Ex Parte Hahn et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11517724 (B.P.A.I. Jul. 31, 2012)

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.
11/517,724 09/07/2006 Wolfram Hahn 2796
38137 7590 08/01/2012
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WOLFRAM HAHN, KARL FRANZ, and TILO DITTRICH
____________

Appeal 2010-002766
Application 11/517,724
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-4 and 6-18. Claim 5 has been cancelled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2010-002766
Application 11/517,724

2
CLAIMED SUBJECT MATTER
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A setting tool for driving fastening elements in a
constructional component, comprising:
a piston guide (13) having a hollow chamber (14);
a setting piston (20) axially displaceable in the hollow
chamber (14) and having:
a piston head (23); and
a piston stem (21) adjoining the piston head (23);
a bolt guide (12) adjoining the piston guide (13) in a
setting direction (40) of the setting tool (10); and
a piston stop device (30) for braking the setting piston
(20) and located at an end region of the hollow chamber (14)
adjacent to the bolt guide (12), the piston stop device (30)
having a stop element for the setting piston (20) and having a
first ring (31) and a second ring (32) arranged coaxially with
each other and displaceable relative to each other, and a
receiving space (33) provided between the first ring (31) and
the second ring (32) and substantially filled up with particles
(34) with respect to which the receiving space (33) is sealed;
wherein the particles (34) have a particle size between
0.1 mm and 5 mm.

REJECTIONS
Claims 1-4 and 6-18 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jakob (US 6,220,495 B1, issued Apr. 24, 2001) and
Barcock (US 6,802,405 B2, issued Oct. 12, 2004).
Appeal 2010-002766
Application 11/517,724

3
Claims 10, 11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jakob, Barcock, and Kim (US 6,298,963 B1, issued Oct.
9, 2001).
Claims 1, 2, 6-12, and 15-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jochum (US 4,122,987, issued Oct. 31, 1978), Nenkov
(US 4,776,436, issued Oct. 11, 1988), and Barcock.

OPINION
The rejection of claims 1-4 and 6-18 as indefinite
Claims 1 and 11 both recite “a receiving space (33) provided between
the first ring (31) and the second ring (32) and substantially filled up with
particles (34) with respect to which the receiving space (33) is sealed.” App.
Br., Appendix A (emphasis added). The Examiner determines that the term
“substantially filled up” is indefinite because it is unclear “what volumetric
value defines the phrase ‘substantially filled up’.” Ans. 3. The Appellants
contend that the phrase “substantially filled up” is not indefinite because
“[t]he specification discloses and the drawings show that the particles (34)
fill the entire space (33)” and “[t]he term ‘substantially’ is used to account
for possible empty spaces due to manufacturing tolerances.” Reply Br. 2.
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) (citations
omitted).
The Appellants’ Specification lacks lexicographic definitions for both
the term “substantially” and the phrase “substantially filled up.” As such,
Appeal 2010-002766
Application 11/517,724

4
the term “substantially” in the phrase “substantially filled up”, as used in the
context of Appellants’ Specification and drawings, takes on its ordinary and
customary meaning which denotes an approximation. See Ecolab, Inc. v.
Envirochem, Inc., 264 F.3d 1358, 1366 (Fed. Cir. 2001).1 The Appellants
assert that the term “substantial” “means ‘considerable in importance, value,
degree, amount, or extent.’”2 App. Br. 7. Based on this definition, the
Appellants assert that the term “substantially” in the phrase “substantially
filled up” “means that the receiving space (33) can be filled up with particles
(34) completely but not necessarily so.” App. Br. 7. The Appellants’
assertion is consistent with the Specification, particularly at page 16, lines 1-
12, which provides examples of filling the receiving space 33 with particles
34. The Examiner’s response suggests that “the phrase ‘not necessarily so’”
in the proposed definition continues to obscure a clear meaning of the term
“substantially.” See Ans. 7. However, the inclusion of “not necessarily so”
in the Appellants proposed definition merely “account[s] for possible empty
spaces due to manufacturing tolerances.” See Reply Br. 2.
Thus, the rejection of claims 1-4 and 6-18 as indefinite is not
sustained.

1 In Ecolab, the court gave the term “substantially” the ordinary and
customary meaning of “considerable in extent” or “largely but not wholly
that which is specified.” Ecolab, 264 F.3d at 1367 (citing The American
Heritage Collection Dictionary 1475 (3D ED. 1997)). The court also noted
that the term “substantially” “is a descriptive term commonly used in patent
claims to ‘avoid a strict numerical boundary to the specified parameter.”’
Id. at 1367 (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211,
1217 (Fed. Cir. 1995)).
2 The definition of the term “substantial” is taken from The American
Heritage® Dictionary of English Language, Fourth Edition, Copyright ©
2006 by Houghton Mifflin Co.
Appeal 2010-002766
Application 11/517,724

5

The rejections of claims 1, 3, and 4 as unpatentable over Jakob and
Barcock, and the rejection of claims 10, 11, 13, and 14 as unpatentable over
Jakob, Barcock, and Kim
Claims 1 and 11 both recite a setting tool including “a piston stop
device (30) . . . having a first ring (31) and a second ring (32) . . . and a
receiving space (33) provided between the first ring (31) and the second ring
(32) and substantially filled up with particles (34) with respect to which the
receiving space (33) is sealed.” App. Br., Appendix A (emphasis added).
The Examiner finds Jakob discloses the setting tool as recited in
claims 1 and 11, including “a receiving space provided between the first ring
7 and the second ring 14,” except that Jakob “discloses elastic pads [10, 13]
in the receiving space provided between the first ring and the second ring 14,
not particles in the receiving space.” Ans. 4; see Ans. 6. To remedy the
deficiency with respect to claim 1, the Examiner finds Barcock “teaches a
vibration damper wherein steel particles having a particle size between .1
mm and 5 mm (column 10 lines 41-47) are positioned in a cylindrical, sealed
receiving space 51” and determines that “[i]t would have been obvious to
one having ordinary skill in the art at the time of the invention to replace at
least one of the elastic damper pads of Jakob with steel particles, since
column 1 lines 32-51 of Barcock et al. suggests that particles are well known
vibration dampening elements in tools.” Ans. 4.
The Appellants respond to the Examiner’s rejection by distinguishing
Jakob’s setting tool, which absorbs excess energy of a piston, from
Barcock’s friction vibration damper, which dampens vibrations. App. Br. 8-
9, 13. More specifically, “Jakob discloses a damper for absorbing high
excess energy of a movable drive piston” whereas “Barcock discloses a
Appeal 2010-002766
Application 11/517,724

6
damper for damping low-frequency (10 Hz, col. 2, lines 45-46) low-energy
vibration.” Reply Br. 3-4.
For the reasons provided by the Appellants, the Examiner’s reasoning
to replace Jakob’s elastic pads with Barcock’s particles based on dampening
low-frequency low-energy vibrations lacks rational underpinning. Thus, the
rejection of claims 1, 3 and 4 as unpatentable over Jakob and Barcock is not
sustained. Additionally, the Examiner’s additional findings pertaining to
Kim’s teachings (Ans. 6) do not remedy the inadequate reasoning with
regard to the combination of Jakob’s and Barcock’s teachings as discussed
above. Thus, the rejection of claims 10, 11, 13, and 14 as unpatentable over
Jakob, Barcock, and Kim is not sustained.

The rejections of claims 1, 2, 6-12, and 15-18 as unpatentable over Jochum,
Nenkov and Barcock
The Appellants provide arguments for claim 1, and rely on those
arguments for the rejection of claims 2, 6-12, and 15-18 under Jochum,
Nenkov and Barcock. See App. Br. 15-16. Additionally, the Appellants
comment that additional features of dependent claims 2-4 and 6-10 are not
disclosed or suggested in the prior art. App. Br. 16. For the purposes of this
ground of rejection, that comment appears directed to the rejection of
dependent claims 2 and 6-10. This comment does not constitute a separate
argument for patentability of the dependent claims pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “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”). As such, we
Appeal 2010-002766
Application 11/517,724

7
select independent claim 1 as the representative claim and claims 2, 6-12,
and 15-18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that Jochum discloses a setting tool that
corresponds to the claimed invention, except for the claimed receiving space
as recited in claim 1. Ans. 4-5. The Examiner relies on Nenkov and
Barcock to remedy the deficiency of Jochum with respect to claim 1. The
Examiner finds that Nenkov discloses “a first angled ring 12 coaxial with a
second angled ring 14; the first and second angled rings 12, 14 defining a
receiving space 11 therebetween, wherein the receiving space 11 is filled
with particles 15 and flexible members 16, 17.” Ans. 5. The Examiner
concludes:
It would have been obvious to one having ordinary
skill in the art of shock/vibration absorption to
modify the piston stop devices of Jochum et al. to
include particles and flexible members between the
first and second conical rings, since column 1 lines
10-37 of Nenkov et al. states that such a
modification provides variable characteristics to
the piston stop system for the purpose of
increasing the coefficient of conversion, which
ensures damping of vibrations in a wide range.
Ans. 5. The Examiner also finds that Barcock discloses the claimed size of
the particles, i.e., “Barcock et al. teaches a vibration damper wherein steel
particles having a particle size between .1 mm and 5 mm (column 10 lines
41-47) are positioned in a cylindrical, sealed receiving space 51.” Ans. 5.
The Examiner concludes that:
It would have been obvious to one having ordinary
skill in the art at the time of the invention to piston
stop device of Jakob with particles of the claimed
Appeal 2010-002766
Application 11/517,724

8
material and size range, since column 1 lines 32-51
of Barcock et al. states that particles of the claimed
size are well known vibration dampening elements
in tools.
Ans. 5.
The Appellants contend that the Examiner’s rejection of claim 1, as
unpatentable over Jochum, Nenkov and Barcock, lacks articulated reasoning
with rational underpinning and requires a complete reconstruction of the
dampening means of Jochum. App. Br. 15, Reply Br. 5. The Appellants
also assert Nenkov discloses a chamber 11, having a bottom disk 10 that is
not stationary, and this is distinct from the present invention. Reply Br. 5.
The Appellants then conclude, “[h]ence, someone skilled in the art would
not have combined the contrary teachings of Nenkov with the teachings of
Jochum to obtain the present invention.” Reply Br. 5.
The Examiner correctly determines that “[t]he device of Jochum
discloses first and second angled rings, just as the device of Nenkov
discloses similar structure. Nenkov merely suggest[s] adding space between
the first and second angled rings for the purpose of containing a plurality of
particles thereby improving absorbing or damping capabilities of the
structure.” Ans. 9. Additionally, the Examiner correctly finds that Nenkov
addresses the problem of dampening energy, and as such, is reasonably
pertinent to the Appellants’ shared underlying problem of dampening
energy. Ans. 9. The Appellants’ response that Nenkov is in the field of
shock absorbers for the drilling of small diameter wells, which is a
completely different technical field from the present invention, does not
explain why the Examiner’s determination that Nenkov is reasonably
pertinent to the shared underlying problem of dampening energy is in error.
Appeal 2010-002766
Application 11/517,724

9
Reply Br. 4-5. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (“The
analogous-art test requires that the Board show that a reference is either in
the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection”) (citing In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992)).
Lastly, the Appellants contend that the “the Examiner’s Answer does
not contain any explanation why one of ordinary skill in the art would
substitute the balls of Nenkov by particles of Barcock, and what advantages
are achieved by this substitution.” Reply Br. 5-6. This contention is not
persuasive because the Examiner’s reasoning to include particularly sized
particles, as taught by Barcock, is based on the size of Jochum’s setting tool,
as modified to include Nenkov’s teaching of a receiving space having
particles. As such, the size of the particles in the receiving space of
Jochum’s setting tool would be bound by the size of Jochum’s receiving
space as modified by the teaching of Nenkov’s receiving space, not the
literal size of Nenkov’s receiving space.
Thus, the rejection of claims 1, 2, 6-12, and 15-18 as unpatentable
over Jochum, Nenkov, and Barcock is sustained.

DECISION
We REVERSE the rejections of: claims 1-4 and 6-18 under 35 U.S.C.
§ 112, second paragraph, as indefinite; claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) as unpatentable over Jakob and Barcock; and claims 10, 11, 13, and
14 under 35 U.S.C. § 103(a) as unpatentable over Jakob, Barcock, and Kim.
Appeal 2010-002766
Application 11/517,724

10
We AFFIRM the rejections of claims: claims 1, 2, 6-12, and 15-18
under 35 U.S.C. § 103(a) as unpatentable over Jochum, Nenkov, and
Barcock.
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).

AFFIRMED-IN-PART

Klh