) and are not within the jurisdiction of the Board. See Ans. 7; see also
In re Mindick, 371 F.2d 892, 894 (CCPA 1967).

OPINION
Independent Claims
At the outset, we note that the Appellants indicate what claims 1 and
42 require by essentially restating claim 1 and claim 42. App. Br. 12-13, 14.
After restating a portion of claim 42, the Appellants comment that “Wallis
also does not disclose or teach these limitations of claim 42.” App. Br. 14.
This comment, and others like these, do not constitute a separate argument
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for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
The Appellants contend that “Wallis does not disclose or teach the gas
pressure limitations and punch stripper piston limitations that are included in
independent claims 1 and 42.” App. Br. 13. The Appellants support this
contention by asserting that Wallis’s gas chamber 36 has a constant cross-
sectional area. App. Br. 13-14, Reply Br. 2.
The Examiner correctly finds that Wallis’s bore 36 constitutes the
claimed gas pressure chamber wherein passageway 86 corresponds to the
chamber portion of the gas pressure chamber and the area of bore 36 below
passageway 86 corresponds to the claimed guide portion of the gas pressure
chamber. Ans. 4, 7-8; see also Wallis, col. 3, ll. 7-11, fig. 2. Additionally,
the Examiner annotated Figure 2 of Wallis to illustrate the application of
Wallis’s disclosure to the limitations of claim 1. Ans. 9. The annotations
include identification of a chamber portion of the gas pressure chamber as
“36b” and a guide portion of the gas pressure chamber as “36a.” Id.
Moreover, the cross-sectional area represented by “36b” is wider than the
cross-sectional area represented by “36a”, and as such, the gas pressure
chamber is “non-constant along an axial length of said gas pressure
chamber” as required in claim 1. Ans. 8-9. Additionally, chamber portion
36b is axially separated from said guide portion 36a, and the chamber
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portion 36b has a larger cross-sectional area than guide portion 36a and is
positioned axially above said guide portion 36a. Id.
In response the Appellants contend, “portions 84 and 86 cannot be
defined as the outer sleeve in the pending claims since such structures are
located only on one side of the gas pressure chamber, thus such structures
cannot fully encircle the inner sleeve.” Reply Br. 3. However, the Examiner
did not find Wallis’s passageways 84 and 86 constitute the claimed outer
sleeve. Rather, the Examiner finds that piston 32 constitutes the claimed
outer sleeve. Ans. 3. As such, the Appellants’ contention is unpersuasive.
The Appellants also contend that passageway 86 “is similar to the
inlet set forth in Fig. 2’ in the present application.” Reply Br. 3. However,
even if this is true, since the claims do not exclude an inlet as part of the
chamber portion of the gas pressure chamber, the Appellants’ contention
does not persuade us of Examiner error.
As for the rejection of claim 42, the Appellants contend in the Reply
Brief that “[t]he [E]xaminer’s analysis regarding first and second portions as
illustrated in Wallis are also inconsistent with the limitations of the claims
for similar reasons as set forth above.” Id. This contention is not persuasive
of Examiner error for similar reasons as discussed above. See also Ans. 8-9.
Thus, the Examiner’s rejection of independent claims 1 and 42 as
anticipated by Wallis is sustained.
Dependent Claims
The Appellants include a separate heading for the rejection of the
dependent claims. App. Br. 14-15. However, for the following reasons the
Appellants have not provided separate arguments against the rejection of the
dependent claims. First, the Appellants comment, “the dependent claims are
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allowable over the cited art of record” because independent claims 1 and 42
are allowable. App. Br. 14. For the reasons provided above, the Appellants’
contentions against the rejections of claims 1 and 42 are not persuasive.
Second, the Appellants group together comments for claims 3 and 4, claims
6-8, 10, 44, and 45, claims 12 and 43, claims 18 and 48, and claims 24, 25,
and 48. App. Br. 14-15.3 However, the Appellants’ comments are merely
that Wallis does not teach the limitations of these groups of claims. Id. As
discussed above, these types of comments do not constitute a separate
argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re
Lovin at 1357. Moreover, the Examiner evidences how Wallis discloses the
limitations of these claims at pages 3-7 of the Answer. Since the Appellants
do not offer a cogent explanation as to why the Examiner’s findings are in
error, the rejection of the dependent claims is sustained.

DECISION
We AFFIRM the rejection of claims 1, 3-10, 12, 14, 16, 18, 20-25, 27,
and 42-49.

3 The Appellants state, “[d]ependent claims 2 and 43 include the limitation
that the inner sleeve is fixed relative to the punch.” App. Br. 15. However,
claim 2 is a cancelled claim, and claim 12 recites “wherein said inner sleeve
is fixed relative to said punch.” App. Br. 17, 19. Thus, the Appellants’
reference to claim 2 appears to be a typographical error and we understand
that claim 2 should have been written as claim 12.
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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

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