Ex Parte Bertram et al

Patent Trial and Appeal Board

Aug 16, 2016

13211843 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,843 08/17/2011
60601 7590 08/16/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Rolf BERTRAM
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1928/0284 PUS4 5047
EXAMINER
FIGUEROA, FELIX 0
ART UNIT PAPER NUMBER
2833
MAILDATE DELIVERY MODE
08/16/2016 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 ROLF BERTRAM, MARTIN KOEPSEL, and
BRUNO STENZEL
Appeal2015-000307
Application 13/211,843
Technology Center 2800
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1, 3-
7, and 9-13.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants state that "Saia-Burgess Oldenburg GmbH & Co., KG" is
the real party in interest (Appeal Brief filed May 29, 2014, hereinafter
"Appeal Br.," 2).
2 Appeal Br. 1 O; Final Office Action mailed on April 1, 2014, hereinafter
"Final Act.," 2-7).
Appeal2015-000307
Application 13/211,843
We AFFIRivI-IN-P ART and REVERSE-IN-PART. We also enter a
new ground of rejection against claims 1, 3-7, 10, and 13 pursuant to our
authority under 37 C.F.R. § 41.50(b).
BACKGROUND
The subject matter on appeal relates to "an electrical switch, in
particular an electrical microswitch, comprising at least one electrical
contact" (Specification, hereinafter "Spec.," 1, 11. 12-13). Details of the
appealed subject matter are recited in representative independent claims 1
and 11, which are reproduced below from pages 16 and 18 of the Appeal
Brief (Claims Appendix, hereinafter "Claims App.") (italics added),
respectively:
1. An electrical microswitch, comprising:
a component of an electrically conducting material;
said component including a planar section and a cylindrical
hollow shape section, said planar section and said cylindrical
hollow shape section being monolithic with each other, with
one end of said planar section extending into said cylindrical
hollow shape section, said planar section having planar top and
bottom main surfaces;
said hollow-shape section including at least one electrical
contact and having a reduced mass, a center of said cylindrical
hollow-shape section lying in an extension of a plane parallel to
the planar top and bottom main surfaces of the planar portion,
said plane extending within said planar portion;
at least one opposing electrical contact, said at least one
electrical contact and said at least one opposing electrical
contact coming into contact to make an electrical connection at
a point-shaped contact point and allowing conduction of
electrical current only upon actuation of said microswitch;
wherein occurrence of vibration and impulsive events causing
liftoff of the at least one electrical contact is prevented when
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Application 13/211,843
contacting said opposing electrical contact as a result of
reduced mass of said hollow shape section.
11. A component of an electrically conductive material for use
in a microswitch, comprising:
a planar section extending from a first end edge to a second end
edge;
a cylindrical hollow shape section including an electrical
contact;
said planar section and said cylindrical hollow shape section
being monolithic with each other and formed from a single
plane material; and
said cylindrical hollow shape section extending from said first
end edge of said planar section.
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. 103(a) as follows:
I. Claims 1, 3, 6, 7, and 11-13 as being unpatentable over
Shichida3 in view of Shinozaki4 (Final Act. 2--4).
II. Claims 4; 5; 9; and 10 as being unpatentable over Shichida and
Shinozaki, and further in view of Rehbein et al. 5 (Final Act. 4--
6).
DISCUSSION
A. Claims 1, 3-7, 9, and 10
The Examiner's rejection is premised on a finding that Shichida
describes a "microswitch" as required by independent claim 1 (Final Act. 2).
The Appellants contend that "the Shichida reference does not ... describe a
3 US 4,725,239, issued February 16, 1988.
4 US 6,126,496, issued October 3, 2000.
5 US 2006/0163047 Al, published July 27, 2006.
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microswitch" because "the Shichida device is not a switch, but ... an
electrical connector" and "[a] switch is designed to be repeatedly turned on
and off, while a connector is used to make a connection that is unchanged ..
. . "(Appeal Br. 11). The Examiner responds that Shichida's connector can
be considered as a switch because "neither a switch nor a connector has an
amount of time or cycles linked to them" and Random House Dictionary ©
2013 "defines [a] 'switch' as a 'device for making or breaking a circuit"'
(Ans. 3). The Examiner also stated that the term "microswitch" is recited in
the claim's preamble, which "is generally accorded little patentable weight
where it merely recites the purpose of a process or the intended use of a
structure, and where the body of the claim does not depend on the preamble
for completeness but, instead, the process steps or structural limitations are
able to stand alone" (id.) (internal citations omitted).
For the reasons that follow, we agree with the Appellants that the
Examiner's findings related to the claimed "electrical microswitch" are
based on an unreasonable construction of the term "microswitch" as that
term would be understood by a person skilled in the relevant art. The
current Specification informs one skilled in the relevant art that the claimed
"microswitch" in its present context relates to a device "for the switching on
and off of electrical loads" (Spec. 1, 1. 12-2, 1. 15). Shichida, however,
relates to "an electrical connection jack, and more particularly to an
electrical connection jack into which a rotary plug is to be inserted" (col. 1,
11. 10-12). In Shichida, an electrical connection is made (col. 1, 11. 44---61;
col. 2, 11. 14--16), but that electrical connection has not been shown to be of a
type that switches an electrical load on or off-i.e., allowed "upon actuation
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of said micro switch'' (emphasis added), as explicitly recited in the body of
claim 1.
Because the Examiner's finding that Shichida describes a
"microswitch" is based on an unreasonable interpretation that ignores the
claim language as a whole and the totality of the written description, we
cannot uphold the rejection of claims 1, 3-7, 9, and 10. See, e.g., In re
Suitco Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010) (The PTO's
"construction [must] be 'consistent with the specification, ... and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art"' (second emphasis added)
(internal citations omitted)); In re Baker Hughes, Inc., 215 F.3d 1297, 1303
(Fed. Cir. 2000) (the PTO cannot adopt a construction that is "beyond that
which was reasonable in light of the totality of the written description").
B. Claims 11-13
Unlike claim 1, claim 11 is not directed to a microswitch but rather a
"component of an electrically conductive material for use in a microswitch"
(Appeal Br. 18).
The Examiner appears to have determined (Final Act. 3, 4; Ans. 4)
that Shichida teaches the limitations of claim 11 with the exception of the
limitation: "said planar section and said cylindrical hollow shape section
being monolithic with each other" (Claim App., claim 11 ). Specifically, the
Examiner found that Shichida's tongue 311 and metal chip 350 (as shown,
e.g., in Figure 1) are "a planar section" and "a cylindrical hollow shape
section," as recited in claim 11, respectively (Final Act. 4). The Examiner
found, however, that "Shinozaki [at Figs. 2-7] teaches a stamped component
(16) including a planar section and a cylindrical hollow shape section (16d),
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the planar section and the cylindrical hollow shape section being monolithic
with each other" (id. at 3). The Examiner concluded that "[i]t would have
been obvious to a person of ordinary skill in the art ... to form the planar
section and the cylindrical hollow shape section being monolithic with each
other, as taught by Shinozaki, in order to simplify the structure of the
stamped component, and to minimize the chances of failure cause my
moving parts" (id.). In addition, the Examiner determined that "forming in
one piece an article which has formerly been formed in two pieces and put
together involves only routine skill in the art" (id.). See also Ans. 7
("combining two different pieces, even if from different materials, into one
unit remains within the skill of an ordinary worker in the art at the time the
invention was made").
The Appellants contend that "[a]t best, Shinozaki only shows the
concept of a metal strip being bent into an arc shape" and because "the chip
of Shichida is made from a different material than the tongue, [i]t is not
possible to shape the end of the tongue ... into an arc-shape" (Appeal Br.
12). The Appellants also contend that "the resultant cylindrical section
would not be strong enough to resist deformation as the plug 500 [of
Shichida] rotates" (id. at 13) and that "[t]he chip is designed to be made of a
different material and is oiled to allow for easy rotation of the plug" (id.).
The Appellants' arguments do not reveal reversible error in the
Examiner's articulated reason for combining Shichida and Shinozaki in the
manner claimed by the Appellants. Shichida teaches that, in other
embodiments, it is "possible to mount the metal chip to the movable tongue
by welding" (col. 4, 11. 17-19). Therefore, the Appellants' argument related
to the monolithic feature of the claimed component fails at the outset. Even
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Application 13/211,843
if Shichida did not teach that the metal chip and the moveable tongue can be
made to be monolithic with each other via a welding process, the Appellants
do not direct us to evidence or technical reasoning refuting the Examiner's
determination that it was well within the level of the ordinary skill in the art
to combine two different components into a monolithic or integral piece by
fusing the two materials through welding or through some other known
bonding process and that a person of ordinary skill in the art would have
carried out such a modification to simplify the structure and minimize
failure.
Regarding claim 12, the Appellants contend that "[ w ]hile the chip
[350] of Shichida has a central section removed to receive the projections of
the tongue, the mass is not reduced to the same extent as the present
invention" (Appeal Br. 14, referring to arguments at 12). We do not find the
Appellants' argument persuasive. The claim fails to recite any degree of
reduction in the mass. As pointed out by the Examiner (Ans. 5), "the claim
language does not provide any basis to determine the extent of mass
reduction." The Appellants' naked assertion that the mass in Shichida is not
reduced to the same extent based on the reference's silence regarding certain
characteristics or advantages amounts to mere attorney argument that is not
supported by factual evidence (e.g., comparative testing).
Accordingly, we affirm the rejections for claims 11 and 12. However,
we cannot affirm the rejection for claim 13 because, as explained below,
claim 13 is indefinite and, therefore, it would be speculative to decide
whether the Shichida in view of Shinozaki meets the limitations of claim 13.
In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("Our analysis of the claims
indicates that considerable speculation as to meaning of the terms employed
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and assumptions as to the scope of such claims were made by the examiner
and the board. We do not think a rejection under 35 U.S.C. § 103 should be
based on such speculations and assumptions.").
NEW GROUND OF REJECTION
We enter the following new ground of rejection, which is based on
new factual findings and reasoning.
Claims 1, 3-7, 10, and 13 are rejected under 35 U.S. C. 112 (pre-AJA),
second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the Appellants regard as the
invention.
Claim 1 recites the limitation "at least one opposing electrical contact,
said at least one electrical contact and said at least one opposing electrical
contact coming into contact to make an electrical connection at a point-
shaped contact point" (Claims App., claim 1, emphasis added). Claim 10
recites the limitation: "wherein said electrical connection of said at least one
electrical contact and said at least one opposing electrical contact is a point-
shaped contact point" (Claims App., claim 10, emphasis added). Similarly,
claim 13 recites the limitation: "further comprising an opposing electrical
contact, said electrical contact and said opposing electrical contact being
mounted to form a point-shaped contact point when making contact"
(Claims App., claim 13, emphasis added).
We conclude that one of ordinary skill in the art would not be able to
ascertain what is intended by the phrase "a point-shaped contact point."
Regarding this limitation, the Specification states merely: "[ o ]pposing
contact and contact then form an optimal point-shaped contact point
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(circular-shaped when taking into account flattening), which maintains its
optimal shape even in the event of errors in the angle between the
participating contacts" (Spec. 2, 1. 30-3, 1. 2). That description in the
Specification, even when considered together with the Drawings, fails to
reasonably apprise a person skilled in the relevant art as to what would be
encompassed by "a point-shaped contact point"-particularly in the context
of why the Appellants believe (Appeal Br. 12) the applied prior art
references fail to disclose or suggest this feature. In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).
Accordingly, claims 1, 3-7, 10, and 13 are newly rejected under
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
SUMMARY
The Examiner's stated rejections of claims 1, 3-7, 9, 10, and 13 under
35 U.S.C. § 103(a) are reversed. The Examiner's stated rejection of claims
11 and 12 under 35 U.S.C. § 103(a) is affirmed. Claims 1, 3-7, 10, and 13
are newly rejected under 35 U.S.C. § 112, i-f 2, as discussed above.
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 the Appellants, 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 ....
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~L) Kequest rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
AFFIRMED-IN-PART and REVERSED-IN-PART
37 C.F.R. § 41.50(b)
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