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

Ex Parte Gruender

Board of Patent Appeals and InterferencesSep 17, 2010

11250330 (B.P.A.I. Sep. 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 APPEAL1 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. Â§ 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. Appeal 2009-007651 Application 11/250,330 2 STATEMENT OF THE CASE Hartmut Gruender (Appellant) appeals under 35 U.S.C. Â§ 134 (2002) from the Examiner's decision rejecting claims 18-22 under Â§ 102(b) as anticipated by Brand (US 5,680,887, iss. Oct. 28, 1997). We have jurisdiction over this appeal under 35 U.S.C. Â§ 6 (2002). Claim 18 is illustrative of the claimed invention. 18. A drive mechanism for reciprocating a flitch table, the drive mechanism comprising a drive shaft having an output end, a prime mover coupled to the drive shaft for rotating the drive shaft, a coupler on the output end of the drive shaft, and means for connecting the coupler to the flitch table, the means for connecting the coupler to the flitch table consisting essentially of a connecting rod coupled to the flitch table and the coupler. SUMMARY OF DECISION We AFFIRM. ISSUE Independent claim 18 recites a drive mechanism for a reciprocating flitch table having "means for connecting the coupler to the flitch table," wherein the means for connecting "consist[s] essentially of a connecting rod coupled to the flitch table and the coupler." The Examiner found that Brand describes a drive mechanism for a reciprocating flitch table having a connecting rod (52 or 152) "essentially connecting" the flitch table (30) and coupler (174, 150, 68, 66, 74, 72, 50, 46). Ans. 3. Appellant does not challenge any of the Examiner's factual findings with respect to the teachings of Brand, but rather argues that the Examiner has not given proper weight to the language in claim 18 requiring that the "means for connecting" "consist[s] essentially of a connecting rod." Reply Appeal 2009-007651 Application 11/250,330 3 Br. 2. Appellant argues that the structure in Brand "is significantly more complex than the elements to which claim 18 [are] essentially limited." Appeal Br. 7. In particular, Appellant identifies Brand's connecting structure as having two connecting rods. Id. at 6. Thus, Appellant's argument is that Brand cannot anticipate claim 18 because it describes two connecting rods, whereas claim 18 is limited to a single connecting rod. Appeal Br. 6-7; Reply Br. 2. Appellant argues claims 18-22 as a group; thus claims 19-22 stand or fall with claim 18. 37 C.F.R. Â§ 41.37(c)(1)(vii) (2010). Therefore, the issue in this appeal is whether Brand'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, the means for connecting "consisting essentially of a connecting rod coupled to the flitch table and the coupler." ANALYSIS Claim 18 recites a drive mechanism "comprising" several components. One component is "means for connecting the coupler to the flitch table." The claim specifies that the means for connecting "consist[s] essentially of" a connecting rod and coupler2. Thus, the actual structure of the "means for connecting" is limited to the claimed connecting rod and 2 Claim elements do not invoke 35 U.S.C. Â§ 112, sixth paragraph when the claim provides "sufficient structure for performing the [claimed] function." Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303â€“04 (Fed. Cir. 1999). Thus, the "means for connecting" does not invoke Â§ 112, sixth paragraph because claim 18 further recites additional structure making up the "means for connecting," including a connecting rod and coupler. Appeal 2009-007651 Application 11/250,330 4 coupler, as well as those additional elements 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). "[A]ppellant 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). Appellant's arguments fail for two reasons. First, Appellant has not argued or provided evidence that having an additional connecting rod in the "means for connecting" "materially affect[s] the basic and novel properties of the invention." PPG Indus., 156 F.3d at 1354. In fact, Appellant's own disclosure describes a drive mechanism having several connecting rods. See Spec. 5, fig. 1; see also In re Herz, 537 F.2d 549, 551 (CCPA 1976) ("it is necessary and proper to determine whether [the] specification reasonably supports a construction" that would exclude or include particular components). Thus, Appellant has not met the burden of showing that a single connecting rod is a "basic or novel characteristic[]" of the invention, nor has Appellant demonstrated that additional connecting rod elements will "materially affect the basic and novel properties of the invention." See De Lajarte, 337 F.2d at 874; PPG Indus., 156 F.3d at 1354. Second, even if a "means for connecting" were limited to a single connecting rod, the drive mechanism of claim 18 is not limited to only one "means for connecting." That is, claim 18's open-ended "comprising" language allows for additional elements, including multiple "means for connecting." See also Spec. 5 and fig. 1 (noting Appellant's own invention has a drive mechanism with more than one connecting rod coupled to driven gears (couplers)). Thus, the claim does not limit how many connecting rods are in the drive mechanism as a whole. The Examiner's unchallenged Appeal 2009-007651 Application 11/250,330 5 findings that Brand describes a connecting rod (152) and coupler (174, 150, 166) thus appears to fully address both Appellant's argued claim construction, wherein the "means for connecting" is limited to a single connecting rod, as well as the claimed "means for connecting" limitation, properly construed in light of Appellant's Specification. See Ans. 4; see also Brand, fig. 6. Therefore, we are not persuaded that the Examiner erred in finding that Brand anticipates the drive mechanism of claim 18 because claim 18 does not limit the drive mechanism to only a single connecting rod. Claims 19-22 fall with claim 18. DECISION We affirm the Examiner's decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv) (2007). AFFIRMED Appeal 2009-007651 Application 11/250,330 6 hh BARNES & THORNBURG, LLP 11 SOUTH MERIDIAN INDIANAPOLIS, IN 46204