Ex Parte Heinrich et al

Patent Trial and Appeal Board

Mar 11, 2013

10344887 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER HEINRICH and MIKE EICHHORN
____________

Appeal 2010-008641
Application 10/344,887
Technology Center 3600
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Before NEAL E. ABRAMS, STEVEN D. A. MCCARTHY,
and ANNETTE R. REIMERS, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Peter Heinrich et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-6 and 23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

We AFFIRM.

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THE INVENTION
The claimed invention is directed to a method for controlling and
regulating an adjusting device of a motor vehicle having an anti-jamming
protection and driven by a motorized drive, such as a window lifter, seat
adjuster, or sun roof.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for controlling and regulating an adjusting
device of a motor vehicle having an anti-jamming protection,
the adjusting device being driven by a motorized drive,
comprising:
substantially continuously detecting input variables of the
motorized drive;
determining an overall force of the adjusting device or
motorized drive as a function of the input variables;
establishing a force limit as a function of the determined
overall force;
measuring the actual output force of the adjusting device;
and
switching off or regulating the motorized drive of the
adjusting device, thereby limiting said measured actual output
force to a value below said force limit,
wherein the determining of the overall force of the
adjusting device comprises:
determining an individual force component as a
function of the corresponding input variable, each individual
force component contributing to increasing or reducing the
overall force of the adjusting device or a force of a
corresponding component of the adjusting device; and
computing the overall force of the adjusting device or
motorized drive by a summation of the individual force
components by entering each individual force component into
a summation member with a sign depending on whether the
individual force component assists or counteracts the adjusting
movement of the adjusting device or motorized drive.
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THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Klesing US 6,573,676 B1 Jun. 3, 2003

THE REJECTIONS
Claims 1-6 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1-6 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1-6 and 23 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Klesing.

OPINION
A threshold matter is presented with regard to both of the rejections
under 35 U.S.C. § 112, first paragraph. Review of the record reveals that
two Specifications were present in the documents filed on February 13,
2003, the date the application was received at the U.S. Patent and Trademark
Office (“USPTO”). One is a fifteen page document labeled as “WO
02/15359” and “PCT/DE01/02787,” upon which was stamped “REPLACED
BY ART 34 AMDT” (hereinafter “Specification I”), and the other is a
nineteen page document labeled as “New Description 10.10.2002” and
“PCT/DE01/02787 BRO863WO,” upon each page of which is stamped
“AMENDED PAGE” (hereinafter “Specification II”). Considerable
differences exist in the texts of the two documents.

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Claims 1-6 and 23 – Section 112, First Paragraph,
Written Description Requirement
This rejection was set forth on pages 4-7 of the Non-Final Rejection
dated Sep. 15, 2008, the action from which Appellants have appealed. The
Examiner determined that a number of limitations recited in the claims were
not described in the specification in such a way as to comply with the
written description requirement, and explained in detail the reasons for
reaching these conclusions. See Non-Final Rej. 5-7. Appellants argued in
rebuttal that such was not the case, pointing out passages in “the English
Translation of the International Application PCT/DE01/02787 (i.e.
translation of the original PCT application), which was submitted under 35
U.S.C. 371” (Specification I), which they contended supported their
positions. See Br. 5-11. The Examiner responded by repeating the original
rejection (See Ans. 7-10) and explaining that the passages cited by
Appellants did not appear where stated in Specification II, referred to an
amendment that was not entered, or were considered to be new matter (See
Ans. 19-22). It is clear that the Examiner and Appellants were relying upon
different specifications to support their respective positions, which is
confirmed by Appellants’ statement that
[t]hroughout the Appeal Brief, Applicants have referred to the
originally filed PCT application [Specification I] to show that
[the] originally filed application supports the claims. In the
Examiner’s Answer, however, the Examiner has referred to the
PCT application as amended under Article 34 of the PCT
[Specification II]. Accordingly, the disclosures on certain page
and line numbers to which Applicants refer in the Appeal Brief
do not correspond to those referred to by the Examiner.
Reply Br. 1.
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The Examiner considered Specification II to constitute the
specification against which the subject matter recited in the claims should be
measured under the description requirement of 35 U.S.C. § 112, first
paragraph, and the Examiner’s comments regarding the discrepancies
between the content of the portions to which Appellants referred by page
and line number in Specification I and the content that appears in these same
pages and line numbers in Specification II are well taken. Therefore, insofar
as the Examiner is concerned, Appellants’ arguments are not supported by
the proper specification. While Appellants have asserted that “these
disclosures identically appear in both the originally filed PCT application
[Specification I] and the PCT application as amended under Article 34 of the
PCT [Specification II]” (Reply Br. 1-2), they have not pointed out where
such support exists in Specification II.
This being the case, the Examiner’s conclusions regarding the lack of
written description in Specification II for the claimed subject matter recited
in the rejection have not been overcome by the arguments presented by
Appellants. Therefore, the rejection of claims 1-6 and 23 as failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph, is sustained.
Claims 1-6 and 23 – Section 112, First Paragraph,
Enablement Requirement
The situation here parallels that set forth above with regard to the
rejection of these claims under the written description requirement. In the
instant rejection, the Examiner took exception to a number of limitations in
the claims under the enablement requirement. See Ans. 10-13. Appellants
responded by pointing out passages in Specification I that in their view
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refuted the Examiner’s conclusions (Br. 11-18), and the Examiner countered
by stating that these recitations did not appear in Specification II in the
places noted in the Brief, referred to an amendment that was not entered, or
constituted new matter (Ans. 19-22). Again, Appellants did not attempt to
rectify the situation by pointing out where in Specification II support is
found for their arguments.
The Examiner’s conclusions regarding lack of enablement not having
been rebutted by Appellants, this rejection of claims 1-6 and 23 also is
sustained.
Claims 1-6 and 23 – Anticipation
Klesing
“As best understood,” claims 1-6 and 23 stand rejected as being
anticipated by Klesing, the Examiner reciting each of the limitations in the
appealed claims and then making reference to passages in Klesing which
purport to teach these limitations. Ans. 13-18. Appellants have presented
arguments in rebuttal with respect to two of the Examiner’s findings with
regard to independent claim 1, and three with regard to independent claim
23. Br. 21-25.
The first of the limitations in issue appears in claims 1 and 23, and
concerns the phrase “measuring the actual output force of the adjusting
device,” which the Examiner has found to be taught in Klesing at “col. 4,
lines 27-67.” Ans. 14. The claimed terminology does not appear in haec
verba in the forty lines of text to which the Examiner refers, and no guidance
has been provided regarding the basis upon which the Examiner has reached
the conclusion that the limitation nevertheless is taught in this passage. In
response, Appellants have described the Klesing method and device in detail
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(Br. 19-21), and have explained why they believe this limitation is not taught
in the portion of Klesing cited by the Examiner (Br. 21-22). The Examiner’s
reply to Appellants’ argument was merely to repeat what was said in the
rejection, with no further explanation or rebuttal being offered. Ans. 22.
The same situation exists with regard to the limitation in claim 1 of
“determining an individual force component as a function of the
corresponding input variable” (see Ans. 14; Br. 22-23; Ans. 23), the
limitation in claim 23 of “determining a first force component as a first
dynamic function of a rotational speed of an electric motor . . .” (see Ans.
18; Br. 23-24; Ans. 24), and the limitation in claim 23 of “determining a
second force component as a static function of the rotational speed of said
electric motor and a control signal of the electric motor” (see Ans. 18; Br.
25; Ans. 24).
The Examiner’s failure to explain where these limitations are taught in
each of the cited passages in Klesing, and failure to respond to Appellants’
arguments, has resulted in Appellants’ positions on these issues being
uncontroverted. This rejection of independent claims 1 and 23 and
dependent claims 2-6 therefore is not sustained.
DECISION
The rejection of claims 1-6 and 23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, is
affirmed.
The rejection of claims 1-6 and 23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement, is
affirmed.
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The rejection of claims 1-6 and 23 under 35 U.S.C. § 102(e) as being
anticipated by Klesing is reversed.
A rejection of each of the claims having been affirmed, the decision of
the Examiner is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls