Ex Parte Bendel

Patent Trial and Appeal Board

Nov 21, 2013

11901804 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARL BENDEL
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Appeal 2012-001251
Application 11/901,804
Technology Center 3600
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Before MURRIEL E. CRAWFORD, GAY ANN SPAHN, and
JOHN W. MORRISON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-6, 8, and 11-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
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Application 11/901,804

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Claimed Subject Matter
The claimed subject matter relates to a device “used for manipulating
noise, in particular for minimizing vibrational noise transmitted in the
passenger compartment of motor vehicles.” Spec. 1, ll. 4-6. Claim 1,
reproduced below, is illustrative of the appealed subject matter.
1. A device for actively influencing vibrations in a
component, comprising:
a sensor for detecting the vibrations;
an electrically actuatable piezoelectric actuator for acting
on the component; and
a regulation and control unit in which actuating signals
are generated from sensor signals of the sensor in order to
adjust the actuator;
wherein the actuator is one of (a) directly mounted on a
surface of the component influenced by the vibrations, and (b)
enclosed inside a wall of the component influenced by the
vibrations.

Rejections
The following Examiner’s rejections are before us for review:
I. claim 11 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement; and
II. claims 1-6, 8, and 11-13 under 35 U.S.C. § 102(b) as
anticipated by Fischer (US 2005/0284713 A1, published Dec. 29, 2005).

OPINION
Rejection I – Enablement
Claim 11 depends from claim 1 and recites that the device further
includes “a speaker provided as an additional actuator.” App. Br., Clms.
App’x.
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The Examiner indicates claim 11 is not enabled, because “[t]he
[S]pecification merely states that the ‘speaker’ is a ‘source of sound’ that is
‘designed according to physically different operating principles,’ but fails to
describe how it can be provided as an actuatable . . . actuator for acting on
the component.” Ans. 5 (citing Spec. 2, ll. 15-17 and Spec. 6, ll. 9-13).
Appellant argues that the Examiner’s rejection is not based upon the
proper standard for determining compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, which is “a determination as
to whether the application, when filed, contained sufficient information
regarding the subject matter of the claims as to enable one skilled in the
pertinent art to make and use the claimed subject matter without undue
experimentation.” App. Br. 3 (citing U.S. v. Telectronics, Inc., 857 F.2d
778, 785 (Fed. Cir. 1988). Appellant points out the eight factors that are to
be considered in an analysis for compliance with the enablement
requirement, namely: “(1) the breadth of the claims; (2) the nature of the
invention; (3) the state of the prior art; (4) the level of one of ordinary skill
in the art; (5) the level of predictability in the art; (6) the amount of direction
provided by the inventor; (7) the existence of working examples; and (8) the
quantity of experimentation needed to make or use the invention based on
the content of the disclosure.” Id. (citing In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Appellant also argues that “[i]t is . . . improper to conclude
that a disclosure is not enabling based on an analysis of only one the[]
factors while ignoring one or more of the other factors,” “a proper analysis
must consider all the evidence related to each of the[] factors,” and the
Examiner’s analysis fails to “address[] any of the[] factors” so as to be
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“plainly deficient with regard to the proper showing required to establish
that the enablement requirement is not satisfied.” App. Br. 3-4.
The Specification, as originally filed on September 18, 2007, discloses
that “[i]n the device . . . for actively influencing vibrations in a component, a
sensor for detecting vibrations is provided, whose signals are supplied to a
regulation and control unit in which actuating signals may be generated from
the sensor signals . . . to adjust the actuator,” and “[t]his actuator is designed
as an electrically actuatable piezoelectric actuator” to “make use of the
piezoelectric effect, which describes a relationship between mechanical
pressure and electric voltage in a solid body.” Spec. 1, ll. 26-32. The
Specification also discloses that “[i]n the device . . . , the vibrations may be
influenced directly in the affected component, which is advantageous, for
example, when intervention is to be made directly at the location where the
sound originates,” and “[i]t is possible to generate vibrations in a second
component by use of the piezoelectric actuator(s), the vibration from the
second component being superimposed on the vibrations from the primary
vibration source . . to obtain a desired vibration pattern.” Spec. 2, ll. 9-15.
The Specification then explains that “[t]his type of vibration manipulation is
equivalent to manipulating an additional source of sound such as, for
example, a speaker, the sound from which is superimposed on the primary
source of sound,” and “[t]his type of vibration manipulation with
superimposed acoustic fields is also referred to as active noise control
(ANC).” Spec. 2, ll. 15-19.
The above-discussed disclosure of the Specification shows that it
contains sufficient information regarding the subject matter of claim 11 as to
enable one skilled in the pertinent art to make and use the claimed subject
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matter without undue experimentation. Thus, we are persuaded by
Appellant’s arguments that the Examiner’s rejection of claim 11 as failing to
comply with the enablement requirement is without merit.
Accordingly, we do not sustain the Examiner’s rejection of claim 11
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.

Rejection II – Anticipation based on Fischer
We do not sustain the Examiner’s rejection of claims 1-6, 8, and 11-
13 under 35 U.S.C. § 102(b) as anticipated by Fischer, because the rejection
necessarily is based on speculative assumptions as to the meaning of the
claims for the reasons discussed infra. See In re Steele, 305 F.2d 859, 862-
63 (CCPA 1962). Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter A NEW GROUND OF REJECTION against claims 1-6, 8 and 11-13
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
The preamble of Appellant’s independent claim 1 is directed to a
device for actively influencing vibrations in a component. App. Br., Clms.
App’x. In other words, the preamble positively recites a device per se and
also recites that the device is capable of performing the intended use of
actively influencing vibrations in a component. As the component is only
present in a recitation of intended use, the component is not positively
recited, and the preamble clearly does not recite a device in combination
with a component.
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Claim 1 also recites an electrically actuatable piezoelectric actuator
for acting on the component, which positively recites the actuator and also
recites that the actuator is capable of performing the intended use of acting
on the component, but does not positively recite the component.
Finally, claim 1 also recites in a wherein clause that “the actuator is
one of (a) directly mounted on a surface of the component influenced by the
vibrations, and (b) enclosed inside a wall of the component influenced by the
vibrations.”
Appellant argues that “Fischer does not disclose, or even suggest, the
features that the actuator in one of (a) directly mounted on a surface of the
component influenced by the vibrations, and (b) enclosed inside of wall of
the component influenced by the vibrations.” App. Br. 5. Thus, Appellant
appears to argue that the component is positively recited in the wherein
clause in claim 1 so that in essence, the claim recites the device and
component in combination.
We note that the Manual of Patent Examining Procedure (MPEP)
§ 2111.04, entitled “‘Adapted to,’ ‘Adapted For,’ “Wherein,’ and
“Whereby’ Clauses,” indicates that “[c]laim scope is not limited by claim
language that suggests or makes optional but does not require steps to be
performed, or by claim language that does not limit a claim to a particular
structure.” This section of the MPEP sets forth a non-exhaustive list of
claim language “that may raise a question as to the limiting effect of the
language in a claim,” and the list includes “‘wherein’ clauses.” This section
of the MPEP also indicates that “[t]he determination of whether each of
these clauses is a limitation in a claim depends on the specific facts of the
case,” and discusses that “[i]n Hoffer v. Microsoft Corp., 405 F.3d 1326,
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1329 . . . (Fed. Cir. 2005), the court held that when a ‘whereby’ clause states
a condition that is material to patentability, it cannot be ignored in order to
change the substance of the invention.”
Since Appellant appears to be arguing that the wherein clause states a
condition that is material to patentability, claim 1 appears to be ambiguous.
In other words, it is not clear whether Appellant’s claim 1 recites a device
per se, with intended use language as to the component, or a combination of
a device and a component wherein the actuator is one of directly mounted on
the surface of the component or enclosed inside a wall of the component.
As claim 1 is a claim under examination that is susceptible of more than one
plausible interpretation, claim 1 is indefinite because the scope of the claim
differs significantly depending upon which of the plausible interpretations
one adopts. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI
2008) (precedential) ) (“if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”).
Accordingly, we conclude that claim 1, and claims 2-6, 8, and 11-13
dependent upon claim 1, are indefinite under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-6, 8, and
11-13.
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We ENTER A NEW GROUND OF REJECTION of claims 1-6, 8,
and 11-13 under 35 U.S.C. § 112, second paragraph, as being indefinite.

FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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