Ex Parte Feisthammel et al

Patent Trial and Appeal Board

Mar 28, 2016

11667717 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/667,717 05/14/2007
46726 7590 03/30/2016
BSH Home Appliances Corporation
100 Bosch Boulevard
NEW BERN, NC 28562
FIRST NAMED INVENTOR
Egon Feisthammel
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.
2004P01913WOUS 3243
EXAMINER
MASHRUWALA, NIKHIL P
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EGON FEISTHAMMEL, PETRA HOLZER, and
DIETER ROSMANN
Appeal2014-002161
Application 11/667,717 1
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Egon Feisthammel et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 12-26.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellants, the real party in interest is BSH Bosch und
Siemens Hausgerate GmbH. Appeal Br. 3 (filed May 9, 2013).
2 Claim 1-11 have been canceled. See Preliminary Amendment 6 (filed
May 14, 2007).
Appeal2014-002161
Application 11/667,717
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to "an extraction unit for ventilating a
cooking surface." Spec. 1, 1. 3.
Claims 12 and 20 are independent. Claim 12 is illustrative of the
claimed invention and reads as follows:
12. An extraction unit for ventilating a cooking surface,
compnsmg:
a fan unit for providing a motive force for effecting an
evacuation movement of a fluid away from a cooking surface;
a retraction device having at least one extraction
component of the extraction unit movable between an extended
position in which the at least one extraction component of the
extraction unit is positioned for receiving fluid being evacuated
and a retracted position in which the at least one extraction
component of the extraction unit is not positioned for receiving
fluid being evacuated; and
a control device having at least one actuating component
manipulated by a manual user input, the control device
controlling an operation of the retraction device in response to a
manipulation of the at least one actuating component via a
manual user input, the fan unit being operatively connected to
the control device such that the control device both controls an
operation of the retraction device in response to a given
manipulation of the at least one actuating component via a
manual user input and controls as well an operation of the fan
unit in response to the same given manipulation of the at least
one actuating component via the manual user input,
wherein the at least one actuating component is moveable
between a lowered position with respect to the control device
and a protruded position with respect to the control device in
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Application 11/667,717
which the at least one actuating component protrudes from the
control device,
the at least one actuating component being in the lowered
position with respect to the control device when the extraction
unit is inactive and in the protruded position with respect to the
control device when the extraction unit is active.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claim 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Gagas (US 2008/0029081 Al, pub.
Feb. 7, 2008) and Lipp (US 3,927,276, iss. Dec. 16, 1975).
III. The Examiner rejected claims 12-26 under 35 U.S.C. § 103(a)
as being unpatentable over Gagas, Sarnosky (US 5,062,410, iss.
Nov. 5, 1991), and Lipp.
ANALYSIS
Rejection I
The Examiner finds that the limitation of "at least one actuating
component" is indefinite because, if the limitation is not restricted to a single
"actuating component," it is not clear "whether some or all of the actuating
components are required to fulfill the limitations of claim 12, lines 10-19."
Final Act. 2 (dated Oct. 26, 2012). The Examiner also finds that the
limitation of "a lower position when the extraction device is inactive" is not
clear. Id.
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Application 11/667,717
Appellants argue that the plain meaning of the phrase "at least one"
allows for "only a single actuating component ... as well as more than one
actuating component." Appeal Br. 10. As to the second disputed limitation
of claim 12, Appellants argue that "claim 12 does not require a 'lower'
position," as the Examiner finds, but rather "a lowered position with respect
to the control device." Id. at 11.
At the outset, we note that both Appellants and the Examiner agree
that the "claimed features of 'at least one actuating component' include only
a single actuating component." Compare Appeal Br. 10, with Ans. 10.
Furthermore, by not specifying the exact number of actuating components,
the claim is merely broad. See In re Johnson, 558 F .2d 1008, 1016 n.17
(CCPA 1977) (breadth is not indefiniteness). That is to say, it is clear that
the claim requires at least one actuating component capable of performing
the claimed functions; no further detail is necessary to know the metes and
bounds of the claim. Moreover, we note that reference to "at least one
actuating component" is consistent throughout claim 12. Hence, we do not
agree with the Examiner's position that that the limitation of "at least one
actuating component" is indefinite.
With respect to the second disputed limitation of claim 12, we note
that the test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Here, we first agree
with Appellants that claim 12 recites "a lowered position," rather than a
"lower position." See Appeal Br. 11. Secondly, Appellants' Specification
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Application 11/667,717
describes an actuating component, i.e., rotary knob 4, in a lowered position
when the extraction unit 3 is inactive and in a protruded position when the
extraction unit 3 is active. See Spec. 5, 11. 6-10 and 22-26. As such, it is
clear that when extraction unit 3 is inactive, rotary knob 4 is in a lowered
position, and when extraction unit 3 is active, rotary knob 4 is moved to a
retracted position, as shown in Figures 1 and 2, respectively, of Appellants'
Drawings.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 12 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Rejections II and III
Appellants' sole argument against these rejections is that "the Gagas
... reference is not available as prior art to the present application." Appeal
Br. 12. According to Appellants, the foreign priority date of the present
application antedates the earliest filing date of the primary reference of
Gagas. Id. Appellants assert that the present application was filed under 35
U.S.C. § 371, has a PCT international filing date of October 27, 2005, and
has a perfected claim of foreign priority to DE 10 2004 945.7, filed on
November 19, 2004. Id. at 14. Appellants further note that the earliest
effective filing date of Gagas is August 1, 2005. Id. Thus, Appellants
conclude that because the earliest effective filing date of Gagas is August 1,
2005, whereas the earliest effective filing of the instant application is
November 19, 2004, Gagas is not available as prior art. Id. at 15.
In response, the Examiner notes that Appellants' claim of foreign
priority to DE 10 2004 945.7 has not been perfected because Appellants
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Application 11/667,717
have "not filed a Certified Copy in English of [the] German filing
document." Adv. Act. 2 (dated Dec. 20, 2012). Thus, according to the
Examiner, Appellants "get the benefit of the PCT filing date of October 27th
2005," and because the earliest effective filing date of Gagas is August 1st,
2005, Gagas is available as prior art. Id.; see also Ans. 11.
Appellants respond that the Examiner erred "in stating that a
'Certified Copy in English of [the] German filing document' is required to
perfect the claim to foreign priority." Reply Br. 16. According to
Appellants, the claim to foreign priority was perfected and the instant
application is entitled to a priority date of November 19, 2004 because:
( 1) a certified copy of the foreign priority application was
received from the PCT on May 14, 2007,
(2) Appellants filed an English language translation of the
certified copy of the priority application on May 14, 2007, and
(3) Appellants filed a statement that the English translation
of the certified copy is accurate on May 14, 2007.
Id. at 17 (citing 35 U.S.C. § 371; 37 C.F.R. § 1.55; and MPEP § 706.02(b)).
Perfecting a claim for foreign priority requires a claim for foreign
priority, a certified copy of the foreign application, and an English language
translation of the foreign application accompanied by a statement that the
translation of the certified copy is accurate. See 37 C.F.R. § 1.55(g).3 In this
3 37 C.F.R. § 1.55(g) states:
Requirement for filing priority claim, certified copy of foreign
application, and translation in any application.
( 1) The claim for priority and the certified copy of the foreign
application ... must, in any event, be filed within the
pendency of the application ....
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case, Appellants are correct that a claim for foreign priority was made, and
that a certified copy of the foreign priority document DE 10 2004 945.7 was
received on May 14, 2007. However, the English language translation and
the translation accuracy statement received on May 14, 2007 are not for the
foreign priority document DE 10 2004 945.7, from which Appellants now
claim foreign priority, but rather for PCT application PCT /EP2005/055609
(which was published as WO 2006/053818 Al in the German language on
May 26, 2006). As such, the Examiner is correct in that Appellants have
perfected a claim for foreign priority only based on PCT application
PCT/EP2005/055609, and thus are entitled to an effective filing date of
October 27, 2005. See Ans. 11. Hence, in view of the requirements of 37
C.F .R. § 1.55(g), because Appellants have not filed an English language
translation of foreign priority document DE 10 2004 945.7, accompanied by
a translation accuracy statement, Appellants have not perfected a claim to
foreign priority based on foreign document DE 10 2004 945.7. Merely
stating that "PCT/EP2005/055609 [is] based on DE 10 2004 945.7 filed
11/19/2004" does not satisfy the requirements of 37 C.F.R. § 1.55(g). See
Certification of Attached English Translation of PCT Application, filed May
(3)An English language translation of a non-English language
foreign application is not required except: ...
(ii) When necessary to overcome the date of a reference
relied upon by the examiner; ...
( 4) If an English language translation of a non-English language
foreign application is required, it must be filed together with
a statement that the translation of the certified copy is
accurate.
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Application 11/667,717
14, 2007 (emphasis added). We thus agree with the Examiner that
Appellants are not entitled to a foreign priority date of November 19, 2004.
See Ans. 11.
In conclusion, for the foregoing reasons, we agree with the Examiner
that Gagas remains available as prior art. See id. Appellants do not set forth
any other substantive arguments for patentability. See Appeal Br. 12-19;
Reply Br. 14--21. Accordingly, we sustain the rejections under 35 U.S.C. §
103(a) of claim 12 as being unpatentable over Gagas and Lipp and of claims
12-26 as being unpatentable over Gagas, Sarnosky, and Lipp.
SUMMARY
The Examiner's decision to reject claim 12 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is reversed.
The Examiner's decision to reject claim 12 under 35 U.S.C. § 103(a)
as being unpatentable over Gagas and Lipp is affirmed.
The Examiner's decision to reject claims 12-26 under 35 U.S.C.
§ 103(a) as being unpatentable over Gagas, Sarnosky, and Lipp is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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