Ex Parte Hess et al

Patent Trial and Appeal Board

Jul 11, 2016

12628637 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/628,637 12/01/2009
24126 7590 07113/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
Matthias Hess
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03630-P0090A 6326
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
07/13/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS HESS, JOACHIM CLABUNDE,
OLAF KLABUNDE, and WERGEN BLICKLE
Appeal2014-000177
Application 12/628,637
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthias Hess et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 2, 6, 7, 9, 10, 12, 13, 15,
and 16. 1 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in
accordance with 37 C.F.R. § 41.47 was held on June 14, 2016.
We AFFIRM.
1 Claim 3 has been canceled and claims 4, 5, 8, 11, 14, and 17-20 have been
withdrawn from consideration. Final Act. 1 (Office Action Summary);
Appeal Br. 2.
Appeal2014-000177
Application 12/628,637
THE CLAIMED SUBJECT MATTER
Claim 2, reproduced below, is the only independent claim involved in
this appeal.
2. A device for cutting through an adhesive bead of a pane,
compnsmg:
a motor-driven winding-up device having a coil for
winding up a cutter for cutting through the adhesive bead;
a suction disk configured for attaching to an inside of the
pane;
a coupling comprising a coupling element and a counter
coupling element matched to each other, one of which being
attached to said winding-up device, the other one of which being
attached to said suction disk; and
said coupling is configured for securing said coupling
counter-element detachably on said coupling element; and
wherein said coupling is configured for allowing free
rotation of said coupling element together with said winding-up
device about said suction disk, while being in a position secured
to each other.
REJECTIONS2
I. Claims 2, 12, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hess (US 2007/0214649 Al, pub. Sept 20,
2007) and Hutchins (US 5,622,093, iss. Apr. 22, 1997).
II. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hess, Hutchins, and Jensen
(US 2006/0117573 Al, pub. June 8, 2006).
III. Claims 6, 7, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hess, Hutchins, Eriksson (US 6,616,800 B2,
2 According to the Examiner, Appellants' Amendment, filed March 8, 2013,
overcame the Examiner's rejections of claims 7 and 16 under 35 U.S.C.
§ 112, second paragraph. Advisory Act. (dated March 27, 2013).
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Application 12/628,637
iss. Sept. 9, 2003), Gmeilbauer (US 6,591,502 Bl, iss. July 15,
2003), and Steck (US 4,417,398, iss. Nov. 29, 1983).
IV. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Huss, Hutchins, Eriksson, Gmeilbauer, Steck, and Jensen.
DISCUSSION
Rejection I
Appellants argue for patentability of claims 2, 12, 13, and 16 subject
to this ground of rejection as a group. Appeal Br. 4--12. We select claim 2
as representative of this group, and claims 12, 13, and 16 stand or fall with
claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relied on Hess for its disclosure of a device for cutting
through an adhesive bead of a pane, comprising a motor-driven winding up
device having a coil (reel 28) and a support (support 32). Final Act. 3. The
Examiner relied on Hutchins for its teachings directed to the use of a suction
disk configured for attaching to an inside of a pane and a coupling including
a coupling element and a coupling counter-element, for detachably and
rotatably supporting and securing a cutting wire device for pane bead
cutting. Id. The Examiner determined that "it would have been obvious ...
to mount the automatic cutter of Hess onto a suction cup mounting system as
disclosed by Hutchins, since doing so would make the device more stable,
more automatic[,] and less user intensive." Id.
Appellants argue that "[b ]oth Hess and Hutchins lack 'a coupling ...
configured for allowing free rotation of a coupling element together with [a]
winding-up device about [a] suction disk, while being in a position secured
to each other.'" Appeal Br. 7. More specifically, Appellants contend that
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Application 12/628,637
Hess lacks the coupling and Hutchins lacks the winding-up device. Id. This
argument fails to identify error in the rejection because it attacks the
references individually, and not in combination as proposed by the
Examiner. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants also submit that the design considerations for Hutchins's
joint are different than those for the claimed invention and that Hutchins's
joint would be inadequate for mounting a motorized winding-up device as
claimed to a suction disk. Appeal Br. 8. According to Appellants, the
weight of the motorized winding-up device and the forces applied to the
mount by the winding-up device will be different from those experienced in
Hutchins. Id. Appellants also assert that "[i]t is probable that such a
mounting system would not function properly or allow free-rotation of the
winding-up device, once mounted." Id. at 8-9. Appellants add that
Hutchins's coupler and Hess's winder "would have to be completely
redesigned to function as required in a device covered by claim 2." Reply
Br. 3.
Appellants do not direct our attention to any evidence in the record,
nor supply any persuasive technical reasoning or explanation, to support
either the assertion that Hutchins's joint would be inadequate to withstand
the weight and forces imparted by Hess's motor-driven winding device or
the assertion that such a mounting system would not function properly when
used to mount such a winding device. As such, Appellants' assertions
amount to unsupported attorney argument, and, therefore, are entitled to
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Application 12/628,637
little weight. Jn re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Moreover, even assuming that Hutchins's swiveling coupling and suction
cup assembly would require modification or redesign to adapt them to be
sufficiently robust to support the weight of, and withstand the forces
imparted by, the motor-driven winding device of Hess, Appellants do not
assert, much less present any evidence or technical reasoning to show, that
such modifications would have been beyond the technical grasp of a person
having ordinary skill in the art. "A person of ordinary skill is also a person
of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).3
Appellants argue that "the device of claim 2 is structurally and
operationally completely different from Hess and Hutchins" because both
Hess and Hutchins require manual operation by the user to cut the adhesive
bead. Appeal Br. 9-10. According to Appellants, "[i]n the device of claim
2, the cutting operation is fully automated." Id. at 10.
As correctly pointed out by the Examiner, claim 2 does not require
that the cutting operation be fully automatic. Ans. 10. Thus, to the extent
that Appellants are arguing that the combination of Hess and Hutchins
proposed by the Examiner would not yield a fully automatic device, the
argument is not commensurate with the scope of claim 2. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability). Hess discloses a device for cutting
the adhesive bead of a vehicle window pane wherein the winding of the
3 Notably, Hutchins stresses the importance of providing sufficient
suction/vacuum to securely hold the assembly in place during the cutting
process. See Hutchins, col. 2, 11. 51-54.
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cutting wire to retract the wire to perform the cutting is powered by a motor,
rather than manually, but the winding device is supported manually, with the
aid of support 32. See Hess i-fi-127, 63, 66, 67. Hutchins, on the other hand,
discloses a windshield sealant cutting device wherein the device for
retracting the cutting wire (i.e., spring 14) is supported on the inside of the
windshield by a suction cup assembly to which it is coupled in a freely
rotatable manner, rather than being supported manually, but the force to
produce the sawing action is applied manually. See Hutchins, col. 2, 11. 36-
54; col. 3, 1. 56-col. 4, 1. 13. The combination proposed by the Examiner
combines the labor-saving advantages of a motorized cutting wire retraction
drive means with the labor-saving advantages of a suction cup support
assembly for supporting the retraction device on the inside of the
windshield. In essence, the proposed combination is nothing more than the
predictable use of prior art elements according to their established functions.
Thus, the Examiner's articulated reasoning that "it would have been obvious
... to mount Hess's automatic cutter onto a suction cup mounting system as
disclosed by Hutchins, since doing so would make the device more stable,
more automatic[,] and less user intensive" (Final Act. 3), has rational
underpinnings.
Appellants allege that "[t]he Examiner has ... attempted to
reconstruct claim 2 using hindsight knowledge" and that a person having
ordinary skill in the art would not have attempted this combination "because
neither Hess nor Hutchins discloses a device that uses machine power to
move the cutter around the bead, or a mounting system suitable to attach a
winding device to a suction cup mount." Appeal Br. 11. Once again,
Appellants' attack of Hess and Hutchins individually, and not as combined
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by the Examiner, fails to identify error in the rejection. Appellants do not
point to any knowledge gleaned only from Appellants' Specification used by
the Examiner to support the determination of obviousness.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 2. Accordingly, we sustain the rejection of claim 2, as
well as claims 12, 13, and 16, which fall with claim 2, under 35 U.S.C.
§ 103(a) as unpatentable over Hess and Hutchins.
Rejections II-IV
In contesting these rejections, Appellants argue only that Jensen,
Eriksson, Gmeilbauer, and Steck fail to remedy the asserted deficiencies in
the combination of Hess and Hutchins vis-a-vis claim 2. Appeal Br. 12-14.
For the reasons discussed above, these arguments fail to apprise us of error
in the rejections. Accordingly, we sustain the rejections under 35 U.S.C.
§ 103(a) of claims 9 and 10 as unpatentable over Hess, Hutchins, and
Jensen; claims 6, 7, and 15 as unpatentable over Hess, Hutchins, Ericksson,
Gmeilbauer, and Steck; and claim 1 as unpatentable over Hess, Hutchins,
Ericksson, Gmeilbauer, Steck, and Jensen.
DECISION
The Examiner's decision rejecting claims 1, 2, 6, 7, 9, 10, 12, 13, 15,
and 16 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)(l )(iv).
AFFIRMED
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