Ex Parte Gruender

Board of Patent Appeals and Interferences

Nov 17, 2010

11250330 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARTMUT GRUENDER
____________

Appeal 2009-007651
Application 11/250,330
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL W. O'NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Hartmut Gruender (Appellant) filed a "REQUEST FOR
REHEARING" dated Sep. 27, 2010 (hereinafter "Request"), of our decision
dated Sep. 21, 2010 (hereinafter "Decision"). In that Decision, we affirmed
the Examiner's rejection under § 102(b) of claims 18-22 as anticipated by
Brand (US 5,680,887, iss. Oct. 28, 1997).
In the Decision, the issue addressed was whether the prior art's
disclosure of two connecting rods, each coupled to the flitch table and a
coupler, satisfies the "means for connecting the coupler to the flitch table"
limitation of claim 18, wherein the means for connecting "consist[s]
essentially of a connecting rod coupled to the flitch table and the coupler."
Appellant alleges that our Decision is based on three justifications,
referred to as (1)(a), (1)(b), and (2), and that these justifications are in error.
Request 1, 3. We address each in turn:
(1)(a)
In the Decision, we apprised Appellant of his burden of showing the
basic or novel characteristics of the invention as the first step in excluding
unlisted structures of the "means for connecting" limitation "consisting
essentially of" certain elements. Decision 4. When a claim is recited as
"consisting essentially of" certain elements, "the invention necessarily
includes the listed [structures] and is open to unlisted [structures] that do not
materially affect the basic and novel properties of the invention." PPG
Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Notably, "appellant has the burden of showing the basic or novel
characteristics of [the claimed invention]." See In re De Lajarte, 337 F.2d
870, 874 (CCPA 1964).
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Appellant states that having a single connecting rod is a "'basic [and]
novel characteristic[]' of the invention" because "a single (that is, only one)
connecting rod is what is claimed." Request 2. Appellant's statement is
factually incorrect. Claim 18 contains neither the term "single" nor the term
"only." Instead, Appellant elected to use the language "consisting
essentially of" (not strictly "consisting") and "a" (not "a single" or "only
one"). In effect, without having a claim limitation restricting the number of
connecting rods of the drive mechanism to a single, or only one, connecting
rod, Appellant would ask us nonetheless to interpret the claim not to read on
prior art with multiple connecting rods, solely because if we were to
interpret the claim in that way, the claim would not read on the prior art. We
again decline to read into the claim unrecited positive or negative
limitations, for the reasons set forth below2.
First, Appellant must demonstrate the basic and novel properties of
the invention itself, not identify potential features that may differentiate a
claim from a single prior art device. While the basic and novel properties of
the invention would generally be found in the claim limitations, it does not
follow that each claim limitation is a basic and novel property of the
invention. Many claim elements are there simply to fully describe the
invention as required by 35 U.S.C. § 112, second paragraph.
If a prior art reference did not satisfy each limitation of a claim, the
differences would be material to an ultimate determination of patentability
of the claimed invention. However, any difference is not automatically a

2 We note that Appellant is not precluded from amending the claims to
explicitly and affirmatively limit the entire drive mechanism to one total
connecting rod or limit each means for connecting to one total connecting
rod, whichever it is that Appellant claims to have invented.
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"basic [and] novel characteristic" of the invention, as suggested by
Appellant. In effect, Appellant is arguing that any invention not wholly
anticipated has at least one basic and novel characteristic. This is clearly not
so.
As we explained on page 4 of our Decision, Appellant has not
provided any showing that having one connecting rod is a basic and novel
property of the invention. Further, nothing in the record before us clearly
points to any basic and novel property of the invention. We find no
discussion of the benefits or results of having a single connecting rod in the
Specification. We find no discussion of the shortcomings of the prior art in
the Specification, such that we could possibly draw conclusions as to which
features of the present invention may be considered the inventive portions or
improvements over the prior art. Instead, we find that the Specification
describes an embodiment with two connecting rods (see fig. 1 and p. 5,
noting both connecting rods 40 are coupled to the same output motor 29 via
coupling structure 30, 32, 34, 36, 38, 42), such that it seems more likely than
not that having a single connecting rod is not a basic or novel property of the
invention but rather just one among plural ways to connect the flitch table to
the motor. Appellant submits no reason to believe otherwise.
Second, as pointed out above, claim 18 simply does not require a
"single" connecting rod. The claim requires a "means for connecting the
coupler to the flitch table consisting essentially of a connecting rod coupled
to the flitch table and the coupler." As we mentioned above, "consisting
essentially of" allows other claim elements, subject to the rule in PPG. See
also Spec. 5, 7 (noting that there are many such additional elements in the
disclosed means for connecting and coupler elements). Further, it is well
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settled that "a or an" means "one or more," without clear evidence to the
contrary. KCJ Corp. v. Kinetic Concepts, 223 F.3d 1351, 1356 (Fed. Cir.
2000) ("Unless the claim is specific as to the number of elements, the article
'a' receives a singular interpretation only in rare circumstances when the
patentee evinces a clear intent to so limit the article"). As we found above,
the Specification describes an embodiment where a means for connecting
had more than one connecting rod and does not describe any particular
importance or reason for having only a single connecting rod. Further,
Appellant is free to amend the claims to "evince[] a clear intent to so limit" a
means for connecting to a single connecting rod. See id. Appellant's
arguments urging a particular claim interpretation without support in the
claim or Specification for that interpretation is not enough to signal clear
intent, especially given the opportunity to simply amend the claim.
Accordingly, Appellant's Request does not persuade us that claim 18
necessarily excludes prior art having more than one connecting rod in a
means for connecting.

(1)(b)
After setting forth the basic and novel properties of the invention, the
next step is to determine if unclaimed features found in the prior art
materially affect those basic and novel properties. PPG at 1354. We need
not reach that step. Appellant has not established the basic and novel
properties of the invention. Appellant's circular argument that the additional
connecting rods of the prior art "materially affect the basic and novel
properties of the invention" because "the prior art's additional connecting
rods make the prior art not readable on the claim" (Request 2) does nothing
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to persuade us that we erred in finding that "Appellant [has not]
demonstrated that additional connecting rod elements will 'materially affect
the basic and novel properties of the invention'" (Decision 4) (citing De
Lajarte, 337 F.2d at 874; PPG Indus., 156 F.3d at 1354).

(2)
In the Decision, we apprised Appellant of the breadth of claim 18, by
stating that even if claim 18 were construed as limiting the means for
connecting to only a single connecting rod3, the claim still would not
exclude prior art drive mechanisms with more than one connecting rod in
total. Decision 4-5. Appellant contends that claim 18 "recites only 'means
for connecting,' that is, all the means for connecting." Request 2 (emphasis
in original). Appellant's contention appears to overlook the impact on claim
scope of the open-ended terminology "comprising," which we explained on
page 4 of the Decision. Claim 18 recites "[a] drive mechanism …
comprising … means for connecting the coupler to the flitch table," thus
allowing for additional elements, such as additional means for connecting.
Consequently, the "consisting essentially of" language places no limitation
on the total number of means for connecting, and hence no limitation on the
total number of connecting rods, in the drive mechanism.
Appellant lastly states (Request 3) that the first embodiment of the
invention (e.g., as depicted in figure 1) is not intended to be covered by the
appealed claims, but it is nonetheless covered because it does not include

3 That is, if Appellant were to meet his burden in (1)(a) above and the basic
and novel properties of the invention would be materially affected by more
than one connecting rod per means for connecting.
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any unclaimed features in its means for connecting that have been shown to
materially affect the basic and novel properties of the invention, as discussed
in sections (1)(a) and (1)(b) above.
CONCLUSION
The arguments in Appellant's Request have not convinced us that we
erred in affirming the Examiner's rejection under § 102(b) of claims 18-22 as
anticipated by Brand.

DECISION
Appellant's Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant's Request,
but is denied with respect to our making any modification to the Decision.
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)(1)(iv) (2007).

DENIED

hh

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