Ex Parte Griech et al

Patent Trial and Appeal Board

Jul 29, 2014

11587145 (P.T.A.B. Jul. 29, 2014)

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.
11/587,145 08/20/2007 Reinhard Griech SEIL3003 /FJD 3131
23364 7590 07/29/2014
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
MORTELL, JOHN F
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
07/29/2014 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 REINHARD GRIECH, CHRISTIAN SEILER, and
THORSTEN SPRINGMANN
___________

Appeal 2012-004254
Application 11/587,145
Technology Center 2600
____________

Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 19, 20, 22, 23, and 35-38, all pending claims of the application.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 17, 2011), Reply Brief (“Reply Br.,” filed Dec. 27, 2011), the
Examiner’s Answer (“Ans.,” mailed Oct. 24, 2011), and the original
Specification (“Spec.,” filed Oct. 20, 2006).
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to a radio module for field devices of
automation technology. Spec. 1:2.
Claim 35, reproduced below, is representative:
35. A radio module for retrofitting a conventional
automation field device equipped with sensor electronics for
wireless technology, comprising:
a field device interface provided on the field device
where the radio module is detachably connected to the sensor
electronics of the field device via said field device interface, or
via a digital switching output;
a microcontroller for function control;
a radio unit for data communication with a
superordinated unit;
an energy supply unit having a limited capacitance; and
an energy control unit, wherein the data communication
between the field device and the superordinated unit takes place
using the radio module;
the radio module is the single source for providing
energy to the field device; and
said energy control unit controls the energy supply of the
individual components of the radio module as well as to the
field device in such a way that the energy consumption of the
field device and the radio module is as low as possible.

THE REJECTIONS
Claim 35 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
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Application 11/587,145
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Claims 19, 20, 23, 25-28, 30-33, 35, and 36 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nixon (US 7,460,865 B2, issued
Dec. 2, 2008) and Cook (US 6,686,831 B2, issued Feb. 3, 2004).
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nixon, Cook, and McMillin (US 7,027,773 B1, issued. Apr. 11, 2006).
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nixon, Cook, and Arita (US 2005/0099289, published May 12, 2005).
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nixon, Cook, and Canada (US 5,854,994, issued. Dec. 29, 1998).
Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nixon, Cook, and Kreier (US 5,790,040, issued. Aug. 4,
1998).
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. App. Br. 6-7; Reply Br. 1-3. We
disagree with Appellants’ conclusions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 16-19). However, we highlight and
address specific arguments and findings for emphasis as follows.

SECTION 112 REJECTION
The Examiner rejected claim 35 under § 112, first paragraph because
“the specification does not mention an energy supply unit having a limited
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capacitance.” Ans. 7. Appellants argue the Specification at page 3 discloses
the related limitation as, “the storage capacity of batteries is limited” and
contends “[i]t is well known by those skilled in the art that batteries have a
limited life, i.e., a limited capacity.” App. Br. 6. Appellants further argue
“[u]ndue experimentation is not necessary.” Id. Initially, we note, “undue
experimentation” is a test related to enablement rather than the written
description requirement applied in the Examiner’s rejection. The written
description requirements of § 112, first paragraph applies a different test.
Specifically, the description must “clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” In other words, the test for sufficiency is
whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.
Ariad Pharmaceutical, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (internal citations omitted). The Examiner does not respond to
Appellants’ argument in the Answer to explain why the cited portion of
Appellants’ Specification fails to reasonably convey such possession.
Regardless, we find the Specification (i.e., Spec. 3:3 as cited by Appellants)
sufficiently conveys to those skilled in the art that the inventor was in
possession of the claimed subject matter at the filing date.
In view of the above discussion, we are persuaded the Examiner erred
in rejecting claim 35 under § 112, first paragraph. We therefore do not
sustain the rejection of claim 35 under 35 U.S.C. § 112, first paragraph.

SECTION 103 REJECTIONS
Claims 19, 20, 22, 23, and 36-38 all depend (directly or indirectly)
from the single independent claim 35. Appellants elect to argue all
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obviousness rejections of all claims based on the rejection of independent
claim 35. App. Br. 6. Thus, claim 35 is designated as representative and all
claims stand or fall with claim 35. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner rejects claim 35 over the combination of Nixon and
Cook specifically identifying teachings relied upon in each reference for
disclosing limitations of the claim. Ans. 8-10. In reference to the
Examiner’s reading of claim limitations in Cook, Appellants argue,
Applicant has read the noted passages and reviewed the
noted Fig., and cannot find any basis for the conclusion drawn
by the examiner. There are problems solved, but not the one
solved by the present invention; and when one reads the
summary of the invention in col 4, there is no mention of
controlling energy consumption.
App. Br. 7. We find Appellants’ argument not persuasive of Examiner error
in the rejection of claim 35. Initially, we note that merely reciting language
of the claims and asserting the cited prior art reference does not teach or
suggest the claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(1)(vii)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Appellants fail to provide sufficient, persuasive argument or evidence
regarding the specific deficiency of Nixon and Cook with respect to claim
35 as interpreted by the Examiner.

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Regardless, the Examiner respond explaining in detail where each
disputed limitation of claim 35 is taught or suggested in Cook (Ans. 17-19)
and further explains that the detailed explanation includes citations to Cook
not included in the Final Rejection (Ans. 18).
Appellants respond that it is unclear whether the Examiner is now
rejecting claim 35 over Cook alone. Reply Br. 2. In view of the substantial
clarity in the Examiner’s rejection (Ans. 8-10) and response (Ans. 16-19),
we find Appellants’ argument unavailing at best.
Appellants further argue that in view of the additional citations to
Cook in the Examiner’s Answer, “[S]houldn’t Applicant/Appellant’s [sic]
have the opportunity to respond other than in a Reply Brief? We think so.”
Id. The Reply Brief is precisely such an opportunity to respond. In the
Reply Brief, Appellants argue,
[T]he new passages of Cook have been reviewed, and
Applicant/Appellant maintains their position that Cook does not
teache [sic] the energy consumption control as claimed in claim
35, whether considered alone or in combination with Nixon.
Reply Br. 2. We find Appellants’ response similarly unavailing. See Lovin
supra.
If Appellants believe the Examiner’s Answer contained a new ground
of rejection not identified as such, Appellants should have sought redress in
the form of a petition under 37 C.F.R. § 1.181. See MPEP § 1207.03(IV).
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting independent claim 35 or dependent claims 19, 20, 22, 23,
and 36-38 argued together with claim 35. We therefore sustain the rejection
of claims 19, 20, 22, -23, and 35-38 under 35 U.S.C. § 103(a).
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DECISION
For the above reasons, the Examiner’s decision rejecting claim 35
under 35 U.S.C. § 112, first paragraph is reversed.
For the above reasons, the Examiner’s decisions rejecting claims 19,
20, 22, 23, and 35-38 under 35 U.S.C. § 103 are 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)(1)(iv).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
AFFIRMED

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