Ex Parte Gaedke et al

Patent Trial and Appeal Board

Jul 11, 2013

10576370 (P.T.A.B. Jul. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN GAEDKE, UWE-JENS KRAUSCH,
HARALD MOSCHUETZ, KAI NITSCHMANN, and PETER NOBER
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Appeal 2011-013603
Application 10/576,370
Technology Center 3700
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Martin Gaedke et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 18-33, 39, and 40.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 18, reproduced below, is illustrative of the claimed subject
matter.
18. A device for retaining material for drying inside a drying
device comprising a drum, wherein the material for drying is
positioned such that a surface of the material for drying exposed
to a dry air stream is maximized, wherein an air-permeable
spacer embodied as at least partly flexible is provided, on which
the material for drying may be arranged and which together
with the material for drying can be brought into a form such
that overlapping regions of the material for drying are spaced
apart one another, wherein the spacer is formed from a plurality
of pin-connected segments which can be pivoted with respect to
one another such that the spacer can be reversibly brought from
an at least approximately flat state into an at least
approximately spiral state.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
McClung US 2,144,683 Jan. 24, 1939
Shinichi JP 62-231698 A Oct. 12, 1987

1 The Notice of Panel Decision from Pre-Appeal Brief Review, mailed
March 23, 2011, indicated that claims 34-38 are allowed, and that the
rejection of claim 22 under 35 U.S.C. § 112, first paragraph, has been
withdrawn.
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Rejections
Appellants request our review of the following rejections:
I. Claims 18, 20-23, and 28-30 under 35 U.S.C. § 102(b) as anticipated
by McClung;
II. Claims 19, 24-27, and 33 under 35 U.S.C. § 103(a) as unpatentable
over McClung;
III. Claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable over
McClung and Shinichi;
IV. Claim 39 under 35 U.S.C. § 103(a) as unpatentable over Shinichi; and
V. Claim 40 under 35 U.S.C. § 103(a) as unpatentable over McClung.

OPINION
Rejection I
Claim 18
The Examiner found that McClung’s doormat anticipates the subject
matter of claim 18. Ans. 4-5. In particular, the Examiner found that while
not disclosed for such use, McClung’s door mat is capable of being used as
called for in claim 18. Ans. 5-6.
Appellants argue that McClung’s door mat is not “an air-permeable
spacer and is not capable of performing the claimed functional recitations of
independent claim 18.” App. Br. 8.
As illustrated in figure 1, McClung’s mat comprises segments 8
spaced apart by filler members 9, and thus is air-permeable. See Ans. 11;
McClung, p. 1, col. 1, ll. 43-45.
With regard to the capability of McClung’s mat to perform the
claimed functional limitations of claim 18, Appellants assert that items
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placed in a dryer may be subjected to temperatures as high as 60oC or more,
whereas a door mat will most likely be made to withstand considerably
lower temperatures not exceeding 40oC. App. Br. 8; Reply Br. 9. These
assertions are nothing more than unsupported attorney argument, and thus
are entitled to little weight. McClung discloses producing the segments of
the door mat from old, used motor vehicle tires (p. 1, col. 1, ll. 49-50), which
are routinely subjected to very high temperatures in use. Appellants provide
no evidence that used motor vehicle tire material would be incapable of
withstanding the temperatures that would be expected in a dryer. Moreover,
as pointed out by the Examiner, claim 18 does not specify any temperatures
at which the device is to be used. Ans. 11 (noting that dryers can be
operated in an air fluff cycle, which uses no heat).
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 18 as anticipated by McClung. We
sustain the rejection of claim 18.
Claims 20-23 and 28-30
Appellants also argue that the Examiner fails to cite support for the
features of claims 20-23 and 28-30, which Appellants assert are not simply
functional or intended use. App. Br. 9.
The Examiner finds that McClung’s segments 8 are formed from a
flexible material, as called for in claim 20, and that a width of each segment
is substantially the same, as called for in claim 21. Ans. 5. These findings
appear reasonable on their face in light of McClung’s disclosure of
producing the segments 8 of used motor vehicle tires and in light of the
illustration in figure 1 of segments 8 that appear to have the same width.
Appellants do not specifically dispute these findings, and thus do not apprise
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us of error in the Examiner’s rejection. We thus sustain the rejections of
claims 20 and 21.
Claim 22 calls for the segments to be interconnected by hinge devices,
“wherein a possible angle of pivot between two segments starting from a
zero position is greater in one direction of pivot than in a direction of pivot
opposite thereto.” The Examiner does not specifically cite to any portion of
McClung disclosing this feature or otherwise adequately explain why
McClung’s mat possesses this characteristic. We do not sustain the rejection
of claim 22.
We agree with the Examiner that the additional limitations set forth in
claim 23, which depends directly from claim 18, are functional or intended
use limitations. Ans. 12. Appellants do not persuasively explain why
McClung’s mat lacks the capability to perform this function, or is unsuitable
for this use. We sustain the rejection of claim 23.
Claims 28-30 are directed to a device comprising a spacer laid on a
“drier insert.” The Examiner does not articulate any finding that McClung
discloses a spacer laid on a dryer insert, but, rather, dismisses this limitation
as a functional or intended use limitation, improperly characterizing the
dryer insert (and the fixing device of claim 29) as appearing not to be part of
the subject matter of the claimed device. Ans. 12.2
Thus, we do not sustain the rejection of claims 28-30 as anticipated by
McClung.

2 The fact that the dryer insert and fixing device are not shown in figures 4
and 5 of the present application does not negate the fact that these features
are recited in claims 28-30, and does not give the Examiner license to ignore
these limitations in the claims.
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Rejection II
The Examiner acknowledges that McClung does not disclose a
segment material satisfying the limitations of claims 19, 24-27, and 33. Ans.
6. However, the Examiner determines it would have been obvious to make
the segments of “any desired material in order to pursue an intended use and
obtain a predictable result,” since it has been held to be an obvious matter of
design choice “to select a known material on the basis of its suitability for
the intended use.” Ans. 6.
Appellants argue that the Examiner fails to provide any support for
the conclusion that selection of materials as claimed for McClung’s door mat
would have been obvious or explain “what result allegedly would be
predictable.” Reply Br. 16.
We agree with Appellants. The Examiner does not adequately explain
why a person of ordinary skill in the art would have considered the particular
material properties claimed in claims 19, 24-27, and 33 to be suitable for the
intended use of McClung’s door mat. Thus, the Examiner fails to articulate
a reason with any rational underpinning for modifying the material of
McClung’s mat to arrive at the subject matter of claims 19, 24-27, and 33.
We therefore do not sustain the rejection of these claims as unpatentable
over McClung.
Rejection III
Claims 31 and 32 call for a retaining unit for retaining the spacer in its
at least approximately spiral state. The Examiner asserts that Shinichi
teaches using such a retaining unit for retaining the spacer (i.e., belt-like
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fabric 10) in its spiral state as claimed. Ans. 6; Shinichi Transl., p. 5.3
However, as pointed out by Appellants, the Examiner does not adequately
explain what element of Shinichi is being relied upon as the retaining unit or
explain how such an element would be combined with McClung’s door mat.
See Reply Br. 19, 22.
For the above reasons, we do not sustain the Examiner’s rejection of
claims 31 and 32 as unpatentable over McClung and Shinichi.
Rejection IV
Claim 39 requires the spacer to be positioned within the rotating drum
of the clothing dryer “in a form such that overlapping regions of the material
for drying are spaced apart from one another to increase the surface of the
clothing item exposed to a dry air stream.” The Examiner dismisses this
limitation as merely a functional or intended use limitation. Ans. 7.
Appellants correctly argue that claim 39 calls for a physical position
and arrangement of the spacer within the rotating drum, namely, such that
the claimed spacing apart of overlapping regions of material for drying is
achieved. See Reply Br. 24-25. It is not apparent, and the Examiner does
not adequately explain, how Shinichi’s belt-like fabric 10 is positioned and
formed to perform this function.
For the above reason, we do not sustain the rejection of claim 39 as
unpatentable over Shinichi.
Rejection V
Claim 40 calls for the pin-connected segments to be formed from an
air and moisture permeable material.

3 Our references to Shinichi are to the English language translation, by
Schreiber Translations, Inc., in July 2011, which is of record in the
electronic file of the present application.
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The Examiner implicitly acknowledges that McClung does not
disclose such a door mat material, but determines that it would have been
obvious to form McClung’s segments of any desired material “in order to
pursue an intended use and obtain a predictable result,” since it has been
held to be an obvious matter of design choice “to select a known material on
the basis of its suitability for the intended use.” Ans. 9.
Appellants argue that the Examiner fails to provide any support for
the conclusion that selection of a material as claimed for McClung’s door
mat would have been obvious or explain “what result allegedly would be
predictable.” Reply Br. 31.
We agree with Appellants. The Examiner does not adequately explain
why a person of ordinary skill in the art would have considered an air and
moisture permeable material to be suitable for the intended use of
McClung’s door mat. Thus, the Examiner fails to articulate a reason with
any rational underpinning for modifying the material of McClung’s mat to
arrive at the subject matter of claim 40. We therefore do not sustain the
rejection of claim 40 as unpatentable over McClung.
DECISION
The Examiner’s decision rejecting claims 18-33, 39, and 40 is
affirmed as to claims 18, 20, 21, and 23, and is reversed as to claims 19, 22,
24-33, 39, and 40.
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
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