10477528 (B.P.A.I. May. 15, 2012)

Ex Parte Wendler

Board of Patent Appeals and InterferencesMay 15, 2012

10477528 (B.P.A.I. May. 15, 2012)

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. 10/477,528 11/21/2003 Armin Wendler WEND3002/FJD 2343 23364 7590 05/15/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER NGO, LIEN M ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 05/15/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ARMIN WENDLER ____________________ Appeal 2010-005208 Application 10/477,528 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005208 Application 10/477,528 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 10, 11, 13-17 and 19-23. App. Br1. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to an arrangement of a metal lid and a metal housing for a measuring device and method for production thereof. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. The combination of a metallic housing for a measuring instrument and a lid of a metallic material for said housing, wherein: said lid and said housing are provided with a screw thread; said lid is provided only on at least one preselected surface portion, especially in the area of its screw thread, with a coating that prevents corrosive seizure of its screw thread, said coating is an eloxal layer. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wilson US 4,788,840 Dec. 6, 1988 REJECTIONS Claims 10, 11, 16, 17, 22 and 23 stand rejected under 35 U.S.C. 102(a) as being anticipated by Appellant’s admission in the present application (“APA”). Ans. 3. 1 References to the Appeal Brief are to the Brief filed December 8, 2008. Appeal 2010-005208 Application 10/477,528 3 Claims 10, 11, 13-17 and 19-23 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Wilson and APA. Ans. 3. OPINION Initially we note Appellant’s arguments concerning Krings (EP 0 523 823 A1) (App. Br. 4) are moot in light of the fact that the Examiner withdrew the rejection based on Krings in the Office Action of July 10, 2006. Appellant’s arguments concerning the rejections above address only independent claims 10, 16 and 22. Dependent claims will stand or fall with their respective parent claims. Regarding the rejection of claims 10, 16 and 22 based on APA, Appellant does not contest the Examiner’s use of APA and recognizes that, The APA does mention the use of eloxal in an immersion bath containing liquid yielding the coatings. The parts to be coated are completely immersed in the liquid. Any place on the lid or housing which is not to receive coating has to be protected, either with a lacquer or by covering with an adhesive film or foil. (Page 2, lines 1-7 of the specification). App. Br. 5. Appellant contends, Claims 10 and 16 are not claiming an immersion which would result in a coating on the entire lid and/or housing. Claims 10 and 16 call for a coating “on at least one preselected surface portion ...” this means that a complete coating over the entire parts is avoided2. App. Br. 5. The problem for Appellant is that in the APA a complete coating over the entirety of the parts is also avoided, albeit by a different process, for 2 The Examiner and Appellant seem to agree that the coating on “only on at least one preselected surface portion” means a coating on less than the entire part. App. Br. 5; Ans. 4. We adopt this construction for purposes of this Appeal. Appeal 2010-005208 Application 10/477,528 4 example by applying a lacquer or covering to the portions of the parts not to be coated. Thus, the APA discloses that the lid is provided only on at least one preselected surface portion (i.e., the portion that is not coated with a lacquer or adhesive film or foil) with an eloxal layer coating. Appellant may disclose a different process for applying the coatings, “quasi pointwise, in that the coating liquid is only applied to the locations . . . where the coating is desired” (Spec. 4). However, first, this distinction is not present in claims 10 and 16. Second, even if it were, Appellant has not shown that such a process results in a structural difference in the claimed apparatus. “The patentability of a product does not depend on its method of production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Thus, we sustain the Examiner’s rejection of claims 10 and 16, along with those claims depending therefrom, as being anticipated by APA. Claim 22, while a method claim, also does not preclude immersion with certain parts having a lacquer or covering. Contra App. Br. 5. Claim 22, in relevant part, only requires the medium “acting solely on the area that is to be coated”. Since coating is prevented in the protected areas the coating medium cannot be said to “act” upon those areas. Accordingly, we sustain the Examiner’s rejection of claims 22 and 23 as being anticipated by APA. In the Examiner’s alternate rejection based on Wilson and APA, the Examiner has replaced all but a single finding made based on the APA in the rejection discussed above with findings based on Wilson. The Examiner found that Wilson discloses an apparatus and method wherein only threads of a “lid” and “housing” are coated. Ans. 3. The Examiner’s finding based on Wilson is uncontested. The APA is only relied upon by the Examiner in this rejection to demonstrate eloxal coatings were known in the art (Ans. 3)—a position which Appellant also does not dispute. Effectively, we are Appeal 2010-005208 Application 10/477,528 5 left with no arguments made by Appellant germane to this rejection. See App. Br. 5-6. Accordingly, we adopt the Examiner’s position as our own and sustain the Examiner’s rejection of claims 10, 11, 13-17 and 19-23 as being unpatentable over Wilson and APA. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice of requiring an Appellant to identify alleged error in the Examiner’s rejections). DECISION The Examiner’s rejections are affirmed. 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 mls