Ex Parte Friesenecker et al

Patent Trial and Appeal Board

Mar 23, 2017

13593577 (P.T.A.B. Mar. 23, 2017)

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.
13/593,577 08/24/2012 Gerald FRIESENECKER 20121160A 6511
513 7590 03/27/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD FRIESENECKER and
ULRICH GREUSSING
Appeal 2015-004601
Application 13/593,577
Technology Center 3600
Before: CHARLES N. GREENHUT, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11—22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-004601
Application 13/593,577
CLAIMED SUBJECT MATTER
The claims are directed to a pull-out guide for drawers. Claim 11,
reproduced below, with emphasis added, is illustrative of the claimed subject
matter:
11. An extension guide for a drawer, comprising:
a carcass rail to be fixed to a furniture carcass;
a drawer rail to be fixed to the drawer;
a central rail mounted movably between said carcass rail
and said drawer rail, one of said carcass rail, said drawer rail, and
said central rail having a running surface comprising a toothed
bar;
a running carriage mounted displaceably between two of
said carcass rail, said drawer rail, and said central rail, said
running carriage having a toothed rack; and
a synchronization device for preventing running faults of
said extension guide, said synchronization device including a
synchronization wheel formed of a gear having a first pinion
wheel and a second pinion wheel having different diameters, said
first pinion wheel meshing with only said toothed rack of said
running carriage without meshing with said toothed bar or any
other racks or bars, and said second pinion wheel meshing with
only said toothed bar without meshing with said toothed rack of
said running carriage or any other racks or bars, each of said
first pinion wheel and said second pinion wheel being mounted
to said central rail such that said first pinion wheel and said
second pinion wheel are separated from each other by a portion
of said central rail located therebetween;
wherein said first pinion wheel and said second pinion
wheel are connected together in a torque-proof manner such that
a movement of one of said first pinion wheel or said second
pinion wheel causes the other of said first pinion wheel and said
second pinion wheel to move therewith.
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Appeal 2015-004601
Application 13/593,577
REJECTION
Claims 11—22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li (CN 201299316) in view of Alfit AG (DE
102004002823 Al).
OPINION
Appellants correctly argue that the limitations emphasized above
preclude claim 1, the sole independent claim before us, from covering a
device in which either of the respective first and second pinions meshes with
more than one rack or bar. App. Br. 3^4. Appellants also correctly argue that
neither of the cited references disclose such an arrangement. App. Br. 3—5
(citing Li’s pinion wheel 9 in engagement with toothed bar 7 and toothed
rack 6; and Alfit’s gears 34, 36 that each engage toothed racks 30, 32 and
35, 38, respectively). The Examiner does not appear to have addressed the
disputed limitations in the Final Rejection. See Final Act. 3. The Advisory
Action does not appear to expressly address this limitation either, although
the Examiner does comment that “[t]he pinions of Alfit AG meshing with
two sets of carriages and two sets of rails does not make the claimed
invention unobvious because Li’s pinion 9 only engages one rail and one
carriage.” Adv. Act. 3.
Like Appellants, we have difficulty understanding the position taken
by the Examiner based on the Advisory Action. Alfit has two carriages 18,
20 each having a respective toothed gear 30, 32 (Alfit para. 28), but not “two
sets of carriages” as the Examiner states. Alfit has three rails 12, 14, 16, so it
also unclear to which “two sets of rails” the Examiner is referring. As the
Examiner has not made a complete translation of Li of record and the
Examiner does not refer to any specific reference numerals, it is also unclear
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Appeal 2015-004601
Application 13/593,577
to which specific elements of Li the Examiner is referring when discussing
Li’s “one rail and one carriage.” “If a document being relied upon by the
examiner in support of a rejection is in a language other than English, a
translation must be obtained so that the record is clear as to the precise facts
the examiner is relying upon in support of the rejection.” MPEP § 1207.02.
It is also not clear what relevance the Examiner’s statements in the Advisory
Action have to the claim requirements relating to pinions that engage
exclusively with one rack or bar.
The Examiner does not appear to dispute either the Appellants’ claim
construction or the Appellants’ analysis of the prior art. Appellants indicate
that after contacting the Examiner via telephone the Examiner seemed to
take the position that Alfit “would teach one of ordinary skill in the art to
divide the solitary pinion 9 of the primary Li reference into two separate
pinions, such as gear wheels 34 and 36 of the Alfit reference, and that each
of these newly-formed separate pinions would then apparently mesh with
only a respective one of the toothed rack 7 of the rail 3 and the toothed rack
6 of the carriage 4.” App. Br. 4—5. As best as we can understand it, this
appears to accurately characterize the position taken by the Examiner in the
Examiner’s Answer. Ans. 4—5.
Although a skilled artisan is presumed to know something apart from
what the references expressly disclose (see, e.g., In re Jacoby, 309 F.2d 513,
516 (CCPA 1962)), there must be some concrete evidence in the record in
support of the core factual findings made in reaching the conclusion of
obviousness (see In re Zurko, 258 F. 3d 1379, 1386 (Fed. Cir. 2001)). The
absence of such evidence in the record frustrates the exercise of appellate
review. Id. This requirement also serves as a guard against using hindsight
knowledge, which, as Appellants correctly point out, cannot be relied upon
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Appeal 2015-004601
Application 13/593,577
as a basis to determine obviousness. App. Br. 5; Sensonics Inc. v. Aerosonic
Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
In the Examiner’s Answer the Examiner asserts that “Alfit AG's
pinions 34 and 36 do not need to mesh with anything else to accomplish the
goal of making carriage 4 extend at a different rate than disclosed by Li.”
Ans. 4. First, the Examiner does not provide any explanation in support of
this conclusion. Each of Alfit’s toothed gears 30, 32, 35, and 36 is employed
to actuate the pull-out guide. Alfit paras. 27—30. It is unclear why the
Examiner believes that two of them would have been deemed unnecessary or
superfluous. Second, the question is not simply whether or not one could
have made the proposed modification; the question is whether it would have
been obvious to do so. Merely stating that one could have made the
proposed modification to arrive at the claimed subject matter without
identifying any predictable results, or reasons, associated with doing so is
generally not sufficient to establish obviousness. See MPEP § 2143.01 (IV).
Furthermore, there must be at least a reasonable expectation that the
proposed combination would be successful. MPEP § 2143.02. The Examiner
does not provide a sufficient explanation as to how the teachings of the cited
references might be combined to arrive at a working device. Pointing out
that Alfit uses two differently sized pinions (Ans. 3), and discloses multiple
ways to arrange them (Ans. 5 (citing Alfit’s alternate embodiments depicted
in Figs. 3—6)) does little, if anything, to address the specific claim limitations
pertaining to each pinion’s exclusive engagement with a single rack or bar.
All words in a claim must be considered in judging the obviousness of the
claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970).
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Appeal 2015-004601
Application 13/593,577
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless, ’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). On the record before
us, we must conclude that the Examiner has failed to carry that burden.
DECISION
The Examiner’s rejection is reversed.
REVERSED
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