Ex Parte Bertsch et al

Patent Trial and Appeal Board

Sep 21, 2018

13703857 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/703,857 12/12/2012 Klaus Bertsch
23548 7590 09/25/2018
LEYDIG VOIT & MA YER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
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.
711537 8771
EXAMINER
STINSON, CHELSEA E.
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
DCpatent@leydig.com
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS BERTSCH, STEP AN GROER
and WOLFGANG BECK
Appeal2018-001640
Application 13/703,857 1
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-14 and 16-20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Hilti
Aktiengesellschaft. Amended Br. 1 (filed June 6, 2017).
Appeal2018-001640
Application 13/703,857
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants' invention "relates to a device for driving a fastening
element [(e.g., a nail or bolt)] into a substrate." Spec. ,r,r 1,268. More
specifically, "driving devices that can transfer sufficient energy to a
fastening element." Spec. ,r 3.
Claims 1, 8, and 9 are independent claims. Claim 9, reproduced
below, with paragraphing added, is illustrative of the subject matter on
appeal.
9. A tool for driving a fastening element into an underlying
surface, comprising
a spnng,
an energy transm1ss10n device for transmitting energy
from an energy source to the spring,
a detection device for detecting a state of the energy
transmission device and/or the spring, and
a control device that is suitable, using a state detected by
the detection device during the transmission of energy from the
energy source to the spring, for calculating a shutoff time, at
which a kinetic energy present in the energy transmission device
is sufficient for storing the predetermined amount of energy in
the spring without further supply of energy, and for interrupting
the supply of energy from the energy source at the shutoff time.
Rejections
I. Claims 2, 8, 10, 17, and 18 are rejected under 35 U.S.C.
§ 112(b) or (pre-AIA) 35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1-14 and 16-20 are rejected under (pre-AIA) 35 U.S.C.
§ I02(b) as anticipated by Shima et al. (US 2009/0179062 Al, pub. July 16,
2009) ("Shima").
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Appeal2018-001640
Application 13/703,857
ANALYSIS
Rejection I
Dependent claims 2, 10, 17, and 18
The Examiner rejects claims 2 and 10 as indefinite because "[t]he
term 'unchanged or greatest possible power' in claims 2 and 10 is a relative
term," which "is not defined by the claim," and "the [S]pecification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention." Final Act. 2-3 ( emphasis omitted).
The entirety of the Appellants' argument in the Appeal Brief is as
follows: "[i]n view of, for example, paragraphs [0169], [0178], [0421]-
[0423], and Figure 58, one of skill in the art reading the application would
understand the meaning and scope of 'unchanged or greatest possible power'
in claims 2 and 10." Amended Br. 3. The Appellants' argument is not
persuasive.
In response, the Examiner explains that although the term "unchanged
or greatest possible power" is mentioned in the Specification, the metes and
bounds of the term is unclear because "the [S]pecification does not give any
additional limitations or definition as to what the greatest possible power
could be." See Ans. 8; see also Spec. ,r,r 169, 178. Additionally, the
Appellants fail to adequately explain - and we fail to ascertain - how one
of ordinary skill in the art upon reading the Specification, particularly
paragraphs 4 21--4 23, would understand the term "unchanged or greatest
possible power" in claims 2 and 10 to be clear.
Thus, we sustain the Examiner's rejection of claims 2 and 10, and
claims 17 and 18, which depend from claim 2, as indefinite.
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Appeal2018-001640
Application 13/703,857
Independent claim 8
The Appellants do not appeal the Examiner's indefiniteness rejection
of claim 8. Amended Br. 1 ("In this Amended Appeal Brief, claim 8 is
included in the Appendix, but the rejection of claim 8 is no longer
appealed."). Thus, we summarily sustain the rejection of claim 8 as
indefinite.
Rejection II
Independent claims 1 and 9, and dependent claims 2-7, 10-14, and 16-20
The Appellants argue Shima does not anticipate claims 1 and 9
because "[t]here is no teaching in Shima of calculating a shutoff time, or
interrupting the energy supply at the calculated shutoff time." Amended
Br. 4. The Appellants' argument is based on the following statement
concerning the support for the Examiner's rejection of claims 1 and 9
(particularly, Shima's paragraphs 71, 91, and 92):
while Shima may disclose that after stopping motor 7, drum 13
continues to rotate and compress spring 9 (paragraph [0092]),
Shima expressly teaches that reducing operation of the motor 7
is initiated when detection switch 56 detects that the rotation
angle of drum 13 becomes 150 degrees (paragraph [0091], lines
8-15).
Amended Br. 4 ( emphasis omitted).
In response, the Examiner finds:
While the Office does recognize that Shima discloses that the
drum continues to rotate and compress the spring after the motor
is initially stopped, Shima also discloses a shutoff time following
the initial reduction operation. Shima clearly discloses that "the
controller 50 ... then stops the drum 13 after the speed has been
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Appeal2018-001640
Application 13/703,857
reduced [(stops the supply of current)]" in Para [0091]. The
office interprets this moment when t[he] drum stops to be
equivalent to the shutoff time as claimed by the Appellant. This
shutoff time is calculated based on the information detected by
the switch 56 as described in Shima, Para [0071]. The office also
interprets the prescribed urging force of the spring to be
equivalent to the predetermined amount of energy as claimed by
the Appellant.
Ans. 9.
We note that the Appellants do not address this finding. Further, we
determine that the Examiner's finding and rejection of claims 1 and 9 are
adequately supported.
Thus, we sustain the Examiner's rejection of independent claims 1
and 9 as anticipated by Shima. For the same reason, we also sustain the
Examiner's rejection of dependent claims 2-7, 10-14, and 16-20, which are
not argued separately.
Independent claim 8
The Appellants do not appeal the Examiner's anticipation rejection of
claim 8. Amended Br. 1 ("In this Amended Appeal Brief, claim 8 is
included in the Appendix, but the rejection of claim 8 is no longer
appealed."). Thus, we summarily sustain the rejection of claim 8 under (pre-
AIA) 35 U.S.C. § 102(b) as anticipated by Shima.
DECISION
We SUMMARILY AFFIRM the Examiner's decision rejecting:
claim 8 under 35 U.S.C. § 112(b) or (pre-AIA) 35 U.S.C. § 112, second
paragraph, as indefinite; and claim 8 under (pre-AIA) 35 U.S.C. § 102(b) as
anticipated by Shima.
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Appeal2018-001640
Application 13/703,857
We AFFIRM the Examiner's decision rejecting: claims 2, 10, 17, and
18 under 35 U.S.C. § 112(b) or (pre-AIA) 35 U.S.C. § 112, second
paragraph, as indefinite; and claims 1-7, 9-14, and 16-20 under (pre-AIA)
35 U.S.C. § 102(b) as anticipated by Shima.
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)(l )(iv).
AFFIRMED
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