Ex Parte Hildebrand

Patent Trial and Appeal Board

Aug 4, 2016

11607084 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/607,084 12/01/2006
23117 7590 08/08/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Rudolf Hildebrand
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.
265-200 7192
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLF HILDEBRAND
Appeal2014-005184
Application 11/607 ,084 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-11and14--19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
According to Appellant, "[t]he invention relates to a fastening device,
in particular for a motor vehicle antenna." Spec. 1.
1 According to Appellant, the real party in interest is Kathrein-Werke KG.
Appeal Br. 1.
Appeal2014-005184
Application 11/607 ,084
CLAHvIS
Claims 1-11 and 14--19 are on appeal. Claim 1 is illustrative of the
appealed claims and recites:
1. A device for fastening to an attached part including a
fitting wall having a fitting opening therethrough and having a
threaded portion, the device comprising:
a screw member comprising a screw head and further
comprising a screw shank structured and dimensioned to
engage with and threadably screw into the attached part
threaded portion,
a tensioning structure comprising at least one element
structured and configured to tension the device toward the
fitting wall,
the at least one element structured and dimensioned for
insertion through the fitting opening from an attachment side
thereof, the at least one element comprising a locking structure
structured to lock behind the fitting opening with the at least
one element inserted through the fitting opening from the
attachment side,
a plug-in system comprising at least one plug connector
arranged offset relative to the screw member in such a way that,
when viewed perpendicularly to the fitting opening, the at least
one plug connector is arranged wholly or partially in a region of
the fitting opening, the at least one plug connector having an
insertion opening defining an insertion plane,
the screw member being structured and configured to
penetrate the tensioning structure and apply pressure to the
tensioning structure to thereby urge the at least one element to
be supported, on a side of the fitting opening opposing the
attached part, on the fitting wall surrounding the fitting opening
and thereby fix the device to the attached part, with the screw
head applying pressure to the tensioning structure being further
structured to be located closer to the fitting wall than the
insertion plane defined by the insertion opening of the at least
one plug connector.
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Appeal2014-005184
Application 11/607 ,084
Appeal Br. 14--15.
REJECTIONS
1. The Examiner rejects claim 19 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1-11 and 14--19 under 35 U.S.C.
§ 102(b) as anticipated by Yang. 2
3. The Examiner rejects claims 1-11 and 14--19 under 35 U.S.C.
§ 102( e) as anticipated by Ohno. 3
4. The Examiner rejects claims 1-11 and 14--19 under 35 U.S.C.
§ 103(a) as unpatentable over Yang.
5. The Examiner rejects claims 1-11 and 14--19 under 35 U.S.C.
§ 103(a) as unpatentable over Ohno.
DISCUSSION
Rejection 1
The Examiner finds that it is unclear whether "tension means,"
"locking means," and "fastening means" in claim 19 invoke 35 U.S.C.
§ 112, sixth paragraph. Ans. 3.
We find that the Examiner erred in rejecting claim 19 as indefinite,
because it is clear that claim 19 does not invoke 35 U.S.C. § 112, sixth
paragraph. Although the claim uses "means for" language and thus creates a
presumption that 35 U.S.C. § 112, sixth paragraph, applies, we find that the
claim language overcomes this presumption by providing sufficient structure
to achieve the claimed functions. Regarding the tensioning/locking means,
2 Yang et al., US 6,077,115, iss. June 20, 2000.
3 Ohno et al., US 2006/0038729 Al, pub. Feb. 23, 2006.
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Appeal2014-005184
Application 11/607 ,084
the claim limitation recites a clamping element that is "structured to be
inserted through the fitting opening and structured to apply tension to lock
behind the fitting opening." We find that said clamping element is thus
structured "for locking the attached part to the fitting wall," which is the
function of the tensioning or locking means required by this limitation.
Regarding the fastening means, the claim recites "a screw member. ..
having a screw head" and that the screw member is "structured to apply
pressure to the tensioning or locking means." We find that said screw
member includes sufficient structure "for being threadably screwed into the
threaded recess to penetrate the tensioning or locking means," which is the
function of the fastening means required in the claim. Thus, we find no
ambiguity in the claim, and accordingly, we do not sustain the rejection of
this claim as indefinite.
Rejection 5
Regarding this rejection, the Examiner states "Ohno suggests
applicant's claimed structure and is thus capable of performing applicant's
newly amended functional intended use limitations in accordance with
MPEP 2112.01." Final Act. 3. Further, in response to Appellant's
arguments, the Examiner finds that Ohno discloses each of the structural
aspects of the independent claims and finds that these structural components
are "presumed to be inherently capable of performing the functional
intended use limitations." Ans. 10-11 (including underlining of structural
elements and bold, italicizing of alleged functional limitations). Appellant
raises two arguments: 1) that Ohno does not disclose a plug connector and
teaches away from using a plug connector; and 2) that
the Examiner cannot invoke the case law allowing an Examiner
to presume inherency in certain limited circumstances for
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Appeal2014-005184
Application 11/607 ,084
intended use limitations and accordingly has no legal basis for
the present rejection. Rather, the Examiner must demonstrate
that each of applicant's claim limitations are disclosed in or
rendered obvious by Ohno.
Reply Br. 22-25.
With respect to Appellant's first argument, we agree with the
Examiner's alternative basis for this rejection that using a plug connector
"would have been obvious since such connecting device would have been
known to be desirable for allowing connection and disconnection of the
antenna from the mounting surface without having to cut the wires there
between (i.e., to reduce removal/installation time and difficulty)." Ans. 21.
We are not persuaded that Ohno teaches away from using a plug connector
simply because Ohno discloses only embodiments where a plug is not used,
as asserted by Appellant. See Reply Br. 23-24. Appellant does not point to
any portion of Ohno that actually discourages, discredits, or disparages the
use of a plug connector. See In re Fulton, 391 F .3d 1195, 1201 (Fed. Cir.
2004).
Regarding Appellant's second argument, we are not persuaded of
error because, although the Examiner finds that every limitation related to
the "attached part" is an intended use/functional limitation, without further
explanation or identification from Appellant, we find that the Examiner has
otherwise provided a sufficient basis for concluding that Ohno teaches or
suggests each of the claimed elements. See Ans. 10-15, 21. Specifically,
although the Examiner indicates that the language "for fastening to an
attached part" is a functional intended use limitation, the Examiner identifies
such an attached part in Ohno including a fitting wall, a fitting opening, and
a threaded portion. See Id. at 10. The Examiner then finds that each of the
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Appeal2014-005184
Application 11/607 ,084
parts identified actually perform the claimed functions or are capable of
doing so. Id. at 10-11, 15. Without further explanation from Appellant, no
error in the Examiner's findings has been identified. Accordingly, we
sustain this rejection.
Rejections 2--4
Because our analysis with respect to the obviousness rejection over
Ohno is dispositive regarding all appealed claims, we do not reach the
remaining rejections based on Yang and Ohno.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 19
under 35 U.S.C. § 112, second paragraph; we affirm the rejection of claims
1-11and14--19 under 35 U.S.C. § 103(a) as unpatentable over Ohno; and
we do not reach the remaining rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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