11997032 (P.T.A.B. Nov. 12, 2013)

Ex Parte Esenwein

Patent Trial and Appeal BoardNov 12, 2013

11997032 (P.T.A.B. Nov. 12, 2013)

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. 11/997,032 01/28/2008 Florian Esenwein 4332 2676 7590 11/12/2013 STRIKER, STRIKER & STENBY 103 East Neck Road Huntington, NY 11743 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 11/12/2013 PAPERPAPER 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 FLORIAN ESENWEIN ____________________ Appeal 2011-013592 Application 11/997,032 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, SCOTT A. DANIELS, and JILL D. HILL, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013592 Application 11/997,032 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 4, 6-10, 12-21, 23-25, and 27-30. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellant’s claimed invention “relates to a guard for a hand-held power tool.” Spec. 1:6. Claims 27, 28, and 30 are the independent claims on appeal. Claim 27, reproduced below, is illustrative of the claimed subject matter: 27. A guard for a hand-held power tool, in particular for an electric handheld power tool, comprising a hood body; a semicircular support surface for placement against an annular body of a flange of the hand-held power tool; a clamping device including a clamping band for fastening the guard to the flange; and a rotation lock for fixing an angular position of the guard relative to the hand-held power tool, wherein the rotation lock includes a plurality of rotation lock elements arranged along the support surface and interactable with a plurality of corresponding rotation lock counter elements of the annular body of the flange, wherein the support surface is located on an element selected from the group consisting of the hood body and the clamping band in a zone that overlaps the hood body. The Rejections and Evidence Relied Upon The following rejections are before us on appeal: I. Claims 4, 6-10, 12-21, 23-25, and 27-30 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Appeal 2011-013592 Application 11/997,032 3 II. Claims 4, 6-10, 12-21, 23-25, and 27-30 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. III. Claims 4, 6-10, 12-21, 23-25, and 27-30 under 35 U.S.C. § 103(a) as unpatentable over Wiker (US 2006/0052041 A1; pub. Mar. 9, 2006). OPINION I. Enablement The Examiner rejected claims 4, 6-10, 12-21, 23-25, and 27-30 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 4-5, 8-9. The rejection discusses errors and omissions in Appellant’s disclosure. Id. While the Examiner is not required to provide a discussion of any or all of the Wands factors, the test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); see also In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)) (The PTO bears the initial burden when rejecting claims for lack of enablement.). Further, the omission of matter essential to the invention is relevant to an enablement analysis; however, these omissions must be analyzed in terms of whether those omissions would render the disclosure insufficient to enable a person of ordinary skill in the art to make the use the claimed invention without Appeal 2011-013592 Application 11/997,032 4 undue experimentation. Here the rejection does not address the sufficiency of the disclosure in terms of undue experimentation. As such, we do not sustain the Examiner’s decision to reject claims 4, 6-10, 12-21, 23-25, and 27-30 under 35 U.S.C. § 112, first paragraph, for lack of enablement. II. Indefiniteness1 The Examiner determined that claims 4, 6-10, 12-21, 23-25, and 27- 30 are indefinite. Ans. 6, 8-9. In making this determination, the Examiner asks a series of questions about how the claim elements interrelate. Id. The failure to interrelate essential claims elements is relevant to an indefiniteness determination. However, the Examiner presented a series of questions without interpreting the claims in light of the Specification. A determination of indefiniteness “requires a construction of the claims according to the familiar canons of claim construction. Only after a thorough attempt to understand the meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is invalid for indefiniteness.” All Dental Prodx, LLC v. Advantage Dental Prods. Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). For that reason, this rejection is not sustained. 1 The Examiner observes that claim 20 is redundant. Ans. 6. Claim 20 depends from claim 27 and calls for the clamping device to include a clamping band; however, claim 27 already calls for the clamping device to include a clamping band. App. Br. 22-23, Claims App’x, Claims 20, 27. This apparent conflict relates to whether claim 20 further limits the claim from which it depends as required by 35 U.S.C. § 112, fourth paragraph, but does not relate to whether claim 20 is indefinite. Appeal 2011-013592 Application 11/997,032 5 III. Obviousness over Wiker Independent claims 27, 28, and 30 each call for a semicircular support surface for placement against an annular body of a flange of the hand-held power tool. The Examiner made no finding regarding the support surface. Office Action dated Feb. 17, 2011, at 4-5 see also Ans. 6-8. Now, in Response to Argument, the Examiner finds “[t]he annular band of Wiker has a support surface and a locking member 37.” Ans. 9. This statement does not identify the element of Wiker that corresponds to a support surface as claimed. Further, it does not fully address the limitation at issue, which calls for the support surface to be placed against an annular body of the flange of the hand-held power tool. As such, we do not sustain the rejection of independent claims 27, 28, and 30, and their respective dependent claims 4, 6-10, 12-21, 23-25, and 29. DECISION We reverse the Examiner’s decision to reject claims 4, 6-10, 12-21, 23-25, and 27-30. REVERSED Klh