Ex Parte ARNS

Patent Trial and Appeal Board

Dec 20, 2016

13298463 (P.T.A.B. Dec. 20, 2016)

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.
13/298,463 11/17/2011 WILHELM ARNS ARNS-4 7976
20151 7590 12/22/2016
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD AVENUE
SUITE 1501
NEW YORK, NY 10017
EXAMINER
DOLAK, JAMES M
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
INFO @ FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILHELM ARNS
Appeal 2015-002730
Application 13/298,463
Technology Center 3600
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wilhem Ams (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—5 and 7—17.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant submits the real party in interest is Benteler Automobiltechnik
GmbH. Appeal Br. 2.
Appeal 2015-002730
Application 13/298,463
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim:
1. A passenger car, comprising:
a body having two opposite wheel wells;
an electric energy source arranged between the two
wheel wells for supply of electric energy; and
a protection made of steel sheet and arranged above
the electric energy source, said protection having
depressions extending in a direction from one of the wheel
wells to another one of the wheel wells, said protection
being connected to the wheel wells.
REJECTIONS2
1) Claims 1, 2, 4, 5, 8—12 and 15 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Misu (US 6,662,891 B2, iss. Dec. 16, 2003) and
Koike (US 7,654,351 B2, iss. Feb. 2, 2010).
2) Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Misu.
3) Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Misu and Koike.
4) Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Misu and Okada (US 8,256,552 B2, iss. Sept. 4,
2012).
5) Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Misu.
2 The Examiner withdrew an indefiniteness rejection of claim 7 under 35
U.S.C. § 112, second paragraph, and a rejection of claims 1, 2, 4, 5, 8—12,
and 15 under 35 U.S.C. § 102(b) as anticipated by Misu. Ans. 8.
2
Appeal 2015-002730
Application 13/298,463
DISCUSSION
Rejection 1
The Examiner finds that Misu discloses the limitations of claim 1
except for the protection being connected to the wheel wells. Final Act. 8;
see also id. at 6. The Examiner finds that Koike discloses “connection of the
protection [18] with the wheel wells [17].” Id. at 9 (citing, Koike, col. 7,11.
8—13, Fig. 2.) The Examiner concludes it would have been obvious “to
modify the attachment point of Misu to feature the wheel well attachment
point of Koike as a common matter of design choice in order to provide a
more secure and supportive attachment of the battery protection . . . and to
strengthen the overall body rigidity.” Id.
Appellant contends that Koike does not disclose “connection of the
disclosed battery housing to the wheel wells but to side frames 11.” Appeal
Br. 5. Appellant argues that Koike discloses wheel housings “as structures
separate from the side frames 11 of the disclosed vehicle.” Id.
In response, the Examiner maintains that Koike teaches “it is well
known in the art of vehicle design to provide for a battery protection
connected to the wheel well members.” Ans. 9.
Koike discloses left and right side frames 11 having curved upward
portions 11a. Koike, col. 7,11. 8—11. Curved upward portions 1 la are
located near wheel housings 17. Id. Battery box 18 “is connected at its left
and right ends between apexes of the curved portions 1 la.” Id. at col. 7,11.
11—13. Fixing brackets 27 connect battery box 18 to curved portions 1 la of
side frames 11. Id. at Figs. 1, 5, col. 7,11. 35; see also id. at col. 7,11. 48—50
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Appeal 2015-002730
Application 13/298,463
(“the battery box 18 having a larger weight is supported on the side frames
11”).
The Examiner has not directed us to any portion of Koike where
battery box 18 is connected to wheel wheels 17. Moreover, we note that
Koike specifically distinguishes between side frames 11 and wheel housings
17 (i.e., wheel wells). See e.g., Koike, col. 7,11. 8—11. The Examiner’s
finding that Koike discloses a protection connected to the wheel wells is not
supported by Koike. As the rejection of claim 1 is based on an erroneous
factual finding, the conclusion of obviousness cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Therefore, we do not sustain
the rejection of claim 1 under 35 U.S.C. § 103(a) and claims 2, 4, 5, 8—12
and 15 which all ultimately depend from claim 1.
Rejections 2, 3, 4, and 5
Claims 3, 7, 13, 14, 16, and 17 all depend ultimately from claim 1.
Appeal Br. 7—8 (Claims App.). The Examiner rejects these claims based on
Misu, Koike, and Okada either separately or in combination. Final Act. 9—
12. Appellant argues that these claims are patentable for the same reasons
that claim 1 is patentable. Appeal Br. 6. In rejecting these claims, the
Examiner does not cite to any portions of Misu, Koike, or Okada that cures
the deficiencies in the combination of Misu and Koike stated above in
connection with the rejection of claim 1. Final Act. 9—12. Therefore, we do
not sustain the rejections under 35 U.S.C. § 103(a) of claims 3, 7, 13, 14, 16,
and 17 for the same reasons stated above concerning the rejection of claim 1.
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Appeal 2015-002730
Application 13/298,463
DECISION
The Examiner’s decision rejecting claims 1—5 and 7—17 is reversed.
REVERSED
5