Ex Parte Janutin et al

Patent Trial and Appeal Board

Sep 29, 2017

12976288 (P.T.A.B. Sep. 29, 2017)

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.
12/976,288 12/22/2010 Andreas Janutin 15540-0252001/ 7169
SP10032US
26161 7590 10/03/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS JANUTIN, PETER DUBLER,
CLAUS BOEHRINGER, and
ANDREAS NEUWEILER 1
Appeal 2016-002261
Application 12/976,288
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 1—4, 7-11, and 13-17.3 An oral
1 Appellants identify the real party in interest as “TRUMPF Gruesch AG[.]”
Appeal Brief filed May 18, 2015 (“Appeal Br.”) 2.
2 Second Non-Final Action entered December 18, 2014 (“Second Non-Final
Act.”) at 2-10; and Examiner’s Answer entered October 22, 2015 (“Ans.”)
2-20.
3 Claims 18 and 20, the other claims pending in the above-identified
application, were withdrawn from consideration by the Examiner as being
Appeal 2016-002261
Application 12/976,288
hearing was held on September 26, 2017.* * 4 We have jurisdiction under 35
U.S.C. § 6(b).5
We REVERSE.
STATEMENT OF THE CASE
The subject matter of the claims on appeal is directed to “support rail
cleaners for cleaning support rails of workpiece supports in machine tools,
for example, in machine tools for thermally cutting workpieces.” Spec. 2,11
7-9. Details of the appealed subject matter are recited in illustrative claim
l,6 which is reproduced below from the Claims Appendix of the Appeal
Brief:
1. A mechanical support rail cleaner for cleaning a support
rail of a workpiece support in a machine tool, comprising
a plate-like guiding support by means of which the
support rail cleaner can be positioned against a support rail;
one or more cleaning member carriers protruding from
the plate-like guiding support and each comprising at least one
cleaning member, wherein each cleaning member carrier
directed to a nonelected invention. See First Non-Final Action entered June
6, 2013 (“First Non-Final Act.”) at 2.
4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
5 Although the action appealed from was the Non-Final Action entered
December 18, 2014, we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134
because the claims have been twice presented and rejected. See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994).
6 Claim 1 is the broadest claim on appeal. Therefore, for purposes of this
appeal, we limit our discussion to independent claim 1.
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Application 12/976,288
is associated with a lateral longitudinal face of the support rail
when the plate-like guiding support lies on the support rail; and
a drive motor acting as both a parallel drive and a
transverse drive, wherein the drive motor is connected to the
one or more cleaning member carriers by a gear mechanism;
wherein the drive motor acting as the parallel drive
moves the one or more cleaning member carriers in a parallel
movement along the associated lateral longitudinal face of
the support rail and perpendicularly up and down relative to a
longitudinal axis of the support rail to remove deposits from the
support rail by means of the at least one cleaning member; and
wherein the drive motor acting as the transverse drive
periodically moves the one or more cleaning member carriers
towards and away from the associated lateral longitudinal face
of the support rail in a direction that extends transversely
relative to the associated lateral longitudinal face of the support
rail to remove deposits from the support rail by means of the at
least one cleaning member.
Appeal Br. 23, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the
following grounds7 of rejection:
1. Claims 1—4 and 9-11 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Villanueva Sautu (WO 2008/142176 A1
published Nov. 27, 2008)8 and Nelson (US 5,261,192 issued Nov. 6, 1993);
7 The Examiner withdrew the 112, second paragraph, rejection of claims 1
and 2 set forth in the Final Action. Ans. 9.
8 Our reference to Villanueva Sautu is to US 2010/0146721 A1 published
June 17, 2010 which is said to be the English counterpart of WO
2008/142176 A1 published on November 27, 2008. Ans. 2.
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Application 12/976,288
2. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Villanueva Sautu, Nelson, and Bonami (US
3,806,979 issued Apr. 30 1974);
3. Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Villanueva Sautu, Nelson, and Sugarman
(US 2003/0061675 A1 published Apr. 3, 2003);
4. Claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Villanueva Sautu, Nelson, Lister (GB
2174350 A published Nov. 5, 1986), and Emami (US 6,299,698 B1 issued
Oct. 9, 2001); and
5. Claims 17 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Villanueva Sautu, Nelson, and Lister. Final Act. 2-
10; Ans. 2-9.
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner in
light of each of Appellants’ contentions, we find reversible error in the
Examiner’s decision rejecting claims 1—4, 7-11, and 13-17 under 35 U.S.C.
§ 103(a). Accordingly, we reverse the Examiner’s § 103(a) rejections of the
above claims for some of the reasons set forth in the Appeal Brief and Reply
Brief filed December 18, 2015. We add the following primarily for
emphasis and completeness.
Claim 1 is limited to “a mechanical support rail cleaner for cleaning a
support rail of workpiece support in a machine tool[.]” The claimed
mechanical support rail cleaner has a plate-like guiding support for
positioning the cleaner against a support rail of a workpiece support in a
machine tool, one or more cleaning member carriers protruding from the
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Application 12/976,288
plate-like guiding support, and a driver motor connected to the one or more
cleaning member carriers by a gear mechanism. See claim 1. This gear
mechanism is limited to a particular design that allows the drive motor to act
as both a parallel drive and a transverse drive. Id. together with Spec. 11-14
and Fig. 3. In particular, the gear mechanism must be designed in such a
manner to allow the driver motor to
move the one or more cleaning member carriers in a parallel
movement along the associated lateral longitudinal face of the
support rail and perpendicularly up and down relative to a
longitudinal axis of the support rail to remove deposits from the
support rail by means of the at least one cleaning member;
and.. .periodically move the one or more cleaning member
carriers towards and away from the associated lateral
longitudinal face of the support rail in a direction that extends
transversely relative to the associated lateral longitudinal face
of the support rail to remove deposits from the support rail by
means of the at least one cleaning member
as recited in claim 1. The Specification describes one particularly designed
gear mechanism that allows the drive motor to perform the functions recited
in claim 1. See Spec. 11-14 and Fig., 3. Thus, we do not doubt that the
functional limitations recited in claim 1 further limit the structure of the
claimed mechanical support rail cleaner. See K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1363 (Fed. Cir. 1999) (“the functional language tells us
something about the structural requirements of the attachment between the
bootie and the base”).
Although claims directed to an apparatus must be distinguished from
the prior art in terms of structure rather than functions, in certain
circumstances, functional language may be used to add limitations to
apparatus claims. See, e.g., K-2, 191 F.3d at 1363. In such circumstances,
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the Examiner must supply sufficient reason to show that the prior art
apparatus is capable of performing the functions recited in the claims. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (explaining that because
the prior art funnel for dispensing oil and the claimed funnel-like structure
for dispensing popcorn are structurally identical or structurally substantially
identical, the burden is shifted to Appellants to prove that the prior art funnel
was not capable of dispensing popcorn); In re Hallman, 655 F.2d 212, 215
(CCPA 1981) (when the Examiner has reason to conclude that the prior art
structure is “capable of’ performing a claimed function, the burden shifts to
applicants to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure). However, on this record, the
Examiner does not demonstrate that Villanueva Sautu and/or Nelson
disclose or would have suggested a gear mechanism that is particularly
designed to allow a single driver motor to perform the multiple functions
recited in claim 1. Compare Appeal Br 11-12 and Reply Br. 6-8, with Ans.
2-5 and 11-14. The Examiner does not rely upon the disclosures of the
remaining prior art references to remedy such deficiencies in Villanueva
Sautu and Nelson. Ans. 5-8. Thus, the Examiner does not evince that the
cleaner suggested by the applied prior art is identical to the mechanical
support rail cleaner recited in claim 1, as explained by Appellants in the
Appeal Brief and the Reply Brief.
Under the above circumstances, we determine that the Examiner does
not establish a prima facie case of obviousness regarding the claimed subject
matter within the meaning of 35 U.S.C. § 103(a).
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ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-4, 7-
11, and 13-17 under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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